Court Rules That Clinical Studies Ordered by Outside Lawyer Do Not Deserve Work Product Protection

April 2, 2008

Most lawyers assume that the work product doctrine protects studies ordered by outside counsel in reasonable anticipation of litigation. However, the protection only applies if the studies satisfy the doctrine’s separate “motivational” element.

In Proctor & Gamble Co. v. Ultreo, Inc., No. 07 Civ. 8379 (RJS), 2008 U.S. Dist. LEXIS 1463 (S.D.N.Y. Jan. 8, 2008), Proctor & Gamble sued Ultreo for alleged false advertising about its power toothbrush. Ultreo resisted Proctor & Gamble’s efforts to discover five scientific studies of the toothbrush, relying on an affidavit from Ultreo’s outside counsel (a lawyer from Kirkpatrick & Lockhart Preston Gates Ellis) “that he advised Ultreo to conduct the Studies because of the likely prospect of litigation from P&G.” Id. at *3. The court acknowledged that the lawyer reasonably concluded that P&G was likely to file a lawsuit, and that the clinical investigations “were necessary to bolster existing laboratory support for Ultreo’s advertising claims.” Id. at *12. However, the court explained that “[t]he fact that these investigations were undertaken in consultation with outside counsel, under the looming specter of litigation, does not, by itself, clothe them with protection.” Id. at *13. The court found that Ultreo could not demonstrate that the studies would not have been prepared “‘in substantially similar form but for the prospect'” of litigation (using the Second Circuit test for work product). Id. (citation omitted). The court noted that “clinical and laboratory studies were a core element of Ultreo’s business plan” — and that the studies ordered by outside counsel in preparation for litigation were “virtually indistinguishable” from earlier studies conducted only for business purposes. Id. at *11. Most importantly, the court pointed to several statements by Ultreo’s CEO to shareholders and employees — which (1) “did not differentiate between the studies now withheld as work product and Ultreo’s routine clinical studies that were to be used for commercial purposes,” and (2) did not make any “reference to the need to conduct such studies in anticipation of litigation.” Id. at *9, *10.

Lawyers hoping to protect material as work product must coordinate with their corporate clients’ management, so that company executives do not doom work product claims.