An Essential Guide to Attorney-Client Privilege ... - the Missouri Bar

An Essential Guide toPrivilege and Work ProIn-House PractitionerBY BRIAN J. CHRISTENSEN &BRET G. WILSON 1Brian J. ChristensenSpencer, Fane,Britt & Browne, LLPKansas CityBret G. WilsonKansas City82 / Journal of the MISSOURI BARI. IntroductionThe attorney-client privilege is one ofthe cornerstones of the attorney-clientrelationship. Attorneys depend on theprivilege to ensure full, uninhibiteddisclosure of critical information andimparting of candid advice. However,the protections of the privilege are morelimited than most attorneys realizeand can be lost through disclosure ofprivileged communications. Despitethe privilege’s long-standing history,conflicts still regularly arise regarding itsapplicability, and the law governing itsscope and waiver continues to evolve.In-house counsel face uniquechallenges with respect to the attorneyclientprivilege. They serve as lawyerand company employee, offer legal andbusiness advice, and communicate withnumerous persons at all levels of anorganization on topics both legal andnon-legal. Outside counsel generallyenjoy a bright line demarcation betweenattorney and client. By contrast, inhousecounsel often are perceived tobe – or are in fact – “the client” actingin a business role as well as in the role ofattorney.In the current era of close scrutinyof corporate conduct, many entitiesand their counsel are being placed inthe position of having to risk waiverof the privilege to satisfy auditors orregulators. 2 This article is intended toprovide in-house practitioners withguidance on how to avoid conduct inwhich they may unintentionally waivethe privilege. While this article focusesmost generally on applicable Missourilaw, the principles discussed are, for themost part, generally applicable in manyjurisdictions.II. The Attorney-ClientPrivilege and Work ProductDoctrines and TheirApplicability In the CorporateSettingA. The Attorney-Client PrivilegeGenerally“The attorney-client privilege isone of the oldest recognized privilegesfor confidential communications.” 3 It“protects ‘confidential communications. . . between an attorney and . . . client’concerning representation of theclient.” 4 “By assuring confidentiality,the privilege encourages clients to make‘full and frank’ disclosures to theirattorneys.” 5There is no privilege forcommunications simply because theyare made to or by an attorney. 6 Forthe attorney-client privilege to attachto a communication, there must bean actual relationship of attorney andclient in existence at the time of thecommunication, and that relationshipmust exist with respect to the subject

Attorney-Clientduct for thematter of the communication. 7 “[A]nattorney-client relationship is . . .established when the advice andassistance of an attorney is sought andreceived in matters pertinent to herprofession” 8 “from a lawyer who intendsto give [such] advice and assistance.” 9A formal retainer agreement is notnecessary. 10 “It is the client’s reasonablebelief that [the] attorney is representinghim” or her on the matters to which thecommunication relates and the client’sexpectation that the communicationwill remain confidential that forms the“basis for the privilege.” 11 Accordingly, acommunication is not privileged if it ismade in public 12 or within the hearingof third persons other than thosereasonably necessary to the transmissionof the communication. 13Under Missouri law, “the attorneyclientprivilege is to be construedbroadly to [promote] its fundamentalpolicy of encouraging uninhibited”attorney-client communications. 14The attorney-clientprivilege[, codified in§ 491.060(3), RSMo,]attaches to: (1) Informationtransmitted by [a] voluntaryact of disclosure; (2) between aclient and his [or her] lawyer;(3) in confidence; and (4) bya means which, so far as theclient is aware, discloses theinformation to no third partiesother than those reasonablynecessary for the transmissionof the information or forthe accomplishment of thepurpose for which it is to betransmitted. 15“All four . . . elements must bepresent for the privilege to apply.” 16If there is a question as to whetherone of the elements has been satisfied,courts review the surrounding facts andcircumstances to assist with determiningthe applicability of the privilege. 17The privilege encompasses both oraland written communications 18 as well asother kinds of communications passingbetween attorney and client by reasonof the attorney-client relationship. 19It protects only disclosure of thecommunications, not the “underlyingfacts by those who communicated withthe attorney.” 20“The privilege may be invoked byeither the attorney or the client, [but]it exists ‘for the benefit of the client.’” 21The privilege gives the client the right“to refuse to disclose, and to preventothers from disclosing, confidential”information passed between theattorney and the client. 22The attorney-client privilegeattaches to communications madeto an attorney’s agents if intendedfor transmission to the attorney. 23No privilege attaches, however, tocommunications between an attorney(or an attorney’s agent) and a thirdperson, even though made on behalf ofa client. 24 Similarly, unless it is clear thata third person is an agent of either thelawyer or the client, the privilege doesnot attach to communications betweenthe client and a third person employedby the client directly 25 or employedMarch-April 2012 / 83

on the client’s behalf by his or herattorney. 26Where information believed to beprivileged is sought during litigation,the party that asserts the privilegebears the burden of showing that itapplies. 27 Once the party establishesthat a particular communication isprivileged, that communication isabsolutely privileged and may not berevealed even if there is a substantialneed for it. 28B. The Work Product DoctrineGenerallyThe work product doctrine isdistinguishable from the attorneyclientprivilege. It is not a privilege.Rather, “[t]he work product [doctrine]precludes an opposing party fromdiscovering materials createdor commissioned by counsel inpreparation for [actual or anticipated]litigation.” 29 “While the attorneyclientprivilege protects disclosuresby the client to the attorney and isabsolute in” most situations, the workproduct doctrine is much less absolutein that it “‘is designed to prevent aparty from reaping the benefits of hisopponent’s labors . . . for the same ora related cause of action.’” 30A majority of courts have adopteda “because of” test for determiningwhether materials were “prepared inanticipation of litigation.” 31 Underthis approach, courts will find thework product doctrine applicableif, “in light of the nature of thedocument and the factual situation ofa particular case, the document canfairly be said to have been preparedor obtained because of the prospect oflitigation.” 32Rule 56.01(b), governing the scopeof discovery, codifies the work productdoctrine in Missouri. It provides inrelevant part: “Parties may obtaindiscovery regarding any matter, notprivileged, that is relevant to thesubject matter involved in the pendingaction.” 33 Blanket assertions of workproduct are insufficient to invokeits protection. 34 “The party seekingdiscovery has the burden of showing”that the sought after materials arerelevant. 35 Once that has been done,the party claiming the protections ofthe work product doctrine has theburden of showing that the doctrineis applicable. 36 “To invoke [workproduct] protection . . ., the partyopposing discovery must establish,through competent evidence, thatthe materials sought to be protectedare documents or tangible thingsprepared in anticipation of litigationor for trial, and were prepared by orfor a party or a representative of thatparty.” 37 “Competent evidence” mayinclude a privilege log and affidavitsfrom counsel. 38 The mere possibilityof litigation is also “not sufficientto invoke the doctrine”, 39 but it canbe invoked to prevent disclosure ofmaterials that relate to litigation thathas not been actually commenced. 40The doctrine does not encompasscommunications between an attorneyand opposing counsel. 41“The doctrine generally protectsboth tangible work product(consisting of trial preparationdocuments such as written statements,briefs, and attorney memoranda) andintangible work product (consistingof mental impressions, conclusions,opinions, and legal theories of anattorney . . . – sometimes called‘opinion work product’) fromdisclosure.” 42 “Protection of [opinion]work product exists independentlyof Rule 56.01(b)(3).” 43 The workproduct doctrine provides absoluteimmunity against the disclosure ofopinion work product, both tangibleand intangible. 44Non-opinion trial preparationmaterials may be discovered only ifthe party seeking discovery shows asubstantial need for the material inthe preparation of the case and aninability to obtain the substantialequivalent without undue hardship. 45Substantial need exists when thematerial for which discovery is soughthas a material influence on thelitigation. 46C. The Attorney-Client Privilegeand Work Product Doctrine in theCorporate SettingIt is now well-established thatthe attorney-client privilege appliesto corporations as well as toindividuals. 47 “In a corporate context,in-house counsel can serve as theclient when communicating withoutside counsel, or as ‘attorney-legaladvisor’ when communicating withpersonnel within the organization.” 48Communications with in-housecounsel in the role of attorney-advisorare afforded the same protection asoutside counsel, but communicationsconveying business (as opposed tolegal) advice are not protected bythe privilege. 49 Courts often requirethat in-house counsel make a “clearshowing” that communications weremade for a legal purpose, rather than abusiness purpose. 501. The Control Group Test,Upjohn and VariantsNot only must the communicationregard legal versus business advice,it must be made to a person withinthe company who is deemed a clientby the law. Historically, courtsapplying the attorney-client privilegeto corporations have struggledto determine which corporateemployees should be consideredthe client. Courts often have foundthe interaction between high-levelofficers and corporate counsel tobest resemble a traditional attorneyclientrelationship deserving ofprotection. These courts applied atest known as the “control group”test that designates only upper-levelmanagement as the client of thecorporate counsel, and thus only84 / Journal of the MISSOURI BAR

protects communications betweenupper-echelon management and theattorney. 51In 1981, the United States SupremeCourt rejected the control grouptest for federal cases in Upjohn Co.v. United States. 52 Upjohn createda less structured definition of thecorporate client, looking to whatmotivated the lawyer to seek out orto impart information. In place ofthe control group test, the Courtlaid out five factors to guide federalcourts in determining the validityof attorney-client privilege claimsfor communications between legalcounsel and lower-echelon corporateemployees: (1) the information isnecessary to supply the basis forlegal advice to the corporation orwas ordered to be communicated bysuperior officers; (2) the informationwas not available from “controlgroup” management; (3) “[t]hecommunications concerned matterswithin the scope of the employees’”duties; (4) the employees were “awarethat they were being questionedin order [for] the corporation” tosecure legal advice; and (5) “thecommunications were considered‘highly confidential’ when made”and kept confidential. 53 When theseelements are met, even a lowerechelon employee is considered aclient protected under the attorneyclientprivilege. 54 The test developedin Upjohn does not distinguishbetween an agent’s position or degreeof decision-making responsibility,and instead focuses on whether theemployee provided information to thelawyer or received assistance from thelawyer on behalf of the organization.Although Upjohn is controlling infederal courts applying federal law,state courts and federal courts sittingin exercise of diversity jurisdiction arenot bound by the Upjohn decision andhave adopted various tests for definingthe organizational client. Additionally,the current Restatement (Third)of the Law Governing Lawyersadopts a pre-Upjohn test known asthe “subject matter” test. 55 Underthe subject matter test, the privilegeextends to communications of anyagent or employee of the corporationso long as the communicationrelates to a subject matter for whichthe organization is seeking legalrepresentation. 56 By contrast, underthe Upjohn test, the subject matter ofthe communication is just one factorto consider.States across the country applydifferent tests to analysis of theattorney-client privilege in thecorporate context. 57 Alabama,Arizona, Arkansas, Colorado, Nevada,Oregon, Texas and Vermont haveexplicitly adopted the test articulatedby Upjohn. 58The more limited control grouptest is still used in at least eight states– Alaska, Hawaii, Illinois, Maine,New Hampshire, North Dakota,Oklahoma, and South Dakota –despite the harsh results it sometimesyields. 59 In a recent Illinois caseapplying the control group test, thecourt held that interviews conductedby the defendant’s managers at thedirection of in-house counsel werenot privileged. 60 The court reasonedthat the interviews were not protectedfrom disclosure because the witnesses,including a director of clinicalservices responsible for overseeingand managing all bio-medicalservice contracts, were not “involvedin decisionmaking at the highestlevels,” and the communicationswere not made for the purpose ofexpressing recommendations to topmanagement. 61By contrast, Missouri courts apply amodified version of the subject mattertest. 62 In Missouri, communicationsbetween a corporation’s in-housecounsel and its directors, officers andemployees will be privileged if:(1) the communication wasmade for the purpose ofsecuring legal advice;(2) the employee making thecommunication did so atthe direction of his [or her]corporate superior; (3) thesuperior made the requestso that the corporationcould secure legal advice;(4) the subject matter of thecommunication is withinthe scope of the employee’scorporate duties; and(5) the communication is notdisseminated beyond thosepersons who, because of thecorporate structure, need toknow its contents. 632. Choice of Law IssuesIn addition to the fact thatthe law governing privilege variesamong jurisdictions, the questionof which state’s privilege laws willgovern in a particular dispute alsoMarch-April 2012 / 85

is jurisdiction dependent. Thiscircumstance frequently arises wherethe communication at issue occurredin a jurisdiction with a different testthan the one in which the disputeis pending. In this situation, a courtfrequently will apply the choice-oflawrules of the state in which thecourt sits to determine which privilegelaw should apply to a particularcommunication. 64A federal court sitting in diversitynormally will apply the privilege lawof the state in which it sits. 65 Statecourts have adopted a variety ofdifferent tests to resolve choice-of-lawissues concerning the application ofprivilege. Perhaps the most prevalenttest is that of the Restatement(Second) of Conflict of Laws.The Restatement approach generallyfocuses on the jurisdiction having themost significant relationship to thecommunication, which typically isdefined as that jurisdiction where thecommunication took place. 66 Becausethe law varies widely from state tostate, it is critical to understand thetest applied by each jurisdiction inwhich an attorney practices. 67III. Special Situations Uniqueto the In-House PractitionerThe attorney-client privilege maybe waived by almost any voluntarydisclosure running contrary to itsassertion. 68 In the corporate context,there are a number of specialsituations where corporations may beconsidered to have made a voluntarydisclosure, and, in these situations, theprotection of the privilege will be lost.A. Internal AuditOne issue that frequentlyarises during corporate internalinvestigations is whether an auditcommittee or special litigationcommittee and its counsel maycommunicate investigation findingsand related investigatory materialsto the company’s board of directors86 / Journal of the MISSOURI BARwithout waiving otherwise applicableprivileges. An audit committee orspecial litigation committee mayestablish an attorney-client privilegewith counsel engaged by thecommittee. 69 This is the prevailingview among jurisdictions that haveconsidered this issue. 70 However, somecourts have held that communicationsbetween counsel for the specialcommittee and the company’s boardof directors are not privileged. 71For example, in SEC v. Roberts thecourt required disclosure of all factualinformation that counsel for thespecial committee had provided to thegovernment or the board regardingthe internal investigation becausenot only is the Board not [thespecial committee counsel’s]client such that the attorneyclientprivilege does notattach, the Board also doesnot have a common interestwith the Special Committeesince it was the SpecialCommittee’s mandate toascertain whether membersof the Board … may haveengaged in wrongdoing. 72To avoid disclosing confidentialinformation learned during internalaudits, in-house counsel must developclear procedures that membersof special committees and theircounsel can follow to ensure thatcommunications and work productremain confidential and protected.B. External AuditAt least in part due to variousrecent scandals that have colored thecorporate landscape in recent years,corporations are under pressure tomake broad disclosures to outsideentities such as independent auditors.Likewise, auditors are becomingmore demanding, sending moreburdensome engagement lettersand issuing more expansive requestsduring audits – such as seekinginternal audit letters, board minutes,assessments of litigation reserves oraccruals by in-house and outsidecounsel, tax opinions, and results ofinternal investigations.In general, an outside auditor isconsidered a non-privileged partyunder federal law, because the interestsof independent auditors are notaligned with the corporation. 73 UnitedStates v. Textron, referenced in § Iabove, exemplifies the rigidity of thisrule. As a result, disclosures to outsideauditors risks waiver of the privilege.In contrast with federal law,several states provide varying degreesof protection for communicationsbetween auditors/accountantsand their clients. For example, theMissouri legislature has enactedan accountant-client privilege. 74Under that privilege, informationcommunicated by the client to anaccountant in connection with theaccounting issue and/or audit isprotected and privileged in order“to create an atmosphere wherethe client will provide all relevantinformation to the accountantwithout fearing future disclosure insubsequent litigation.” 75 There is nota significant body of law on the issueof whether Missouri’s statute appliesin the context of a corporation and itsexternal auditors. However, a recentfederal case suggests that Missouri willprotect communications between acorporation and its external auditor. 76Corporations must proceed carefullywhen working with externalauditors. Until federal regulators orcourts adopt a universal standardprotecting disclosure of privilegedmaterials to outside auditors,corporations will continue to be putin a position of having to make aHobson’s choice: Failure to discloseprotected information may lead toa qualified opinion or liability formisrepresentation, but disclosure maywaive the attorney-client and workproduct protections.

C. Corporate InvestigationsIt is common for corporationsto conduct internal investigationsregarding matters that come tothe attention of management.The materials created during theinvestigation are often later soughtby a government subpoena or civildiscovery request.While many communicationsregarding an internal investigationmay be privileged, there is no absoluteprotection over the facts garneredduring an internal investigation. Asfor the communications themselves,the attorney-client privilege doesnot apply unless the predominantintention of the communication is toobtain or to offer legal advice. 77 Bycontrast, the work product protectionmay be preserved even if a substantialportion of the investigative documentrelates solely to business matters. 78When reviewing privilege claimsasserted over communications frominvestigations, courts will examinewhether the investigation wasconducted primarily or solely for thepurpose of rendering legal adviceversus business advice 79 ; whetherthe investigation was conducted byan attorney providing legal advicerather than by an attorney actingsolely as an investigator or by nonlegalpersonnel 80 ; and whether theinvestigation was conducted inanticipation of imminent litigation oras a routine matter in response to thealways present concern that litigationis possible. 81A critical component of mostinternal investigations is interviewingemployees regarding their knowledgeof relevant events. Memorandagenerated by interviews conductedin anticipation of litigation generallyare deemed work product. However,verbatim or near verbatim statements(i.e., notes that attempt to trackthe actual statements made bythe witnesses) often are held to bediscoverable because the opposingparty demonstrates substantial needand undue hardship with respect tothe witness statements. Therefore, itis preferable for witness interviews tobe drafted as summaries of witnessstatements that do not attempt torecite any statements verbatim. 82Courts have allowed privilegeto attach in certain circumstanceswhere non-legal employees act at thebehest and direction of an attorney,the boundaries of which are factspecificand often are disputed.For example, courts frequentlyhave extended the attorney-clientprivilege to communications madeto investigators who have providednecessary assistance to attorneysand to interviews between in-housecounsel and employees. 83While an investigator’scommunications with in-housecounsel made in preparation forlitigation are usually protectedby the work product doctrine, 84investigations “prepared in theordinary course of business” usuallyare not. 85 For example, the MissouriCourt of Appeals decided aninvestigator’s communications within-house counsel for the Board ofHealing Arts were not privileged eventhough the corporation’s in-housecounsel was present when the boardcommenced the investigation, advisedthe board’s staff on how to conductthe investigation, communicatedwith the investigator throughout theinvestigation, and reviewed evidenceobtained in the investigation. 86 Thecourt concluded that the attorney’sinvolvement in the investigationdid not shield the investigativereports from discovery, noting thatonly actual, direct attorney-clientMarch-April 2012 / 87

communications are privileged. 87Because the board regularly investigatedcomplaints in its ordinary course ofbusiness, the attorney-client privilegedid not apply.Corporations concerned aboutmaintaining the confidentiality ofinvestigative materials should considerdelegating investigations to outsideor in-house counsel, rather than tonon-legal personnel. 88 Unless thereis a compelling reason to do so, thecompany should not take verbatimstatements or have statements signedby employee witnesses over which theyintend to assert the privilege. Instead,counsel should consider summarizinginformation provided by witnesses anddrafting memoranda that weave inthe attorney’s mental impressions andopinions. 89C. Disclosure to GovernmentEntitiesRecently, there has been increasedpressure on corporations to discloseprivileged information to be deemed“fully cooperative” with governmentinvestigations. For example, inAugust 2011, the Securities andExchange Commission (SEC) revisedits Enforcement Manual to allowinvestigators to request privilege waiverswith senior agency approval. 90 However,a voluntary presentation of privilegedinformation to the government, even ifintended to avoid the filing of charges,can waive the attorney-client privilege.The 8th Circuit presently recognizesa selective waiver doctrine, underwhich producing internal reports togovernment agencies may not waiveattorney-client privilege as to privatelitigants. 91 However, the clear trend– and the majority rule under federallaw – is that waiver to one governmentagency may constitute waiver to all,including other government agenciesand private litigation adversaries. 92For example, in In re Sulfuric AcidAntitrust Litigation, the court heldthat defendants waived any claim ofprivilege by producing documents tothe Department of Justice pursuant to asubpoena. 93 In many courts, disclosureto the government waives the privilegeeven when the disclosing party hasentered into a confidentiality agreementwith the government. 94Although disclosure of privilegedmaterials to the government can waivethe attorney-client privilege and workproduct protections, Federal Rule ofEvidence 502 may limit the scope ofsuch waiver. Under Federal Rule ofEvidence 502(a),when [a] disclosure made ina federal proceeding or to afederal office or agency …waives the attorney-clientprivilege or work-productprotection, the waiverextends to an undisclosedcommunication or informationin a federal proceeding only if:(1) the waiver is intentional;(2) the disclosed andundisclosed ucommunications… concern the same subjectmatter; and(3) they ought in fairness to beconsidered together.Also, the rules provide that aninadvertent disclosure of protectedinformation will not result in a subjectmatter waiver except in a situationwhere a party intentionally putsprotected information into litigation ina selective and misleading manner. 95D. Communication with an InsurerWhere an insured communicateswith an insurer for the purposeof establishing a defense, severalcourts have held that an insured’scommunication with its insurerremains privileged, at least where thecommunication is made for the specificpurpose of obtaining legal advicefor the provision of counsel. 96 Othercourts have rejected the idea that theinterests of the insured and insurer aresufficiently aligned for the privilegeto be maintained. 97 Some courts haverejected the extension of a privilegeto insurer/insured communicationson the additional ground that suchcommunications are made for a businessand not a legal purpose. 98Missouri, however, has found thatcommunications between an insuredand its liability insurer generally areprivileged. 99 This privilege covers abroad range of communications. Forexample, it covers any communicationsbetween a client and attorney even if noaction has been filed against the insuredand no attorney has been employedin reference to the occurrence. 100An incident report provided to aninsurer will be found to be privilegedif it was made in contemplation ofits use in litigation. 101 This insured/insurer privilege, however, is limited tocommunications as opposed to facts orbusiness records. 102 It may be invokedby the insurer or the insured but can bewaived only by the insured. 103E. Joint Defense PrivilegeThe joint defense privilege is similar,though not identical, to the attorney-clientprivilege. Courts consider it a logicalextension of the attorney-client privilegeand an exception to the waiver doctrinediscussed above. 104 When the same attorneyrepresents two parties, co-clientsusually may share communications withtheir common lawyer under the “jointdefense privilege” without destroyingconfidentiality. 105 The joint defenseprivilege “serves to protect the confidentialityof communications passing fromone party to the attorney for anotherparty where joint defense effort or strategyhas been decided upon and undertakenby the parties and their respectivecounsel.” 106 While not necessary, writtenjoint defense agreements are the bestevidence for proving the existence of ajoint defense agreement. 107The joint defense privilege onlyapplies where the parties seek88 / Journal of the MISSOURI BAR

epresentations for legal purposes,rather than for business or otherpurposes. 108 Furthermore, the jointdefense privilege requires the partiesto show “[s]ome form of jointstrategy[,]” not just the impressionsof one side. 109 Mere exchange ofinformation will not be protectedby the joint defense privilege. Forexample, the privilege may notapply to corporate counsel’s claim torepresent an employee for purposes ofa deposition. 110Courts have expanded the rationalebehind the joint defense doctrine toinclude situations in which the clientsare pursuing a common interest butdo not share the same attorney. 111A common example of this wouldbe a circumstance where industrymembers cooperate to respond to anindustry-wide antitrust inquiry bythe Department of Justice. Underthis scenario, the responding partiesare different entities that almostalways are represented by differentcounsel. Courts generally view thistype of industry cooperation throughthe same analytical lens as the jointdefense agreement in a litigationsetting. 112For example, in Haines v. LiggettGroup, Inc., the court held that theprotection of the privilege “extend[s]to communications between differentpersons or separate corporations whenthe communications are ‘part of anon-going and joint effort to set up acommon defense strategy.’” 113 To beprotected by the common interestprivilege, the parties must demonstratethat “(1) the communication is madeby separate parties in the course ofa matter of common legal interest;(2) that communication is designedto further that effort; and (3) theprivilege has not been waived.” 114 “Thecommon interest must be a legal”rather than a “commercial or financialinterest.” 115 There does not need to“be actual litigation in progress for thecommon interest” doctrine to apply. 116Missouri courts have recognized thiscommon interest privilege so longas parties “share a common interestin the outcome of the litigation andwhere the communication in questionwas made in confidence.” 117One consideration prior to entryinto a joint defense agreement is thepotential consequence associatedwith withdrawal by a party from thearrangement. At least one federalmagistrate has held that withdrawal bya party from the agreement subjectsthe attorney for the withdrawingparty to disqualification on thebasis of his prior representation ofan adverse party. 118 The magistratealso disqualified counsel for all ofthe other members of the jointdefense group. While this decisionultimately was overturned by thedistrict court, this issue should atleast be considered prior to enteringinto these arrangements. 119 At aminimum, participants in the groupshould understand that most courtshold that when a party withdrawsfrom a joint defense relationship, thatparty may not reveal the confidentialinformation shared by other membersof the group. 120IV. Points to Consider ForProtecting Privilege in theCorporate SettingTo ensure that confidential andsensitive corporate communicationsare protected by the attorney-clientprivilege, and to guard against waiverof the privilege, in-house counselshould consider implementing thefollowing as best practices:A. Draw Clear DistinctionsBetween Legal Advice andBusiness CounselRoutine business communicationsare not privileged merely because theywere sent to in-house counsel. Avoidfunneling all correspondence throughin-house counsel, because doing somay result in the perception of overdesignationthat, in turn, may lead toa court viewing legitimate claims ofprivilege with skepticism. Segregatelegal functions from those thattypically are non-legal by determiningwhether the function could havebeen performed by a non-lawyer. Forexample, government relations orcompliance should be maintained asa separate function from traditionallegal functions. The fact that all threefunctions ultimately may report to acorporation’s lead attorney, such as itsgeneral counsel, does not result in thenon-legal functions’ activities beingprivileged.Business and legal advice should becommunicated in separate documentswhen possible. In-house counselshould preface communicationscontaining privileged communicationswith assertions that the contentrelates to legal matters (for example,“You inquired whether there is anylegal restraint on” or “Under thefacts you presented, the law wouldallow. . . ”). Use legal titles such as“general counsel,” “chief legal officer,”“esquire,” or “attorney at law” in allwritten communications over whichthe privilege likely is to be asserted.B. Inadvertent DisclosureThe attorney-client and workproduct privileges may be waivedthrough inadvertent disclosure of aprivileged document. 121 With theincreasing amount of electroniccommunication and data storage,protecting privileged documents frominadvertent disclosure has becomeincreasingly difficult. In March 2011,Microsoft fought a motion to compelan e-mail chain, initiated by its inhousecounsel, that Microsoft believedwas protected by the attorney-clientprivilege. 122 The e-mail chain atissue had within it a request fromMicrosoft’s in-house counsel “toinvestigate whether [the] Plaintiff hadinfringed [on Microsoft’s] intellectualMarch-April 2012 / 89

property rights.” 123 Microsoftinadvertently produced this e-mail chainin 1.2 million pages of documents, andthe plaintiff filed a motion to compel,arguing that the e-mail was no longerprivileged because it was inadvertentlyproduced.Although the court agreed thatMicrosoft’s disclosure was inadvertentand that Microsoft took reasonablesteps to prevent the disclosure, thecourt determined that other than thein-house counsel’s initial e-mail, noneof the remaining e-mails containedcommunications with lawyers or legaladvice. Therefore, the court found thatthe only e-mail that would be protectedby the attorney-client privilege was theoriginating e-mail from the corporatecounsel. 124To protect against inadvertentdisclosure, companies shouldlegend documents and e-mails as“Attorney-Client Communications”as appropriate. However, as discussedpreviously, this method should be usedonly in the case where truly applicable.If documents are overly and improperlydesignated as privileged, employeesbecome conditioned to believe that allcommunication involving in-housecounsel is secure. To the contrary,noting “attorney-client privileged” onevery e-mail, fax cover sheet, letter anddocument does not create a privilegeddocument. The substance – not thelabel – of the content is determinative.Additionally, the court will be lesslikely to allow certain documents to bewithheld if non-privileged documentsare mislabeled.With respect to meetings duringwhich legal advice is sought, detailedminutes should be maintained thatinclude the date, each person present,the involvement of an attorney,the subject of the meeting, and theconfidentiality of the proceedings.C. Maintain “Need To Know” BasisWith Privileged MaterialsAll communications regarding legalissues, particularly those in writing,must be limited only to those employeeswho are working on or involved withthe problem at hand. Attorneys shoulddocument why communications areoccurring, for example, by noting thatlitigation is expected, and state whyrecipients of correspondence need to beincluded. In light of the inconsistenciesamong various jurisdictions regardingwhich employees represent thecompany, in-house counsel shouldcommunicate legal advice on a “needto know” basis only. Distribution ofconfidential memorandums and e-mailsand other written communicationscontaining sensitive communicationsshould be limited. Counsel also mustbe alert to the presence of unprivilegedpersons at a meeting where privilegedmatters are going to be discussed.Company employees often believe thescope of the privilege is far broader thanit actually is. In-house counsel shouldperiodically remind company employeesof their responsibility to the corporationand the narrow scope of the privilege byissuing statements explaining companypolicy on legal communications, withadvice on how to retain the privilege.D. If Disclosure to Outside Party isRequired, Such as to Governmentor Auditor, Obtain a PrivilegePreservation AgreementIf a corporation is served witha grand jury subpoena or receivescorrespondence from an investigatoryarm of the government, signaling aninvestigation into the corporation’spractices, the corporation shouldconsider retaining outside counselimmediately, and before contactingprosecutors or investigators to discussthe basis for the investigation. Inhousecounsel should not executeaffidavits refuting accusations againstthe company, because doing so maycause corporate counsel to become a factwitness and lead to waiver assertions.When faced with a demand forprivileged material, if disclosure is in thecorporation’s interests, the corporationshould negotiate with the governmentfor protection against future thirdparty discovery and enter into aconfidentiality/privilege preservationagreement with the investigating entity.The agreement should assert that theparties are acting cooperatively and notas adversaries, if possible.Because an agreement on the effectof disclosure in a federal proceedingis binding only on the parties to theagreement, it should be incorporatedinto a court order . 125 “A federalcourt may order that the privilege orprotection is not waived by disclosureconnected with the litigation pendingbefore the court – in which event thedisclosure is also not a waiver in anyother federal or state proceeding.” 126Where a request originates from anoutside auditor, consider negotiatingengagement letters that will protect thecompany. Include an agreement that theauditor will maintain the confidentialityof the audit materials and give advancewarning prior to disclosing documentsin response to government or thirdparty subpoena. The company shouldnegotiate with auditors to narrow thescope of the necessary information asmuch as possible.After disclosing privileged records,record what was disclosed and notdisclosed. When possible, find a way toprovide the information sought withoutdisclosing privileged information.V. ConclusionContrary to the belief of manypractitioners and their non-lawyerclients, there is no universal privilegecovering all communications made toan attorney. Even otherwise privilegedcommunications may easily be waivedwithout careful consideration andan understanding of applicable law.90 / Journal of the MISSOURI BAR

These issues are even more complexfor in-house counsel, who frequentlyserve in many capacities, sometimessimultaneously. In-house counselmust determine the identity of theclient before engaging in confidentialand sensitive communications thatare intended to be privileged, beaware that the disclosure of protectedinformation to auditors and governmentofficials may waive the privilege, andtake steps to properly label privilegedcorrespondence and other documents toprevent inadvertent disclosure to thirdparties.Through thoughtful considerationof the issues that may arise during theirwork as in-house attorneys, and bybeing aware of the principles governingattorney-client privilege law in eachrelevant jurisdiction, in-house counselwill better protect the entities they serveand avoid potentially embarrassing andexpensive professional pitfalls.Endnotes1 Brian J. Christensen is a partner in theLabor and Employment and Litigation Groupsat Spencer, Fane, Britt & Browne, LLP anda former vice-president and associate generalcounsel for Litigation, Legal Systems andRecords Policy at H&R Block in Kansas City.Bret G. Wilson is the vice-president and generalcounsel of the National Beef Packing Company,LLC in Kansas City. The authors wish to extendtheir gratitude to Denise Portnoy, an associateat Spencer, Fane, Britt & Browne, LLP, for herinvaluable contribution to this article.2 See, e.g., United States v. Textron, Inc., 577F.3d 21 (1st Cir. 2009).3 Swidler & Berlin v. United States, 524 U.S.399, 403 (1998).4 State ex rel. Polytech, Inc. v. Voorhees, 895S.W.2d 13, 14 (Mo. banc 1995).5 Mohawk Indus., Inc. v. Carpenter, 130 S.Ct.599, 606 (2009).6 State v. Fingers, 564 S.W.2d 579, 582 (Mo.App. S.D. 1978); see also Wilcox v. Coons, 220S.W.2d 15, 18 (Mo. banc 1949).7 See State v. Pride, 1 S.W.3d 494, 505 (Mo.App. W.D. 1999); State v. Smith, 979 S.W.2d215, 220 (Mo. App. S.D. 1998).8 State v. Longo, 789 S.W.2d at 812, 815 (Mo.App. E.D. 1990).9 Polish Roman Catholic St. Stanislaus v.Hettenbach, 303 S.W.3d 591, 601 (Mo. App.E.D. 2010); Collins v. Mo. Bar Plan, 157 S.W.3d726, 736 (Mo. App. W.D. 2005).10 See Hettenbach, 303 S.W.3d at 601.11 Longo, 789 S.W.2d at 816; Pride, 1S.W.3d at 505 (no attorney-client privilege forconversation that took place after attorney-clientrelationship terminated).12 See Hilgedick v. Nothstine, 289 S.W. 939,941 (Mo. 1926).13 State Farm Mut. Auto. Ins. Co. v. Allen, 744S.W.2d 782, 787 (Mo. banc 1988); State ex rel.Headrick v. Bailey, 278 S.W.2d 737, 740 (Mo.banc 1955).14 State v. Longo, 789 S.W.2d 812, 815 (Mo.App. E.D. 1990); State ex rel. Great Am. Ins. Co.v. Smith, 574 S.W.2d 379, 383 (Mo. banc 1978).15 Longo, 789 S.W.2d at 815; see also GreatAm. Ins. Co., 574 S.W.2d at 384 (quoting withapproval ALI Model Code of Evidence, Rule209(d) (1942), and Comment on Clause (d));State ex rel. Syntex Agri-Bus., Inc. v. Adolf, 700S.W.2d 886, 888 (Mo. App. E.D. 1985).16 Longo at 815.17 Id.18 Syntex Agri-Bus., Inc., 700 S.W.2d at 889.19 Weinshenk v. Sullivan, 100 S.W.2d 66, 70(Mo. App. E.D. 1937).20 Upjohn Co. v. United States, 449 U.S. 383,396 (1981).21 Voorhees, 895 S.W.2d at 14 (citing GreatAm. Ins. Co., 574 S.W.2d at 385 n.6).22 McCaffrey v. Estate of Brennan, 533 S.W.2d264, 267 (Mo. App. E.D. 1976); In re Marriageof Hershewe, 931 S.W.2d 198, 201-02 (Mo. App.S.D. 1996).23 See Tyler v. Hall, 17 S.W. 319, 321 (Mo.1891); cf. Canty v. Halpin, 242 S.W. 94, 97 (Mo.banc 1922) (privilege did not bar testimony ofattorney’s wife, who was present when attorneyinterviewed client, because wife “was not anintermediary employed by her husband for thepurpose of facilitating communications betweenattorney and client”).24 State v. Hardin, 558 S.W.2d 804, 807 (Mo.App. W.D. 1977).25 State v. Panter, 536 S.W.2d 481, 484 (Mo.App. W.D. 1976).26 State v. Carter, 641 S.W.2d 54, 57 (Mo.banc 1982), cert. denied, 461 U.S. 932 (1983).27 See Ratcliff v. Sprint Mo., Inc., 261 S.W.3d534, 549 (Mo. App. W.D. 2008).28 State ex rel. Tillman v. Copeland, 271S.W.3d 42, 45 (Mo. App. S.D. 2008); State exrel. Mo. Highways & Transp. Comm’n v. Legere,706 S.W.2d 560, 566 (Mo. App. S.D. 1986); seealso State ex rel. Cain v. Barker, 540 S.W.2d 50,57-8 (Mo. banc 1976).29 State ex rel. Ford Motor Co. v. Westbrooke,151 S.W.3d 364, 367 (Mo. banc 2004); see alsoState Esquire rel. Friedman v. Provaznik, 668S.W.2d 76, 80 (Mo. banc 1984).30 Westbrooke, 151 S.W. at 366 n.3.31 See In re Grand Jury Subpoena, 357 F.3d900, 907-09 (9th Cir. 2004); Maine v. U.S. Dep’tof the Interior, 298 F.3d 60, 69 (1st Cir. 2002);United States v. Adlman, 134 F.3d 1194 (2d Cir.1998); Nat’l Union Fire Ins. Co. v. Murray SheetMetal Co., 967 F.2d 980, 984 (4th Cir. 1992);Binks Mfg. Co. v. Nat’l Presto Indus., Inc., 709F.2d 1109, 1118-19 (7th Cir. 1983); Simon v.G.D. Searle & Co., 816 F.2d 397, 401 (8th Cir.1987).32 See Simon, 816 F.2d at 401, quoting 8Charles Alan Wright, Et Al., FederalPractice & Procedure, § 2024 (1970).33 Rule 56.01(b)(1) (emphasis added).34 Id.35 Diehl v. Fred Weber, Inc., 309 S.W.3d 309,323 (Mo. App. E.D. 2010).36 Diehl, 309 S.W.3d at 323-24.37 Id.38 Id.39 Bd. of Registration for the Healing Arts v.Spinden, 798 S.W.2d 472, 478 (Mo. App. W.D.1990).40 State ex rel. Day v. Patterson, 773 S.W.2d224, 228 (Mo. App. E.D. 1989).41 Maher v. Maher, 951 S.W.2d 669, 674-75(Mo. App. E.D. 1997).42 Brief and Appendix of Respondent at29, State ex rel. Reif v. Jamison, SC88987 (Mo.2008); available at http://www.courts.mo.gov/SUP/index.nsf/0/d6fc972c141cfaf6862574cd0071690b/$FILE/SC88987_Missouri_Baptist_Medical_Center_Brief.pdf; see also State ex rel.Atchison, Topeka & Santa Fe Ry. Co., 898 S.W.2d550 (Mo. banc 1995).43 Westbrooke, 151 S.W.3d at 367.44 Diehl, 309 S.W.3d at 323; Edwards v. Mo.State Bd. of Chiropractic Examiners, 85 S.W.3d10, 26 (Mo. App. W.D. 2002).45 Edwards, 85 S.W.3d at 26.46 See Porter ex rel. Alyward v. Gottschall, 615S.W.2d 63 (Mo. banc 1981).47 Upjohn Co. v. United States, 449 U.S. 383(1981).48 Gucci America, Inc. v. Guess?, Inc., 271F.R.D. 58, 70 (S.D. N.Y. 2010).49 See Upjohn, 449 U.S. at 395; In re GrandJury Subpoena Duces Tecum, 731 F.2d 1032, 1037(2d. Cir. 1984).50 See e.g. Rowe v. E.I. DuPont de Nemours& Co., Civil Nos. 06-1810-RMB-AMD,06-3080-RMB-AMD, 2008 WL 4514092,at *7-8 (D. N.J. Sept. 30, 2008) (utilizing“‘predominantly legal’ test” and requiringshowing that in-house counsel were engagedin “predominantly legal” communications forapplication of privilege); In re Seroquel Prods.Liab. Litig., No: 6:06-md-1769-Orl-22DAB,2008 WL 1995058, at *4 (M.D. Fla. May7, 2008 ) (defendant did not meet burden ofshowing that communications with in-housecounsel related to legal matters); In re VioxxProd. Liab. Litig., 501 F.Supp.2d 789, 797 (E.D.La. 2007) (recognizing difficulty of applyingattorney-client privilege to “modern corporatecounsel [who] have become involved in all facetsof” corporations and requiring “clear showing”in-house counsel “was acting in his professionalMarch-April 2012 / 91

legal capacity.”).51 Radiant Burners, Inc. v. Am. Gas Ass’n,320 F.2d 314 (7th Cir. 1963).52 449 U.S. 383 (1981).53 Id. at 394-95.54 Id.55 Diversified Indus., Inc. v. Meredith,572 F.2d 596, 608-09 (8th Cir. 1977).See Restatement (Third) of the LawGoverning Lawyers § 73 (2000).56 Diversified Indus., Inc., 572 F.2d at 609.57 See generally Brian E. Hamilton,Conflicts, Disparity and Indecision: TheUnsettled Corporate Attorney-Client Privilege,1997 Ann. Surv. Am. L. 629 (1999).58 Id.59 Id.60 Resurrection Healthcare & Factory Mut.Ins. Co. v. GE Health Care, No. 07 C 5980,2009 WL 691286 (N.D. Ill. Mar. 16, 2009).61 Id.62 DeLaporte v. Robey Bldg. Supply, Inc., 812S.W.2d 526, 531 (Mo. App. E.D. 1991) citingDiversified Indus., Inc., 572 F.2d at 609.63 DeLaporte, 812 S.W.2d at 531.64 See, e.g., Allianz Ins. Co. v. GuidantCorp., 869 N.E.2d 1042, 1055 (Ill. App.Ct. 2007); Sterling Fin. Mgmt., L.P. v. UBSPaineWebber, Inc., 782 N.E.2d 895 (Ill.App. Ct. 2002) (applying Illinois law andcontrol group test over New York law basedon the court’s analysis under Comment dof the Restatement); State v. Heaney, 689N.W.2d 168, 174-75 (Minn. 2004) (adoptingRestatement (Second) and identifying otherjurisdictions that have done so).65 Palmer v. Fisher, 228 F.2d 603 (7thCir.1955), cert. den. 351 U.S. 965 (1956);Engl v. Aetna Life Ins. Co., 139 F.2d 469(2d Cir. 1943); Merlin v. Aetna Life Ins. Co.,180 F.Supp. 90 (S.D. N.Y.1960); Munzer v.Swedish Am. Line, 35 F.Supp. 493 (S.D. N.Y.1940); Spray Prods. Corp. v. Strouse, Inc., 31F.R.D. 244 (E.D. Pa.1962); Padovani v. Liggett& Meyers Tobacco Co., 23 F.R.D. 255 (E.D.N.Y. 1959); Berdon v. McDuff, 15 F.R.D. 29(E.D. Mich. 1953); cf. Ex parte Sparrow, 14F.R.D. 351 (N.D. Ala.1953).66 Connolly Data Sys., Inc. v. Victor Techs.,114 F.R.D. 89, 91-92 (S.D. Cal. 1987)(where communications took place in andparties to the communications were locatedin California, such that client’s expectation ofconfidentiality would have stemmed from thelaw of California, and not law of the forum inwhich action was pending, governed privilegeissue); Ford Motor Co. v. Leggat, 904 S.W.2d643, 646-48 (Tex. 1995) (law of Michigan,rather than that of forum state, applied tomanufacturer’s claim that report by generalcounsel to manufacturer’s policy and strategycommittee was subject to attorney-clientprivilege where Michigan had most significantrelationship to the communication).67 An analogous problem may arise when a92 / Journal of the MISSOURI BARdeposition is sought to be taken in a state otherthan the state of trial. To date, the courts ofthe deposition state generally have refused toadmit evidence of a communication privilegedunder their local law, but it would appear thatin all of these cases the deposition state wasalso the state of most significant relationshipwith the communication. See e.g. In Re Walsh,243 N.Y.S.2d 325 (N.Y. App. Div. 1963);Application of Queen, 233 N.Y.S.2d 798 (N.Y.App. Div. 1962); In re Franklin WashingtonTrust Co., 148 N.Y.S.2d 731 (N.Y. App. Div.1956).68 Gray v. Bicknell, 86 F.3d 1472, 1482 (8thCir. 1996); Profit Mgmt Dev., Inc. v. Jacobson,Brandvik & Anderson, Ltd., 721 N.E.2d 826,835 (Ill. App. Ct. 1999).69 See e.g. Ryan v. Gifford, Civil Action No.2213-CC, 2007 WL 4259557, at *3 (Del.Ch. Nov. 30, 2007) (“attorney-client privilegeprotects communications between [outsidecounsel] and its client, the Special Committee”absent waiver or good cause); In re BCE West,L.P., No. M-8-85, 2000 WL 1239117, at *2(S.D. N.Y. August 31, 2000).70 Id.71 See Ryan v. Gifford, Civil Action No.2213-CC, 2008 WL 43699, at *5 (Del. Ch.Jan. 2, 2008) (presence of board membersacting in their personal capacity duringcounsel’s presentation waived the privilege);but see In re BCE West, L.P., No. M-8-85,2000 WL 1239117, at *2 (S.D. N.Y. Aug. 31,2000) (communications with the board werepart of transaction process and did not destroythe special committee’s privilege).72 254 F.R.D. 371, 378 (N.D. Cal. 2008).73 Couch v. United States, 409 U.S. 322(1973); see Cavallaro v. United States, 284F.3d 236, 246 (1st Cir. 2002); United States v.Frederick, 182 F.3d 496, 502 (7th Cir. 1999);see e.g. In re Honeywell Int’l, Inc. Sec. Litig., 230F.R.D. 293, 297 (S.D. N.Y. 2003) (disclosureto company’s auditor waives the attorney-clientprivilege); see Medinol, Ltd. v. Boston ScientificCorp, 214 F.R.D. 113 (S.D. N.Y 2002).74 Section 326.322.1, RSMo Supp. 2011.75 Ayers Oil Co. v. Am. Bus. Brokers, Inc.,No. 2:09 CV 02 DDN, 2009 WL 2592154,at *2 (E.D. Mo. Aug. 20, 2009), citing Sears,Roebuck & Co. v. Gussin, 714 A.2d 188, 193(Md. 1998); Fed. Ins. Co. v. Arthur Anderson &Co., 816 S.W.2d 328, 331 (Tenn. 1991).76 Semi-Materials Co., Ltd. v. MEMC Elec.Materials, Inc., No: 4:06CV1426 FRB, 2010WL 3038086, at *3 (E.D. Mo. Aug. 3, 2010)(addressing applicability of accountant-clientprivilege to relationship between externalauditor and corporation, but holding thatprivilege had been waived to the extentdefendant invoked the advice of the externalauditor as a defense to plaintiff’s claims in thecase).77 Diversified Indus., Inc., 572 F.2d at 603.78 Id.79 Diversified Indus., Inc., 572 F.2d at 603(report prepared by outside counsel basedon interviews with corporate employees notprotected by attorney-client privilege becausecounsel “was employed solely for the purposeof making an investigation of facts and tomake business recommendations with respectto future conduct of Diversified”); see alsoNavigant Consulting, Inc. v. Wilkinson, 220F.R.D. 467, 476 (N.D. Tex. 2004).80 Cataldo v. Nat’l Grid USA, No.20065120, 2008 WL 496718, at *6 (Mass.Super. Ct. Feb. 15, 2008) (concludingthat investigation report prepared underthe direction of in-house counsel was notprivileged because the substance of the reportwas very similar to a parallel investigationreport prepared by business personnel,members of the two investigation teamsoverlapped, and the independence of the teamswas questionable.81 In re Syncor ERISA Litig., 229 F.R.D.636, 645 (C.D. Cal. 2005) (documentsprepared during internal investigation “werecreated with the intent to disclose … tothe Government [and] … thus were neverprivileged.”); In re Aqua Dots Prods. Liab.Litig., 270 F.R.D. 322, 327-28 (N.D. Ill.2010) (whether the predominant intentionof the party is to obtain legal advice is a factintensiveinquiry and high level of detaildemanded from the party).82 See Coito v. Super. Ct., 106 Cal. Rptr. 3d342, 351 (Cal. Ct. App. 2010) (“hold[ing] thatwritten and recorded witness statements, [evenif] taken by counsel, are not attorney workproduct.”); but see Sandra T.E. v. S. BerwynSch. Dist 100, 600 F.3d 612, 622-23 (7thCir. 2009) (finding that use for impeachmentof notes of attorneys’ interviews with schooldistrict employees during investigation ofsexual abuse was not substantial need); Treatv. Tom Kelley Buick Pontiac GMC, Inc., No.1:08-CV-173, 2009 WL 1543651, at *9 (N.D.Ind. June 2, 2009) (holding witness interviewnotes “reflecting counsel’s mental impressionsabout what counsel deemed important” wereprotected work product).83 See e.g. United States v. McPartlin,595 F.2d 1321, 1335-36 (7th Cir. 1979)(statements made to investigator acting asattorney’s agents); Sanchez v. Matta, 229F.R.D. 649, 660 (D. N.M. 2004) (employeecommunications to investigator acting as agentof employer’s counsel); Welland v. Trainer, No.00 Civ. 00738(JSM), 2001 WL 1154666, at*3 (S.D. N.Y Oct. 1, 2001) (employee servingas investigator was attorney’s agent); Carter v.Cornell Univ., 173 F.R.D. 92, 95 (S.D. N.Y.1997) (communications to employee whoseduties normally did not include conductinginvestigations for in-house counsel specificallyasked to conduct investigation), aff’d 159 F.3d1345 (2d. Cir. 1998) (summary order).84 See, Edwards, 85 S.W.3d at 27.

85 Spinden, 798 S.W.2d at 478 (Mo. App.W.D. 1990); Claude P. Bamberger Int’l Inc. v.Rohm & Haas, Co., No. Civ 96-1041(WGB),1997 WL 33762249, at *3 (D. N.J. Dec. 29,1997) (no attorney-client privilege involvingmaterials that didn’t appear for primarypurpose of obtaining legal advice).86 Id.87 Gucci Am., Inc. v. Guess?, Inc., 271F.R.D. 58, 61 (S.D. N.Y. 2010).88 Admiral Ins. Co. v. U.S. Dist. Ct. for theDist. of Az., 881 F.2d 1486 (9th Cir. 1989)(illustrating importance of having internalinterview conducted by counsel).89 In re John Doe Corp., 675 F.2d 482,492-93 (2d Cir. 1982) (notes taken by anattorney during an internal investigation arediscoverable because the notes did not reflectthe mental processes of counsel).90 Securities and Exchange Commission,Division of Enforcement, EnforcementManual § 4.3 (Aug. 2, 2011).91 Diversified Indus., Inc., 572 F.2d at 604.92 See, e.g. Permian Corp. v. UnitedStates, 665 F.2d 1214 (D.C. Cir. 1981);In re Martin Marietta Corp., 856 F.2d 619(4th Cir. 1988); Westinghouse Elec. Corp. v.Republic of Philippines, 951 F.2d 1414 (3dCir. 1991); United States v. Mass. Inst. of Tech.,129 F.3d 681 (1st Cir. 1997); In re Columbia/HCA Healthcare Corp. Billing Practices Litig.,293 F.3d 289 (6th Cir. 2002); In re QwestCommc’ns Int’l, Inc., 450 F.3d 1179 (10th Cir.2006), but c.f. In re Steinhardt Partners, L.P.,9 F.3d 230 (2d Cir. 1993) (confidentialityagreement may protect privilege); Saito v.McKesson HBOC, Inc., No. CIV.A. 18553,2002 WL 31657622 (Del. Ch. Nov. 13, 2002)(adopts selective waiver doctrine); Aronson v.McKesson HBOC, Inc., No. 99-CV-20743,2005 WL 934331 (N.D. Cal. Mar. 31, 2005)(no waiver of work product protection basedon confidentiality agreement); In re CardinalHealth, Inc. Sec. Litig., No. C2 04 575 ALM,2007 WL 495150 (S.D. N.Y. Jan. 26, 2007)(no waiver of work product protection evenin absence of confidentiality agreement); Inre Natural Gas Commodity Litig., No. 03 Civ.6186VMAJP, 2005 WL 1457666 (S.D. N.Y.June 21, 2005) (no waiver of work productprotection even in absence of confidentialityagreement).93 235 F.R.D. 407, 427 (N.D. Ill. 2006).94 See e.g. Westinghouse Elec. Corp. v.Republic of Philippines, 951 F.2d 1414, 1426(3d Cir. 1991) (holding that disclosure tothe government waived privileges despiteentry into confidentiality agreement with thegovernment agency receiving the privilegedmaterials), but see In re Steinhardt Partners,L.P., 9 F.3d 230, 236 (2d Cir. 1993) (declining“to adopt a per se rule that all voluntarydisclosures to the government waive workproduct protection[s]” and recognizingthat entering into explicit agreement thegovernment agency will maintain theconfidentiality of the disclosed materialsprevents waiver of privilege.95 Explanatory Note to Rule 502(a)clarifies that “a subject matter waiver … isreserved for those unusual situations in whichfairness requires a further disclosure of related,protected information, in order to preventa selective and misleading presentation ofevidence to the disadvantage of the adversary.”96 See e.g. Linde Thomson Langworthy Kohn& Van Dyke, P.C. v. Resolution Trust Corp., 5F.3d 1508, 1515 (D.C. Cir. 1993); KingswayFin. Servs. v. Pricewaterhouse-Coopers LLP,No. 03 Civ. 5560(RMB)(HBP), 2008 WL4452134 (S.D. N.Y. Oct. 2, 2008); Schipp v.Gen. Motors, Corp., 457 F. Supp.2d 917, 922-24 (E.D. Ark. 2006).97 See e.g. SR Int’l Bus. Ins. Co. v. WorldTrade Ctr. Props. LLC, No. 01 Civ. 9291(JSM),2002 WL 1334821, at *3-4 (S.D. N.Y. June19, 2002); Cigna Ins. Co. v. Cooper Tires &Rubber, Inc., No. 3:99CV7397, 2001 WL640703, at *1 (N.D. Ohio May 24, 2001); GoMed. Indus. Pty., Ltd. v. C.R. Bard, Inc., No.3:95 MC 522(DJS), 1998 WL 1632525, at *3(D. Conn. Aug. 14, 1998).98 Calabro v. Stone, 225 F.R.D. 96, 98(E.D. N.Y. 2004); In re Imperial Corp. of Am.,167 F.R.D. 447, 452 (S.D. Cal. 1995).99 See Barker, 540 S.W.2d at 53-57.100 See State ex rel Day v. Patterson, 773S.W.2d 224, 227-30 (Mo. App. E.D. 1989).101 Id.; see also Legere, 706 S.W.2d at 566.102 See Patterson, 773 S.W.2d at 225.103 See Voorhees, 895 S.W.2d at 14.104 See e.g. In re LTV Sec. Litig., 89 F.R.D.595, 604 (N.D. Tex. 1981).105 See United States v. Schwimmer, 892F.2d 237, 243 (2d Cir. 1989).106 Id.107 Daralyn J. Durie, Drafting the JointDefense Agreement (With Sample Provisions),13 The Practical Litigator 7 (March 2002).108 See e.g. United States v. Aramony, 88F.3d 1369, 1392 (4th Cir. 1996).109 United States v. Weissman, 195 F.3d 96,100 (2d Cir. 1999).110 Wade Williams Distrib., Inc. v. Am.Broad. Cos., No. 00 Civ. 5002(LMM), 2004WL 1487702, at *1-2 (S.D.N.Y. June 30,2004).111 See United States v. Schwimmer, 892F.2d 237 (2d Cir. 1989); Davis v. Costa-Gavras,580 F. Supp. 1082, 1098-99 (S.D.N.Y. 1984);SCM Corp. v. Xerox Corp, 70 F.R.D. 508, 514(D. Conn. 1976).112 See generally Raymond Banoun &Ronald G. White, The Joint Defense Privilegeand Recent Government Challenges, 9 Corp.Counsel’s Q. 71 (Oct. 1993).113 975 F.2d 81, 94 (3d Cir. 1992).114 Nidec Corp. v. Victor Co. of Japan, 249F.R.D. 575, 578 (N.D. Cal. 2007).115 See Blanchard v. EdgeMark Fin. Corp.,192 F.R.D. 233, 237 (N.D. Ill. 2000).116 Schwimmer, 892 F.2d at 244.117 See Lipton Realty, Inc. v. St. LouisHousing Authority, 705 S.W.2d 565, 570 (Mo.App. E.D. 1986); citing Transmirra ProductsCorp. v. Monsanto Chem. Co., 26 F.R.D. 572,577 (S.D. N.Y. 1960).118 See Essex Chem. Corp. v. HartfordAccident & Indem. Co., 975 F.Supp. 650 (D.N.J. 1997).119 See Essex Chem. Corp. v. HartfordAccident & Indem. Co., 993 F.Supp. 241 (D.N.J. 1998); see also Nat’l Med. Enters., Inc. v.Godbey, 924 S.W.2d 123 (Tex. 1996).120 See e.g. Interfaith Housing Del., Inc. v.Town of Georgetown, 841 F.Supp. 1393 (D.Del. 1994); Edward C. Brewer, III, The Ethicsof Internal Investigations in Kentucky and Ohio,27 N. Ky. L. Rev. 721, 797-98 (2000).121 Gray, 86 F.3d at 1482-84; State ex rel.Mueller v. Dixon, 456 S.W.2d 594 (Mo. App.W.D. 1970).122 Datel Holdings, Ltd. v. Microsoft Corp.,No. C-09-055353 EDL, 2011 WL 866993(N.D. Cal. March 11, 2011).123 Id. at *1.124 Id. at *6.125 Id.126 Fed. R. Evid. 502(d).March-April 2012 / 93