US: When is attorney-client privilege waived?

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US: When is attorney-client privilege waived?

Sponsored by

katten.png

In Universal Standard Inc. v Target Corp. (S.D.N.Y., No. 18 Civ. 6042), the US District Court for the Southern District of New York addressed the question of whether sharing attorney-client privileged communications with a public relations firm destroys that privilege. The court found that Universal Standard waived the privilege by including its public relations firm, BrandLink, in emails discussing strategy related to the lawsuit.

By way of background, Universal Standard is a "size-inclusive clothing brand," owning a federally-registered 'Universal Standard' trademark. Universal Standard sued Target for trademark infringement and unfair competition, alleging that Target wilfully infringed upon the Universal Standard mark by offering for sale its own line of women's clothing called 'Universal Thread,' and allegedly using Universal Standard's brand concept. Universal Standard claimed that individuals would mistake Target's line of clothing for the "genuine high-quality Universal Standard products," damaging its reputation.

Target had raised questions about the content of specific emails, and, in response, counsel for Universal Standard asserted that the emails were privileged. Target disagreed, arguing (i) that Universal Standard waived any privilege as to the emails by failing adequately to describe the communications on its initial privilege log; (ii) that any attorney-client privilege was waived when the documents were voluntarily "disclosed to third-party BrandLink"; and (iii) that the communications are not protected attorney work-product.

Rejecting various arguments made by Universal Standard where third-party disclosure did not waive privilege, the court concluded that that the communications at issue were not protected by the attorney-client privilege. The court explained that information shared with a third party with specialised knowledge required to facilitate understanding between attorney and client (e.g. an accountant or translator) can preserve the attorney-client privilege. However, in the matter at hand, the emails involved public relations strategy regarding the lawsuit, which Universal Standard could have relayed directly to attorneys without the need for BrandLink's assistance. The court also found that the emails were not protected by the work product doctrine, because according to the court, Universal Standard provided only a "conclusory" argument that the emails were documents prepared in anticipation of litigation.

This case serves as a reminder to be thoughtful about who is included in communications between client and counsel.

ash.jpg
jakubovic.jpg

Karen Artz Ash

Jerry Jakubovic


Katten Muchin Rosenman LLP 

575 Madison Avenue

New York, NY 10022-2585

United States

Tel: +1 212 940 8554

Fax: +1 212 940 8671

karen.ash@kattenlaw.com

www.kattenlaw.com



more from across site and SHARED ros bottom lb

More from across our site

The insensitive reaction to a UK politician crying on TV proves we have a long way to go before we can say we are tackling workplace wellbeing
Adrian Percer says he was impressed by the firm’s work on billion-dollar cases as well as its culture
In our latest interview with women IP leaders, Catherine Bonner at Murgitroyd discusses technology, training, and teaching
Developments included an update in the VAR dispute between Ballinno and UEFA, the latest CMS updates, and a swathe of market moves
The LMG Life Sciences Americas Awards is thrilled to present the 2025 shortlist
A new order has brought the total security awarded to a Canadian tech company to $45 million, the highest-ever by an Indian court in an IP case
Andrew Blattman reflects on how IP practices have changed and shares his hopes for increased AI use and better performance on the stock market
The firm said major IP developments included advising on a ‘landmark’ deal involving green hydrogen production, as well as two major acquisitions
The appointments follow other recent moves in the European market as firms look to bolster their UPC offerings
Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
Gift this article