All lawyers worry that waiving privilege protection for some communications might trigger a damaging subject matter waiver requiring disclosure of related communications. Such a subject matter waiver risk normally does not apply in the work product realm, but in the privilege context was once a serious threat. In some courts, even an inadvertent disclosure once apparently triggered such a subject matter waiver. But thankfully the law has forcefully moved in the opposite direction.
In UrthTech LLC v. Gojo Industries, Inc., defendant Purell hand sanitizer seller had attempted to resolve a dispute over patent ownership by sending the other company a memo “setting forth [its] legal and factual position” that had been written by its outside counsel and originally sent to its in-house counsel. Nos. 1:22-CV-6727 (PKC)(KHP) & 1:24-mc-00311 (PKC)(KHP), 2024 U.S. Dist. LEXIS 152798, at *15 (S.D.N.Y. Aug. 26, 2024). The other company claimed that disclosing that obviously privileged analysis triggered a subject matter waiver. Southern District of New York privilege guru, Magistrate Judge Katherine Parker, rejected that argument — stressing that “when a privileged communication is disclosed outside of a litigation or extrajudicially, the scope of the waiver typically is limited to those matters actually revealed” — citing In re Von Bulow, 828 F.2d. 94, 103 (2d Cir. 1987). Judge Parker noted that the company’s position “could have just as easily been sent in a letter . . . as the assertions are of the type typically exchanged pre-litigation and in litigation and in settlement.” Id. at *15. Judge Parker also emphasized that defendant Gojo “is not relying on the memo in this litigation or using the memo as a shield or sword.” Id. at *16.
Judge Parker’s articulation of the sword-shield analogy reflects the clear current thinking in all or nearly all courts. On the next day, another significant court took the same approach and added an additional factor that curtails even further the risk of a subject matter waiver. Next week’s Privilege Point discusses that case.