Opinion

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4 UNITED STATES DISTRICT COURT

5 NORTHERN DISTRICT OF CALIFORNIA

6 SAN FRANCISCO DIVISION

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8 GEMINI DATA, INC., Case No. 24-cv-06412-JSW (PHK)

9 Plaintiff, ORDER DENYING PLAINTIFF

GEMINI DATA, INC.'S MOTION TO

10 v. COMPEL RE PRIVILEGE DISPUTE

11 GOOGLE LLC, Re: Dkt. 104

Defendant.

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13 INTRODUCTION

14 This case arises out of a dispute between Plaintiff Gemini Data, Inc. (“Gemini”) and

15 Defendant Google, LLC (“Google”) regarding alleged trademark infringement. Gemini, a start-up

16 founded in 2013, holds registered “GEMINI” trademarks for AI software and services. [Dkt. 63 at

17 2]. Google, allegedly unaware of Gemini’s registrations, decided on the name “Gemini” for its deep

18 learning model research in 2023, and eventually named its AI chatbot “Gemini” in 2024. Id. at 4-5.

19 Plaintiff asserts claims for trademark infringement, false designation of origin, and unfair

20 competition. [Dkt. 97].

21 All discovery matters in this case have been referred to the undersigned. [Dkt. 49]. Now

22 before the Court is a joint discovery letter brief filed by the Parties regarding Plaintiff’s request for

23 production of documents previously withheld as privileged by Defendant Google. [Dkt. 104]. The

24 Court finds the dispute suitable for resolution without oral argument. See Civil L.R. 7-1(b). After

25 carefully reviewing the letter brief and all relevant submissions, the Court resolves this dispute as

26 set forth in the instant Order.

27 LEGAL STANDARD

1 Co. v. Lee Inv. LLC, 641 F.3d 1126, 1136 n.10 (9th Cir. 2011) (“District courts have wide latitude

2 in controlling discovery, and their rulings will not be overturned in the absence of a clear abuse of

3 discretion.”); Laub v. U.S. Dep’t of Int., 342 F.3d 1080, 1093 (9th Cir. 2003). The Court’s discretion

4 extends to crafting discovery orders that may expand, limit, or differ from the relief requested. See

5 Crawford-El v. Britton, 523 U.S. 574, 598 (1998) (holding trial courts have “broad discretion to

6 tailor discovery narrowly and to dictate the sequence of discovery”). For example, the Court may

7 limit the scope of any discovery method if it determines that “the discovery sought is unreasonably

8 cumulative or duplicative, or can be obtained from some other source that is more convenient, less

9 burdensome, or less expensive.” Fed. R. Civ. P. 26(b)(2)(C)(i).

10 The relevant legal standards for discovery are well-known. Rule 26(b)(1) delineates the

11 scope of discovery in federal civil actions and provides that “[p]arties may obtain discovery

12 regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional

13 to the needs of the case.” (emphasis added). As a general matter, “[a] party is not entitled to

14 discovery of information protected by the attorney-client privilege.” Navajo Nation v. Confederated

15 Tribes & Bands of the Yakama Indian Nation, 331 F.3d 1041, 1046 (9th Cir. 2003) (citing Wharton

16 v. Calderon, 137 F.3d 1201, 1205 (9th Cir. 1997).

17 “The attorney-client privilege protects confidential communications between attorneys and

18 clients, which are made for the purpose of giving legal advice.” In re Grand Jury, 23 F.4th 1088,

19 1091 (9th Cir. 2021) (quoting United States v. Sanmina Corp., 968 F.3d 1107, 1116 (9th Cir. 2020)).

20 “(1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity

21 as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client,

22 (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser,

23 (8) unless the protection be waived.” United States v. Ruehle, 583 F.3d 600, 607 (9th Cir.

24 2009) (quoting In re Grand Jury Investigation, 974 F.2d 1068, 1071 n.2 (9th Cir. 1992)).

25 The attorney-client privilege is “narrowly and strictly construed,” and the party asserting it

26 has the burden of proving that the privilege applies. United States v. Gray, 876 F.2d 1411, 1415 (9th

27 Cir. 1989) (citations omitted). The privilege protects only communications and not underlying

1 disclose any relevant fact within his knowledge merely because he incorporated a statement of such

2 fact into his communication to his attorney”). The privilege is not absolute; it may be waived “either

3 implicitly, by placing privileged matters in controversy, or explicitly, by turning over privileged

4 documents.” Gomez v. Vernon, 255 F.3d 1118, 1131 (9th Cir. 2001), cert. denied, Beauclair v.

5 Puente Gomez, 534 U.S. 1066 (2001). Still, Courts should be cautious to find a waiver of privilege

6 as it “is an exceedingly severe outcome.” See United States v. Al-Shawaf, No. ED CV 16-1539-

7 ODW (SPx), 2017 WL 5997440, at *4 (C.D. Cal Sept. 5, 2017).

8 DISCUSSION

9 This case centers around a dispute wherein “Gemini Data alleges that Google willfully

10 infringed Plaintiff Gemini Data’s GEMINI marks by adopting the GEMINI brand for its AI software

11 with full knowledge of Gemini Data and its registered trademarks for use with AI software.” [Dkt.

12 104 at 2]. According to Gemini, Google confirmed that it “will dispute willfulness by arguing that

13 Google adopted GEMINI in good faith and, if asked for the basis, will invoke counsel’s

14 investigation.” Id. Consequently, Gemini “requests that Google produce its assessments of the

15 Gemini Data trademark in light of Google’s stated intent to dispute Gemini Data’s allegation of

16 willful infringement and claim good faith based on assessments of counsel.” Id. at 1.

17 Gemini avers that “[d]iscovery confirmed that the sole Google personnel who did any

18 trademark assessments and evaluated Gemini Data’s marks were lawyers. Thus, the only basis for

19 Google’s good faith defense is the advice of its lawyers regarding infringement of Gemini Data’s

20 trademarks.” Id. at 2. (emphasis in original). Gemini avers that “Google has chosen to selectively

21 disclose some of its attorney’s views regarding Gemini Data’s GEMINI trademark to support its

22 claims of good faith,” but, according to Gemini, Google withholds as privileged “all information

23 that would permit Gemini Data to examine Google’s claimed good faith[.]” Id. (emphasis in

24 original).

25 Gemini argues that the sword-shield rule “precludes Google from asserting good faith

26 premised on advice of counsel, selectively disclosing certain information underpinning its claim of

27 good faith, and withholding from Gemini Data and the jury the discovery necessary to test that

1 privilege which protects attorney-client communications may not be used both as a sword and a

2 shield. Where a party raises a claim which in fairness requires disclosure of the protected

3 communication, the privilege may be implicitly waived.”) (citation omitted). Gemini “asks the

4 Court to order Google to either: 1) produce the documents [withheld as privileged as identified by

5 Gemini in the Letter Brief]; or 2) agree to withdraw its assertion of good faith premised—as Google

6 admits—on advice of counsel.” [Dkt. 104 at 2].

7 In response, Google argues that Google “has not asserted advice of counsel as a defense or

8 otherwise waived privilege; it has provided factual information that is not protected by privilege. It

9 is therefore not using privilege as a sword and shield, and Plaintiff’s requested relief should be

10 denied.” Id. at 4.

11 After careful review of the materials submitted, the Court accepts Google’s unequivocal

12 assertions that Google has not (and is not) asserting advice of counsel as a defense and thus agrees

13 with Google’s characterization of the facts leading up to this dispute. An express waiver of privilege

14 “occurs when a party discloses privileged information to a third party who is not bound by the

15 privilege, or otherwise shows disregard for the privilege by making the information public.” United

16 States v. Sanmina Corp., 968 F.3d 1107, 1116-17 (9th Cir. 2020) (citation omitted). Here, Google

17 clearly states (contrary to Gemini’s characterization) that Google is not relying on advice of counsel

18 as a defense to the willfulness claim. The fact that (according to Gemini) the only Google personnel

19 involved in analyzing the trademark issues were lawyers does not, alone, require a finding that there

has been an assertion of the advice-of-counsel defense. As the holder of the privilege, it is up to

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Google to decide whether or not to rely on advice of counsel as a defense and here Google has

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informed Gemini and the Court that Google is not relying on that defense. The fact that Gemini

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chose to depose Google lawyers does not require a finding that Google is relying on the advice-of-

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counsel defense either, particularly where (as discussed below) the testimony was limited to factual

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matters. Thus, the major premise of Gemini’s motion to compel is lacking – Google has not

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expressly waived privilege here and has disclaimed the intention to do so.

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To the extent Gemini raises concerns that Google is somehow trying to rely on advice of

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1 this brief. See Hamilton v. State Farm Fire & Cas. Co., 270 F.3d 778, 782 (9th Cir. 2001) (“Judicial

2 estoppel is an equitable doctrine that precludes a party from gaining an advantage by asserting one

3 position, and then later seeking an advantage by taking a clearly inconsistent position.”) (citation

4 omitted). While Google is disputing willfulness, that denial alone is not an automatic waiver of the

5 privilege - it is up to Google (and its counsel) to decide how to rebut the claim of willfulness here,

6 and waiver of privilege is not the only tactic for countering a charge of willfulness. See Genentech,

7 Inc. v. Insmed Inc., 236 F.R.D. 466, 469 (N.D. Cal. June 30, 2006); Novadaq Techs., Inc. v. Karl

8 Storz GmbH & Co. KG, 143 F. Supp. 3d 947, 957 (N.D. Cal. Nov. 10, 2015) (lack of willfulness

9 found based on nonprivileged facts). Gemini’s argument that there is somehow an implicit waiver

10 of privilege because Google is trying to reveal some privileged materials while withholding other

11 privileged documents is not well supported. The deposition testimony relied on by Gemini does not

12 reveal any attorney-client communications. See Dkt. 104 at 2-3. After careful review, the Court

13 finds that the testimony as presented was limited to factual matters, and facts are not privileged.

14 See Upjohn, 449 U.S. at 396. For example, the testimony cited by Gemini in the Letter Brief reveals

15 factual steps the Google lawyer took to review the Gemini webpage. [Dkt. 104 at 3]. That witness

16 was expressly instructed by counsel not to include privileged information in answering further

17 questions and no legal advice was disclosed by the testimony. Id. The mere fact that the witness

18 was asked about, told not to include privileged information in the answer, and then testified solely

19 as to the ultimate fact of Google’s corporate state of mind was not a disclosure of advice of counsel.

Id. As a result, this testimony does not serve to waive any claims of privilege, and Gemini has failed

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to establish on the record presented that Google is trying to use the attorney-client privilege

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selectively as both a sword and a shield. See Planet Aid, Inc. v. Reveal, Ctr. for Investigative

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Reporting, No. 17-CV-03695-MMC(JSC), 2018 WL 6079617, at *2 (N.D. Cal. Nov. 21, 2018).

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In sum, the materials presented do not support Gemini’s characterization of Google’s

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disclosures as constituting an implied waiver of the privilege, particularly in light of Google’s

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express disclaimer of the advice-of-counsel defense here. Indeed, in light of Google’s express

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disclaimed of the advice-of-counsel defense, the Court finds that it would be unduly burdensome,

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] under the facts presented here.

2 CONCLUSION

3 For all the reasons discussed herein, the Court DENIES Plaintiff Gemini’s Motion to

4 || Compel the documents at-issue which were withheld as privileged.

5 This Order was carefully drafted so as not to disclose any confidential information.

6 Therefore, it is not filed under seal.

7 This Order RESOLVES Dkt. 104.

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9 || ITISSO ORDERED.

10 Dated: June 15, 2026

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W '

PETER H. KANG

13 United States Magistrate Judge

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