Case 1:08-cv-01533-BSJ -JCF Document 145 Filed 05/20/11 Page 1 of 16 UNITED STATES DISTRICT COURT (ECF) SOUTHERN DISTRICT OF NEW YORK - - - - - - - - - - - - - - - - - -: GARY FRIEDRICH ENTERPRISES, LLC : 08 Civ. 1533 (BSJ) (JCF) and GARY FRIEDRICH, : : MEMORANDUM Plaintiffs, : AND ORDER : -against- : : : MARVEL ENTERPRISES, INC., et al., : : Defendants. : - - - - - - - - - - - - - - - - - -: JAMES C. FRANCIS IV UNITED STATES MAGISTRATE JUDGE This is a copyright infringement action in which Gary Friedrich Enterprises, LLC and its principal, Gary Friedrich, allege that the defendants misappropriated characters and story elements developed by Mr. Friedrich when they created and distributed the movie “Ghost Rider” and related merchandise. The plaintiffs have moved by letter for an order reopening the deposition of a third-party witness, Roy Thomas, a former employee of defendant Marvel Entertainment, LLC (sued here as Marvel Enterprises, Inc.) (“Marvel”), at Marvel’s expense. For the reasons set forth below, the motion is denied. Background The plaintiffs allege that Mr. Friedrich “conceived, developed, created, articulated, particularized, authored and brought to life” the comic book character known as Ghost Rider, his alter ego Johnny Blaze, and the character and story elements that formed the basis for the original Ghost Rider comic book (the “Spotlight Work”) and subsequent series of comic books authored by 1 Case 1:08-cv-01533-BSJ -JCF Document 145 Filed 05/20/11 Page 2 of 16 Mr. Friedrich and published by Magazine Management, the former owner of Marvel Comics. (First Amended Complaint (“Compl.”), ¶¶ 65-67, 91, 94; Transcript of Deposition of Roy Thomas dated April 12-13, 2011 (“Thomas Dep.”) at 15). The plaintiffs claim that, in 1971, Mr. Friedrich conceived of all of the elements of the Ghost Rider series independently and for his own profit, and then initiated a meeting in which he persuaded Magazine Management to publish comic books based on this idea. (Compl., ¶¶ 82-84). The plaintiffs concede that Magazine Management owned the copyright for the Spotlight Work for the first twenty-eight years following its publication, but argue that, after that period, the copyright “reverted to the author of the work,” Gary Friedrich. (Compl., ¶¶ 95-98). Marvel argues, in contrast, that “Friedrich and several other individuals engaged by MMC made creative contributions to” the Spotlight Work and that it was a “work[] made for hire” for which Marvel has been and continues to be the exclusive copyright holder. (Counterclaims, ¶¶ 14-15). Roy Thomas was employed by Marvel Comics from 1965 to 1980, working as a writer, editor, and, for some time, editor-in-chief. (Thomas Dep. at 15, 176-86). Mr. Thomas is also a longtime friend of Mr. Friedrich and was responsible for helping Mr. Friedrich to get a job at Marvel Comics in 1966. (Thomas Dep. at 12, 29-32, 137). Mr. Thomas participated in the creation of the Spotlight Work and thus his testimony is highly relevant to resolving the factual dispute at the heart of this action. (Thomas Dep. at 46- 50, 55-57, 63-66, 69-70, 87-98). Mr. Thomas was deposed in 2 Case 1:08-cv-01533-BSJ -JCF Document 145 Filed 05/20/11 Page 3 of 16 connection with this case on April 12 and 13, 2011; at his deposition, he was asked several questions regarding his interactions with the attorneys representing Marvel, which those lawyers directed him not to answer on the ground that the substance of the communications are protected by the attorney-client privilege. (Thomas Dep. at 100-11, 126-28, 151-56). Discussion The plaintiffs contend that Marvel improperly asserted the attorney-client privilege with respect to some of Mr. Thomas’s responses to their questions and that they should be permitted to inquire into the substance of the communications between Mr. Thomas and counsel for Marvel. (Letter of Charles S. Kramer dated April 15, 2011) (“Kramer Letter”) at 7). In particular, the plaintiffs contend, first, that the attorney-client privilege as it is applied to former employees of the defendant corporations does not protect the communications between counsel and Mr. Thomas (Kramer Letter at 3-6); and, second, that Marvel may not assert this privilege in any event because it has not established that it is the successor corporation to the companies with which Mr. Thomas had an employer- employee relationship (Kramer Letter at 6-7). Marvel argues, in response, that counsel is representing Mr. Thomas personally in connection with his deposition in this case and that the attorney- client privilege therefore protects their communications with him irrespective of Marvel’s ability to assert any privilege. (Letter of Jodi A. Kleinick dated May 6, 2011 (“Kleinick Letter”) at 2, 4- 5). In the alternative, they contend that Marvel is indeed the 3 Case 1:08-cv-01533-BSJ -JCF Document 145 Filed 05/20/11 Page 4 of 16 legal successor to Mr. Thomas’s employer and therefore is entitled to assert the privilege with respect to its counsel’s conversations with him; that these conversations are within the category of former employee conversations immune from discovery under the attorney-client privilege; and that, to the extent they are not, they are protected by the work product doctrine. (Letter of David Fleischer dated April 20, 2011 (“Fleischer Letter”) at 2-3; Kleinick Letter at 3-5). A. Attorney-Client Privilege and Work Product Doctrine “The attorney-client privilege is the oldest of the privileges for confidential communications known to the common law.” Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). By facilitating “‘full and frank communication between attorneys and their clients,’” the attorney-client privilege lays the foundation for effective representation. United States v. Zolin, 491 U.S. 554, 562 (1989) (quoting Upjohn, 449 U.S. at 389). The attorney-client privilege protects from disclosure communications among clients and counsel made for the purpose of obtaining legal advice, provided that the communications were intended to be kept confidential and the privilege has not been waived.1 See United States v. 1 The Federal Rules of Evidence typically control civil actions in federal court, regardless of subject matter jurisdiction, although where state law supplies the rule of decision, state law determines the existence and scope of the attorney-client privilege. Fed. R. Evid. 501; accord Gulf Islands Leasing, Inc. v. Bombardier Capital, Inc., 215 F.R.D. 466, 470 (S.D.N.Y. 2003); Shamis v. Ambassador Factors Corp., 34 F. Supp. 2d 879, 892 (S.D.N.Y. 1999). Federal law always controls application of the attorney work product doctrine. See Fed. R. Civ. P. 26(b)(3); Tompkins v. R.J. Reynolds Tobacco Co., 92 F. Supp. 2d 70, 75 (N.D.N.Y. 2000). Here, the only claims remaining in the case 4 Case 1:08-cv-01533-BSJ -JCF Document 145 Filed 05/20/11 Page 5 of 16 International Brotherhood of Teamsters, 119 F.3d 210, 214 (2d Cir. 1997); Amnesty International USA v. CIA, 728 F. Supp. 2d 479, 518-19 (S.D.N.Y. 2010). The burden of establishing each of the elements of the privilege rests on the party asserting it. See In re Grand Jury Subpoenas Dated March 19, 2002 and August 2, 2002, 318 F.3d 379, 384 (2d Cir. 2003); Pure Power Boot Camp v. Warrior Fitness Boot Camp, 587 F. Supp. 2d 548, 563 (S.D.N.Y. 2008). It is beyond question that corporations as well as individuals are entitled to assert the privilege. See Upjohn, 449 U.S. at 386; Commodity Futures Trading Commission v. Weintraub, 471 U.S. 343, 348 (1985). As the Supreme Court has observed, however, [t]he administration of the attorney-client privilege in the case of corporations . presents special problems. As an inanimate entity, a corporation must act through its agents. A corporation cannot speak directly to its lawyers. Similarly, it cannot directly waive the privilege when disclosure is in its best interest. Each of these actions must necessarily be undertaken by individuals empowered to act on behalf of the corporation. Weintraub, 471 U.S. at 348. Thus, for a solvent corporation, corporate management, acting through its officers and directors, has the authority to exercise the privilege, a power that must be exercised consistently with management’s fiduciary duties. Id. at 348-49. “The work product doctrine ‘is intended to preserve a zone of arise under the federal Copyright and Lanham Acts. (Compl; Counterclaims; Report and Recommendation dated June 26, 2009 at 3l; Order dated May 3, 2009; Report and Recommendation dated May 4, 2011 at 1). Therefore, federal common law governs the application of both the attorney-client privilege and the work product doctrine. 5 Case 1:08-cv-01533-BSJ -JCF Document 145 Filed 05/20/11 Page 6 of 16 privacy in which a lawyer can prepare and develop legal theories and strategy “with an eye toward litigation,” free from unnecessary intrusion by his adversaries.’” William A. Gross Construction Associates, Inc. v. American Manufacturers Mutual Insurance Co., 262 F.R.D. 354, 359 (S.D.N.Y. 2009) (quoting United States v. Adlman, 134 F.3d 1194, 1196 (2d Cir. 1998)). To warrant protection, a document or communication must have been prepared in anticipation of litigation by or for a party, or by his representative. Gulf Islands Leasing, Inc., 215 F.R.D. at 474. As with the attorney-client privilege, the plaintiff bears the “heavy burden” of establishing the applicability of the work product doctrine. In re Grand Jury Subpoena Dated July 6, 2005, 510 F.3d 180, 183 (2d Cir. 2007). B. Ownership of the Privilege 1. Individual Representation As an initial matter, counsel for Marvel argue that the attorney-client privilege plainly protects their communications with Mr.