US: When is attorney-client privilege waived?
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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

US: When is attorney-client privilege waived?

Sponsored by


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.


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

more from across site and ros bottom lb

More from across our site

Managing IP’s senior reporter Rani Mehta interviewed attendees at the INTA Annual Meeting in Atlanta about how they made the most out of their first day
A team of lawyers who joined Norton Rose Fulbright from Polsinelli say they were drawn to the firm's global platform
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers say a ruling concerning liability for trademark infringement could give company directors an easy way out and create litigation uncertainty
The LMG Life Sciences Awards announces the winners for the 5th annual awards
Some US lawyers have strengthened their connections with European firms as they help clients determine whether the UPC will become a 'centre of gravity'
In the latest episode, the team discusses the battle to take control of listed company and IP business Qantm IP, and looks at some recent hiring trends
To mark Mental Health Awareness Week, lawyers explain how they manage their mental health, and how they pluck up the courage to ask themselves difficult questions
IP lawyers unpick a case heard at the CJEU’s Grand Chamber this week that could potentially create a new world for litigation in Europe
A lawyer who replied to a cease-and-desist letter with just two words has shown others how to deal with vexatious infringement allegations
Gift this article