1. Introduction to Attorney-Client Privilege
Attorney-Client Privilege Issues & Hypotheticals
Practical Tips for Protecting Privilege

2. Introduction to U.S. Attorney-Client Privilege
What is Attorney-Client Privilege in the U.S.?
Evidentiary protection of communications between clients and their attorneys against disclosure
Elements of U.S. 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
Promote full and open discussion between the attorney and client
In the U.S., the client or person/entity that sought to be a client holds the privilege

3. Introduction to U.S. Work Product Protection
What is Work Product Protection in the U.S.?
Protects thoughts and impressions of the attorney prepared in anticipation of litigation from disclosure
Can include communications, memos, attorney notes
Protection is lifted if opposing party shows substantial need and is unable to obtain the information without undue hardship
Allow attorney privacy to prosecute or defend litigation
Held by both the attorney and the client
Litigation privilege in other common law countries

4. ● Is a communication privileged? ● How do we navigate these issues?
-Role and status of in-house counsel in jurisdictions at issue
-Forum in which privilege issue will be resolved
-Choice of law rule of the forum

5. Privilege in Asia HONG KONG: English case law authority SINGAPORE:
Applies to in-house counsel's communications when advice is purely legal or in relation to current or contemplated litigation
SINGAPORE:
Legal Advice Privilege: Protects confidential communications between client and lawyer
Litigation Privilege: Protects information and materials created and collected for litigation purposes
Applies to in-house counsel and foreign attorneys.

6. Privilege in Asia CHINA:
Attorney-client privilege not a recognized principle under the laws of the People's Republic of China.
The Lawyer's Law, Article 38, imposes statutory ethical duty of confidentiality for "clients' private information" and trade secrets, or if client requests, BUT…
If a client's activities would jeopardize national and public security, or if a client's actions could cause someone serious personal or property damage, then a lawyer must inform government authorities of those activities ….
Attorneys may be obligated to provide testimony in a civil or criminal case.
PRC law does not protect the attorney-client privilege of foreign lawyers practicing under foreign laws in China; foreign lawyers must comply with the Civil Procedure Law, Lawyer's Law, and rules for lawyers' professional ethics and practice.

7. Privilege in Asia JAPAN:
Japanese and registered-foreign attorneys have the right and obligation to hold in confidence secret information obtained during the course of their professional duties.
Japanese and registered-foreign attorneys may refuse to testify as a witness in a court when questioned about their knowledge of confidential facts obtained during course of their professional duties.
Applies to in-house counsel if they are Bengoshi (lawyers admitted in Japan) and Gaikokuho Jimu Bengoshi (foreign law business lawyers registered in Japan).

8. Privilege in EU
All member states in the European Union recognize some form of privilege, professional secrecy, and/or confidentiality.
Application and scope vary among members states
Legal Professional Privilege ("LPP")
Often no civil procedure equivalent to documentary discovery or disclosure.
In-house counsel definitions/rules vary:
Legal professional registered with bar
Legal professional not registered
Other rules governing in-house counsel

9. Privilege in EU
Majority of EU countries recognize confidentiality obligations between a lawyer and client but do not recognize privilege for in-house counsel. These include:
Italy
Austria
Belgium
Finland
France
Greece

10. Privilege in EU
Some member states do recognize the privilege for inside counsel:
Denmark
Germany
Netherlands
Portugal
Spain
Sweden UK
Denmark, Greece, and Romania, and do not distinguish between inside and outside counsel.
Germany, Netherlands, Portugal and Sweden recognize a limited privilege for inside counsel.

11. Privilege in Other Jurisdictions
Australia: "Legal Professional Privilege" or "Client Legal Privilege" generally recognized for both outside and in-house counsel.
Brazil: Attorney-client privilege recognized through confidentiality mechanisms for both outside and in-house counsel. Unclear whether applies to foreign counsel.
Canada: Solicitor-Client Privilege for both outside and in-house counsel subject to substantial purpose test. Applies to foreign counsel.
Egypt: Attorney-Client privilege recognized, for both outside and in-house counsel.
India: Privilege recognized but in-house counsel communications not recognized. Ambiguous as to whether foreign counsel are covered.
Mexico: Attorney-Client privilege recognized for both outside and in-house counsel.
Saudi Arabia: Attorney-Client privilege recognized for outside, but not in-house, counsel.
South Africa: Attorney-Client privilege recognized for outside counsel, but unanswered as to inside counsel.
Source:

12. Privilege in Other Jurisdictions
Russia, Azerbaijan, Kazakhstan, Ukraine:
Division between “Lawyers” and “Advocates”
Advocates covered by limited LPP
No Bar membership requirement for non-advocate lawyers
No Privilege for non-advocate lawyers
No general concept of confidentiality for lawyers, unless imposed contractually

13. Foreign Privilege in U.S. Courts
In international disputes, where alleged privileged communications took place in a foreign country or involved foreign attorneys or proceedings, courts defer to the law of the country that has the "predominant" or "most direct and compelling interest." Astra Aktiebolag v. Andrx Pharmaceuticals, Inc., 208 F.R.D. 92, 98 (S.D.N.Y. 2002); Golden Trade, S.r.L. v. Lee Apparel Co., 143 F.R.D. 514, 522 (S.D.N.Y. 1992).
Court notes difficulty in applying foreign country's privilege rules within US discovery.
Comity requires consideration of context.
Courts will often apply the laws of the country in which the privileged communication took place.

14. Foreign Privilege in U.S. Courts
Anwar v. Fairfield Greenwich Ltd, 982 F.Supp.2d 260 (S.D.N.Y. 2013)
In choice of law determination, courts consider the country with which the communications "touch base."
Analysis means court should apply the law of the country that has the predominant or the most direct and compelling interest in whether [the] communications should remain confidential, unless that foreign law is contrary to the public policy of this forum. (Citing Astra Aktiebolag.)
The jurisdiction with the predominant interest is either the place where the allegedly privileged relationship was entered into or the place in which that relationship was centered at the time the communication was sent.
Communications concerning legal proceedings in the United States or advice regarding United States law are typically governed by United States privilege law, while communications relating to foreign legal proceedings or foreign law are generally governed by foreign privilege law.

15. Foreign Privilege in U.S. Courts
Documents may not be privileged, even if they would be under U.S. law:
Malletier v. Dooney & Bourke, Inc., 2006 WL , at *17 (S.D.N.Y. Nov. 30, 2006): No privilege because communications of French in-house counsel were not privileged under French law, and thus, parties engaged in communications had no expectation that they would be confidential.
In re Rivastigmine Patent Litig., 237 F.R.D. 69 (S.D.N.Y. 2006), aff'd in part, remanded in part, 239 F.R.D. 351 (S.D.N.Y. 2006): Court applied Swiss law and found that communications between Swiss patent agent, his clients, and Swiss in-house counsel were not privileged.

16. Hypothetical 1: U.S. Litigation
An attorney in a U.S. litigation office interviews employees located in France in order to obtain information to defend Company X in a U.S. product liability suit.
Is there privilege in the U.S.?  Is there work product protection in the U.S.?
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 U.S.?

17. Is there privilege in the U. S
Is there privilege in the U.S.?  Is there work product protection in the U.S.?
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, U.S. 383 (1981)
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)

18. If the in-house counsel is located in France, is there privilege in the U.S.? Would U.S. courts apply functional equivalence?
In France IHC can provide legal advice, but are not permitted on the list of “advocats” or “conseils juridiques”
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.” Renfield Corp. v. E. Remy Martin & Co., 98 F.R.D. 442 (D. Del. 1982)
No privilege extended to Dutch IHC who was unlicensed. Anwar v. Fairfield Greenwich Ltd, 2013 WL , (S.D.N.Y.)
Because French law does not provide privilege for French IHC, parties to the communication did not expect that it would be confidential. Louis Vuitton Malletier v. Dooney & Bourke, 2006 WL (S.D.N.Y.)

19. Hypothetical 2: Merger Advisors
Company X is planning to acquire a company in Brazil. 
Are communications with the investment banker and other non-attorney consultants protected by attorney-client privilege?

20. 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 in the U.S.
- 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)

21. Hypothetical 3: Compliance Hotline
An employee in Brazil calls the U.S. corporate compliance hotline and describes a bribery incident in Brazil.  A compliance professional, working at the direction of IHC in the U.S. conducts an investigation.  Is there privilege over their communications with employees in Brazil?

22. Is there privilege if U.S. law applies?
Communications made by and to non-attorneys serving as agents of attorneys in internal investigations are generally protected by the privilege. Upjohn Co. v. United States, 449 U.S. 383 (1981)
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)
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 U.S. court.
Or, if U.S. court decides to apply U.S. law on public policy grounds. Astra Aktiebolag v. Andryx Pharms., 208 F.R.D. 92 (S.D.N.Y. 2002)

23. What if the communications were between a China employee and China in- house counsel?
Choice of law rule
In China: no
In the U.S.:
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)

24. Hypothetical 4: Inequitable Conduct
A patent attorney in Germany files a patent in the EU.  There is patent infringement litigation in the U.S. on a related technology and the opposing party wants a copy of the invention record the German engineers prepared for the German filing.
What is the choice of law rule?
Is there privilege if U.S. law applies?
Is there privilege if the patent is filed by a patent agent?

25. What is the choice of law rule?
“Touch base” test
Public policy
Is there privilege if U.S. law applies?
An invention record constitutes a privileged communication, as long as it is provided to an attorney ‘for the purpose of securing primarily a legal opinion, or legal services, or assistance in a legal proceeding. In re Spalding Sports Worldwide, Inc., 203 F.3d 800, (Fed. Cir. 2000)
Is there privilege if the patent is filed by a patent agent?
Patent agents are recognized as equals to attorneys in matters before the USPTO . Sperry v. Florida, 373 U.S. 379, 383 (1963).
However, courts are split with regards to application of privilege both within the U.S. and internationally

26. 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 IHC providing legal advice hold a valid license
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

27. 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 U.S.: will they assist the lawyer in providing legal advice?
In Canada: will they be integral to the solicitor-client relationship?

28. Defensive Strategies: Protecting Privilege
Form of Communication. Consider the pros and cons of oral versus written communication. It may be greatly more efficient for a team to get together at one meeting to work through an issue, as opposed to an endless exchange of s. Further, s make it difficult to limit distribution and preserve the highest degree of confidentiality.
Labels. Label privileged communications "PRIVILEGED AND CONFIDENTIAL," but do so appropriately and judiciously. Where materials are not identified as privileged, a court may be skeptical that the privilege was contemplated at the time of the communication. But, indiscriminately labeling materials as privileged may look suspicious and undercut an argument for privilege protection.
Titles. In writing memos, s, etc., choose titles that accurately reflect the content, but won't appear alarming on a privilege log.

29. Defensive Strategies: Protecting Privilege
Legal/Business Distinction. Ensure that privilege assertions are made on communications relating to legal advice, not business or other advice. If presentations or other documents contain both legal and business advice, either segregate out or specially label the legal advice.
Limit Distribution. Where practical, limit key attorney-client communications to individuals who would qualify under the "control group" and "subject matter" tests. Distribute information on a "need-to-know" basis. Even in states which analyze the attorney-client communication through the "subject matter" test, excess distribution of privileged information may serve to destroy the privilege. Avoid , which facilitates over-broad distribution.
Reminders. In circumstances where there could be confusion as to the purpose of the meeting, inside lawyers should remind company personnel that the law department considers the communications privileged.

30. Defensive Strategies: Protecting Privilege
Foundations. To the extent practicable, identify the foundational elements of the privilege (e.g., "This memorandum responds to management's request for legal advice relating to compliance with California law."; "This study was undertaken at the direction of counsel, and is part of an internal compliance audit.").
Mental Impression. In preparing work product, lawyers should include mental impressions and analysis, not a recitation of what people said or did. ("This memorandum memorializes my interview of X. It is not intended as a transcript of verbatim summary of our meeting, and contains my thoughts and mental impressions.").
Waiver. Avoid partial, selective, total, inadvertent, or any other type of waiver -- but recognize that there are no guarantees.