Commercial Litigation and Arbitration

Attorney-Client Privilege & Waiver: The Blurt Out

Plaintiff claims to have invented the advertising slogan "Hot n' Ready" for pizza and sued the defendant for appropriating it, in Pinnacle Pizza Co. v. Little Caesar Enters., 2007 U.S. Dist. LEXIS 488845 (D. S.D. July 3, 2007). At his deposition, the President of the plaintiff was asked if he had taken any steps to determine whether the phrase was already in use in the food business. He answered that he hired a patent attorney to research the plaintiff's ability to assert trademark rights over the phrase. When asked what the attorney's research disclosed, the plaintiff answered:

It was their opinion that the words "Hot and Ready" were too general, and I think they thought it would be an expensive — or too expensive for me anyway to pursue getting it trademarked. They — I don't think they understood what it was doing for my business and the value of it as a trademark.

There was no objection to the question and no motion to strike the answer. Opposing counsel then served a deposition subpoena on the patent attorney claiming that that this testimony effected a waiver of any applicable attorney-client privilege. Held: "The court concludes that Mr. Fischer did not waive the privilege during his deposition because the disclosure was inadvertent." Other courts could disagree, which makes this holding all the more valuable.

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