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WMH Tool Group, Inc. v. Woodstock International

July 6, 2009


The opinion of the court was delivered by: Mag. Judge Michael T. Mason

Hon. Judge John W. Darrah


Plaintiff WMH Tool Group, Inc. ("WMH" or "plaintiff") filed this action against defendants Woodstock International, Inc. and Grizzly Industrial, Inc. ("defendants") to protect its alleged trade dress and common law rights in the color white as used on woodworking and metalworking machines. The trademark registration at issue is referred to as the "'180 Reg." Defendants deny plaintiff's claims of infringement and assert various counterclaims, including that the '180 Reg is invalid and unenforceable because WMH presented materially false and misleading information to the United States Patent and Trademark Office (the "PTO").

Presently before this Court is defendants' renewed request to depose Edward Clair ("Mr. Clair"), one of plaintiff's attorneys in this case, and to preclude WMH from relying on a claim of privilege as a basis for withholding testimony.*fn1 Defendants also seek to compel certain documents that WMH contends are protected by the attorney- client privilege. Defendants argue that these documents are relevant to WMH's acquisition of the '180 Reg and defendants' fraud counterclaim.


A. Relevant Facts

Plaintiff filed the underlying application for the '180 Reg on March 6, 2003. The PTO initially refused registration through an Office Action dated August 28, 2003 (the "Office Action"). As explained by the trademark examiner, "the proposed mark appears to be functional" in that it "comprises the color white which serves a utilitarian purpose," and therefore is not registrable. The examiner characterized the color white as "a very basic color in the industry for such goods," and noted that it "appears that others also use white for similar goods." The examiner requested that WMH submit: (1) additional information indicating if the identified color, white, serves any purpose as used on the goods; (2) available advertising, promotional or explanatory literature concerning the goods; and (3) a concise description of the mark clearly indicating that the mark consists of a single color. He also requested that WMH " indicate whether competitors produce the same or similar goods in the identified color, and in colors other than the identified color" and "provide color photographs and color advertisements showing competitive goods."

WMH filed its Response to Office Action (the "Response") on March 1, 2004. Mr. Clair, who represented WMH in its efforts to register the '180 Reg, executed the Response. The Response amends the initial application for the '180 Reg and provides additional information regarding the mark. Along with the Response, WMH filed the Declaration of Scott Box (the "Box Declaration"), copies of advertisements from Popular Woodworking Magazine, copies of WMH's color advertisements and color advertising brochures, and representative pages from WMH's 2001-2002 catalog of woodworking equipment. On October 12, 2004, the PTO withdrew its initial refusal to register and issued the '180 Reg.

B. Procedural History

On October 7, 2008, defendants served Mr. Clair with a subpoena commanding him to produce certain documents and testify at a deposition in this action. Plaintiff objected to the deposition, and to defendants' efforts to discover privileged communications. After unsuccessfully attempting to resolve the dispute without Court intervention, plaintiff filed a motion to quash or, alternatively, for a protective order [179]. In their response in opposition to that motion [189], defendants raised many of the same arguments that are presently before this Court. Among other things, defendants argued that Mr. Clair prepared the Response and the Box Declaration and is the only individual competent to testify regarding the inclusion and omission of certain facts from those documents. Defendants also sought Mr. Clair's testimony regarding the due diligence WMH exercised (or, according to defendants, failed to exercise) in the search for documents required by the PTO in connection with the Response.

At the time defendants noticed Mr. Clair's deposition, they had not taken any depositions in this case. Based on the record before this Court at that time, we found that defendants could not show that Mr. Clair had any unique knowledge of the facts at issue, or that it would be more difficult to obtain the information from a source other than Mr. Clair. [234]. Consequently, this Court granted plaintiff's motion to the extent it sought an order quashing the noticed deposition and subpoena directed to Mr. Clair.

However, we granted defendants leave to issue additional discovery requests, and to renew their request to take Mr. Clair's deposition if, after completing the depositions of WMH's witnesses, they could show that Mr. Clair has unique knowledge of disputed facts related to the '180 Reg.

Defendants complied with this Court's instructions. On March 23, 2009, defendants submitted to this Court excerpts from the individual and Fed. R. Civ. P. 30(b)(6) depositions of Robert Romano ("Mr. Romano") and Scott Box ("Mr. Box"), who executed the Box Declaration. Defendants renewed their request to depose Mr. Clair on April 22, 2009. This Court found that defendants' request was now ripe, and ordered defendants to submit a list of proposed deposition topics. We also granted each party leave to submit a statement summarizing that party's arguments regarding the privilege issues before this Court. On June 2, 2009, we heard oral arguments on defendants' renewed request to depose Mr. Clair and to compel production of certain documents that plaintiff contends are protected by the attorney-client privilege.


Pursuant to Fed. R. Civ. P. 26(b)(1), "[p]arties may obtain discovery regarding any non-privileged matter that is relevant to any party's claim or defense." Here, defendants seek to discover information that plaintiff contends is protected from disclosure by the attorney-client privilege. In the Seventh Circuit, the attorney-client privilege applies to communications that meet the following test: (1) where legal advice of any kind is sought (2) from a professional legal advisor in his capacity as such, (3) the communications relating to that purpose (4) made in confidence (5) by the client (6) are at his instance permanently protected (7) from disclosure by the client or the legal advisor, (8) except where waived. United States v. Evans 113 F.3d 1457, 1461 (7th Cir. 1997) (citations omitted). The party seeking to invoke the privilege bears the burden of proving all of its essential elements. Id. (citing United States v. White, 950 F.2d 426, 430 (7th Cir. 1991)).

While litigation need not be pending for the attorney-client privilege to apply, only "those communications which reflect the lawyer's thinking or are made for the purpose of eliciting the lawyer's professional advice or other legal assistance fall within the privilege." United States v. BDO Seidman, 492 F.3d 806, 815 (7th Cir. 2003) (citing United States v. Frederick, 185 F.3d 496, 500 (7th Cir. 1999)). Documents that do not contain requests for legal advice or provide legal advice fall outside the scope of the privilege. McCook Metals L.L.C. v. Alcoa, Inc., 192 F.R.D. 242, 253 (N.D. Ill. 2000). The attorney-client privilege does not protect the underlying facts communicated to an attorney. See Upjohn Co. v. United States, 449 U.S. 383, 395 (1981) ("The protection of the privilege extends only to communications and not to facts."). It also does not preclude disclosure of communications that contain only business advice. See Burden-Meeks v. Welch, 319 F.3d 897, 899 (7th Cir. 2003) ("Hiring lawyers to do consultants' work does not bring a privilege into play.").

With these requirements in mind, we turn to defendants' request to compel the deposition ...

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