Protecting Confidential Legal Information

b. Preparation of Documents Must Be Motivated By Litigation

Some courts de-emphasize the temporal requirement of imminence in favor of consideration of the motivation for creating the allegedly protected material. Robinson v. Tex. Auto. Dealers Ass'n, 214 F.R.D. 432, 442 n. 6, vacated on other grounds, No. Civ. A. 5:97-CV-273, 2003 WL 21909777, at *1 (E.D. Tex. July 28, 2003) (noting that the "Fifth Circuit focuses more on the motivational factor than it does the temporal factor") (citing In re Kaiser Aluminum and Chem. Co., 214 F.3d 586, 593 (5th Cir. 2000)).

In establishing the "anticipation of litigation" prong of work product protection, a party must demonstrate that use in litigation was the motivation underlying preparation of a document subject to a claim of work product protection. The party asserting the work product doctrine carries the burden of proving that the writings or documents were prepared for litigation purposes. See Wyo. v. U.S. Dep't of Agric., 239 F. Supp. 2d 1219, 1231 (D. Wy. 2002), appeal dismissed and vacated as moot, 414 F.3d 1207 (10th Cir. 2005). Courts find that without more, merely citing a purpose of avoiding future litigation is an insufficient basis on which to assert work product protection, as such would "represent an insurmountable barrier to normal discovery and could subsume all compliance activities by a company as protected from discovery." In re Grand Jury Proceedings, No. M-11-189, 2001 WL 1167497, at *15 (S.D.N.Y Oct. 3, 2001) (quotations and citations omitted).

Regardless of the particular degree of litigation-related motivation that courts may require, virtually all courts hold that materials that are "assembled in the ordinary course of business, or pursuant to public requirements unrelated to litigation" are not protected. Fed. R. Civ. P. 26(b)(3) (advisory committee's note on 1970 Amendment); see also In re Grand Jury Subpoenas dated March 19, 2002 and August 2, 2002, 318 F.3d 379, 384-85 (2d Cir. 2003) (holding that work product protection did "not extend to documents in an attorney's possession that were prepared by a third party in the ordinary course of business and that would have been created in essentially similar form irrespective of any litigation anticipated by counsel"); Nat'l Union Fire Ins. Co. v. Murray Sheet Metal Co., 967 F.2d 980, 984 (4th Cir. 1992); In re Bairnco Corp. Sec. Litig., 148 F.R.D. 91, 103 (S.D.N.Y. 1993) (documents in the nature of facts and statistics, updates of claim status, costs and exposure were created for purpose other than preparation of litigation). But see United States v. Adlman, 134 F.3d 1194, 1204 (2d Cir. 1998) (documents prepared to inform a business decision were protected if the documents would not have been prepared but for anticipated litigation arising out of the business decision); 4 J. MOORE ET AL., MOORE'S FEDERAL PRACTICE P 26.64[3] (2d ed. 1983) (arguing that blind denial of protection to all materials prepared in the ordinary course of business is a misinterpretation). Attorney billing records are an example of an ordinary business record that may nevertheless be protected by the work product doctrine. Cardenas v. Prudential Ins. Co. of Am., No. Civ. 99-1422, 2003 WL 21302957, at *3 (D. Minn. May 16, 2003) (holding that attorney billing records containing narrative descriptions of conversations between clients and attorneys, the subjects of legal research or internal legal memoranda, and activities undertaken on the client's behalf prepared in anticipation of litigation are protected by attorney-client privilege and work product protection). Courts have held that "[d]ocuments prepared . . . pursuant to regulatory requirements are not classified as attorney work-product." Syngenta Crop Prot., Inc. v. U.S. Envtl. Prot. Agency, No. 1:02CV0334, 2002 WL 31778791, at *5 (M.D.N.C. Nov. 5, 2002); but see Pacific Gas & Elec. Co. v. U.S., 69 Fed. Cl. 784, 808 (Fed. Cl. 2006) (reviewing in detail the various tests for the work product doctrine and holding that the adversarial aspects of proceedings before the state public utility commission and nuclear regulatory commission constituted litigation for purposes of work product doctrine).

Pre-existing documents not prepared in anticipation of litigation may not be immunized merely by transmitting them to an attorney in response to the prospect of litigation. See Brown v. Hart, Schaffner & Marx, 96 F.R.D. 64, 68 (N.D. Ill. 1982). Similarly, the mere "fact that general counsel may be involved in oversight does not make it self-evident that the documents prepared were prepared in anticipation of litigation." Guardsmark, Inc. v. Blue Cross and Blue Shield, 206 F.R.D. 202, 210 (W.D. Tenn. 2002) (citing Sandberg v. Va. Bankshares, Inc., 979 F.2d 332, 356 (4th Cir. 1992). But see Triple Five of Minnesota, Inc. v. Simon, 212 F.R.D. 523, 528 (D. Minn. 2002) (finding that documents produced by in-house counsel were privileged where defendants had turned over hundreds of documents related to the in-house counsel's "business" function and the 10 year history of litigation of parties or threatened litigation made it likely that documents were prepared in anticipation of litigations). However, counsel's selection and compilation of pre-existing documents may constitute opinion work product. See Selection of Documents as Opinion Work Product, § IV.B.1.a., below; see also:

SmithKline Beecham Corp. v. Pentech Pharms., Inc., No. 00 C 2855, 2001 WL 1397876 (N.D. Ill. Nov. 6, 2001). "The threshold determination of work-product generally is whether, in light of the nature of the document and the factual situation in the particular case, the document can fairly be said to have been prepared for or obtained because of the prospect of litigation. Therefore, documents that were prepared for other reasons, such as documents created in the ordinary course of business, cannot be withheld as work-product." (emphasis in original.)

For purposes of applying the work product doctrine, courts differ with respect to the degree of motivation that a party must show to establish that a document was prepared in anticipation of litigation. Some courts, including the Second, Third, Fourth, Seventh, Eighth, Ninth and D.C. Circuits agree that "if in light of the nature of the document and the factual situation in the particular case, the document can fairly be said to have been prepared or obtained because of the prospect of litigation it is eligible for protection by the work-product privilege." Resolution Trust Corp. v. Mass. Mut. Life Ins. Co., 200 F.R.D. 183, 189 (W.D.N.Y. 2001) (internal quotations omitted) (emphasis in original); see also In re Grand Jury Subpoena (Mark Torf/Torf Env't Mgmt.), 357 F.3d 900, 908 (9th Cir. 2004) (adopting the "because of" standard in the Ninth Circuit); Mattenson v. Baxter Healthcare Corp., 438 F.3d 763, 767-69 (7th Cir. 2006) (work product doctrine protected notes written by in-house counsel during a meeting with a plaintiff's supervisors, even if the supervisors were not anticipating litigation, because the meeting notes were used by counsel to determine the company's "legal vulnerabilities"). Other courts, most notably the Fifth Circuit, have adopted the more stringent "primary motivating" factor test. See United States v. Davis, 636 F.2d 1028, 1040 (5th Cir. 1981); see also Garcia v. City of El Centro, 214 F.R.D. 587, 592 (S.D. Cal. 2003) (noting circuit split on when documents are prepared in litigation for purposes of the work product doctrine, finding no Ninth Circuit Authority rejects "primary motivating purpose" and "substantial probability" approach, court chooses to analyze particular factual elements of instant case) (citing Simon v. G.D. Searle & Co., 816 F.2d 397, 401 (8th Cir. 1987). Each approach is discussed below:

(1) Primary Motivating Factor Test

Some courts have concluded that preparation for litigation must be the primary motivating factor underlying the creation of a document in order to invoke work product protection. See McMahon v. Eastern S.S. Lines, Inc., 129 F.R.D. 197, 199 (S.D. Fla. 1989). The Fifth Circuit has been the leading circuit following this approach. S. Scrap Material Co. v. Fleming, No. Civ. A. 01-2554, 2003 WL 21474516, at *5 (E.D. La. June 18, 2003) (citing In re Kaiser Aluminum and Chem. Co., 213 F.3d 586, 592 n.19 (5th Cir. 2000)). Under this test, the Fifth Circuit recognized that:

It is admittedly difficult to reduce to a neat formula the relationship between the preparation of a document and possible litigation necessary to trigger the protection of the work-product doctrine. We conclude that litigation need not necessarily be imminent, as some courts have suggested, as long as the primary motivating purpose behind the creation of the document was to aid in possible future litigation.
United States v. Davis, 636 F.2d 1028, 1039 (5th Cir. 1981); S. Scrap Material Co. v. Fleming, No. Civ. A. 01-2554, 2003 WL 21474516, at *5-6 (E.D. La. June 18, 2003); Elec. Data Sys. Corp. v. Steingraber, No. 4:02 CV 225, 2003 WL 21653414, at *4 (E.D. Tex. July 9, 2003) (same). "Factors that courts rely on to determine the primary motivation for the creation of a document include the retention of counsel, his involvement in the generation of the document and whether it was routine practice to prepare that type of document or whether the document was instead prepared in response to a particular circumstance." S. Scrap Material Co. v. Fleming, No. Civ. A. 01-2554, 2003 WL 21474516, at *6-7 (E.D. La. June 18, 2003) (internal quotations omitted); see also:

United States v. Bornstein, 977 F.2d 112 (4th Cir. 1992). IRS issued a subpoena to defendant, a tax preparer and attorney, for the documents used to prepare a tax return. Court remanded for a determination of whether the materials were prepared primarily for defendant in his capacity as an accountant/tax preparer or as an attorney.

Simon v. G.D. Searle & Co., 816 F.2d 397, 401-02 (8th Cir. 1987). Defendant had compiled risk management documents giving an attorney's estimates of anticipated legal expenses, settlement values, etc. Court concluded that these documents served a variety of business planning purposes and that the risk management department was not involved in giving legal advice or strategy in any individual case. Thus, court held that the work product doctrine did not apply.

United States v. Gulf Oil Corp., 760 F.2d 292, 296-97 (Temp. Emer. Ct. App. 1985). Document does not get work product protection unless the primary motivating purpose behind its creation was to assist in impending litigation.

United States v. Davis, 636 F.2d 1028, 1040 (5th Cir. 1981). The test is whether the primary motivating factor behind the creation of the document was to prepare for pending or impending litigation.