US: When is attorney-client privilege waived?

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

US: When is attorney-client privilege waived?

Sponsored by

katten.png

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.

ash.jpg
jakubovic.jpg

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

karen.ash@kattenlaw.com

www.kattenlaw.com



more from across site and SHARED ros bottom lb

More from across our site

Microsoft allegedly uses the HEVC technology in a range of products and offers an extension as an add-on
A group of five lawyers who joined Cleary Gottlieb say they want to help expand the firm’s IP litigation practice
As we build up to another busy year for the IP STARS rankings and our Managing IP Awards, we assess some of the major IP firms and trends in Germany
Florina Firaru discusses making new connections, the art of flower arranging, and the biggest misconception about IP
The firm, which appointed three IP partners from A&O Shearman, wants to develop a tier one practice in Europe
The England and Wales appeals court handed down its judgment just seven working days after hearing the trademark dispute involving pharma company Merck
A host of law firms from across Europe and beyond helped bring the streaming technology dispute to a close
Hugues Derème, director general of the Benelux IP Office, unveils his vision for the region, how to improve IP awareness, and use of AI
A copyright win for AI firm Anthropic and a new executive order against law firm Jenner & Block were also among the top talking points this week
A principal at Schwegman Lundberg & Woessner explains how AI tools, including DeepIP, can position the firm to help clients
Gift this article