Magistrate Judge Gorenstein: Attorney-Client Communications That Include Outside PR Firm Are Not Privileged

In an opinion this week, Magistrate Judge Gorenstein ruled that sharing attorney-client privileged communications with an outside public relations firm resulted in a waiver of the attorney-client privilege.  The plaintiff, Universal Standard, a manufacturer of "size-inclusive" clothing, filed a complaint against Target alleging trademark infringement.  After discovery, Target filed a motion asking the court to find that certain emails involving the plaintiff and its outside public relations firm, BrandLink, had been inappropriately listed on the plaintiff's privilege log. The court held that none of the exceptions for applying the attorney-client privilege to third-party communications were appropriate.  First, the court held that the communications with the PR firm were not "necessary" for outside's counsel representation:

Universal Standard did not need employees of BrandLink to communicate with their attorneys. The particular emails at issue involved discussions regarding a public relations strategy surrounding the filing of the instant lawsuit and in particular whether a press release should issue.  Any questions that arose regarding the propriety of a press release, however, could simply have been communicated to the attorneys by Universal Standard without Brandlink’s involvement.  Because BrandLink did not serve to improve counsel’s understanding of Universal Standard’s request for legal advice, Universal Standard cannot rely on this line of cases to establish a waiver exception.

The court also ruled that the PR firm was not a "functional equivalent" of the plaintiff's employee, and thus not covered by the attorney-client privilege.  In doing so, the court found that the PR firm's "particular and unique expertise in the area of public relations" was "of no great significance" in determining whether the PR firm was the functional equivalent of the plaintiff's employee. Finally, the court found that the PR firm was not used to aid in legal tasks:

The public relations consultant here was hired not by the attorney but by Universal Standard and was hired for business purposes.  There is no evidence that the purpose of the communications with BrandLink was to assist counsel in engaging in a legal task as opposed to allowing Universal Standard to make a decision about the nature of publicity that should be sought. The situation here is thus missing [a] critical element []: attorneys using a public relations consultant to implement a specific legal strategy that required the use of a public relations consultant.