TiVo v Echostar: Movement in Georgia

One stockholder’s take…

In the ongoing legal maneuvering over the disclosure of documents relating to the Merchant & Gould “Opinion Letter” (of non-infringement), Judge William Duffey of the U.S. Circuit Court in northern Georgia issued the following order on 3/22:

ORDER DIRECTING that Echostar and Homer Knearl SHOW CAUSE by 3/30/07, why the following documents should not be produced: MG PRIV 16, 27, 32-35, 37, 55, 68, 69, 72, 73, 75, 85, 88, 95, 105, 177, 179, 180, 271, 274, 276, 287, 291, and 305. Echostar or Knearl must state in detail for each document the privilege asserted, and the grounds for that privilege, including a description of the identity and role of each author, recipient, cc recipient, or bcc recipient of the document. IT IS FURTHER ORDERED that if any portion of the above documents was submitted to the Court in redacted form, unredacted copies be provided for in camera review by 3/30/07. These documents shall be marked in such a way as to allow the Court to discern easily which portions were previously redacted. Signed by Judge William S. Duffey Jr. on 3/22/07. (kt) (Entered: 03/22/2007)

The clarified rules of discovery issued by a U.S. Court of Appeals last year for this situation require documents to be produced to TiVo only if they were communicated by the law firm to the client (i.e., Echostar), or if they reference a communication with the client.

It would seem, then, that Judge Duffey has reason to believe that some of the documents for which Echostar claims attorney-client privilege were communicated to Echostar and therefore forfeit that privilege.* Echostar now needs to show cause as to why those documents should not be produced to TiVo. It will then be up to the judge to decide which, if any, of them should be delivered to TiVo.

A few of the documents listed above are drafts of the opinion letter itself (of which there were a remarkable number), but most are email whose only description is “Internal Communication.” Document number 305, however, is listed as “Merchant & Gould Invoices.” One wonders what sort of invoice a law firm would not communicate to its client. Maybe they were “internal” invoices.

*Recall that when an infringing party defends against a charge of willfulness by claiming they relied upon the opinion of counsel (that they were not infringing), they forfeit attorney-client privilege. Anything that was communicated to them from that counsel bears directly upon what they reasonably believed regarding the infringement.

(Thanks for the tip, mtchamp!)