Amicus Curiae Brief — In Re Grand Jury

No. 21-1397

In the

Supreme Court of the United States

IN RE GRAND JURY

On Writ of Certiorari to the United States

Court of A ppeals for the Ninth Circuit

BRIEF FOR AMICUS CURIAE DRI

CENTER FOR LAW AND PUBLIC POLICY

IN SUPPORT OF PETITIONER

E. Todd Presnell

Counsel of Record

Casey L. Miller

Grayson Wells

Timothy A. Rodriguez

Bradley A rant Boult

Cummings LLP

1600 Division Street,

Suite 700

Nashville, Tennessee 37203

(615) 244-2582

tpresnell@bradley.com

Counsel for Amicus Curiae

317213

A

(800) 274-3321 • (800) 359-6859

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TABLE OF CONTENTS

Page

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii

INTEREST OF THE AMICUS CURIAE . . . . . . . . . . . 1

SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . 2

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

I.

The Significant Purpose Test Appropriately

Promotes the Attorney–Client Privilege’s

Objectives and the Important Role of In-House

Attorneys. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

A. The Significant Purpose Test Produces

More Predictable and Warranted

Results. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

B. The Primary Purpose Test Destabilizes

Privilege Protection for In-House

Counsel Communications. . . . . . . . . . . . . . . 11

II. The Significant Purpose Test Levels the

Playing Field for In-House Attorneys and

Promotes Predictability. . . . . . . . . . . . . . . . . . . . 15

III. The Significant Purpose Test Insulates the

Attorney–Client Privilege from Future

Erosion Due to Emerging Technologies. . . . . . 17

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Table of Contents

Page

IV. The Significant Purpose Test Will Not

Unduly Inhibit Truth Seeking. . . . . . . . . . . . . . 19

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

iii

TABLE OF CITED AUTHORITIES

Page

Cases

Burton v. Zwicker & Assocs., PSC,

No. CV 10-227-WOB-JGW, 2012 WL 12925675

(E.D. Ky. Jan. 9, 2012) . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Chen v. United States,

99 F.3d 1495 (9th Cir. 1996) . . . . . . . . . . . . . . . . . . . . 16

Conn. Mut. Life Ins. Co. v. Schaefer,

94 U.S. 457 (1876) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

Diversified Industries, Inc. v. Meredith,

572 F.2d 596 (8th Cir. 1997) . . . . . . . . . . . . . . . . . . . . 16

Dolby Labs. Licensing Corp. v. Adobe Inc.,

402 F. Supp. 3d 855 (N.D. Cal. 2019) . . . . . . . . . . . . . 16

Exxon Mobile Corp. v. Hill,

751 F.3d 379 (5th Cir. 2014) . . . . . . . . . . . . . . . . . . . . . 6

Faloney v. Wachovia Bank, N.A.,

254 F.R.D. 204 (E.D. Pa. 2008) . . . . . . . . . . . . . . . . . . 6

Federal Trade Commission v. Boehringer

Ingelheim Pharmaceuticals, Inc.,

892 F.3d 1264 (D.C. Cir. 2018) . . . . . . . . . . . . . . . 10, 16

Fisher v. United States,

425 U.S. 391 (1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

iv

Cited Authorities

Page

Harrington v. Freedom of Info. Comm’n,

144 A.3d 405 (Conn. 2016) . . . . . . . . . . . . . . . . . . . . . 12

In re Grand Jury,

23 F.4th 1088 . . . . . . . . . . . . . . . . . . . . . . . . . . 10, 11, 19

In re Kellogg Brown & Root, Inc.,

756 F.3d 754 (D.C. Cir. 2014) . . . . . . . . . . . . . . . passim

In re Polaris, Inc.,

967 N.W.2d 397 (Minn. 2021) . . . . . . . . . . . . . 12, 13, 14

Jones v. Carson,

No. 15-310 (CKK/GHM), 2018 WL 11410070

(D.D.C. Mar. 30, 2018) . . . . . . . . . . . . . . . . . . . . . . . 9, 19

Karstetter v. King Cnty. Corr. Guild,

444 P.3d 1185 (Wash. 2019) . . . . . . . . . . . . . . . . . . . . . 6

Lindley v. Life Invs. Ins. Co. of Am.,

267 F.R.D. 382 (N.D. Okla. 2010) . . . . . . . . . . . . . . . . 16

Milbeck v. TrueCar, Inc.,

No. CV 18-02612-SV W, 2019 WL 4570017

(C.D. Cal. May 2, 2019) . . . . . . . . . . . . . . . . . . . . . . . . 18

Neuder v. Battelle Pac. Nw. Nat’l, Lab.,

194 F.R.D. 289 (D.D.C. 2000) . . . . . . . . . . . . . . . . . . . 20

v

Cited Authorities

Page

New Jersey v. Sprint Corp.,

258 F.R.D. 421 (D. Kan. 2009) . . . . . . . . . . . . . . . . . . 20

Phillips v. C.R. Bard, Inc.,

290 F.R.D. 615 (D. Nev. 2013) . . . . . . . . . . . . . . . . . . 12

RCHFU, LLC v. Marriott Vacations Worldwide

Corp.,

No. 16-cv-1301-PAB-GPG, 2018 WL 3055774

(D. Colo. May 22, 2018) . . . . . . . . . . . . . . . . . . . . . . . . 14

Swidler & Berlin v. United States,

524 U.S. 399 (1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

United States ex rel. Barko v. Halliburton Co.,

74 F. Supp. 3d 183 (D.D.C. 2014) . . . . . . . . . . . . . . . . 20

United States v. ChevronTexaco Corp.,

241 F. Supp. 2d 1065 (N.D. Cal. 2002) . . . . . . . . . . . . 16

Upjohn Co. v United States,

449 U.S. 383 (1981) . . . . . . . . . . . . . . . . . . . . . . . passim

Statutes and Other Authorities

Bryson P. Burnham, The Attorney-Client Privilege

in the Corporate Arena, 24 Bus. Law. 901

(1969) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Fed. R. Evid. 501 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

vi

Cited Authorities

Page

Grace M. Giesel, The Ethics or Employment Dilemma

of In-House Counsel, 5 Geo. J. Legal Ethics

535 (1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Hon. Justin R. Walker, The Kavanaugh Court and

the Schechter-to-Chevron Spectrum, 95 Ind. L.J.

923 (2020) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

Philip J. Favro, Inviting Scrutiny: How Technologies

Are Eroding the Attorney-Client Privilege,

20 Rich. J.L. & Tech 2 (2013) . . . . . . . . . . . . . . . . 17, 18

Restatement (Third) of the Law Governing Laws.,

§ 72 cmt. c (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

Supreme Court Rule 37 . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

1

INTEREST OF THE AMICUS CURIAE1

The DRI Center for Law and Public Policy is the

public policy and advocacy voice of DRI, an international

organization of approximately 14,000 attorneys, including

in-house attorneys and outside counsel, involved in the

defense of civil litigation. The Center addresses issues

that not only are germane to in-house attorneys and their

corporate clients, but also are important to improvement

of the civil justice system. DRI and the Center, through

publications and the filing of amicus curiae briefs in the

Supreme Court, federal courts of appeals, and state

appellate courts, long have participated in the ongoing

effort to make the civil justice system fairer, more

consistent, and more efficient.

This case fits those criteria. DRI’s member in-house

lawyers and outside counsel representing corporate

entities have a critical interest in an unvarying federal

common-law standard governing privilege protection

for multipurpose communications. DRI’s member

lawyers and their corporate clients must engage in

candid, free-flowing discussions so that the lawyers

can provide optimal legal advice. Many of these legalrelated discussions necessarily involve or affect business

considerations, and the lack of a consistent standard for

these multipurpose communications results in uncertain

privilege protection that chills unhindered attorney–client

1.  Petitioner and Respondent have consented to the filing

of this brief. Pursuant to Rule 37 of the Supreme Court of the

United States, amicus curiae certify that no counsel for any party

authored this brief in whole or in part and that no counsel or party

made any monetary contribution toward the brief’s preparation

and submission.

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dialogue. DRI, therefore, has a vital interest in ensuring

that the attorney–client privilege protects a multipurpose

communication where providing or obtaining legal advice

was one of its significant purposes.

SUMMARY OF ARGUMENT

The attorney–client privilege serves the public good

by encouraging corporate entities, acting through their

employees, to engage in full and frank communications

with the entities’ lawyers so that these lawyers can

supply “sound legal advice.” Upjohn Co. v United States,

449 U.S. 383, 389 (1981). In-house counsel are often the

first lawyers to receive these confidential inquiries and,

thereafter, deliver “valuable efforts” in ensuring the

entities’ “compliance with the law.” Id. at 392.

These efforts frequently arise from employees’

communications that cover multiple topics, a significant one

of which is to obtain or provide legal advice. Corporations

face an ever-increasing collection of legal requirements

and regulatory obligations, and their in-house lawyers

correspondingly take on non-legal roles that contribute to

a range of corporate decisions. Recognizing these realities

“in the light of reason and experience,” Fed. R. Evid.

501, this Court should establish a standard that supplies

privilege protection in a way that allows in-house lawyers

and their clients to “predict with some degree of certainty

whether particular discussions will be protected.” Upjohn,

449 U.S. at 393.

The primary purpose test for determining whether

the attorney–client privilege protects a communication

inappropriately conscripts judges into the task of

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determining the sole purpose for communications that

often do not have a sole purpose. The test discourages

companies from seeking advice from in-house attorneys.

Judges that apply the primary purpose test often

recognize that in-house attorneys are closest to the

company’s business operations. But instead of viewing

this as advantage, judges apply a presumption against

privilege for communications with in-house attorneys

for the same reason that makes those attorneys uniquely

prepared to steer a company away from legal peril: they

are often involved in business discussions. Because of this

unique role, in-house attorneys are disproportionately

affected by the search for a single primary purpose in a

multipurpose communication. And because the test seeks

what often does not exist—a single primary purpose—the

results are unpredictable.

The significant purpose standard, however, creates

a more predictable foundation through which in-house

attorneys can assure their clients of the confidentiality

of their communications. The test still ensures that

attorneys will not be included in communications merely

to gain privilege instead of obtaining legal advice. It

recognizes the realities of modern communication while

staying true to the privilege’s roots and its purpose—to

enable attorneys to provide legal advice by encouraging

full disclosure and assuring clients that their confidences

will be respected. The significant purpose test enables

in-house attorneys to effectively advise their business

colleagues and ensure the company’s compliance with

the ever-increasing trove of statutory and regulatory

obligations, and amicus curiae urges the Court to adopt it.

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ARGUMENT

I.

The Significant Purpose Test Appropriately

Promotes the Attorney–Client Privilege’s Objectives

and the Important Role of In-House Attorneys.

1. The attorney–client privilege protects from

disclosure confidential communications between a

corporate client and its lawyer made for legal-advice

purposes. Fisher v. United States, 425 U.S. 391, 403

(1976). The privilege’s purpose “is to encourage full and

frank communication” between clients and their lawyers

and thereby “promote broader public interests in the

observance of law and administration of justice.” Upjohn,

449 U.S. at 389. A lawyer’s sound, optimal legal advice

“depends upon the lawyer’s being fully informed,” id.,

because, “[a]s a practical matter, if the client knows that

damaging information could more readily be obtained

from the attorney following disclosure *** the client

would be reluctant to confide in his lawyer and it would

be difficult to obtain fully informed legal advice.” Fisher,

425 U.S. at 403; Conn. Mut. Life Ins. Co. v. Schaefer, 94

U.S. 457, 458 (1876) (“If a person cannot consult his legal

adviser without being liable to have the interview made

public the next day by an examination enforced by the

courts, the law would be little short of despotic. It would

be a prohibition upon professional advice and assistance.”).

With this “wise and liberal policy” in mind, Schaefer, 94

U.S. at 458, the interpretation of the scope and contours of

the attorney–client privilege “is guided by ‘the principles

of the common law *** as interpreted by the courts ***

in the light of reason and experience.’” Swidler & Berlin

v. United States, 524 U.S. 399, 403 (1998) (quoting Fed.

R. Evid. 501).

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2.a. In-house attorneys provide “valuable efforts” to

their corporate client “to ensure their client’s compliance

with the law.” Upjohn, 449 U.S. at 392. Corporate

entities face a “vast and complicated array of regulatory

legislation” and need their in-house attorney’s legal advice

“to find out how to obey the law.” Id. (citations omitted).

In-house lawyers are often the first, go-to counsel to

whom non-lawyer corporate employees provide “full

and frank communication” so that in-house lawyers can

supply the company with “sound legal advice.” Id. at 389.

In-house attorneys more regularly communicate with, and

gather business-related information from, the company’s

employees to calculate their legal advice. Id. at 390–91

(recognizing that the first step is “ascertaining the factual

background and sifting through the facts with an eye to

the legally relevant”). This step is vital because “advocacy

depends upon the lawyer’s being fully informed by the

client.” Id. at 389.

b. If corporate entities and their lawyers faced a

“vast and complicated array” of legal issues when this

Court decided Upjohn over forty years ago, id. at 392,

they must confront exponentially greater challenges

in today’s regulatory environment. See Hon. Justin R.

Walker, The Kavanaugh Court and the Schechter-toChevron Spectrum, 95 Ind. L.J. 923, 930 (2020) (stating

that “the ratio of the number of pages of legally binding

regulations promulgated in one year by administrative

agencies versus the number of pages of legislation

passed by Congress *** is approximately 100:1”). While

the mounting complexity of administrative law and the

difficulty of compliance with it is not new, this Court has

consistently recognized that corporate clients, “unlike

most individuals, ‘constantly go to lawyers to find out how

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to obey the law,’ particularly since compliance with the law

in this area is hardly an instinctive matter.” Upjohn, 449

U.S. at 392 (quoting Bryson P. Burnham, The AttorneyClient Privilege in the Corporate Arena, 24 Bus. Law.

901, 913 (1969)) (internal citation omitted).

c. In this evolving environment, the role of in-house

lawyers likewise develops and has “grown increasingly

complex, often including advisory and compliance roles

as well as the more general aim of ensuring a successful

business.” Karstetter v. King Cnty. Corr. Guild, 444 P.3d

1185, 1189 (Wash. 2019); see also Faloney v. Wachovia

Bank, N.A., 254 F.R.D. 204, 209 (E.D. Pa. 2008) (“Inhouse counsel performs a dual role of legal advisor

and business advisor.”); Grace M. Giesel, The Ethics

or Employment Dilemma of In-House Counsel, 5 Geo.

J. Legal Ethics 535, 544 (1992) (noting that corporate

executives consider in-house counsel “an essential

component of the management team” who “affect the

full range of corporate decisions”). The unique role of inhouse attorneys in providing legal advice means that their

communications with non-lawyer employees often involve

non-legal information. Burton v. Zwicker & Assocs.,

PSC, No. CV 10-227-WOB-JGW, 2012 WL 12925675, at

*2 (E.D. Ky. Jan. 9, 2012) (“Because of in-house counsel’s

unique role, communications with in-house counsel may

involve both business and legal considerations.”). This mix

of content does not diminish the reality that one of the

significant purposes of lawyer–employee communications

is to seek in-house counsel’s legal advice to ensure

the corporation’s compliance with applicable laws and

regulations. See Exxon Mobile Corp. v. Hill, 751 F.3d 379,

382 (5th Cir. 2014) (explaining that “[c]ontext here is key”

and noting that Exxon Mobile approached its in-house

7

attorney for legal advice rather than “business advice

divorced from its legal implications”).

3. Reason and experience, therefore, dictate that inhouse attorneys operate in a corporate environment that

necessarily involves multipurpose communications, one of

which is legal, with non-lawyer employees. Permitting this

experienced reality to result in a narrow interpretation

of the privilege, however, would make it “difficult for

corporate attorneys to formulate sound advice when their

client is faced with a specific legal problem.” Upjohn,

449 U.S. at 392. Moreover, a privilege-assessment

standard that is “difficult to apply in practice,” id. at

393, produces uncertainty, and “[a]n uncertain privilege,

or one which purports to be certain but results in widely

varying applications by the courts, is little better than

no privilege at all.” Id. To implement the privilege’s

purpose—to encourage non-lawyer employees to engage

fully and frankly with in-house lawyers so those lawyers

can provide the company with optimum legal advice—

corporate entities and their lawyers “must be able to

predict with some degree of certainty whether particular

discussions will be protected.” Id.

A.

The Significant Purpose Test Produces More

Predictable and Warranted Results.

The significant purpose test, best articulated in In

re Kellogg Brown & Root, Inc., 756 F.3d 754 (D.C. Cir.

2014), supplies privilege protection to a multipurpose

communication between a company’s lawyers and its

employees where “one of the significant purposes” of the

communication was to obtain or provide legal advice.

Id. at 760. Under this analysis, the privilege precludes

8

disclosure of a multipurpose communication so long as

the non-lawyer employee consults the in-house lawyer “to

gain advantage from the lawyer’s legal skills and training

*** even if the client may expect to gain other benefits as

well, such as business advice.” Restatement (Third) of the

Law Governing Laws., § 72 cmt. c (2000).

The primary purpose test, as it has been applied

across the country, improperly assumes that courts can

boil down each attorney–client communication to a single

predominating purpose through an arduous balancing

of a communication’s multiple purposes. Supreme Court

precedent does not support this privilege analysis, and it

risks eradicating the privilege in certain circumstances.

Kellogg, 756 F.3d at 759 (recognizing that the primary

purpose test is “not the law” and would eliminate privilege

protection for “numerous communications that are made

for both legal and business purposes and that heretofore

have been covered by the attorney-client privilege”).

In-house attorneys’ daily communications frequently

contain overlapping business and legal purposes. After

all, the job is to help the company achieve business goals

while complying with applicable laws and regulations,

thereby limiting liability exposure. So, when a business

officer or manager seeks advice from the company’s

in-house attorney, she is often seeking that advice for

the purposes of accomplishing business objectives and

ensuring compliance with legal obligations. Yet, under the

Ninth Circuit’s analysis, the determination of whether the

attorney–client privilege protects these communications

from disclosure is in the eye of the post hoc beholder. Some

courts may view communications that largely include

business content as made primarily for business purposes.

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Others may recognize that the communication benefits the

business but is made to enable the attorney to limit the

business’s exposure to liability. Regardless of the outcome,

the point is that the significant purpose test recognizes the

practical reality that these multipurpose communications

are in fact multipurpose and not incidentally. It removes

the laborious compare-and-balance task of picking

which significant purpose prevails and instead allows

the attorney to guarantee privilege so long as one of the

significant purposes of the communication is legal advice.

In contrast to some of the cases applying the primary

purpose test, cases that rely on Kellogg’s significant

purpose test arrive at more predictable results that

nevertheless adhere to the privilege’s underlying

rationale. For example, following Kellogg, the court

in Jones v. Carson, No. 15-310 (CKK/GHM), 2018 WL

11410070 (D.D.C. Mar. 30, 2018), considered whether the

attorney–client privilege protected from discovery the

Housing and Urban Development internal attorneys’

reviews as part of a sexual-harassment investigation. The

lawyers conducted the reviews “pursuant to employee

disciplinary procedures *** required by HUD’s Adverse

Action Handbook” and not pursuant to any statutory or

regulatory obligation. Id. at *12. The court recognized

that the in-house lawyers conducted the reviews to comply

with the agency policy but also to provide legal advice and

held that, “[a]s long as one of the significant purposes of

the communications at issue was the provision of legal

advice or guidance, the agency will get the benefit of the

privilege even with respect to its personnel decisions made

consistent with an agency employee discipline policy.” Id.

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Though communications surrounding internal

i nve st i g at ion s of t en c ome up i n mu lt ipu r p o s e

communications cases, the significant purpose test

remains more practical in other contexts. In Federal Trade

Commission v. Boehringer Ingelheim Pharmaceuticals,

Inc., 892 F.3d 1264 (D.C. Cir. 2018), a pharmaceutical

company grappled with the decision of whether to settle

after coming under FTC scrutiny. The communications

at issue “had a legal purpose: to help the company ensure

compliance with the antitrust laws and negotiate a lawful

settlement,” but they “also had a business purpose: to help

the company negotiate a settlement on favorable financial

terms.” Id. at 1267. Rather than determining which

purpose predominated, the court applied the Kellogg

standard and reasoned that, although “the communications

at issue *** also served a business purpose[,] *** one of

the significant purposes of the[] communications was to

obtain or provide legal advice.” Id. at 1268. There, the

warranted and predictable result prevailed without the

judge engaging in a subjective, painstaking attempt at

ascertaining a winner between two clearly intertwined

purposes.

Despite the Ninth Circuit’s comments to the contrary,

there is not an obvious reason why the significant purpose

test’s “reasoning does not apply with equal force in the tax

context,” not to mention the larger sphere of business in

general. In re Grand Jury, 23 F.4th 1088, 1094–95 (9th Cir.

2022). Nor is it obvious that the “test would only change

the outcome of a privilege analysis in truly close cases,

like where the legal purpose is just as significant as a nonlegal purpose.” Id. at 1095. On the contrary, the significant

purpose test avoids the pitfalls associated with that inquiry.

In Boehringer, the court did not assign a relative weight to

11

the level of significance of the legal and business purposes.

Instead, it recognized that the legal purpose was significant

(not as significant, not more significant, just significant) and

held the communications were privileged. The elegance of

the test is that it does just the opposite of the Ninth Circuit’s

characterization. That elegance need not be confined to

internal investigations alone.

B. The Primary Purpose Test Destabilizes

Privilege Protection for In-House Counsel

Communications.

The Ninth Circuit here held that dual-purpose

communications receive privilege protection only if the

single, primary purpose of the communication was to

seek legal advice. In re Grand Jury, 23 F.4th at 1092.

But “trying to find the one primary purpose for a

communication motivated by two sometimes overlapping

purposes (one legal and one business, for example) can

be an inherently impossible task.” Kellogg, 756 F.3d

at 759. In search of the impossible, the Ninth Circuit

has undermined the predictability of the privilege and

subordinated in-house attorneys in a privilege analysis

even though they stand closest to the client and in the best

position to ensure compliance with the law.

The primary purpose test’s misguided mission to

find one predominating purpose in every communication

leads to undesirable results. Trial courts employing

this standard necessarily engage in the tedious task

of identifying, weighing, and balancing the legal and

non-legal purposes in each putatively privileged inhouse lawyer–employee communication. District judges,

magistrate judges, and appointed special masters must

12

examine the content of the communication, the context in

which lawyer and employee communicated, and the facts

surrounding the communication’s creation, and identify

and assess the recipient list—all to determine “whether

the legal purpose so permeates any non-legal purpose

that the two purposes cannot be discretely separated from

the factual nexus as a whole.” Phillips v. C.R. Bard, Inc.,

290 F.R.D. 615, 629 (D. Nev. 2013) (internal quotations

omitted). And, even then, the “line between legal advice

and business advice *** is not always clear.” Harrington v.

Freedom of Info. Comm’n, 144 A.3d 405, 415 (Conn. 2016).

Critically though, this subjective search, often

conducted years after a putatively privileged document’s

creation, results in hyper-strict analyses that in-house

attorneys simply cannot predict. Take In re Polaris,

Inc., 967 N.W.2d 397 (Minn. 2021), which applied the

predominant purpose test, as an example. There, faced

with a government-enforcement action, Polaris hired

attorneys to conduct an audit of its safety processes and

policies. Id. at 402. The report was inadvertently disclosed,

and counsel attempted to claw it back.

The lower court permitted some redactions but

held that the predominant purpose was business advice

and determined that the report in its entirety was not

privileged. Id. The Minnesota Supreme Court affirmed.

In doing so, the court recognized that the “audit report

contains both legal advice and business advice.” Id. at 407.

But it narrowly focused its analysis on the search for a

single primary purpose, rather than understanding that

the advice was sought in the context of an enforcement

action.

13

Justice Anderson, in dissent, aptly explained that the

court had ignored the context in which the advice was

sought. Id. at 418 (Anderson, J., dissenting); see also id.

at 420 (stating that the “court’s mistake is to overlook

the purpose for which an attorney has been hired”). In

the dissent’s view, Polaris hired attorneys to audit its

“corporate practices, safety, engineering, and product

design” to ensure that Polaris was compliant with its

regulatory obligations and to avoid future liability. Id. at

419. Especially in the face of an enforcement action, this

was squarely within the realm of legal advice.

In explaining how the majority erred, Justice

Anderson argued that courts should define business advice

as “that which is intended to make a client’s enterprise

more profitable other than through the mitigation of legal

liability.” Id. at 417. This definition accurately reflects the

role in-house attorneys play in a corporation: understand

the business and provide advice on how to make the

business more profitable by limiting legal liability and

ensuring compliance with applicable regulations.

The In re Polaris majority’s context-agnostic

reasoning and undue focus on the search for a single

primary purpose produced results that no attorney

would have reliably predicted in the moment—that a

trial judge years later would find that a communication’s

business purpose outweighed its legal purpose. Instead,

the decision and the test it employed subordinated

communications with in-house counsel to the realm of

business advice. Justice Anderson’s more reasonable

and practical definition of business versus legal advice

would help restore in-house attorneys to their status as

important legal advisors equipped to help corporations

14

avoid liability. But the broader problem embodied in In re

Polaris is that the quest for one primary purpose within

a web of often intertwined content leads to results that

counsel cannot predict.

Even when courts properly look to the context

of communications, the search for a single primary

purpose—rather than a significant purpose—still leads

to unwarranted and unexpected results. For instance,

in RCHFU, LLC v. Marriott Vacations Worldwide

Corp., No. 16-cv-1301-PAB-GPG, 2018 WL 3055774 (D.

Colo. May 22, 2018), the court ordered production of a

memorandum despite finding that it contained attorney–

client privileged information. Holding that it must

determine the primary purpose of the memorandum, the

court opined that it contained legal advice “intertwined

within business advice.” Id. at *4. Because the legal

advice was “intertwined so completely that it would be

impractical to attempt redaction,” the court ordered the

entire memorandum disclosed in unredacted form. Id.

Though the parties to the communication surely expected

it to remain confidential, the unexpected result prevailed.

The most important lesson from In re Polaris and

Marriott Vacations is that attempting to parse language

in a communication and place it in a business box or legal

box, when it is often in both, leads to results that neither

the client nor the attorney expected in the moment. At

bottom, in-house attorneys, integral to ensuring business

operations comport with the law and the numerous

regulations, risk their communications being deemed

business rather than legal, and are therefore unable

to guarantee the level of confidentiality that corporate

employees expect when communicating with company

15

lawyers. This undermining of confidence unnecessarily

encourages the use of outside counsel, increases legal

costs, and devalues in-house attorneys’ contributions

merely because they are tasked with being closer to

the business. Ironically, in-house attorneys’ proximity

to the business places them in a greater position to

provide confidential legal advice and ensure regulatory

compliance.

The complex search for a single primary purpose

in these communications impedes the attorneys most

capable of ensuring corporate compliance with the law by

undermining the predictability of their attorney–client

privilege. To fulfill the privilege’s purpose of promoting

“full and frank communication between attorneys and

their clients” so that attorneys can provide “sound legal

advice,” Upjohn, 449 U.S. at 389, a corporate entity’s inhouse attorney and non-lawyer employees “must be able to

predict with some degree of certainty whether particular

discussions will be protected.” Id. at 393. The significant

purpose test provides that certainty, and amicus curiae

urges the Court to adopt it.

II. The Significant Purpose Test Levels the Playing

Field for In-House Attorneys and Promotes

Predictability.

Attorney–client communications involving in-house

attorneys are just as privileged as communications

involving outside counsel. “In the corporate context,

the attorney–client privilege applies to communications

between corporate employees and a corporation’s counsel

made for the purpose of obtaining or providing legal

advice. The privilege applies regardless of whether

16

the attorney is in-house counsel or outside counsel.”

Boehringer, 892 F.3d at 1267.

But when clients seek advice from outside counsel,

federal courts often presume that attorney–client

privilege applies to the communications in which that

advice is sought or received. In Diversified Industries,

Inc. v. Meredith, 572 F.2d 596 (8th Cir. 1997), the Eighth

Circuit explained that Diversified Industries had prima

facie established the existence of attorney–client privilege

because it had sought advice from a professional legal

advisor—an outside law firm. Id. at 610. And in Chen v.

United States, 99 R.3d 1495 (9th Cir. 1996), the Ninth

Circuit held, “If a person hires a lawyer for advice, there is

a rebuttable presumption that the lawyer is hired ‘as such’

to give ‘legal advice,’ whether the subject of the advice

is criminal or civil, business, tort, domestic relations, or

anything else.” Id. at 1501.

District courts across the country, however, have

stripped this presumption from in-house attorneys

notwithstanding that they are also professional legal

advisors. This is because in-house attorneys are often

involved in the day-to-day activities of the business. Dolby

Labs. Licensing Corp. v. Adobe Inc., 402 F. Supp. 3d 855,

866 (N.D. Cal. 2019); Lindley v. Life Invs. Ins. Co. of Am.,

267 F.R.D. 382, 389 (N.D. Okla. 2010) (collecting cases);

United States v. ChevronTexaco Corp., 241 F. Supp.

2d 1065, 1076 (N.D. Cal. 2002). Yet that involvement in

day-to-day business activities is precisely what uniquely

positions in-house attorneys to steer companies toward

legal compliance. The added scrutiny on communications

with in-house attorneys paired with the subjective, post

hoc search for a sole predominating purpose in those

17

communications compromises an in-house attorney’s

ability to provide sound legal advice. See generally Philip

J. Favro, Inviting Scrutiny: How Technologies Are

Eroding the Attorney-Client Privilege, 20 Rich. J.L. &

Tech 2 (2013) (recognizing that courts apply heightened

scrutiny to communications with in-house counsel). The

heightened standard places in doubt the privilege and

renders the confidence unpredictable.

The significant purpose test levels the playing field

that has been stacked against in-house attorneys under

the primary purpose test. The presumption in favor

of outside counsel might remain, but by recognizing

the practical reality that many communications with

in-house attorneys have multiple significant purposes,

the Kellogg test mitigates the concerns associated with

in-house attorneys’ unique role in business operations.

The significant purpose standard still requires that the

attorney’s involvement not be incidental, yet it removes

from the judge’s docket the inherently impossible task of

later trying to determine which of the significant purposes

predominates, even if barely. Instead, if a company’s

attorneys and its employees communicate in significant

part for legal-advice purposes, then the communication is

privileged, and the confidences will be respected.

III. The Significant Purpose Test Insulates the

Attorney–Client Privilege from Future Erosion

Due to Emerging Technologies.

The Court’s embrace of the significant purpose test

would further ensure that in-house attorneys are not

prejudiced by new technologies. Emerging collaborative

communication software programs provide a company’s

18

in-house attorneys and non-lawyer employees more

and easier avenues through which to communicate.

For example, corporate entities’ use of Google Drive

collaborative software allows employees and in-house

lawyers to simultaneously draft and comment on a

document, such as a contract. The Microsoft Teams

software contains instant chat features that more readily

permit non-lawyers to immediately summon in-house

counsel’s advice within an ongoing business discussion.

To be sure, these issues are not new. See generally Favro,

supra Section II, at 37 (noting, just eight years ago, that

the proliferation of communication technologies, such as

email, “provides a seamless opportunity for companies

to draw in-house counsel into various aspects of their

operations”). But just as technology evolves exponentially,

so do the privilege concerns accompanying them. For

example, courts are just beginning to grapple with

privilege and discovery issues with these emerging

technologies. See, e.g., Milbeck v. TrueCar, Inc., No. CV

18-02612-SVW, 2019 WL 4570017, at *2–3 (C.D. Cal. May

2, 2019) (finding that an estimated seventeen million Slack

messages “would not realistically be available for use in

discovery”).

A uniform, predictable test will enable in-house

attorneys—who are more likely to deal with these

concerns—to best forecast when the attorney–client

privilege will hold. The added predictability is key to

instilling confidence in the privilege. But to enable inhouse attorneys to function as attorneys on the same

level as their outside counsel counterparts, the Court

should recognize that these collaborative tools often

make legal and business content even more intertwined.

They exacerbate the inherent impossibility of searching

19

for a single primary purpose and increase the risk that

an in-house lawyer’s legal advice is disclosed to opposing

counsel.

IV. The Significant Purpose Test Will Not Unduly

Inhibit Truth Seeking.

In In re Grand Jury, the Ninth Circuit expressed

concern that companies would merely “add layers of

lawyers to every business decision in hopes of insulating

themselves from scrutiny in any future litigation.” 23

F.4th at 1093–94. In sounding this alarm, the court was

analyzing the “because of” test, and not the significant

purpose test. Nevertheless, any similar concern in

applying the significant purpose test is unwarranted.

The court’s decision in Jones v. Carson, discussed

supra Section I(A), shows that courts applying the

significant purpose test will not merely note the existence

of multiple purposes and declare the communication

privileged. There, the court analyzed each item closely

to determine when legal advice was not a significant

purpose. In one example, a draft of the final version had

only typographical edits, and so it did “not reflect the

provision of legal advice.” Jones, 2018 WL 11410070, at *18.

In sum, the significant purpose test means just

that —the legal-advice portion of a multipurpose

communication must be “one of the significant purposes”

of the communication to secure privilege protection.

Kellogg, 756 F.3d at 760. Applying this test will not shelter

a communication where legal advice is merely incidental

to a business discussion. Critics may imagine scenarios

in which companies include attorneys in every business

20

conversation to avail themselves of the cloak of privilege.

But in those circumstances, courts can identify whether

the legal purpose is significant with greater ease and

confidence than comparing the relative weight of legal

and non-legal purposes. Those unwarranted privilege

claims would not hold. See United States ex rel. Barko

v. Halliburton Co., 74 F. Supp. 3d 183, 188 (D.D.C. 2014)

(no significant legal purpose existed because, in part,

of “the attorney’s merely incidental connection to the

documents”); see also New Jersey v. Sprint Corp., 258

F.R.D. 421, 444 (D. Kan. 2009); Neuder v. Battelle Pac.

Nw. Nat’l Lab., 194 F.R.D. 289, 292 (D.D.C. 2000).

CONCLUSION

The Ninth Circuit’s primary purpose test ignores both

the practical realities of multipurpose communications

and the important role that in-house attorneys play in

helping companies comply with relevant statutory and

regulatory obligations. The significant purpose test

instead recognizes the “valuable efforts” of corporate

counsel, Upjohn, 449 U.S. at 392, and implements the

privilege’s purpose of encouraging corporate employees

to relay candid information so companies can “find out

how to obey the law,” id., while maintaining safeguards

against the privilege’s improper use. The Court should

adopt the significant purpose test, rule that the attorney–

client privilege protects a communication between a

corporate entity’s lawyers and its employees where “one

of the significant purposes” of the communication was

“obtaining or providing legal advice,” and task trial courts

with answering the question that better aligns with this

Court’s precedent: “Was obtaining or providing legal

advice a primary purpose of the communication, meaning

21

one of the significant purposes of the communication?”

Kellogg, 756 F.3d at 760.

Respectfully submitted,

E. Todd Presnell

Counsel of Record

Casey L. Miller

Grayson Wells

Timothy A. Rodriguez

Bradley A rant Boult

Cummings LLP

1600 Division Street,

Suite 700

Nashville, Tennessee 37203

(615) 244-2582

tpresnell@bradley.com

Counsel for Amicus Curiae