United States District Court, S.D. California
ORDER GRANTING IN PART AND DENYING IN PART
PLAINTIFF'S MOTION TO COMPEL (ECF No. 74)
Andrew G. Schopler United States Magistrate Judge
trademark case, one of defendant's corporate officers
testified that the management team decided to use the alleged
infringing trademark after legal counsel “clear[ed] the
name for us.” Plaintiff's motion to compel
discovery about this legal advice turns on whether this
testimony-in conjunction with defendant's affirmative
defenses and the circumstances of this case-amounts to a
waiver of the attorney-client privilege. It does. But
defendant may retain its privilege by formally abandoning any
public use of attorney-client advice to defend itself.
Airhawk International, LLC, which produces truck and
motorcycle seat air cushions, owns trademarks on the name
“Airhawk” and the image of a hawk's head
profile between the words “Air” and
“Hawk.” (ECF No. 1, at 2-3, 13-15.) Defendant
Ontel Products Corporation uses similar marks on its
“Air Hawk”-branded air compressors. (Id.
at 4.) Airhawk sued Ontel for trademark infringement. In
Ontel's affirmative defenses, it asserted that any
trademark violation was with “innocent intent, ”
and that it “at all times acted in good faith.”
(ECF No. 5, at 8-9.)
delve deeper into these defenses, Airhawk deposed Jason
Biziak, who was Ontel's Vice President of Product
Strategy and Business Development at the time Ontel adopted
the “Air Hawk” brand. In the crucial exchange,
Biziak mentioned that Ontel's legal counsel
“clear[ed] the name for us, ” which Airhawk
contends waived attorney-client privilege regarding such
Q And can you recall when in the development process for
Ontel's Air Hawk compressor you became aware of
[plaintiff Airhawk's] product and trademark?
A Not specifically, but during-I believe it was during the
clearance of our use of the trademark “Air Hawk”
for our product.
. . . .
A At some point this [Ontel upper management] group would
have come to agreement that we liked the name to market and
distribute the product under.
Q Notwithstanding the existence of a trademark on the name?
. . . .
A We would have based that decision, of course, you know,
after having had professional legal counsel clear the name
(ECF No. 74-2, at 22, 24-25.)
now moves to compel production of any trademark
clearance-related documents that Ontel previously marked as
privileged and to reopen ...