UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
December 19, 2006
GENERAL ELECTRIC CO., PLAINTIFF,
MARTIN R. PRINCE, DEFENDANT.
The opinion of the court was delivered by: Michael H. Dolinger, United States Magistrate Judge
MEMORANDUM & ORDER
Plaintiff General Electric Company seeks an order compelling defendant Martin R. Prince to produce 17 documents for which he has claimed the attorney-client privilege, as extended by his asserted common interest with non-party Dr. James Meaney. (See Nov. 22 and Dec. 11, 2006 letters to the Court from Niall A. MacLeod, Esq.). Defendant opposes. (See Nov. 27 and Dec. 7, 2006 letters to the Court from Paul S. Grewal, Esq.). Plaintiff's application is denied.
Defendant and Dr. Meaney are co-inventors who apparently share an interest in a patent and several continuation patents that are at issue in this case.*fn1 The record on the current application includes a declaration by defendant and a copy of a joint and Dr. Meaney have been in communication with eachother in connection with this litigation, and indeed signed a joint defense agreement on February 8, 2006 that purports to be effective retroactively to July 1, 2004. The record also contains the withheld documents, which include communications by defendant with his own attorneys and with the attorney who jointly represented him and Dr. Meaney in connection with the prosecution and licensing of their patents. The record also reflects that all of the documents that constitute communications between defendant and an attorney were designed to elicit or provide legal services from counsel and that they were held in confidence, except to the extent that they were disclosed by defendant to Dr. Meaney inconnection with informing him about the status of matters -- including litigation -- that were pertinent to his interest in the patents. The withheld documents also include one communication between defendant and Dr. Meaney, but that e-mail contains information that plainly reflects the advice of an attorney and was apparently being provided to Dr. Meaney because of his joint interest in the matter.
This set of facts suffices to establish that the documents at issue come within the attorney-client privilege and the joint-interest extension of that privilege. See generally Johnson v. Mabuchi North America Corp., 1996 WL 191590, *3-4 (S.D.N.Y. Apr. 19, 1996). The fact that Dr. Meaney is not a party to the lawsuit is inconsequential since the privilege in this variation covers non-parties, see, e.g., id. at *4 (nothing that if person to whom a communication is revealted or addressed is a party, the privilege is known as one of "joint defense"), and regardless of whether Dr. Meaney should be a party to this lawsuit -- as plaintiff now argues -- the failure to join him is irrelevant to the viability of the privilege.
Finally, plaintiff argues that the joing defense agreement proffered by defendant is not adequately supported by an evidentiary showing. What matters, however, is not the details of the agreement, since Dr. Meany is not a litigant, but the existence of a joint interest, which appears from the full record to exist.
For the reasons noted, plaintiff's application is denied.