Dancing Kids YouTube Poster's E-Mail Not Protected by Attorney-Client Privilege

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E-mail messages to friends and other statements made by the mother who posted videos of kids dancing to a recording of Prince's copyrighted “Let's Go Crazy” were not protected by attorney-client privilege and were thus discoverable in her action for misrepresentation against the record company, the U.S. District Court for the Northern District of California ruled Nov. 17 (Lenz v. Universal Music Corp., N.D. Cal., No. 07-cv-03783, 11/17/10).

Upholding a magistrate judge's order to compel discovery, the court ruled that the privilege had been waived because the communications related to the actual substance of the plaintiff's conversations with her counsel and may lead to discoverable evidence about her claimed injury. The court said that when a client reveals to a third party that something is “what my lawyer thinks,” she cannot avoid discovery on the basis that the communication was confidential.

Fair Use Inquiry in YouTube Video.

Stephanie Lenz videotaped her children dancing to the song “Let's Go Crazy” by the artist Prince. Lenz uploaded the song to the internet video hosting site YouTube.com.

Universal Music Corp., which owns the copyright to the recording, sent a takedown notice to YouTube pursuant to Title II of the Digital Millennium Copyright Act, 17 U.S.C. § 512, alleging copyright infringement. YouTube removed the video, but Lenz then sent YouTube a counter-notification pursuant to 17 U.S.C. §512(g), asserting that her video constituted fair use of the song and thus did not infringe. YouTube then re-posted the video, where it was eventually viewed over 800,000 times.

Lenz, represented by the Electronic Frontier Foundation, sued Universal for misrepresentation under 17 U.S.C. §512(f), alleging that Universal sent the takedown notice only to appease Prince, and not based on any good faith belief that it had infringed a copyright (74 PTCJ 413, 8/3/07). The U.S. District Court for the Northern District of California ruled that the good faith belief standard for issuing a takedown notice under the DMCA requires copyright holders to consider whether the use of a copyrighted work falls within fair use exceptions to the Copyright Act and held that Lenz's allegations were sufficient to state a misrepresentation claim against Universal (76 PTCJ 626, 8/29/08).

In February, Judge Jeremy Fogel granted Lenz's motion for summary judgment on Universal's affirmative defenses of bad faith, unclean hands, no damages, estoppel, and waiver (79 PTCJ 513, 3/5/10).

Prior to and during the litigation, Lenz made comments in e-mails and electronic chats with friends, postings on her blog, and statements to reporters, in which she discussed conversations she had with her counsel. One such communication involved an e-mail to a friend in which she stated that the Electronic Frontier Foundation was very interested in the case and that “EFF is pretty well salivating over getting their teeth into [Universal Music Group] yet again.” Universal moved to compel discovery relating to such conversations, alleging that Lenz had waived attorney-client privilege.

Magistrate Judge Patricia V. Trumball ordered compelled discovery, finding that the privilege had been waived in three areas and required production of responsive documents and additional hours of deposition.

Lenz objected to the ruling and sought relief.

Reason for Pursuing Litigation Statements Allowed.

Universal argued that statements by Lenz about her motivations for this action are relevant to show whether and to what extent Lenz was injured by Universal's takedown notice.

Lenz, however, argued that her comments disclosed only information regarding her counsel's motives for representing her pro bono and therefore did not waive the attorney-client privilege with respect to her own motivations for filing the suit.

Judge Jeremy Fogel found no clear error in Trumball's finding that Lenz's communications with the third parties related to the actual substance of her conversations with her attorney and thus, that Universal could obtain further discovery.

“Because information about Lenz's motivations for filing suit reasonably may lead to discoverable evidence about her claimed injury, her conversations about those motivations are discoverable if the privilege has been waived with respect to that subject matter,” the court said. “[T]here is no 'bright line test' for determining what constitutes the subject matter of a waiver. Instead, courts must weigh 'the circumstances of the disclosure, the nature of the legal advice sought and the prejudice to the parties of permitting or prohibiting further disclosures.'”

The court said that the circumstances of Lenz's disclosures indicated that her motivations for filing the suit and EFF's motivations for representing her were closely intertwined and could not be easily separated. “Such integration is well illustrated in Lenz's statement to her mother that EFF was planning a 'publicity blitz and/or a lawsuit against Universal,'” the court said. “While the statement indicates that EFF was planning the lawsuit against Universal, no such suit could be undertaken without active involvement by Lenz. The statement also suggests that EFF was considering the possibility of a publicity blitz in lieu of a lawsuit, indicating that EFF had some say as to whether the suit went forward.”

Thus, the court said that Universal was entitled to examine the content of Lenz's voluntary statements in order to asses their probative value, if any.

Rossi Decision, Factual Allegations Discussed.

In addition, Lenz made disclosures to third parties about communications she had with EFF about specific legal issues. Specifically, Lenz discussed in an electronic chat with a friend that “I told [EFF] counsel … that since pursuing the federal portion of the case achieves the ends I have in mind, that's fine to drop the state portion (that they filed a false DMCA notice, tha[t] they're accusing me of copyright infringement and that a ruling in your case could clarify a cloudy decision known as 'Rossi'),” referencing Rossi v. Motion Picture Association of America Inc., 391 F.3d 1000, 73 USPQ2d 1046 (9th Cir. 2004) (69 PTCJ 133, 12/10/04; 69 PTCJ 133, 12/10/04).

The court said that the reference to “clarifying Rossi“ as one of the “ends I have in mind,” is relevant to Lenz's motivations in pursuing her case, which, as discussed above, is relevant to Lenz's damage claims. Thus, Trumball's determination that Lenz voluntarily waived the attorney-client privilege as to this matter was not clearly erroneous.

Finally, the court addressed Trumball's determination that Lenz voluntarily waived the attorney-client privilege when she discussed with third parties subject matter that Universal contended was relevant to Lenz's factual allegations.

“When a client reveals to a third party that something is 'what my lawyer thinks,' she cannot avoid discovery on the basis that the communication was confidential,” the court said. “Nor did Judge Trumball clearly err in determining that the comments at issue are relevant to 'specific factual allegations,' about which Universal may obtain further discovery. … [T]he nature and extent of the investigation by Lenz and her counsel to determine whether Lenz had infringed a copyright may be relevant to the issue of whether Universal itself should have known that there was no copyright violation.”

The court concluded:  

Finally, Lenz's assertion in her deposition testimony that she may have based her earlier comment that her case was “not a 'fair use' case at all” on conversations with her attorneys--even if her interpretation of those conversations was mistaken--waived any claim of privilege. A party may not attempt to explain an apparent admission as a misinterpretation of a conversation with counsel, and then deny the opposing party on the basis of privilege access to the very conversations at issue. 




Thus, the court overruled Lenz's objections, finding Trumball's order neither erroneous nor contrary to law.

Lenz was represented by Corynne McSherry of the Electronic Frontier Foundation, San Francisco. Universal was represented by Kelly M. Klaus of Munger Tolles & Olson, Los Angeles.

By Nathan Pollard

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