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IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
)
RENEE GABET and
)
ANNIE OAKLEY ENTERPRISES, INC.,
)
) No. 1:22-cv-02246-JPH-MKK
Plaintiffs,
)
)
-vs.-
)
)
[Link], INC., and
)
JOHN DOES 1-50,
)
)
Defendants.
)
AMAZON’S BRIEF IN SUPPORT OF MOTION TO COMPEL
GABET’S PRODUCTION OF DOCUMENTS AND TESTIMONY
THAT PROVIDE FACTUAL BASES FOR HER ATTORNEY’S TESTIMONY
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TABLE OF CONTENTS
INTRODUCTION ----------------------------------------------------------------------------------------------- 1
BACKGROUND ------------------------------------------------------------------------------------------------- 2
I. PAPPAS’S TESTIMONY ABOUT GABET’S ALLEGED
TRADEMARK USE SECURED RIGHTS FOR GABET ----------------------------------- 2
II. AMAZON’S COUNTERCLAIMS ALLEGE THE PAPPAS
DECLARATIONS ARE FALSE ------------------------------------------------------------------ 5
III. GABET IS WITHHOLDING DOCUMENTS RESPONSIVE
TO AMAZON’S REQUESTS FOR COMMUNICATIONS
RELATED TO THE PAPPAS DECLARATIONS -------------------------------------------- 5
IV. GABET REFUSED TO TESTIFY ABOUT COMMUNICATIONS
WITH PAPPAS BUT VOLUNTEERED TESTIMONY ABOUT
HER KNOWLEDGE OF PAPPAS’S STATE OF MIND ------------------------------------ 8
ARGUMENT ----------------------------------------------------------------------------------------------------- 8
I. GABET’S COMMUNICATIONS WITH PAPPAS ABOUT
HIS FACTUAL TESTIMONY ARE NOT PRIVILEGED----------------------------------- 8
A. Gabet has the Burden of Establishing All Essential Elements of Privilege ---------------- 8
B. Gabet Cannot Meet Her Burden of Establishing Her
Communications With Pappas About His Declarations Are Privileged -------------------- 9
II. EVEN IF THE COMMUNICATIONS WERE ONCE
PRIVILEGED, GABET WAIVED THE PRIVILEGE -------------------------------------- 13
CONCLUSION -------------------------------------------------------------------------------------------------- 15
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TABLE OF AUTHORITIES
Cases Page(s)
In re Morning Song Bird Food Litig.,
No. 1:17-MC-00078-JMS-TAB, 2018 WL 1948807 (S.D. Ind. Apr. 25, 2018) ----------------- 9
Cardinal Square, LLC v. QBE Specialty Ins. Co.,
No. 1:23-CV-00114-JRS-MJD, 2023 WL 8471849 (S.D. Ind. Dec. 7, 2023)---------- 8, 11, 12
Elder Care Providers of Indiana, Inc. v. Home Instead, Inc.,
No. 1:14-CV-01894-SEB-MJD, 2016 WL 881176 (S.D. Ind. Mar. 8, 2016) -------------------12
Hobbs v. Am. Com. Barge Line LLC,
No. 4:22-CV-00063-TWP-KMB, 2023 WL 6276068 (S.D. Ind. Sept. 26, 2023) --------------- 9
Miyano Mach. USA, Inc. v. MiyanoHitec Mach., Inc.,
257 F.R.D. 456 (N.D. Ill. 2008) --------------------------------------------------------------------- 9, 11
Norix Grp., Inc. v. Corr. Techs., Inc.,
No. 20 C 1158, 2021 WL 5050281 (N.D. Ill. Nov. 1, 2021) ---------------------------------------- 9
RTC Indus., Inc. v. Fasteners for Retail, Inc.,
No. 17 C 3595, 2020 WL 1148813 (N.D. Ill. Mar. 9, 2020) ---------------------------------- 13, 14
Samsung SDI Co. v. Matsushita Elec., Ind.,
No. CIV.A. CV 05-8493AGS, 2007 WL 4302707 (C.D. Cal. Jan. 24, 2007)-------------- 13, 14
Space Coast Bus., LLC v. Coastal Media Assocs., LLC,
No. 6:10-CV-1618-ORL-KRS, 2011 WL 13299574 (M.D. Fla. July 7, 2011) ------------ 10, 11
U.S. v. Ferguson,
649 F. Supp. 3d 719 (N.D. Ind. 2023) ------------------------------------------------------------------13
Versatile Housewares & Gardening Sys. Inc. v. Thill Logistics Inc.,
No. 09 CIV 10182 (KMK)(PED), 2010 WL 11601216 (S.D.N.Y. Dec. 6, 2010) --------------10
Statutes
15 U.S.C. § 1058(a)(1)–(2) ------------------------------------------------------------------------------------2
15 U.S.C. § 1059 ------------------------------------------------------------------------------------------------2
15 U.S.C. § 1065(3) --------------------------------------------------------------------------------------------2
Rules
37 C.F.R. § 2.88 -------------------------------------------------------------------------------------------------2
37 C.F.R. § 2.193(e)(1)(ii)-------------------------------------------------------------------------------------12
ii
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Federal Rule of Evidence 502 --------------------------------------------------------------------------- 13, 14
Indiana Rule of Professional Responsibility 3.7......................................................................... 12
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INTRODUCTION
To obtain and maintain the four registrations for the trademarks plaintiff Renee Gabet
asserts in this action, her attorney George Pappas signed numerous factual declarations and
submitted them to the U.S. Patent and Trademark Office (“PTO”) on behalf of Gabet. Pappas’s
declaration testimony, however, does not describe his own actions. Instead, his testimony is about
Gabet’s actions: her purported use of the trademarks on different types of goods at different times.
Before signing these declarations, Pappas and Gabet communicated about them. These
communications are relevant to Amazon’s counterclaims, which allege that Pappas’s declarations
about Gabet’s trademark use were false and that Gabet’s submission of them to the PTO was fraud
that warrants cancellation of the registrations. (Dkt. 151 at 19–43.) Gabet, however, refuses to
produce her communications with Pappas about the declarations, claiming they are privileged.
Gabet’s and Pappas’s communications about Pappas’s prior declaration testimony are not
protected by the attorney-client privilege. Gabet cannot meet her burden of establishing at least
three essential elements of the attorney-client privilege with respect to these communications.
First, Gabet cannot show that the communications were confidential because the communications
were for purposes of providing information to the PTO. Second, she cannot establish that they
were made for the purpose of obtaining legal advice, since providing fact witness testimony is far
different than providing legal advice. Third, for purposes of these communications, Pappas was
not acting as an attorney; rather, he was acting as a witness by providing declaration testimony to
the PTO on Gabet’s behalf. Alternatively, if these communications ever were privileged, Gabet
waived the privilege by intentionally putting them at issue when seeking trademark rights and
testifying about them herself. Amazon thus seeks an order compelling Gabet: (1) to produce
communications and notes in her possession, custody, or control related to Pappas’s declarations
to the PTO; and (2) to testify about such communications.
1
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BACKGROUND
I. PAPPAS’S TESTIMONY ABOUT GABET’S ALLEGED
TRADEMARK USE SECURED RIGHTS FOR GABET
Gabet asserts claims against Amazon based on four trademark registrations: two
registrations for the trademark Sunset, and one registration each for the trademarks Indian Musk
and Morning Dew. 1 Pappas provided legal assistance to Gabet in obtaining and maintaining these
trademark registrations. But in addition to providing legal services, Pappas took on a separate role.
He acted not just as Gabet’s attorney, but also as her fact witness.
Before issuing a trademark registration, the PTO requires evidence in the form of a
statement of use that the applicant is using the trademark in the manner described in the
registration. See 37 C.F.R. § 2.88. Six and ten years after the PTO issues a trademark registration,
the PTO will cancel the registration unless the registrant submits updated evidence in the form of
a new statement of use that she is still using the trademark in the manner described in the
registration. 15 U.S.C. § 1058(a)(1)–(2). 2 Thereafter, the registrant is required to submit similar
new statements of use every ten years in order to renew the registration. 15 U.S.C. § 1059. 3 In
addition, the registrant may submit a statement of use stating that she has been continuously using
the mark for the past five years in the manner described in the registration. 15 U.S.C. § 1065(3). 4
This statement permits the trademark registration to become “incontestable,” a status which makes
1
The registrations are nos. 2,547,492 (Sunset) (’492 Registration), 2,024,708 (Sunset) (’708
Registration), 1,792,108 (Morning Dew) (’108 Registration), and 1,836,520 (Indian Musk) (’520
Registration).
2
This is typically referred to as a Section 8 declaration.
3
This is typically referred to as a Section 9 declaration.
4
This is typically referred to as a Section 15 declaration.
2
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it more difficult for a challenger to invalidate the registration. Section 8, 9, and 15 declarations are
not formalities: they are evidence required by the government as a condition for providing
trademark rights.
While prosecuting the asserted trademark registrations, Pappas signed the following 12
declarations. (Dkt. 202-2–202-13.)
Ex. Registration Decl. Type Decl. Date
Dkt. 202-2 ’708 Sections 8 &15 4/30/2002
Dkt. 202-3 ’708 Sections 8 & 9 10/24/2006
Dkt. 202-4 ’708 Sections 8 & 9 5/5/2016
Dkt. 202-5 ’492 37 C.F.R. § 2.88 10/18/2001
Dkt. 202-6 ’492 Sections 8 & 15 4/16/2007
Dkt. 202-7 ’492 Sections 8 & 9 12/5/2021
Dkt 202-8 ’520 Sections 8 & 9 3/9/2004
Dkt. 202-9 ’520 Sections 8 & 9 6/24/2013
Dkt. 202-10 ’520 Sections 8 & 9 9/18/2023
Dkt. 202-11 ’108 Sections 8 & 9 7/1/2003
Dkt. 202-12 ’108 Sections 8 & 9 12/3/2012
Dkt. 202-13 ’108 Sections 8 & 9 10/15/2022
For example, the ’492 Registration is for the mark Sunset on the goods, “body powders,
bath gels, soaps for skin, face, body, and bath, and body lotions.” (Dkt. 202-14.) Pappas signed a
declaration on October 18, 2001, under penalty of perjury, stating that Gabet “is using the mark in
commerce on or in connection with . . . [t]hose goods identified in the Notice of Allowance in this
3
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application.” (Dkt. 202-5.) It also states that Pappas “declares that . . . all statements made of
his/her own knowledge are true and all statements made on information and belief are believed to
be true.” (Id.) Pappas submitted the declaration to the PTO on behalf of Gabet, and the PTO relied
on it to issue the ’492 Registration.
As another example, just over five years after the PTO issued the ’492 Registration, Pappas
submitted another declaration, “Combined Declaration of Use & Incontestability Under Sections
8 & 15,” that he signed on April 16, 2007, under penalty of perjury, about Gabet’s trademark use.
This declaration states:
The owner is using or is using through a related company the mark
in commerce on or in connection with all the goods/services
specified in the certificate of registration, as evidenced by the
attached specimen of the packaging used thereof and showing the
mark as used on the goods in commerce.
The mark has been in continuous use in commerce for five
consecutive years after the date of registration and is still in use in
commerce on or in connection with all goods and/or services
specified in the Certificate of Registration.
(Dkt. 202-6.) It also states that Pappas “declares that . . . all statements made of his/her own
knowledge are true and all statements made on information and belief are believed to be true.”
(Id.)
The specimen attached to the declaration depicts the use of Sunset in connection with eau
de toilette—not with body powders, bath gels, soaps, or body lotions, which are the classes of
goods on which the registration claims that the mark was used:
4
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(Id.) The PTO relied on this declaration to prevent expiration of the ’492 Registration and permit
it to obtain “incontestable” status.
II. AMAZON’S COUNTERCLAIMS ALLEGE THE PAPPAS
DECLARATIONS ARE FALSE
Amazon’s First Amended Counterclaims seek cancellation of the asserted trademark
registrations on the ground that Gabet knew that the Pappas declarations were false but
nevertheless submitted them to the PTO with the intent the PTO would rely on the declarations to
give Gabet trademark rights. (Dkt. 179.) For example, for the October 18, 2001, Pappas declaration
submitted with the ’492 Registration, the counterclaims allege that at least Pappas’s testimony that
Gabet was using the mark Sunset on body powders and soap was false. (Id. at 28.)
III. GABET IS WITHHOLDING DOCUMENTS RESPONSIVE TO
AMAZON’S REQUESTS FOR COMMUNICATIONS RELATED
TO THE PAPPAS DECLARATIONS
On March 2, 2023, Amazon served the following requests for production:
NO. 1: All Documents relating to the validity, invalidity, enforceability or
unenforceability of the Asserted Trademarks.
5
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NO. 3: All Documents relating to, considered, or reviewed in the course of the
prosecution of each of the Asserted Trademarks.
NO. 8: All Documents related to any attempt to register, or registration of the Asserted
Trademarks at the United States Patent and Trademark Office or other trademark
offices, including draft or filed trademark applications, studies, and surveys (including
but not limited to market research studies, and surveys related to acquired
distinctiveness, secondary meaning, likelihood of confusion, and consumer
recognition).
(Dkt. 202-15.) Each of these requests seeks communications between Gabet and Pappas about
Pappas’s PTO declarations submitted during prosecution of the asserted trademark registrations.
On December 22, 2023, plaintiffs served a “Privilege Log for Documents Withheld in
Response to Defendant [Link], INC.’s Document Requests Nos. 1, 3, and 8,” claiming
that each document listed in the log is protected by the attorney-client privilege. (Dkt. 202-16.)
The contents of the privilege log are replicated below, but with a final column added. The final
column shows the date of the Pappas declaration to which the withheld communications appear to
relate.
Reg. Withheld Document Related Pappas
Decl.
2/2/02: GP to RG re “PTO requirements for declaration of use” 4/30/2002 (Dkt.
2/12/02: RG to GP re “declaration of use and use of mark on 202-2)
goods”
6/22/06, 9/19/06: GP to RG re “registration expiration date and 10/24/2006 (Dkt.
’708
process for renewal” 202-3)
9/28/06: RG to GP re “renewal and use of mark on goods”
12/9/15: GP to RG re “Explanation of renewal process” 5/5/2016 (Dkt.
3/28/16: GP to RG re “Communication regarding renewal 202-4)
application and use of mark on goods”
[No withheld documents included in privilege log] 10/18/2001 (Dkt.
202-5)
’492
3/14/07: GP to RG re “Explanations and information regarding 4/16/2007 (Dkt.
Sections 8 & 15 Declaration of Use and Incontestability” 202-6)
3/28/07: RG to GP re “Direction and information regarding
declaration of use and incontestability”
6
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Reg. Withheld Document Related Pappas
Decl.
1/19/21, 3/22/21: GP to RG re “Notice of Renewal with US PTO” 12/5/2021 (Dkt.
11/16/21: GP to RG re “Notice of Renewal with US PTO” 202-7)
2/11/04: GP to RG re “expiration of registration and renewal 3/9/2004 (Dkt.
process 202-8)
2/28/04: RG to GP re “Communication regarding preparation of
renewal application and use of mark”
5/21/13: GP to RG re “expiration of registration and renewal 6/24/2013 (Dkt.
’520 process” 202-9)
6/5/13, 6/14/13: RG to GP re “preparation of renewal application
and use of mark”
6/24/13: GP to RG re “renewal and timeline for next renewal”
5/17/23: GP to RG re “expiration of registration and renewal 9/18/2023 (Dkt.
process” 202-10)
8/17/23: RG to GP re renewal application and use of mark
3/8/03: GP to RG re “Notice of Renewal” 7/1/03 (Dkt. 202-
June/July 2003: RG to GP re “renewal and use of mark” 11)
10/4/12: GP to RG “re Notice of Renewal” 12/3/2012 (Dkt.
’108
202-12)
9/12/22, 10/17/22, 5/2/23: GP to RG re “expiration of renewal and 10/15/2022 (Dkt.
renewal application” 202-13)
9/28/22: RG to GP re renewal application and use of mark
Gabet did not include in her privilege log the following communications related to Pappas’s
October 18, 2001, declaration for the ’492 Registration: emails from Pappas to Gabet on April 17,
2001, and October 18, 2001. Pappas earlier disclosed their existence, describing them as:
“Communications regarding statement of use, explanation of extension of time, and GP signing
statement.” (Dkt. 202-17.) Gabet also did not include in her privilege log a September 19, 2023,
email from Gabet to Pappas related to Pappas’s September 18, 2023, declaration for the ’520
Registration. Pappas earlier disclosed its existence, describing it as: “Communication re filing of
renewal application.” (Id.) As plaintiffs have not produced a privilege log claiming privilege over
these communications, despite the Court’s Order requiring plaintiffs to provide a “complete
privilege log” (Dkt. 181), plaintiffs have waived any privilege claim and should immediately
produce these communications.
7
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IV. GABET REFUSED TO TESTIFY ABOUT COMMUNICATIONS
WITH PAPPAS BUT VOLUNTEERED TESTIMONY ABOUT HER
KNOWLEDGE OF PAPPAS’S STATE OF MIND
Just as Gabet refuses to produce communications with Pappas about Pappas’s declarations,
she also refused to testify about them during her November 13, 2023, deposition. For example, in
response to questions about communications related to Pappas’s recent September 18, 2023,
Sections 8 & 9 declaration related to the Morning Dew trademark, Gabet followed her counsel’s
instructions not to answer based on a privilege objection. (Dkt. 202-18 at 246:13–247:25.)
But later, in deposition, in response to questioning from her own trial counsel, Gabet
offered testimony about her knowledge of Pappas’s state of mind when he signed and submitted
the declarations, e.g.:
Q To your knowledge, has George Pappas ever made any statements to the U.S.
trademark office about that registration number that were false or fraudulent?
A No.
(Id. at 271:25–273:20.) However, Gabet refused to testify about the basis of her knowledge for
Pappas’s state of mind, following her counsel’s privilege objection and instruction not to answer.
(Id. at 276:17–277:7.)
ARGUMENT
I. GABET’S COMMUNICATIONS WITH PAPPAS ABOUT HIS
FACTUAL TESTIMONY ARE NOT PRIVILEGED
A. Gabet has the Burden of Establishing All Essential
Elements of Privilege
“It is well established that ‘a party that seeks to invoke the attorney-client privilege has the
burden of establishing all of its essential elements.’” Cardinal Square, LLC v. QBE Specialty Ins.
Co., No. 1:23-CV-00114-JRS-MJD, 2023 WL 8471849, at *1 (S.D. Ind. Dec. 7, 2023) (quoting
8
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U.S. v. BDO Seidman, 337 F.3d 802, 811 (7th Cir. 2003)). 5 Further, “any doubts about the
applicability of the privilege must be resolved in favor of disclosure.” Hobbs v. Am. Com. Barge
Line LLC, No. 4:22-CV-00063-TWP-KMB, 2023 WL 6276068, at *3 (S.D. Ind. Sept. 26, 2023)
(quoting Rockies Express Pipeline LLC v. 58.6 Acres, 2009 WL 5219025, at *2 (S.D. Ind. Dec.
31, 2009)). In the Seventh Circuit, the attorney-client privilege protects only “communications
made in confidence by a client and client’s employees to an attorney, acting as an attorney, for the
purpose of obtaining legal advice.” In re Morning Song Bird Food Litig., No. 1:17-MC-00078-
JMS-TAB, 2018 WL 1948807, at *2 (S.D. Ind. Apr. 25, 2018) (quoting Sandra T.E. v. S. Berwyn
Sch. Dist. 100, 600 F.3d 612, 618 (7th Cir. 2010)).
B. Gabet Cannot Meet Her Burden of Establishing Her
Communications With Pappas About His Declarations
Are Privileged
Sometimes when practicing before the PTO on behalf of a client, attorneys make the
decision to also act as a fact witness for their client. When an attorney provides fact testimony, the
privilege does not attach to the attorney’s communications that create the factual basis for the
testimony, including communications with the client. The following two cases provide examples
of the privilege not applying to attorney-client communications related an attorney’s PTO
declaration about the client’s trademark use.
First, in Miyano Mach. USA, Inc. v. MiyanoHitec Mach., Inc., 257 F.R.D. 456 (N.D. Ill.
2008), during the prosecution of a trademark later asserted in litigation, the prosecuting attorney
testified to the PTO in a declaration about the client’s use of the trademark. In that case, the court
ordered the client to produce, “statements between [the attorney] and his client regarding the
factual bases for [the attorney’s] representations in his declarations” because they “are not
5
Norix Grp., Inc. v. Corr. Techs., Inc., No. 20 C 1158, 2021 WL 5050281, at *2 (N.D. Ill. Nov.
1, 2021) (“Seventh Circuit precedent governs . . . Lanham Act counterclaim”).
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privileged and must be disclosed.” Id. at 465. The opinion reached a different conclusion with
respect to a confidential questionnaire the attorney prepared when conducting due diligence prior
to filing the complaint in the litigation, holding that document was privileged in part because it
was “a communication made in connection with the provision of legal advice.” Id. at 461. The
juxtaposition of these two holdings demonstrates that while attorney-client communications may
receive privilege protection when related to providing legal advice (such as verifying a complaint),
they are not entitled to this protection when related to something other than legal advice (such as
providing factual testimony).
The case, Space Coast Bus., LLC v. Coastal Media Assocs., LLC, No. 6:10-CV-1618-ORL-
KRS, 2011 WL 13299574 (M.D. Fla. July 7, 2011), also involved the same core fact pattern, i.e.,
a prosecuting attorney previously testifying to the PTO in a declaration about the client’s use of a
trademark now in litigation. In Space Coast, the court ordered the attorney’s deposition and held
that a proposed limitation prohibiting questions about communications between the attorney and
the client was “overbroad.” Id. at 2. In particular, “[i]n such instances in which the client
communicated information with the intent that it be disclosed, rather than seeking legal advice, the
communication is not confidential, and therefore, is not privileged.” Id.; see also Versatile
Housewares & Gardening Sys. Inc. v. Thill Logistics Inc., No. 09 CIV 10182 (KMK)(PED), 2010
WL 11601216, at *6 (S.D.N.Y. Dec. 6, 2010) (finding in trademark context, “[c]ommunications
of ‘technical information’ between client and attorney for the purpose of submission to the [Patent
and Trademark Office] are not privileged”). The Space Coast opinion also warned the party
seeking to withhold the communications that it “may not affirmatively rely on purportedly
privileged information to meet [its] burden of proof, while attempting to shield inquiry into the
same information by assertion of a privilege.” Space Coast, 2011 WL 13299574 at *3.
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Similar to the parties whose attorneys testified to the PTO in Miyano and Space Coast,
Gabet cannot establish that her communications with Pappas about Pappas’s testimony to the PTO
are privileged. In particular, she cannot establish that they meet at least three threshold Seventh
Circuit requirements for attorney-client privileged communications: that they be (1) “made in
confidence”; (2) made “for the purpose of obtaining legal advice”; and (3) made “to an attorney,
acting as an attorney.” Cardinal Square, 2023 WL 8471849, at *1. The failure to satisfy even one
of these elements is fatal to the privilege claims. Id. (“a party that seeks to invoke the attorney-
client privilege has the burden of establishing all of its essential elements”).
First, Gabet’s actions show she did not intend the communications to be confidential.
Instead, they were made for the purpose of Pappas providing witness testimony to the PTO. As in
Space Coast, when Gabet provided information about trademark use to an attorney so that he could
disclose it to the PTO, the communications are not considered confidential and must be disclosed.
See Space Coast, 2011 WL 13299574, at *2 (when “the client communicated information with the
intent that it be disclosed, rather than seeking legal advice, the communication is not confidential,
and therefore, is not privileged”). And, as in Miyano, Gabet’s communications with Pappas
“regarding the factual bases for [the attorney’s] representations in his declarations . . . are not
privileged and must be disclosed.” Miyano, 257 F.R.D. at 465.
Second, Gabet’s communications with Pappas about his testimony were not “made for the
purpose of obtaining legal advice.” Cardinal Square, 2023 WL 8471849, at *1. Instead, they were
made so that Pappas could provide fact testimony. Miyano distinguished between communications
made to an attorney “in connection with the provision of legal advice” (e.g., due diligence of draft
complaint allegations) and “statements between [the attorney] and his client regarding the factual
bases for [the attorney’s] representations in his declarations.” Miyano, 257 F.R.D. at 461, 465. In
11
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the former situation the communications are privileged, but in the latter situation they are not.
Gabet’s communications with Pappas about the factual bases for his 12 declarations—describing
Gabet’s use of different trademarks on different types of goods at different times—are the latter,
unprivileged, situation. Communications about the bases for the factual statements in Pappas’s
declaration are not communications in connection with the provision of legal advice. They are
communications to provide a witness with knowledge so he can submit declaration testimony to
the PTO. They, therefore, are not privileged.
Third, Gabet’s communications with Pappas about his testimony were not made to an
“attorney, acting as an attorney.” Cardinal Square, 2023 WL 8471849, at *1; see also, e.g., Elder
Care Providers of Indiana, Inc. v. Home Instead, Inc., No. 1:14-CV-01894-SEB-MJD, 2016 WL
881176, at *2 (S.D. Ind. Mar. 8, 2016) (“privilege is limited to situations in which the attorney is
acting as a legal advisor—business and financial advice are not protected”). As noted in comment
[2] to Indiana Rule of Professional Responsibility 3.7, there is a fundamental difference between
a lawyer acting as an advocate and acting as a witness: “A witness is required to testify on the
basis of personal knowledge, while an advocate is expected to explain and comment on evidence
given by others.” Indeed, the PTO’s regulations make clear that any “person with firsthand
knowledge of the facts and actual or implied authority to act on behalf of the owner” could have
provided the declarations. See 37 C.F.R. § 2.193(e)(1)(ii). Pappas’s declarations state that Gabet
is using the mark “in commerce on or in connection with all goods and/or services specified in the
Certificate of Registration” (or similar). (Dkt. 202-2 - 202-13.) They also state that Pappas,
“declares all statements made of his/her own knowledge are true and all statements made on
information and believe are believed to be true.” (Id.) In this circumstance, Pappas was acting as
a lay witness testifying based on personal knowledge, not as an advocate explaining and
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commenting on evidence given by others. The communications that provide the bases for this
testimony were not made to an “attorney, acting as an attorney,” and therefore, they are not
privileged.
II. EVEN IF THE COMMUNICATIONS WERE ONCE PRIVILEGED,
GABET WAIVED THE PRIVILEGE
Alternatively, even if Gabet’s communications with Pappas once were privileged, Gabet
has intentionally waived that protection. First, she waived the privilege when relying on Pappas’s
factual declarations—which were based on her communications with Pappas—to secure trademark
rights from the PTO. Second, she waived the privilege when she affirmatively testified during her
deposition about her knowledge of Pappas’s state of mind when he provided the declarations to
the PTO.
Federal Rule of Evidence 502 provides that waiver of attorney-client privilege through
disclosure in a federal proceeding or to a federal office or agency, “extends to an undisclosed
communication or information . . . only if: (1) the waiver is intentional; (2) the disclosed and
undisclosed communications or information concern the same subject matter; and (3) they ought
in fairness to be considered together.” Under Rule 502, a waiver is intentional when a party uses
an attorney-client communication to its advantage in a federal proceeding: “[U]nder subdivision
(a)(1) the party using an attorney-client communication to its advantage in the litigation has, in so
doing, intentionally waived the privilege as to other communications concerning the same subject
matter.” RTC Indus., Inc. v. Fasteners for Retail, Inc., No. 17 C 3595, 2020 WL 1148813, at *9
n.8 (N.D. Ill. Mar. 9, 2020) (citing Fed. R. Evid. 502 Addendum, subdivision (a)); see also U.S. v.
Ferguson, 649 F. Supp. 3d 719, 723 (N.D. Ind. 2023)) (“Once the client discloses confidences to
a third-party, she waives the privilege.”).
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In Samsung SDI Co. v. Matsushita Elec., Ind., No. CIV.A. CV 05-8493AGS, 2007 WL
4302707, at *1 (C.D. Cal. Jan. 24, 2007), the court found that privilege was waived over all similar
subject matter when an attorney testified about information learned from his client. While also
considering statements made by an attorney to the PTO, Samsung involved the prior prosecution
of a patent later asserted in litigation, rather than a trademark. The prosecuting attorney certified
in an Information Disclosure Statement (“IDS”) to the PTO that a particular prior art paper was
not known to the inventors. In other words, the attorney testified about the inventors’ knowledge
which he learned about from communications with the inventors. The court held privilege waiver
took place when the attorney, “submitted the IDS and disclosed to the PTO the results of the
inquiries that were made of inventors.” Id. at *1. The scope of the waiver applied “to the inquiry,
results of the inquiry and knowledge of the [Prior art] Paper.” Id. The opinion reasoned that the
client could not “disclos[e] privileged information to the PTO . . . seeking to gain the benefit of an
enforceable patent,” and at the same time “successfully assert the attorney-client privilege in order
to shield itself from inquiry as to the subject matter of the IDS.” Id. at *2. “The rationale is to
prohibit the use of privileged information first as a ‘sword’ and in a later action as a ‘shield.’” Id.
at *1 (citation omitted).
Gabet’s reliance on Pappas’s testimony about her trademark use satisfies the Rule 502 test
for privilege waiver over communications about Gabet’s purported trademark use described in the
declarations. First, under Rule 502(a)(1), Gabet’s “waiver is intentional.” She intentionally relied
on Pappas’s testimony based on her purportedly privileged communications with him in the PTO
proceedings. In other words, she used the attorney-client communications to her advantage in a
federal proceeding and, “in so doing, intentionally waived the privilege as to other communications
concerning the same subject matter.” RTC Indus., 2020 WL 1148813, at *9 n.8. Second, under
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Rule 502(a)(2), “the disclosed and undisclosed communications . . . concern the same subject
matter.” Pappas’s PTO declarations are about Gabet’s alleged trademark use, and the withheld
communications are about the same alleged trademark use. Third, under Rule 502(a)(3), the
disclosed and undisclosed communications “ought in fairness to be considered together.” As a
result of the declarations, Gabet obtained rights that she is now asserting against Amazon. In
fairness, Amazon ought to be able to explore the information Pappas relied on to make the
declarations. Otherwise, Gabet would be using the privilege as a sword (to provide Pappas with
information to submit a declaration that secured trademark rights) and a shield (to prevent scrutiny
of that information).
Similarly, Gabet’s testimony about her knowledge of her attorney’s state of mind when
submitting the declarations also satisfies the Rule 502 test for privilege waiver with respect to
communications related to his state of mind. First, Gabet intentionally provided this testimony;
indeed, she provided it in response to questioning from her own attorney to create a record in this
action in defending against Amazon’s counterclaims. Second, the disclosed and undisclosed
communications concern the same subject matter: Pappas’s state of mind when submitting
declarations to the PTO. Third, the disclosed and undisclosed communications in fairness ought to
be considered together. Gabet testified that to her knowledge her attorney was being truthful, while
refusing to explain how she knows, on the ground that the information about her knowledge is
purportedly privileged. This is a classic example of attempting to use the privilege as a sword and
shield. Gabet’s testimony regarding her knowledge of Pappas’s purported truthful representations
of facts waives any privilege over communications that give rise to such knowledge.
CONCLUSION
In conclusion, Amazon requests the Court to order Gabet to produce her communications
with Pappas related to his PTO declarations, and to testify about them. The communications were
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made for the purpose of Pappas disclosing information to the PTO, not for seeking legal advice.
Alternatively, if privileged, Gabet waived privilege by submitting the Pappas declarations to the
PTO and by testifying about her knowledge of Pappas’s state of mind.
January 3, 2024 Respectfully submitted,
/s/ Klaus H. Hamm
Robert T. Cruzen (Admitted pro hac vice)
Caroline L. Desmond (Admitted pro hac vice)
Klaus H. Hamm (Admitted pro hac vice)
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, OR 97204
Telephone: (503) 595-5300
Fax: (503) 595-5301
[Link]@[Link]
[Link]@[Link]
[Link]@[Link]
Counsel for Defendant
[Link], INC.
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