Attorney-Client Privilege — Waiver of Registration Advice by Filing Trademark Action

The key waiver issue in Quiksilver, Inc. v. Kymsta Corp, 2007 U.S. Dist. LEXIS 92905 (C.D. Cal. Dec. 18, 2007), centered on the defendant’s claim that that plaintiff impliedly waived its attorney-client privilege by filing this trademark infringement action, on the theory that the action "involv[ed] registrations acquired via the applications prosecuted by [counsel]." The Court rejected the argument “that any time a party files a trademark infringement suit, it waives any and all attorney-client privilege concerning communications between it and counsel regarding the trademark registration(s) allegedly infringed” (citing In re Geothermal Res. Int'l, Inc. v. Lumsden, 93 F.3d 648, 653 (9th Cir. 1996); Rhone-Poulenc Rorer Inc. v. The Home Indemnity Co., 32 F.3d 851, 863-64 (3d Cir. 1994); see also Zenith Radio Corp. v. United States, 764 F.2d 1577, 1580 (Fed. Cir. 1985) ("A party does not automatically waive [the attorney-client or work product] privileges, which protect the formulation of legal opinions or litigation strategy, simply by bringing suit."); Beery v. Thomson Consumer Elecs., Inc., 218 F.R.D. 599, 605-06 (S.D. Ohio 2003) ("[T]he attorney client privilege permits [plaintiff] to freely consult with his attorneys and to rely on their infringement advice without fear that the contents of these consultations will be discoverable during litigation.")).

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