Weil Ceramics & Glass, Inc. v. Work

110 F.R.D. 500, 1986 U.S. Dist. LEXIS 29240
CourtDistrict Court, E.D. New York
DecidedFebruary 19, 1986
DocketNos. 83 CV 4149, 84 CV 1964
StatusPublished
Cited by22 cases

This text of 110 F.R.D. 500 (Weil Ceramics & Glass, Inc. v. Work) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Weil Ceramics & Glass, Inc. v. Work, 110 F.R.D. 500, 1986 U.S. Dist. LEXIS 29240 (E.D.N.Y. 1986).

Opinion

SHIRA A. SCHEINDLIN, United States Magistrate.

I. FACTUAL BACKGROUND

Lladro S.A. is a Spanish corporation, which manufactures porcelain products, including porcelain figurines. The figurines are manufactured in accordance with designs prepared by Disenos Artísticos E Industriales S.A. (“DAISA”), another Spanish corporation. DAISA owns copyrights, both U.S. and foreign, on many of the Lladro figurines. Weil Ceramic & Glass, Inc. (“Weil”), a New Jersey corporation, imports and distributes these figurines in the United States and allegedly owns the United States trademark rights and the registration for the Lladro trademark. These three corporations are related. Each is wholly owned by Sodigei, S.A., a Spanish corporation, which, in turn, is owned by the Lladro brothers. Karen-Leslie Co., Inc., (“Karen-Leslie”) a New York corporation, is engaged in the acquisition and resale of hard goods, including Lladro porcelain figurines. Defendants Edward and Dolores Work are officers of Karen-Leslie.

On September 19, 1983, DAISA filed suit against Karen-Leslie, and Edward and Dolores Work, charging copyright infringement. On May 3, 1984, Weil also filed suit against the same defendants claiming trademark violations. Plaintiffs allege that defendants have violated plaintiffs’ copy- ' rights to Lladro figurines by importing these figurines into the United States from abroad for the purpose of resale, without the authority of the copyright owner. Plaintiffs similarly allege that their trademark rights are infringed by the importation of the Lladro figurines without the authority of the owner of the United States [502]*502trademark. See Plaintiff’s Opposition to Defendants’ Motion for Summary Judgment at 1-2. In both cases, which have now been consolidated, defendants have denied the infringement charges and have asserted a counterclaim accusing plaintiffs of violating the antitrust laws by unlawfully restricting the trade in Lladro figurines.

Four dispositive motions have already been made in this extended and taxing litigation. Plaintiffs moved under Fed.R. Civ.P. 12(b)(6) and 56 to dismiss the antitrust counterclaim. Both motions were denied. Plaintiffs then unsuccessfully moved for summary judgment on their trademark infringement claims. Finally, defendants have moved for summary judgment on both the copyright and trademark infringement claims. The last two motions for summary judgment are awaiting decision.

A great deal of discovery has taken place by all parties during the pendency of these lawsuits. In the course of producing documents, plaintiffs DAISA and Weil have refused to produce a number of documents asserting either the attorney-client privilege and/or the attorney work product doctrine. At defendants’ request, this court conducted in camera review of close to 200 documents as to which plaintiffs claim a privilege.

I have adopted the same document classification system employed by defendants, in its letter listing the documents produced, but have numbered the documents within each category.

I. Communications between Attorney and Clients

According to plaintiffs, documents in this category include “communications directly between plaintiffs, corporate clients, and their attorneys acting in their professional capacity and concern the seeking or provision of legal advice ...”

II. Communications Protected by Work-Product Privilege

As to this category of documents, plaintiffs argue that “defendant has not made any showing of substantial need and undue prejudice to justify their production____”

III. Privileged Communications of Questioned or Tangential Relevance

Plaintiffs question the relevance of these documents but do not assert that they are privileged. Rather they appear concerned that production of these documents might result in an inadvertent waiver of the privilege to other documents.

II. DISCUSSION
A. Commonality of Interest Among Plaintiffs and Counterclaim Defendants

One issue must be addressed at the outset. Many of the documents reveal correspondence between Lladro and DAISA or DAISA and Weil. Often counsel for one corporation wrote to counsel for another. In order for these communications to be privileged, there must be a “community of interest” between the parties asserting the privilege. A community of interest exists where persons or corporations have an identical legal interest with respect to the subject matter of a communication between an attorney and a client. Duplan Corporation v. Deering Milliken, Inc., 397 F.Supp. 1146, 1172 (D.S.C.1975).

In Duplan, the court gave extensive treatment to the issue of waiver of both the attorney-client and work-product privileges in the context of sharing materials covered by these privileges among a number of separate corporations, both parties and non-parties. The situation with regard to work product material appears to be well-settled. “The sharing of information between counsel for parties having common interests does not destroy the work product privlege, during the course of the litigation.” Id. at 1172 (citing Transmirra Products Corp. v. Monsanto Chemical Co., 26 F.R.D. 572, 578 (S.D.N.Y.1960).

The attorney-client privilege is a narrower privilege precisely because its protection is absolute. Any breach of confidentiality between attorney and client, with limited exceptions, constitutes a waiver. One recognized exception to this rule is the “com[503]*503mon-defense rule” which allows counsel for co-defendants to share privileged information without fear of waiver. See United States v. McPartlin, 595 F.2d 1321, 1336 (7th Cir.) cert. denied, 444 U.S. 833, 100 S.Ct. 65, 62 L.Ed.2d 43 (1979) (cases cited therein). Another exception is the “community of interest” rule which might extend to non-parties. This latter rule is limited to those situations involving either the legal duty to defend another entity or the common interest arising from a client transaction between two separate entities which are represented by the same attorney. Thus, in Duplan, one corporation which was not a party was covered by the community of interest rule because it was required to act as legal patent advisors to two of the parties. Id. at 1175. Thus, communications to or from that corporation were privileged.

Another non-party, in Duplan, the exclusive U.S. licensee under the patents in suit was not found to be party to the “community of interest”. Although one of the parties did have a duty to defend this corporation, the duty was not exercised because the corporation was not sued. Thus, communications of privileged material to that corporation constituted a waiver.

Here, communications between Lladro, DAISA and Weil are privileged both as a legal matter and a formal matter. All three of these corporations are named as co-defendants and co-conspirators in an antitrust counterclaim asserted against them by Karen-Leslie. Thus the “common-defense” rule allows a free exchange of privileged matter between these parties. Secondly, the “community of interest” rule also applies.

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Bluebook (online)
110 F.R.D. 500, 1986 U.S. Dist. LEXIS 29240, Counsel Stack Legal Research, https://law.counselstack.com/opinion/weil-ceramics-glass-inc-v-work-nyed-1986.