275 F.R.D. 43
D. Mass.2011Background
- Bear Republic filed five-count complaint against Central City; counts include Lanham Act claims, common law unfair competition, state law trademark/trade dress claims, and Massachusetts Chapter 93A claim.
- Central City produced documents and disclosed Staples as an individual likely to have information, including his photographs, video, menu, and advertisement materials related to Central City’s RED RACER and Bear Republic’s RACER 5 and RED ROCKET in Massachusetts.
- Bear Republic issued four subpoenas to James B. Staples and his company seeking deposition and production of materials; Central City later contends Staples is not a discoverable witness and work-product protection may apply.
- Central City informed Bear Republic that Staples was not likely to have discoverable information and that it did not plan to call him; Central City then moved to quash subpoenas on February 14, 2011.
- The court distinguished work-product protection from attorney-client privilege and evaluated Rule 502(a) waivers, determining that disclosure could waive protection for undisclosed information on the same subject matter in a way that is intentional.
- The court partially granted the motion to quash to limit disclosure to the facts Staples learned and the circumstances of obtaining the photographs, videos, menu, and related communications, while allowing deposition on those facts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Timeliness and impact of Staples disclosures | Bear Republic argues subpoenas timely given late-stage disclosure of Staples. | Central City contends discovery was untimely and Staples not likely to have discoverable information. | Not dispositive; court inferred sufficient basis to allow limited discovery. |
| Discovery of facts learned by investigator | Facts learned by Staples are discoverable under Laxalt and related authority. | Work-product protection may shield such facts if prepared in anticipation of litigation. | Facts Staples learned are discoverable; work-product protection may shield prepared documents; factual material is deductible. |
| Waiver of work-product protection under Rule 502(a) | Disclosures of Staples' materials constitute a waiver of work-product for the related undisclosed facts. | There is a waiver for the disclosed items but not for all related materials; the scope must be defined. | There is a waiver of undisclosed information on the same subject matter, but scope is limited to the disclosed items and associated facts, not beyond. |
| Scope of 'same subject matter' and 'in fairness' | Subject matter includes all materials obtained and their context; broad fairness requires broad disclosure. | Subject matter should be limited; fairness analysis should be narrowed to what is reasonably related to disclosed items. | Subject matter includes photographs, videos, menu, and related work-product; the 'in fairness' standard confines the scope to circumstances surrounding those items. |
| Relation to Rule 502 advisory history and intentionality | Intentional disclosure qualifies as waiver; advisory notes support broader interpretation. | Intentionality suffices; no need for 'selective, misleading, unfair' conduct to trigger broader waiver. | Rule 502(a) requires intentional waiver; advisory notes are not controlling; intentional disclosure leads to subject-matter waiver in the defined scope. |
Key Cases Cited
- Laxalt v. McClatchy, 116 F.R.D. 438 (D. Nev. 1987) (disclose-of-work-product facts may be discoverable; avoid broad tactical inquiries)
- Pittman v. Frazer, 129 F.3d 983 (8th Cir. 1997) (disclosure of some work-product may not destroy protection for other documents of same character (subject to waiver rules))
- United States v. Dentsply International, Inc., 187 F.R.D. 152 (D. Del. 1999) (work-product protections and investigations by defendants are governed by Rule 26(b)(3))
- Nesse, etc. v. Pittman, 202 F.R.D. 344 (D.D.C. 2001) (work-product protection considerations in discovery)
- Alexander v. FBI, 192 F.R.D. 12 (D.D.C. 2000) (work-product protections and discovery)
- Athridge v. Aetna Cas. & Sur. Co., 184 F.R.D. 200 (D.D.C. 1998) (guidance on work-product and discovery)
- In re United Mine Workers of America Employee Benefit Plans Litig., 159 F.R.D. 307 (D.D.C. 1994) (illustrates concept of subject matter waiver in certain contexts)
- United States v. Carey, 120 F.3d 509 (5th Cir. 1997) (advisory notes not controlling; rule governs)
- In Re Sealed Case, 141 F.3d 337 (D.C. Cir. 1998) (considerations on Rule 502 and waivers)
- Poland, 533 F.Supp.2d 199 (D. Me. 2008) (discusses scope and implications of Rule 502 waivers)