433 F.Supp.3d 804
E.D. Va.2020Background
- Eight defendants indicted for conspiracy to commit criminal copyright infringement via Jetflicks, an online streaming service; willfulness is an element the government must prove.
- Government alleges defendants obtained infringing copies, processed and streamed them to subscribers; two defendants already pleaded guilty to the conspiracy count.
- FBI interviewed defendant Dallmann (Nov. 16, 2019); he reported paying an attorney $3,000 for advice and referenced a privileged memorandum that FBI seized but has not reviewed.
- Dallmann told agents the attorney advised him to ignore an MPAA cease-and-desist; government also learned an attorney may have visited Jetflicks in 2012–13 and opined on legality.
- Government moved to (1) require advance notice and discovery if defendants intend to assert an advice-of-counsel defense and (2) declare Dallmann waived privilege over the attorney memorandum; defense counsels resisted pretrial disclosure.
- Court granted notice/discovery requirement in part—defendants must notify and produce related discovery if asserting advice-of-counsel, but only ten days before trial—and denied the privilege-waiver request without prejudice for lack of record support.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether court may require pretrial notice/discovery of advice-of-counsel defense | Gov: courts have inherent authority; advance notice avoids mid-trial delays and permits review of privileged material | Defs: Rule 12 enumerates specific notice defenses; forcing disclosure impairs trial strategy and privilege | Court: Yes—district court may order pretrial notice/discovery under inherent authority; but notice limited to 10 days before trial |
| Timing of any required notice/discovery | Gov: requested early notice (Jan. 6, 2020) and discovery | Defs: opposed early disclosure; uncertainty whether they will assert defense | Court: Denied early schedule; notice/discovery must be provided only 10 days prior to trial |
| Scope of attorney-client privilege waiver if advice-of-counsel asserted | Gov: assertion should waive privilege over memo and related communications | Defs: waiver not automatic; disclosure to FBI may not have revealed substance; crime-fraud not established | Court: Assertion of the defense effects a limited waiver—as to communications/evidence relied on to establish the defense and materials that would undermine it—but no waiver found yet as to Dallmann's memo on current record |
| Whether Dallmann voluntarily waived privilege or crime-fraud exception applies | Gov: Dallmann told FBI about the memo and scheme; therefore privilege waived or crime-fraud exception applies | Dallmann: statements unknown in detail; no sufficient evidence of substantive disclosure or that exception applies | Court: Denied; government failed to establish specific disclosures or prima facie crime-fraud showing; motion denied without prejudice |
Key Cases Cited
- United States v. Liu, 731 F.3d 982 (9th Cir. 2013) (willfulness element in criminal copyright cases)
- United States v. Westbrooks, 780 F.3d 593 (4th Cir. 2015) (advice-of-counsel can negate willfulness; burden-of-production principle)
- United States v. Powell, 680 F.3d 350 (4th Cir. 2012) (consolidation of elements for advice-of-counsel to full disclosure and good-faith reliance)
- United States v. Jones, 696 F.2d 1069 (4th Cir. 1982) (selective disclosure of attorney-client communications waives privilege)
- United States v. O'Connor, 158 F. Supp. 2d 697 (E.D. Va. 2001) (elements for advice-of-counsel defense)
- United States v. Sligh, 142 F.3d 761 (4th Cir. 1998) (burden-of-production for affirmative defenses)
- United States v. Thaggard, 477 F.2d 626 (5th Cir. 1973) (advice of counsel and good faith are jury-considerations on intent)
- United States v. Gonzalez, 58 F.3d 506 (10th Cir. 1995) (no burden to prove affirmative defenses beyond reasonable doubt)
- Zolin v. United States, 491 U.S. 554 (1989) (in camera review procedures for privilege disputes)