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Samad Brothers, Inc v. Bokara Rug Co.

December 14, 2010

SAMAD BROTHERS, INC., PLAINTIFF,
v.
BOKARA RUG CO., INC., ET AL., DEFENDANTS.



The opinion of the court was delivered by: John F. Keenan, United States District Judge:

MEMORANDUM OPINION AND ORDER

Before the Court is Bokara Rug Co., Inc., Jan Soleimani, and Gabriel Vaknin's (collectively "Defendants") Objection to the Magistrate Judge's July 29, 2010 Order ("Order") applying work product protection to certain emails sought in discovery from Plaintiff Samad Brothers ("Plaintiff" or "Samad"). For the reasons that follow, Defendants' Objection to the July 29, 2010 Order is sustained, and the Court orders that the disputed emails be produced.

I.BACKGROUND

Samad is in the business of importing and selling rugs. (Third Am. Compl. ¶ 5.)*fn1 Although Plaintiff's theory of the case has evolved over time, Samad now alleges that Defendants are infringing on twenty-five copyrighted rug designs originally created by Vikram Kapoor of S.N. Kapoor Exports, who assigned all rights therein exclusively to Samad. (Id. ¶¶ 13, 16-17,71.)

During discovery, Plaintiff produced documents purportedly memorializing Mr. Kapoor's assignment of interest in the disputed rug designs to Samad. (See Decl. of Ronald W. Meister in Supp. of Objection to Magistrate Judge's Order ("Meister Decl.") ¶¶ 5-6.) However, these documents were created by Samad with the assistance of counsel, Mark S. Kaufman, after commencing the instant lawsuit. (Id. Ex. 1.) Upon learning that the documents were not contemporaneous with the alleged assignment, on April 5, 2010, Defendants served a subpoena on Mr. Kapoor requesting all documents concerning the letters between Mr. Kapoor and Samad on which Plaintiff's ownership claim is based. (Id. Ex 2.) It is undisputed that Samad's counsel, Mr. Kaufman, took an active role in assisting Mr. Kapoor in producing documents responsive to the subpoena.*fn2 Mr. Kaufman served on Defendants, on Mr. Kapoor's behalf, objections and responses to Defendants' subpoena. Mr. Kapoor signed that document and below his signature it states: "Prepared by Counsel: Kaufman & Kahn, LLP." (Id. Ex. 4.) However, Mr. Kaufman is not Mr. Kapoor's attorney. (Id. Ex. 3.)

Also, Defendants sought copies of the communications between Kapoor and Samad from Plaintiff. In total, between October 14, 2009 and July 22, 2010, Mr. Kaufman exchanged forty-eight emails with Mr. Kapoor. (See id. Ex. 5.) In response to Defendants' document request seeking these emails, Mr. Kaufman asserted attorney work product protection. (See July 27, 2010 Privilege Log, Meister Decl. Ex. 5.) The Magistrate Judge reviewed in camera the forty-eight emails listed on Plaintiff's July 27, 2010 privilege log to evaluate the work product protection claim. In a one-sentence order dated July 29, 2010, without an accompanying opinion, the Magistrate Judge held that Plaintiff need not disclose the disputed email communications to Defendants.

II.DISCUSSION

A.Standard of Review

This Court reviews the Magistrate Judge's non-dispositive, discovery ruling pursuant to Rule 72(a) of the Federal Rules of Civil Procedure. Under Rule 72(a), a court must "modify or set aside any part of the order that is clearly erroneous or is contrary to law." Fed. R. Civ. P. 72(a); 28 U.S.C. § 636(b)(1)(A). "A finding is 'clearly erroneous' when, although there is evidence to support it, the reviewing court on the entire record is left with the definite and firm conviction that a mistake has been committed." Nikkal Indus., Ltd. v. Salton, Inc., 689 F. Supp. 187, 189 (S.D.N.Y. 1988) (citation omitted). This is a highly deferential standard, and "[t]he party seeking to overturn a magistrate judge's decision thus carries a heavy burden." U2 Home Entm't, Inc. v. Hong Wei Int'l Trading Inc., No. 04 Civ. 6189, 2007 WL 2327068, at *1 (S.D.N.Y. Aug. 13, 2007). The Court notes, however, that application of this deferential standard is somewhat more difficult in this case, as the Magistrate Judge provided no explanation for his ruling.

B.The Attorney Work Product Doctrine

The attorney work product doctrine "provides qualified protection for materials prepared by or at the behest of counsel in anticipation of litigation or for trial." In re Grand Jury Subpoenas Dated Mar. 19, 2002 & Aug. 2, 2002, 318 F.3d 379, 383 (2d Cir. 2003); see Fed. R. Civ. P. 26(b)(3). The U.S. Court of Appeals for the Second Circuit has clarified that "documents should be deemed prepared 'in anticipation of litigation,' and thus within the scope of [Rule 26], if 'in light of the nature of the document and the factual situation in the particular case, the document can fairly be said to have been prepared or obtained because of the prospect of litigation.'" United States v. Adlman, 134 F.3d 1194, 1202 (2d Cir. 2003) (quoting 8 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice & Procedure § 2024, at 343 (1994)). Although a document may qualify for work product protection, the privilege is qualified in that attorney work product may be discoverable upon a showing that the party seeking discovery "has substantial need for the materials to prepare its case and cannot, without undue hardship, obtain their substantial equivalent by other means." Fed. R. Civ. P. 26(b)(3)(A)(ii).

The limits of the work product doctrine are defined by "common sense and the practicalities of litigation." In re Steinhardt Partners, L.P., 9 F.3d 230, 235 (2d Cir. 1993). For example, work product immunity is waived "when protected materials are disclosed in a manner which is either inconsistent with maintaining secrecy against opponents or substantially increases the opportunity for a potential adversary to obtain the protected information." Fullerton v. Prudential Ins. Co., 194 F.R.D. 100, 103 (S.D.N.Y. 2000) (quoting Niagara Mohawk Power Corp. v. Stone & Webster Eng. Corp., 125 F.R.D. 578, 590 (S.D.N.Y. 1989)); see Plew v. Limited Brands, Inc., No. 08 Civ. 3741, 2009 WL 1119414, at *3 (S.D.N.Y. Apr. 23, 2009) (Dollinger, Mag. J.) (work product protection may be waived "by disclosure to non-adversaries in circumstances that make it likely that erstwhile protected materials will be revealed to an adversary").

In objecting to the Magistrate Judge's Order, Defendants argue that: (1) the communications between Mr. Kaufman and Mr. Kapoor are not attorney work product; (2) sharing work product with a non-party constituted a waiver; (3) because of Plaintiff's allegations the relationship between Mr. Kaufman and Mr. ...


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