The Gucci Fallout Continues

December 8, 2010

A previous Privilege Point noted that the Southern District of New York denied privilege protection for communications to and from a Gucci in-house lawyer (Moss) – because he was not authorized to practice law in any state. Gucci Am., Inc. v. Guess?, Inc., No. 09 Civ. 4373 (SAS) (JLC), 2010 U.S. Dist. LEXIS 65871 (S.D.N.Y. June 29, 2010). Not surprisingly, that earlier ruling continues to haunt Gucci.

In the same case, Gucci America, Inc. v. Guess? Inc., 2010 U.S. Dist. LEXIS 101219 (S.D.N.Y. Sept. 23, 2010), United States Magistrate Judge James Cott dealt with several other privilege issues. Among other things, he rejected a privilege claim for an e-mail from a Gucci paralegal to Moss. In that e-mail, the paralegal “opines that a particular Guess product may infringe on a Gucci trademark, and requests Moss’s opinion regarding the same.” Id. at *55. The court concluded that the e-mail “does not seek the advice of counsel (as Moss is not an attorney for attorney-client privilege purposes), and a paralegal’s opinion that the product may infringe on a trademark does not meet the standard contemplated by the privilege.” Id.

Some courts might take a more liberal attitude toward an e-mail like this – concluding that the paralegal was acting under some lawyer’s general supervision or historical instructions. However, the Gucci opinions continue to provide useful warnings for any companies employing in-house lawyers, or paralegals.

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