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Mackenzie-Childs LLC v. Mackenzie-Childs

August 14, 2009


The opinion of the court was delivered by: Marian W. Payson United States Magistrate Judge



By order dated January 10, 2008, the above-captioned matter was referred to the undersigned for the supervision of pretrial discovery and the hearing and disposition of all non-dispositive motions, pursuant to 28 U.S.C. §§ 636(b)(1)(A) and (B). (Docket # 85).

Plaintiffs MacKenzie-Childs LLC and MacKenzie-Childs Aurora LLC have filed suit against defendants Victoria MacKenzie-Childs, Richard MacKenzie-Childs and V&R Emprise, LLC for trademark infringement and unfair competition. (Docket # 104). Defendants Victoria MacKenzie-Childs and Richard MacKenzie-Childs have filed counterclaims against MacKenzie-Childs Ltd., Pleasant Rowland, MCL Acquisition Corporation, MCNY Acquisition Corporation and MacKenzie-Childs of New York Ltd. and other counterclaim defendants for trademark infringement and dilution, copyright infringement, unfair competition, violations of the Visual Artist Rights Act and various other federal, state and common law causes of actions. (Docket # 105).

Currently pending before this Court is a motion by defendants and counterclaim plaintiffs Victoria and Richard MacKenzie-Childs and V&R Emprise, LLC to compel the deposition testimony of and the production of documents by non-party attorney Stephen B. Salai, Esq. ("Salai"). (Docket # 123). Plaintiffs and Salai oppose the motion on the grounds that the requested testimony and documents are protected by the attorney-client privilege. (Docket ## 129, 131, 134). Plaintiffs decline to waive the privilege, and Salai asserts that the privilege is the plaintiffs', not his, to waive.

The following constitutes this Court's decision and order.


I. Factual Background

Married in 1974, defendants Richard and Victoria MacKenzie-Childs ("Victoria and Richard") are ceramic artists and together have been designing high-end housewares since the early 1980s. (Docket # 105 at ¶¶ 48-50). When the couple's creations gained commercial success in 1985, Victoria and Richard incorporated their business under the name Victoria and Richard MacKenzie-Childs, Ltd. ("MacKenzie-Childs I"). (Id. at ¶ 53). In 2000, MacKenzie-Childs I filed for bankruptcy, and in 2001 the company's assets, including its intellectual property, were sold to MCL Acquisition Corporation and MCNY Acquisition Corporation, which continued the business of producing and selling ceramics and housewares under the name MacKenzie-Childs, Ltd. and MacKenzie-Childs of New York, Ltd. (collectively, "MacKenzie-Childs II"). (Docket # 131 at 2). In 2008, after this lawsuit was commenced, plaintiff MacKenzie-Childs LLC and certain of its subsidiaries (collectively, "MacKenzie-Childs III") bought substantially all of the assets of MacKenzie-Childs II and continued producing and selling the same products. (Docket # 104 at ¶ 17).

Sometime in the 1980s, Salai, through his former law firm, Cumpston & Shaw, began to provide intellectual property advice and services to the MacKenzie-Childs enterprise. (Docket # 70 at ¶ 2). (Whether he provided that advice and those services to the business or to Victoria and Richard personally is the subject of the pending motions.) In 1999, Cumpston & Shaw disbanded, and Salai joined Harter, Secrest & Emery ("HSE"), taking with him all of his clients, including the MacKenzie-Childs enterprise. (Docket # 125 at 46). After the asset sale in 2001, Salai provided legal services to MacKenzie-Childs II, a company with which neither Victoria nor Richard were affiliated in any employment, management or ownership capacity. (See Docket ## 1, 63-3, 80-2, 134-20). Salai continued to represent MacKenzie-Childs II until its assets were sold to MacKenzie-Childs III in 2008. (Docket ## 1, 134-20 at 137).

In 2005, Victoria and Richard formed V&R Emprise, a limited liability corporation, and resumed selling their artwork using the names, among others, "Victoria & Richard." (Docket # 84 at 6). MacKenzie-Childs II, represented by Salai, commenced this lawsuit the next year, alleging that defendants were infringing numerous trademarks belonging to MacKenzie-Childs II, including the names "Victoria and Richard MacKenzie-Childs," "Victoria and Richard MacKenzie-Childs, Ltd." and "MacKenzie-Childs Ltd." (Docket # 1 at ¶ 17).

On February 7, 2007, Victoria and Richard filed a motion to disqualify Salai's current firm HSE as counsel for MacKenzie-Childs II. (Docket # 63-2 at 3). Victoria and Richard alleged that HSE's representation of MacKenzie-Childs II presented a conflict of interest because several attorneys at HSE, including Salai, had previously represented Victoria and Richard personally. (Id.). In opposing the motion to disqualify, Salai filed an affidavit stating that he had never represented Victoria and Richard personally, but rather had represented their corporation, MacKenzie-Childs I. (Docket # 70). The disqualification motion became moot as a result of the May 2008 asset sale, when an amended complaint was filed substituting MacKenzie-Childs III for MacKenzie-Childs II and substituting Nixon Peabody LLP as plaintiffs' counsel. (See Docket ## 103, 104).

On January 9, 2008, United States District Judge Michael A. Telesca granted MacKenzie-Childs II's motion for summary judgment seeking a declaration that it owned the trademarks "MacKenzie-Childs, Ltd. 1983 Aurora New York" and "MacKenzie-Childs, Ltd. Aurora New York MC 1983." (Docket # 84 at 28). Judge Telesca denied, however, plaintiffs' motion seeking a declaration that it owned the trademarks "Victoria and Richard MacKenzie-Childs, Ltd." and "MacKenzie-Childs." (Id. at 27-28). Victoria and Richard had argued that neither of the latter trademarks were owned by MacKenzie-Childs I at the time of the 2001 asset sale and thus could not have been purchased by MacKenzie-Childs II. (Id. at 9). According to Victoria and Richard, the mark "Victoria and Richard MacKenzie-Childs, Ltd." had been abandoned by MacKenzie-Childs I in 1995 and the name "MacKenzie-Childs" had never been trademarked. (Id.). Although Judge Telesca noted in his opinion the absence of any evidence in the record to disprove Victoria and Richard's assertions, he concluded that plaintiffs were entitled to conduct discovery as to those issues. (Id. at 10-11). Judge Telesca also denied defendants' motion seeking a declaration that they were entitled to use the trademark "Victoria and Richard," again determining that plaintiffs were entitled to pursue relevant discovery. (Id. at 23).

II. Motion to Compel Deposition Testimony of Salai

Following Judge Telesca's decision, Victoria and Richard subpoenaed Salai to provide deposition testimony relating to Salai's representation of the MacKenzie-Childs enterprise. (Docket # 123-5). Victoria and Richard argue that Salai's testimony is relevant to their contentions that MacKenzie-Childs I abandoned the trademark "Victoria and Richard MacKenzie Childs, Ltd." in 1995 and never owned any rights in the name "MacKenzie-Childs." (Docket # 142 at 9). Indeed, Richard alleges that he and Victoria relied upon Salai's advice to permit the mark "Victoria and Richard MacKenzie-Childs, Ltd." to be cancelled by the United States Patent and Trademark Office. (Docket # 63-3 at ¶ 14).

On September 24, 2008, Salai's counsel notified the parties of his position that Salai's testimony with respect to work he had performed for the MacKenzie-Childs enterprise was protected by the attorney-client privilege. (Docket # 129-2). Salai urged them to seek a ruling from this Court in advance of the deposition to determine which party owned the attorney-client privilege. (Id.). Counsel for Victoria and Richard countered that there were matters not covered by the privilege on which Salai could be deposed. (Docket # 129-3).

On October 22, 2008, counsel for Victoria and Richard wrote to this Court concerning the dispute, and I ordered the deposition to proceed, noting that no motion to quash or for a protective order had been filed. (Docket # 114). On October 24, 2008, Salai's counsel agreed to produce Salai "so that the privilege [could] be asserted in response to specific questions." (Docket # 129-8). On November 5, 2008, this Court issued a second letter order directing Salai's deposition to proceed and stated that "[a]ny issues as to the propriety of the assertion of privilege in response to particular questions will be addressed and resolved upon a fully-developed record." (Docket # 118).

Salai's deposition was held on November 10, 2008. (Docket # 125). A review of the unofficial deposition transcript reveals that Salai responded without objection to questions on topics such as his education, work history, the general matters on which he represented MacKenzie-Childs I, whom he communicated with and took instructions from at MacKenzie-Childs I, whether a written transfer of ownership of the names "MacKenzie-Childs" and "Victoria and Richard" had ever occurred, whether Salai had executed employment contracts for Victoria and Richard, the transfer of MacKenzie-Childs I's files after the asset sale, correspondence sent by Salai to customers of MacKenzie-Childs II, and the basis for Salai's belief that MacKenzie-Childs I owned the trademark "Victoria and Richard MacKenzie-Childs" at the time of the asset sale. (Id.). Although Salai answered questions on these issues without objection, he often responded that he could not recall. (Id.).

The deposition transcript reveals that Salai asserted the attorney-client privilege approximately twenty times in a deposition that lasted nearly seven hours. (Id.). After the first assertion, Richard stated that he desired to waive the privilege to enable Salai to continue testifying, but plaintiffs' counsel maintained that plaintiffs (MacKenzie-Childs III), not Richard, owned the privilege; plaintiffs declined to waive it. (Tr. 36).*fn1

Victoria and Richard argue that Salai "act[ed] as their personal attorney and not as attorney for their wholly owned company." (Docket # 123 at 3). Because they were fifty percent shareholders of a closely-held corporation, they continue, they had "every right" to assume that Salai was acting as their personal attorney when he provided trademark and copyright advice. (Id.). In support of their position, they also offer copies of nearly thirty supplementary copyright registrations that Salai submitted on January 16, 1997, correcting earlier registrations for works previously identified as works for hire. (Docket # 142-9). Salai signed each of the filings and certified that he was the "duly authorized agent of Victoria and Richard MacKenzie-Childs." (Id.).

By contrast, plaintiffs and Salai claim that Salai represented only the corporation MacKenzie-Childs I and not Victoria or Richard personally. (Docket ## 131 at 6, 142-7 at ¶¶ 4-7, 142-8). At his deposition, Salai testified that he had not met either Victoria or Richard until a settlement conference was conducted in this case in 2008. (Tr. 12). With regard to the supplementary copyright registration, Salai confirmed his signature and stated that insofar as he served as Victoria and Richard's personal agent, he did so to further the interests of the corporation, MacKenzie-Childs I. (Tr. 14, 30-31).

Two weeks after the deposition, Victoria and Richard filed the instant motion. (Docket # 123). Contrary to the Court's November 5 letter order, the motion does not identify specific questions to which defendants believe the privilege was improperly asserted. Rather, defendants simply have identified certain topics on which they seek to compel Salai's testimony, including:

* the legal relationship between Salai and Victoria and Richard;

* communications between Salai and MacKenzie-Childs I;

* the registration and cancellation of the trademark "Victoria and Richard MacKenzie-Childs, Ltd.";

* the registration and protection of the trademarks "MacKenzie-Childs, Ltd 1983 Aurora, New York" and "MacKenzie-Childs, Ltd. Aurora, New York MC 1983";

* the registration of copyrights for Victoria and Richard MacKenzie-Childs, Ltd.;

* the supplemental registration of copyrights filed by Salai as the duly authorized agent for Victoria ...

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