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Court Grants TiVo’s Motion to Compel Clawed Back E-Mail and Sanctions Defendant AT&T For Failing to Justify That E-Mail Was Privileged

Plaintiff TiVo brought an emergency motion to compel production of an e-mail that defendant AT&T produced and then clawed back pursuant to a protective order agreed to by the parties. During a deposition, TiVo marked an e-mail as an exhibit and questioned the deponent for several minutes about the e-mail before AT&T’s counsel demanded that TiVo return the e-mail. AT&T’s counsel explained that the e-mail may be subject to a common interest agreement with a third party. TiVo returned the e-mail pursuant to the parties’ protective order.

TiVo subsequently moved to compel the e-mail arguing that it did not contain attorney-client privileged or work product information. TiVo pointed out that neither the sender nor the recipient are attorneys and the subject matter of the email did not contain legal advice. In addition, the e-mail was created for a business purpose and not for purposes of litigation and therefore could not be work product. TiVo also argued that the e-mail was discoverable under the crime-fraud exception because the contents of the e-mail constitute prima facie evidence of an antitrust violation.

AT&T asserted that the e-mail contains line after line of attorney-client privileged information. AT&T further argued that a document does not need to be written by or addressed to an attorney to be protected by the attorney-client privilege because when the client is a corporation, attorney-client privileged documents may be transmitted between non-attorneys involved in corporate decisionmaking so that the corporation may act on the attorney’s advice. AT&T also argued that AT&T and a third-party corporation entered into a common interest and joint defense agreement prior to the sending of the e-mail.

The district court found that, “for the common interest doctrine to apply to the Email, the Court must first find that the Email is protected under the attorney-client privilege.” The district court reviewed the e-mail in camera and concluded that it was not privileged. “As the parties have stated, neither the author nor the recipient of the Email are licensed attorneys. AT&T has not identified for the Court what information contained in the Email is privileged nor has AT&T identified the source of the privileged information. The declaration submitted by AT&T in support of its response also suffers from the those same defects in that it does not identify privileged statements nor does it identify the source of the information conveyed in the statement.”

The district court also determined that it was AT&T’s burden, “as the producing party, to show that the Email is protected under the attorney-client privilege. AT&T has not met its burden. Accordingly, the Court finds that the Email is not protected by attorney-client privilege. Because the Court has found that the Email is not protected by attorney-client privilege, the Court does not need to reach the issues of whether the common-interest doctrine applies, whether or not the privilege has been waived, or if the Email is discoverable under the crime-fraud exception.”

The Court also ordered AT&T to pay TiVo’s reasonable costs, including attorneys’ fees, incurred in making this Emergency Motion to Compel.

Tivo, Inc. v. AT&T Inc., Case No. 2:09-CV-259 (DF) (E.D. Tex. Dec. 27, 2011)

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