United States District Court, S.D. Indiana, Indianapolis Division
HEARTLAND CONSUMER PRODUCTS LLC, TC HEARTLAND, LLC, Plaintiffs,
DINEEQUITY, INC., APPLEBEES SERVICES, INC., IHOP FRANCHISING LLC, INTERNATIONAL HOUSE OF PANCAKES, LLC, IHOP FRANCHISOR LLC, PPLEBEES FRANCHISOR LLC, APPLEBEES RESTAURANTS LLC, APPLEBEE'S INTERNATIONAL, INC., IHOP RESTAURANTS LLC, Defendants.
ORDER ON PLAINTIFF'S MOTION TO COMPEL
Baker United States Magistrate Judge
issue is Plaintiffs' motion to compel Defendants to
produce 46 email exchanges that Defendants withheld as
privileged, and in one instance as both privileged and work
product. Plaintiffs argue that the email exchanges are
neither privileged nor work product, and challenge
Defendants' privilege log, arguing it gives inadequate
information to establish that the communications are
privileged. Plaintiffs also argue Defendants waived the
attorney-client privilege by including a third party in their
communications. The thrust of Plaintiffs' argument is
that Defendants' privilege log describes business issues
involving lawyers, rather than the exchange of legal advice.
discussed below, Defendants generally carry their burden of
establishing that the withheld communications are privileged.
However, for nine of the communications it is not clear what
role an attorney played in the conversation. The Court will
permit Defendants to submit the nine communications for
in camera review. Therefore, the Court denies
Plaintiffs' motion [Filing No. 76] in part,
pending in camera review of the nine communications.
Heartland Consumer Products LLC and TC Heartland, LLC,
manufacture, market, and sell Splenda, which is a
sucralose-based sweetener. As a part of this business,
Plaintiffs own various Splenda trademarks. Plaintiffs allege
that Defendants require their franchised and company owned
stores to provide their customers a non-Splenda
sucralose-based sweetener in a yellow packet similar to the
yellow packets Plaintiffs use for Splenda. Plaintiffs allege
Defendants infringe on their trademarks by confusing patrons
at Defendants' stores into believing the sweetener in the
yellow packets is Splenda. Plaintiffs contend that Defendants
fail to provide sufficient cues that the packets do not
contain Splenda, and fail to train their employees to dispel
patrons' mistaken beliefs that the packets contain
Defendants own and franchise
Applebee's and International House of Pancakes
restaurants. Defendants argue Plaintiffs do not and cannot
own any trademark in the color yellow in connection with the
Splenda mark. Defendants also contend there is no likelihood
of confusion because their yellow sweetener packets are
branded with the Applebee's and IHOP logos, and even if
there were confusion with the Splenda mark, Splenda has
become a generic term for sucralose sweetener.
their discovery, Plaintiffs have sought information related
to Defendants' decision to use yellow packets for their
sucralose sweetener. Defendants' response included a
privilege log noting that they withheld exchanges with
Centralized Supply Chain Services, LLC, claiming the
exchanges were protected by attorney-client privilege and
that one was also work-product. Plaintiffs and Defendants
dispute the clarity of the relationship between CSCS and
Defendants. Nonetheless, Plaintiffs and Defendants agree that
CSCS is a distinct entity from Defendants and is the only
authorized purchasing entity for Defendant DineEquity, Inc.
and DineEquity entered into an agreement with non-party
Domino for CSCS and Defendants to source sweeteners from
Domino, including the yellow-packeted sucralose sweetener at
the heart of this suit. Defendants contend that the withheld
communications concern legal issues, including licensing and
indemnification agreements, arising from negotiations between
Domino on the one hand and DineEquity and CSCS on the other.
now seek to compel Defendants to produce 46 communications
Defendants are withholding.
make three principal arguments in support of their motion to
compel: 1) Defendants failed to provide enough information in
their privilege log to show that the exchanges are covered by
attorney-client privilege, 2) if the exchanges were
privileged, the privilege was destroyed by the presence of a
third party with whom Defendants did not have an identical
common interest, and 3) the exchange marked as work product
was not made in preparation for litigation.
discovery, parties are generally entitled to “obtain
discovery regarding any nonprivileged matter that is relevant
to any party's claim or defense and proportional to the
needs of the case . . . .” Fed. R. Civ. P.
26(b)(1). Privileged matter may be withheld, but if a
party believes that material has been improperly withheld,
the party may move for the Court to compel production.
See Fed. R. Civ. P. 26(b)(5)(A); Fed.
R. Civ. P. 37(a); Local Rule 37-1. The party
opposing a motion to compel has the burden to show the
discovery requests are improper. Cunningham v. Smithkline
Beecham, 255 F.R.D. 474, 478 (N.D. Ind. 2009).
Facial Sufficiency of Defendants' Privilege Log
argue that Defendants' privilege log fails to provide
enough information to show that the 46 documents contain
privileged information. With respect to all 46
communications, Plaintiffs assert that “[t]he
information provided does not explain that legal advice was
actually solicited or received, who was seeking the legal
advice from whom or what the legal advice was
regarding.” [Filing No. 77, at ECF p. 9.]
Plaintiffs also point to three specific communications for
which no attorney is listed in the privilege log as being
party to the communication,  and nine communications in which
Defendants' attorneys were only listed in the
“CC” line. Defendants respond that their logs
included the necessary information, and in some cases,
information was accidentally omitted.
privilege is a federal common law doctrine that allows people
to withhold relevant “confidential communications made
for the purpose of facilitating the rendition of professional
legal services.” U.S. v. BDO Seidman, LLP, 492
F.3d 806, 815 (7th Cir. 2007) (quoting Proposed
Fed.R.Evid. 503(b), 56 F.R.D. 183, 236 (1972)).
Attorney-client privilege is a double-edged sword. On one
hand, it is necessary because “[o]pen communication
assists lawyers in rendering legal advice, not only to
represent their clients in ongoing litigation, but also to
prevent litigation by advising clients to conform their
conduct to the law and by addressing legal concerns that may
inhibit clients from engaging in otherwise lawful and
socially beneficial activities.” Id. On the
other, the privilege necessarily denies courts relevant
information “in derogation of the search for the
truth.” In re Grand Jury Proceedings, 220 F.3d
568, 571 (7th Cir. 2000). To keep these interests
balanced, courts must strictly confine the privilege, and any
application of attorney-client privilege must be
“consistent with the underlying purposes” of the
privilege. Upjohn Co. v. United States, 449 U.S.
383, 395 (1981).
communication to be protected by attorney-client privilege,
the communication must have been made “(1) in
confidence; (2) in connection with the provision of legal
services; (3) to an attorney; and (4) in the context of an
attorney-client relationship.” BDO Seidman,
492 F.3d at 815.
party resisting production must expressly invoke the
privilege and “describe the nature of the documents,
communications, or tangible things not produced or
disclosed-and do so in a manner that, without revealing
information itself privileged or protected, will enable other
parties to assess the claim.” Fed. R. Civ. P.
26(b)(5)(A)(i)-(ii). Parties commonly comply with the
requirements for asserting a privilege by providing a
privilege log such as described in In re