Menzel v. Roadget Business Pte. Ltd.

Background

Christina Menzel alleged that defendants copied her original artistic designs and used them on at least 164 products. She asserted three copyright-infringement claims. During discovery—the evidence-gathering stage of the case—Menzel requested guidelines and standards used by defendants’ in-house design team when creating the accused products.

Defendants identified one responsive document, titled in translation “SOP-SPZX-AJ-015 Design Department Anti-Infringement System.” They withheld it based on the attorney-client privilege, which generally protects confidential communications made to obtain or provide legal advice, and the work-product doctrine, which generally protects materials prepared for litigation. The court ordered defendants to submit the document for private, in-camera review.

Attorney-Client Privilege

The court held that defendants had not met their burden of proving that the attorney-client privilege applied. Defendants said the document was drafted based on advice from in-house lawyers and circulated within the design team, but they did not identify who actually drafted it, provide those individuals’ titles, or establish whether they were legal personnel. Defendants also provided no affidavits or declarations from their in-house lawyers or other employees explaining the document’s origin or the request for legal advice that led to its creation.

The court found that the document appeared primarily to communicate business advice and information about defendants’ products, including product images, internal reviews, and product descriptions. It was not protected merely because legal considerations may have been involved. The court therefore concluded that the attorney-client privilege did not shield the document from production.

Work-Product Doctrine

The court also held that defendants had not established work-product protection. That protection applies to materials prepared by a party or its representative in anticipation of litigation and not in the ordinary course of business. Defendants offered only unsupported assertions that the document compiled facts from earlier infringement allegations. They identified no specific pending or threatened litigation for which the document was prepared and did not establish that an attorney or someone acting for defendants created it.

The court found that the document appeared to have been prepared in the ordinary course of business and did not reflect litigation strategy or an evaluation of litigation exposure. A general desire to avoid future lawsuits was not enough to show that litigation was anticipated.

The court further stated that, even if the work-product doctrine applied, Menzel had shown a substantial need for the document and could not obtain equivalent information without undue hardship. The document could provide important evidence on how defendants designed the accused products and whether they used methods to copy elements of Menzel’s designs. It was also the only document defendants had identified as responsive to her request.

Disposition

The court granted Menzel’s request to compel production. Defendants were ordered to produce the document to her by April 14, 2025.