Recent Cases: Fifty-Six Hope Road

Privilege logs have long been the bane of associates and paralegals. By increasing the number of potentially privileged documents by an order of magnitude or more, e-discovery has only made this worse. Judges have begun to try to deal with the problem, and sometimes in surprising ways.

Fifty-Six Hope Road Music v. Mayah Collections
2:05 VC 01059, 2007 WL 1726558 (D. Nev. June 11, 2007)

Facts and issues

A recent case, Fifty-Six Hope Road Music v. Mayah Collections, illustrates the burdens privilege logs can create in the e-discovery era. Fifty-Six Hope Road involved a trademark dispute over the license to use the Bob Marley name and image. Plaintiffs alleged that defendants sold T-shirts with the Bob Marley image that violated their trademarks.

A dispute over e-discovery arose: plaintiffs claimed that there were “hundreds and perhaps thousands” of privileged emails that made it “unduly burdensome and expensive” to prepare a privilege log listing each. Plaintiffs sought to pass along the costs of producing the log to defendants. The court denied the attempt to shift costs. Yet, the court also did something that would shock most seasoned litigators: it allowed plaintiffs to essentially avoid creating a privilege log. The court cited the Advisory Committee Notes for the 1993 amendments to Rule 26(b)(5):

…Details concerning time, person, general subject matter, etc., may be appropriate if only a few items are withheld, but may be unduly burdensome when voluminous documents are claimed to be privileged or protected, particularly if the items can be described by categories.

Instead, the court required plaintiffs’ counsel to submit an affidavit describing:

1. That Plaintiffs have made a diligent and good faith effort to locate and produce all relevant and non-privileged documents, including emails, responsive to Defendant's requests.
2. The number, or a reasonable estimate of the number, of the privileged email communications that exist.
3. That Plaintiffs have reviewed the alleged attorney-client or work-product privileged emails to ensure that relevant, non-privileged email communications are not being withheld from production and that Plaintiffs' counsel verifies that no arguably non-privileged email communications are being withheld.
4. In the case of emails as to which the attorney-client privilege is claimed, the affidavit or declaration should include a verification that the emails were not provided to persons other than the client and attorney. If such communications were provided to non-clients, and the attorney-client privileged is still claimed, then a privilege log…for each such communication should be provided. (citations omitted)
5. In the case of attorney-work product, the privilege may extend to persons other than the attorneys or the client, such as investigators (and for those provided to others, the same privilege log requirements as to (4) would apply).

What it means for you

The cost concerns behind the decision in Fifty-Six Hope Road are in many ways misplaced. Advanced e-discovery review and analysis systems can, with just a couple of clicks of a mouse button, create a report that would have otherwise required many arduous, and billable, hours to create by hand. While some final human review is prescribed and prudent, work that used to take days or weeks can now be done in seconds. As well, this technology can help you avoid privilege waiver if issues do arise. In the proposed amendments to Federal Rule of Evidence 502(b), which would force the use of the “middle ground” inadvertent waiver of privilege test, the Advisory Committee, in discussing the factors in that test, noted:

“Depending on the circumstances, a party that uses advanced analytical software application and linguistic tools in screening for privilege and work product may be found to have taken “reasonable steps” to prevent inadvertent disclosure.” Pages 9-10 of the Committee notes.