1. Cross-border Attorney-Client Privilege Issues
Association of Corporate Counsel
© 2015
The information contained in these materials should not be construed as legal advice or legal opinion on specific facts, and should not be considered representative of the views of ACC or any of its lawyers or consultants, unless so stated. The information contained in these materials is not intended to be a definitive statement on the subject but rather to serve as a resource providing practical information for the reader.

2. Attorney-Client Privilege Introduction
What is Attorney-Client Privilege in the US?
Evidentiary protection of communications between clients and their attorneys against disclosure
Elements of US Attorney-Client Privilege
Communication between an attorney (or a rep. of an attorney) and a client (or a rep. of a client)
Made confidentially
Made for the purpose of obtaining or providing legal advice
Restatement (Third) of the Law of Governing Lawyers § 68
Who controls privilege in the US
The client or person/entity that sought to be a client

3. Attorney-Client Privilege Introduction
Common Law Countries
USA
Exists: yes
IHC: yes – additional requirements
Foreign counsel: yes
Third party comm.: when assisting an attorney
Country 2
Exists:
IHC:
Foreign counsel:
Third party comm.:
Country 3

4. Attorney-Client Privilege Introduction (Cont’d)
Civil Law Countries
Country 1
Protection mechanism: Confidentiality/Professional secrecy
Scope: right to refuse to testify and not to disclose client’s information
In-house counsel: Yes
Foreign lawyers: unclear
Country 2
Protection mechanism:
Scope:
In-house counsel:
Foreign lawyers:

5. Attorney-Client Privilege Introduction (Cont’d)
Special Regime Countries Like People’s Republic of China (mixture of civil and socialist law)
China
Protection mechanism: General duty of confidentiality
Scope: lawyer can be ordered to disclose confidential information
In-house counsel: Yes
Foreign lawyers: Not differentiated
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6. Attorney-Client Privilege Issues
Are the following communications privileged?
Between US in-house counsel and US employees
Between US in-house counsel and non-US employees
Are they privileged in a US forum ? Are they privileged in a non-US forum?
Between non-US in-house counsel and non-US employees
Between patent agents and employees
Are they privileged in a US forum? Are they privileged in a non-US forum?
What will help us navigate these issues?
Role and status of in-house counsel in jurisdiction at issue
Forum in which privilege issue will be resolved
Choice of law rule of the forum

7. Hypothetical 1
An in-house attorney in the US interviews employees located in France in order to obtain information to defend the organization in a US lawsuit.
Is there privilege in the US? 
What if the interviewer was a paralegal working at the direction of the in-house attorney?
What if the lawsuit is brought in Canada?
If the in-house counsel is located in France, is there privilege in the US?

8. Hypothetical 1 (Cont’d)
An in-house attorney in the US interviews employees located in France in order to obtain information to defend the organization in a US lawsuit.
Is there privilege in the US?  Is there work product protection in the US?
Communications “touching base” with the U.S. are governed by federal discovery rules.
Tulip Computers Int’l B.V. v. Dell Computers Corp., 210 F.R.D. 100 (D. Del. 2002)
Communications with in-house counsel are protected by attorney-client privilege as long as requirements are met.
Upjohn Co. v. United States, 449 U.S. 383 (1981)

9. Hypothetical 1 (Cont’d)
An in-house attorney in the US interviews employees located in France in order to obtain information to defend the organization in a US lawsuit.
What if the interviewer was a paralegal working at the direction of the in house attorney?
Communications with non-attorneys acting at the direction of an attorney may be privileged
U.S. v. Kovel, 296 F.2d 918 (2d Cir. 1961)
What if the lawsuit is brought in Canada?
Communications with non-attorneys may be privileged when the third party serves as a “channel of communication” between the client and solicitor, i.e., essential to the communication.
General Accident Assurance Co. v. Chrusz, 1999 CarswellOnt 2898 (ONCA)

10. Hypothetical 1 (Cont’d)
An in-house attorney in the US interviews employees located in France in order to obtain information to defend the organization in a US lawsuit.
If the in-house counsel is located in France, is there privilege in the US? Would US courts apply functional equivalence?
In France IHC can provide legal advice, but are not permitted on the list of “advocats” or “conseils juridiques”
Renfield Corp. v. E. Remy Martin & Co., 98 F.R.D. 442 (D. Del. 1982)
The test for attorney-client privilege “is a functional one of whether the individual is competent to render legal advice and is permitted by law to do so”
Anwar v. Fairfield Greenwich Ltd, 2013 WL , (S.D.N.Y.)
No privilege extended to Dutch in-house who was unlicensed
Louis Vuitton Malletier v. Dooney & Bourke, 2006 WL (S.D.N.Y.)
Because French law does not provide privilege for French in-house counsel, parties to the comm. did not expect that it would be confidential

11. Hypothetical 2
The organization is planning to acquire a company in Brazil.  Are communications with the investment banker and other non-attorney consultants protected by attorney-client privilege?
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12. Hypothetical 2 (Cont’d)
The organization is planning to acquire a company in Brazil.  Are communications with the investment banker and other non-attorney consultants protected by attorney-client privilege?
Privileged communications shared with consultants who act for the corporation and possess information needed by attorneys in order to render legal advice are protected by the attorney-client privilege
FTC v. GlaxoSmithKline, 294 F.3d 141, 148 (D.C. Cir. 2002)
In re Copper Mkt. Antitrust Litig., 200 F.R.D. 213, 219 (S.D.N.Y. 2001)
McCaugherty v. Siffermann, 132 F.R.D. 234, 239 (N.D. Cal. 1990)

13. Hypothetical 3
An employee in Brazil calls the corporate compliance hotline and describes a bribery incident in Brazil.  A compliance professional, working at the direction of in-house counsel in the US conducts an investigation.  Is there privilege over their communications with the employees in Brazil?
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14. Hypothetical 3 (Cont’d)
An employee in Brazil calls the corporate compliance hotline and describes a bribery incident in Brazil.  A compliance professional, working at the direction of in-house counsel in the US conducts an investigation.  Is there privilege over their communications with the employees in Brazil?
Upjohn Co. v. United States, 449 U.S. 383 (1981)
Communications made by and to non-attorneys serving as agents of attorneys in internal investigations are generally protected by the privilege
In re Kellogg Brown & Root, Inc., ET AL., Case No (D.C. Cir. Jun 27, 2014)
Gucci America, Inc. v. Guess?, Inc., 271 F.R.D. 58 (S.D.N.Y. 2010) (communications with unlicensed Italian in-house counsel were privileged because Italian counsel was acting at the direction of licensed attorney)

15. Hypothetical 3 (Cont’d)
An employee in Brazil calls the corporate compliance hotline and describes a bribery incident in Brazil.  A compliance professional, working at the direction of in-house counsel in the US conducts an investigation.  Is there privilege over their communications with the employees in Brazil?
Is there privilege if foreign law applies?
Only if comparable privilege would apply in foreign jurisdiction
It is helpful to provide expert testimony regarding foreign substantive law as well as the analysis of another US court
Or,
If US court decides to apply US law on public policy grounds
Astra Aktiebolag v. Andryx Pharms., 208 F.R.D. 92 (S.D.N.Y. 2002)

16. Hypothetical 3 (Cont’d)
An employee in Brazil calls the corporate compliance hotline and describes a bribery incident in Brazil.  A compliance professional, working at the direction of in-house counsel in the US conducts an investigation.  Is there privilege over their communications with the employees in Brazil?
What if the communications were between a China employee and China in-house counsel?
Choice of law rule
In China: no
In the US:
Touch-base test
Even if foreign law would not afford privilege protection, U.S. courts may still protect non-U.S. party on public policy grounds. Astra Aktiebolag v. Andryx Pharms., 208 F.R.D. 92 (S.D.N.Y. 2002)

17. Practical Tips for Protecting Privilege
Identify potential forum(s)
Understand the following information for each jurisdiction:
Status and role of in-house counsel
Privilege vs. professional secrecy and scope of protection
Whether protection applies to communications between foreign in-house counsel and employees
Ensure in-house counsel providing legal advice are licensed to practice law somewhere
Use counsel to whom protection is afforded and weight strategic use of foreign counsel
Avoid litigation in unfavorable forum:
Transactions: consider broadening choice-of-law provisions to include privilege law selections

18. Practical Tips for Protecting Privilege
Train employees on attorney-client privilege and document circulation
Privileged documents should be circulated “on a need to know basis”
Exercise diligence to protect privilege but assume documents may be disclosed
Document the purpose of the communication (i.e., obtain legal advice for the corporation)
Mark documents as “privileged”, “attorney work product” or “litigation privilege” as applicable
Weight role of non-lawyers
In the US: will they assist the lawyer in providing legal advice?
In Canada: will they be integral to the solicitor-client relationship?

19. Association of Corporate Counsel
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Association of Corporate Counsel