United States District Court, N.D. Illinois, Eastern Division
MILLER UK LTD. and MILLER INTERNATIONAL LTD., Plaintiffs,
CATERPILLAR, INC., Defendant.
MEMORANDUM OPINION AND ORDER IN RESPONSE TO CATERPILLAR'S MOTION TO REVERSE CERTAIN OF THE SPECIAL MASTER'S RULINGS ON PRIVILEGE
JEFFREY COLE, Magistrate Judge.
Special Master, Michael Mahoney, has reviewed some 5, 000 documents and emails to determine the applicability of the attorney/client privilege or work-product doctrine. Caterpillar has appealed a relatively small number of those determinations. [Dkt. #592]. The basic principles relating to the attorney/client privilege and work-product doctrine have been discussed at some length in prior decisions in this case and need not be repeated except as necessary to resolve Caterpillar's objections. See e.g., Miller UK Ltd. v. Caterpillar, Inc., ___ F.Supp.2d ___, 2014 WL 67340, 11 (N.D.Ill. 2014).
It cannot be too strongly emphasized that the lawyer-client relationship, itself, "does not create a cloak of protection which is draped around all occurrences and conversations which have any bearing, direct or indirect, upon the relationship of the attorney with his client.'" In re Walsh, 623 F.2d 489, 494 (7th Cir.1980). Thus, communicating with, mentioning, or copying a lawyer on an otherwise non-privileged communication, will not transform the non-privileged communication or attachment into a privileged one, even if the otherwise non-privileged communication was at the behest of the lawyer. See Lyondell Chem. Co. v. Occidental Chem. Corp., 608 F.3d 284, 300 n. 57 (5th Cir.2010); In re Avantel, S.A., 343 F.3d 311, 321 (5th Cir.2003); In re Allen, 106 F.3d 582, 604 (4th Cir.1997); Radiant Burners v. Am. Gas Ass'n, 320 F.2d 314, 324 (7th Cir.1963); Lee v. Chicago Youth Ctrs., 2014 WL 2618537, at *4 (N.D.Ill. 2014); Primetime 24 Joint Venture v. Echostar Comm'cns Corp., No. 98Civ.6738, 2000 WL 97680, at *1-3 (S.D.N.Y. 2000). Cf., McCullough v. Fraternal Order of Police, Chicago Lodge 7, ___ F.Supp.2d ___, ___ 2014 WL 2514623, *3 (N.D.Ill.2014) (collecting cases); Owens v. Stifel, Nicolaus & Co., Inc., 2013 WL 6389035, 10 (M.D.Ga. 2013).
While a client cannot be compelled to answer the question, "what did you say to your attorney, " he may not refuse to disclose any relevant non-privileged document or fact within his knowledge merely because he incorporated a statement of such fact into his communication to his attorney or attached the document to an email or letter to the attorney. See Lee, 2014 WL 2618537; Northern Valley Communications, L.L.C. v. Qwest Communications Corp., 2010 WL 3672233, *4 (D.S.D.2010)("simply including an attorney in a communication will not render an otherwise discoverable document protected by the privilege"); McCullough, 2014 WL 2514623, *3 ("And simply copying a lawyer on an otherwise non-privileged communication will not transform the non-privileged document into a privileged one.")(collecting cases).
The Second Circuit's opinion in United States v. Walker, 243 Fed.Appx. 621 (2d Cir.2007) is instructive:
The same is true as to the remainder of the 170 documents, which were composed chiefly of various form printouts summarizing PCA's contracts. Even assuming the documents (or the handful of corrections and clarifications handwritten thereon) were work product or were privileged, they contain solely factual information about PCA's business, and shed no light on Walker's confidential communications with counsel or defense strategy. Moreover, we agree with the district court that these documents were neither work product nor attorney-client communications. The attorney-client privilege protects from disclosure the contents of confidential attorney-client communications, but does not prevent disclosure from the client's records the underlying factual information included in attorney-client communications. See Upjohn Co. v. United States... . For this reason, putting otherwise non-privileged business records (like the contract summaries here) in the hands of an attorney-or printing out such records for an attorney to review-does not render the documents privileged or work product. See Ratliff v. Davis Polk & Wardwell, 354 F.3d 165, 170-71 (2d Cir.2003) ("Documents obtain no special protection because they are housed in a law firm; [a]ny other rule would permit a person to prevent disclosure of any of his papers by the simple expedient of keeping them in the possession of his attorney.')....
243 Fed.Appx. at 624. As the Fifth Circuit more succinctly put it, if a document is discoverable in the client's hands, it does not become less discoverable when passed to an attorney's hands. United States v. Robinson, 121 F.3d 971, 975 (5th Cir. 1997).
These basic and overarching principles are repeatedly ignored by Caterpillar. Indeed, we are constrained to say that a good number of its objections to the special master's report are mystifying.
Even communications from counsel do not become automatically immune from discovery as work product on the theory that the selection and compilation of documents would show counsel's theories. It is only when there is "a real, rather than speculative, concern that counsel's thought processes in relation to pending or anticipated litigation will be exposed through disclosure of the compiled documents" that the communication becomes protected work product. In re Grand Jury Subpoenas, 318 F.3d at 386. Editorial changes or contributions by a lawyer do not necessarily qualify under the attorney/client privilege. Musa-Muaremi v. Florists' Transworld Delivery, Inc., 270 F.R.D. 312, 314-16 (N.D.Ill.2010).
Documents prepared for business purposes, rather than seeking legal advice, are not protected by the privilege. Miller UK Ltd. v. Caterpillar, Inc., ___ F.Supp.2d ___, ___, 2014 WL 67340, *11 (N.D.Ill.2014). Of course, legal advice relating to business matters is protected. Sullivan v. Alcatel-Lucent USA, Inc., 2013 WL 2637936, *2 (N.D.Ill.2013). See also Sandra T.E. v. South Berwyn School Dist., 600 F.3d 612, 620 (7th Cir.2010). And finally, documents or information intended to be or given to a third party (such as Mr. Miller) are not privileged. United States v. Lawless, 709 F.2d 485, 487 (7th Cir.1983); United States v. Schussel, 291 Fed.Appx. 336, 347 (1st Cir.2008). See also United States v. Crane, 840 F.2d 18 (6th Cir.1988); Miller UK Ltd., 2014 WL 67340, 11.
Because the privilege, like all testimonial privileges and all exclusionary rules, makes the search for truth more difficult by preventing disclosure of what is often exceedingly probative information, it is narrowly construed and is limited to those instances where it is necessary to achieve its purposes. See Pierce County, Wash. v. Guillen, 537 U.S. 129, 144-145 (2003); Fisher v. United States, 425 U.S. 391, 403 (1976)("Whatever their origins, these exceptions to the demand for every man's evidence are not lightly created nor expansively construed for they are in derogation of the search for the truth."); Leonard-Allen, 739 F.3d at 952; McCullough v. Fraternal Order of Police, Chicago Lodge 7, 2014 WL 2514623, 3 (N.D.Ill.2014)(collecting cases). This core principle is utterly ignored by all too many of Caterpillar's objections.
The burden is on the party invoking the privilege to establish that it applies to each particular document. Shaffer v. American Medical Ass'n, 662 F.3d 439, 446 (7th Cir. 2011). Even though conclusory assertions do not suffice to carry this burden, United States v. BDO Seidman, 337 F.3d 802, 811 (7th Cir.2003), such assertions appear to have made up the bulk of Caterpillar's showing to the Special Master. Also, the fact that documents are labeled "Confidential" or "Protected by Attorney-Client Privilege" - as nearly all the emails in this cache are - is all but meaningless, contrary to Caterpillar's thinking. See Judson Atkinson Candies, Inc. v. Latini-Hohberger Dhimantec, 529 F.3d 371, 388 (7th Cir. 2008) and cases cited at 1-2, supra.
To facilitate the court' review of the pertinent documents, Caterpillar has aggregated related and repetitive documents together. This has substantially assisted the court, and the aggregated numbering sequence used by Caterpillar will be used here. When a district court reviews the findings and conclusions of a special master, the general rule is that the district court steps into the shoes of an appellate court and employs the same standards that an appellate court uses to review a lower court opinion; in other words, it reviews a special master's legal conclusions de novo and accepts findings of fact unless they are clearly erroneous. Cook v. Niedert, 142 F.3d 1004, 1009-10 (7th Cir. 1998).
Log Nos. 25, 1094, 1095: The only portion of these exhibits which is privileged is that part of the sentence that states "the legal opinion" and ends with the word "pin." The balance of the documents are not privileged and the objections are overruled.
Log. Nos. 26, 30, 31, 32, 33, 43, 44, 98, 142, 411, 419, 420, 421, 436, 437, 840, 841, 858, 861, 862, 863, 864, 865, 866: The objection to these documents is overruled. In addition, one of the notes reflects that the information checked by Tim Kinskey in legal was to be provided to Mr. Miller at the end of an anticipated meeting. The bulk of these documents appear to address production and inventory control issues, rather than any legal matters.
Log Nos. 29, 35, 147, 149, 150, 418, 425, 857, 869, 875, 879, 880
As is clear from the Special Master's report and Caterpillar's subsequent arguments on appeal, the problem with this group of documents - like several others - is that Caterpillar was too cryptic in its presentation to the Special Master and failed to meet its burden of establishing the applicability of the privilege to each document. The documents in this group involve a letter Caterpillar sent to Miller, informing Miller that Caterpillar would be coming out with its own coupler but wanted to maintain its relationship with Miller. As the Special Master noted, there is no indication of who drafted the letter, and it does not reflect legal advice. The notes in the documents reflect no more than editorial changes - changes like "product line" to "products" or "contract" to "agreement." Such changes are not protected. United States Postal Service v. Phelps Dodge Refining Corp., 852 F.Supp. 156 (E.D.N.Y. 1994); Musa-Muaremi v. Florists' Transworld Delivery, Inc., 270 F.R.D. 312, 316 (N.D.Ill. 2010).
Log Nos. 37, 40, 97, 140, 141, 414, 416, 761, 845, 853, 855
As with the previous group of documents, Caterpillar failed to meet its burden before the Special Master. And again, the changes Caterpillar seeks protection for are cosmetic - a change of "our own" to "our" or the removal of a "Thank you." No matter how latitudinarian one's view of the attorney/client privilege might be, it is not broad enough to embrace the documents in this category.
Log No. 45
This document reflects nothing more than a cancellation of a meeting and the fact that Caterpillar wondered what Miller's reaction would be to Caterpillar's introduction of its own coupler. The observation made in the entry above applies here.
Log Nos. 59, 1516
The documents in this category consist of a PowerPoint presentation with pictures of couplers and copies of a patent next to certain of the pictures. The pictures, of course, are not protected any more than is the copy of the patent that appears on certain of the pages of pictures of the couplers, even if the emails were. Lee v. Chicago Youth Ctrs., 2014 WL 2618537, at *4 (N.D.Ill. 2014). But they are not; they are emails between engineers. They do not reflect the giving or receiving of confidential legal advice. They reflect opinions of one engineer offered to another.
Log Nos. 72, 171, 270, 341, 447, 497, 789, 791, 1004
As with other categories of documents, Caterpillar's issue with the Special Master's ruling stems from its own conclusory presentation before the Special Master. Moreover, the documents in this group appear to be nothing more than copies of a cover email that does not reflect the substance of any confidential communication. The mere fact that a person is or has seeked legal advice is not privileged. United States v. Robinson, 121 F.3d 971, 975 (5th Cir. 1997); S.S. v. Leatt Corp., 2014 WL 356938, 6 (N.D.Ohio 2014); United States ex rel. Barko v. Halliburton Company, 2014 WL 6657103, 3 (D.D.C.2014); 8 Wigmore on Evidence § 2309 (McNaughton Rev.1961) (although a communication of "the place of custody of a document may be a part of a communication... and may also be a confidential one... ordinarily it will be neither").
Log Nos. 75
Number 75 is an email from Caterpillar's general manager to Caterpillar's CEO with copies to counsel. The memorandum does not reflect legal advice but rather an assessment of why Caterpillar's coupler is different. (i.e., "Caterpillar does not use the same internal configurations."). Also, the recommendation that "we would ask that you not offer a reply" to Keith Miller's latest correspondence is not from the lawyers, but from Mr. Tevebaugh. The email, itself, says that the response is from the "engineering team" and from legal. But the memo makes no distinction. It is obvious that the bulk of the memo consists of evaluations from engineering at Caterpillar and does not give legal advice from lawyers.
Log Nos. 73, 172, 271, 342, 448, 498, 675, 676, 790, 792, 1005, 1528
This category is another example of Caterpillar simply failing to provide enough information to the Special Master. Indeed, Caterpillar does not even describe Log No. 73 accurately - it is described as an email chain, while it's actually a single letter. The letter is Caterpillar's retort to Miller's accusations. The documents are not protected.
Log Nos. 76, 338, 443, 671, 672, 673, 780, 1000
The documents in this group are copies of an email that reflects no legal advice or confidential communications. They say nothing more than Caterpillar is at odds with Miller and was putting it in the hands of its legal department. The documents are not protected.
Log Nos. 78, 1060
These documents deal with business rather than legal concerns. In them, the production manager says that customers will be given the choice of Caterpillar's K or J lines. The documents are obviously not protected.
Log No. 87
Arguably, this is an email to in-house counsel, among others, asking for their thoughts on a proposed statement. However, the email did not simply go to a lawyer but to a number of others at Caterpillar also seeking their input. Thus, the email is not privileged. A response from the lawyer might be protected but that's not what is involved here.
Log No. 93
This is another instance of Caterpillar failing to meet its burden of establishing the applicability of the privilege before the Special Master. That is, the showing made before the special master was superficial and uninformative. Now there is a new expanded explanation. The problem, of course, is that Caterpillar cannot now augment or elaborate on an under-inclusive showing before the special master, any more than a party can make an argument on appeal that was not made before the district court or can advance an argument before a district judge not advanced before a magistrate judge to whom a matter was originally referred. The Glidden Co. v. Kinsella, 386 Fed.Appx. 535, 544, 2010 WL 2803944, 8 (6th Cir. 2010)(collecting cases).
Log Nos. 103, 161, 883, 954
These documents evince the same problem with Caterpillar's showing before the Special Master as previous group. This is a letter from Caterpillar to Miller about handling warranty claims is not privileged.
Log Nos. 111, 112, 113, 923, 993
The contested emails are arguably protected as they involve Caterpillar's in-house counsel.
Log No. 144
As the Special Master states, this appears to be a letter Caterpillar sent to Miller. There is nothing to indicate it is a draft or not a final version. Incredibly, Caterpillar argues that it is "immaterial" that the letter was sent to Miller but, obviously, that means the letter was not confidential. Sandra T.E. v. South Berwyn School Dist. 100, 600 F.3d 612, 618 (7th Cir. 2010).
Log Nov. 199
This document is another cover email, and there is nothing confidential about it. It does nothing more than announce, "[h]ere is a communication that would update dealers on the case status..." While it is being sent to in-house counsel, again, the mere fact that advice might be being sought is not privileged. ...