Did You Mean: Attorney-Client Privileged?

Case: In re Google, 2012 U.S. App. LEXIS 244, Misc. Docket No. 106 (Fed. Cir. Feb. 6, 2012).

Topic:  Internal Investigations and Attorney-Client Privilege.


In August 2010, Oracle sued Google claiming that Google's Android smartphone platform infringed Oracle patents. During early discovery, Google inadvertently produced "autosave," or draft, versions of an email it had listed in its privilege log. A Google engineer wrote the email to the Vice President of the Android platform and Google Senior Counsel, and included the designation "Attorney-Work Product," at the top of it. The email conveyed that Google's founders had asked the engineer to look into alternatives for the Android platform, and the engineer responded that no viable options existed and that Google should negotiate a license from Oracle to use Java intellectual property in Google's Android smartphone.

Google tried to clawback all versions of the email. It argued that the email was part of an internal investigation conducted by the Senior Counsel, and was therefore protected by the attorney-client privilege and work-product doctrine. The district court rejected Google's protection claims because Google had not met its burden of making a "clear showing" that the email was sent to the Senior Counsel in his capacity as an attorney conducting a legal investigation, and the Court of Appeals for the Federal Circuit agreed. The court specifically rejected Google's argument that the district court's decision diluted the privilege provided for in Upjohn  v. United States, 449 U.S. 391 (1981), because a party claiming privilege must "sufficiently establish the communication at issue relates to professional legal services as opposed to business considerations." The court of appeals also agreed that Google's "briefly raised" work-product claim suffered from the same defects as its attorney-client-privilege claim.

BuLITS Points

  • "CC" ≠ Attorney-client privilege. Just putting in-house counsel on a distribution list is not enough to coat a communication in attorney-client privilege or work-product protection. The court in Google required that the party claiming privilege make a "clear showing" that the involved communication relate to in-house counsel working in their capacity as an attorney conducting a legal investigation.
  • Title alone does not create privilege. Google claimed that the "clear showing" requirement only applied if inside counsel worked in a dual capacity job, but the court said that job title doesn't matter-it's the nature of the communication that counts.
  • Review what you are producing-and what's been produced. It goes without saying: if even Google can't get a hold of its metadata, it is necessary for you to take the extra precautions to carefully review what you are producing in discovery. And, review what's been produced if you are the receiving party-including the privilege log. Would Oracle have looked twice at this email as it was described in the privilege log if the draft versions hadn't been produced?

And Remember

Just like including an attorney on an email list doesn't necessarily invoke the attorney-client privilege, typing "Attorney Work Product" on a document isn't always enough to bestow work-product protection status.

The articles on our Website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice.