Dolby Laboratories Licensing Corporation v. Adobe Inc.

Background

Dolby challenged Adobe’s privilege designations for approximately 4,960 non-lawyer communications. After reviewing briefing and fifteen sample documents, Magistrate Judge Donna Ryu ruled that seven samples were not discoverable and that six were non-privileged and subject to production, in whole or in part. Adobe sought relief from that non-dispositive pretrial order under Federal Rule of Civil Procedure 72(a), which permits modification or setting aside when an order is clearly erroneous or contrary to law.

Adobe challenged the privilege determinations for Entries 44, 45, 52, 62, 1754, 1875, 2521, and 4016, and objected to procedural requirements concerning declarations, privilege support, and descriptions of documents.

Privilege Determinations

For Entries 45 and 62, the court denied Adobe’s request for relief. It agreed that the communications primarily contained factual information and did not indicate that the employees understood a legal purpose. The court said that the documents were discoverable not simply because they contained facts, but because the factual content was combined with a lack of reference to a legal purpose.

For Entry 52, the court granted relief and held that attorney-client privilege attached. The email chain indicated that an employee sought information to address an audit and that another employee understood the communication’s legal purpose. The court also relied on declarations stating that the email thread related to a fact-finding request from Adobe’s in-house counsel and that the investigation’s results were provided to counsel.

For Entry 4016, the court denied relief. The document relayed an employee’s understanding of legal principles developed through experience speaking with lawyers, but it did not quote counsel or relay advice from a recent conversation with counsel. The court rejected the argument that such a communication remained permanently protected in different contexts.

For Entry 1754, the court denied relief because the document was purely logistical and revealed nothing about what information counsel was seeking or why. For Entry 1875, the court granted relief after finding that the sender’s sworn statement showed that the email was sent in response to a recent request from in-house counsel and addressed information needed for legal advice. The court cautioned that this conclusion did not authorize the use of generic declarations.

For Entry 2521, the court denied relief. The magistrate judge had properly considered Adobe’s declarations but found them insufficient because the instant-message conversation involved two topics and the context did not show whether most of the messages reflected legal advice from counsel.

Procedural Requirements

The court rejected Adobe’s reading that the magistrate judge required declarations from a communication participant and an in-house attorney for every document. Adobe could use different methods to establish privilege, although any declarants had to be able to competently state that the communication had a legal purpose, and more than one declaration might be needed in some cases.

The court set aside the requirement that the special master automatically find waiver whenever Adobe failed to provide affirmative support for a privilege designation. The special master could instead use orderly procedures, including allowing Adobe to provide supporting evidence after Dolby identified a basis for its challenge and the special master reviewed the documents privately.

The court ruled that Adobe did not need to provide Dolby with additional detailed descriptions of Entries 44 and 45. Adobe also did not need to provide detailed descriptions of every document for which it asserted work-product protection. However, the special master could require additional descriptions on a case-by-case basis when the privilege log did not give Dolby enough information to decide whether to argue that it had a substantial need for the material.

Disposition

The court granted in part and denied in part Adobe’s motion for relief from Magistrate Judge Ryu’s order. The court treated Entries 52 and 1875 as non-discoverable because of attorney-client privilege, made the procedural clarifications described above, and otherwise denied Adobe’s requested relief. The court also denied Adobe’s request to hold the special-master process in abeyance. Judge Yvonne Gonzalez Rogers stated that the order terminated Docket Number 180.