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Airhawk International, LLC v. Ontel Products Corp.

United States District Court, S.D. California

July 23, 2019

AIRHAWK INTERNATIONAL, LLC, Plaintiff,
v.
ONTEL PRODUCTS CORPORATION, et al., Defendants.

          ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION TO COMPEL (ECF No. 74)

          Hon. Andrew G. Schopler United States Magistrate Judge

         In this 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.

         BACKGROUND

         Plaintiff 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.)

         To 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 clearance:

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 for us.

(ECF No. 74-2, at 22, 24-25.)

         Airhawk now moves to compel production of any trademark clearance-related documents that Ontel previously marked as privileged and to reopen ...


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