United States District Court, D. Nevada
T.R.P. COMPANY, INC. Plaintiff,
SIMILASAN AG AND SIMILASAN CORPORATION, Defendants.
Michael D. Rounds Michael D. Rounds (NV Bar No. 4734) Ryan
Cudnik (NV Bar No. 12948) BROWNSTEIN HYATT FARBER SCHRECK,
LLP Brownstein Hyatt Farber Schreck, LLP
Michelle Gillette (pro hac vice) CROWELL & MORING LLP
Valerie Goo (pro hac vice) CROWELL & MORING LLP Counsel
for Defendants SIMILASAN CORPORATION and SIMILASAN AG
Michael N. Feder DICKINSON WRIGHT PLLC Daniel S. Silverman
VENABLE LLP Meaghan H. Kent VENABLE LLP Attorneys for
Plaintiff/Counter-Defendant T.R.P. Company, Inc.
[PROPOSED] ORDER GRANTING IN
PART AND DENYING IN PART SIMILASAN CORPORATION'S MOTION
TO COMPEL (ECF NO. 86)
HOFFMAN, JR. UNITED STATES MAGISTRATE JUDGE
Court has considered Defendant Similasan Corporation's
("Similasan Corp.") Motion to Compel (ECF No. 86),
the Opposition of Plaintiff T.R.P. Company, Inc.
("TRP") (ECF No. 88), and Similasan Corp.'s
Reply (ECF No. 92), as well as the declarations, deposition
testimony and evidence submitted therewith, and the argument
of counsel at the April 2, 2019 hearing. As the Court
noted in the Minute Order (ECF No. 100) and at the hearing
(ECF No. 101), the Motion to Compel is granted in part and
denied in part as follows.
Motion to Compel is granted on the issue of express waiver of
the attorney-client privilege, and TRP is ordered to produce
the documents identified as numbers 14, 121-125 and 127 in
its privilege log (ECF No. 87-3, Exhibit 2), and any other
documents in its possession, custody, or control that relate
to or reflect privileged communications between attorney John
Long and TRP concerning trademark rights to, the application
for, and supplemental registration of "PinkEye
Relief." With respect to the supplementation of
TRP's responses to Similasan Corp.'s interrogatories
identified in the Motion, the Court reserves ruling on such
further discovery requests at this time and orders the
parties to meet and confer on this subject, if appropriate,
after Similasan Corp. has reviewed TRP's production
pursuant to this Order.
Court finds that the express waiver occurred on pages 71-72
of the deposition transcript of TRP's President Mr.
Pominville (ECF No. 87-6, Ex. 5, p. 9) and in TRP's
response to Similasan Corp.'s Interrogatory No. 16 that
was verified by Mr. Pominville (ECF No. 87-17, Ex. 16, pp.
Motion to Compel is denied at this time on the issue of
implied waiver of the attorney-client privilege as to
communications between attorney John Long and TRP (or TRP
communications reflecting Mr. Long's advice), concerning
TRP's application and supplemental registration for
PinkEye Relief, Earache Relief and Allergy Eyes Relief. The
Court is not persuaded that there is an assertion of an
advice of counsel defense by TRP in response to Similasan
Corp's claims of fraud on the United States Patent and
Trademark Office. The Court finds that an advice of counsel
defense has to be the foundation for the basis of an implied
waiver. The Court's finding as to a lack of implied
waiver does not conflict with the Court's order as to an
express waiver concerning the PinkEye Relief communications
identified in paragraph 1 above. The Court simply finds that
there has not been a waiver as to the PinkEye Relief
communications on the additional grounds of implied waiver.
Motion to Compel is denied as to a waiver of the
attorney-client privilege through communications that
involved advice from attorneys John Long or Jack Hanifan, and
were directed to or included Susan Hanson, Ray Hanson and/or
Brian Banks. Susan Hanson is the sister of Tom Pominville and
Ray Hanson is his brother in law. Neither Ms. Hanson, Mr.
Hanson, nor Brian Banks was an employee of TRP during the
timeframes of the communications that have been identified in
TRP's privilege log. ECF No. 87-3, Exhibit 2. However,
the Court finds that each of these individuals were
"functional equivalents" of TRP employees based
upon their title(s), responsibilities, roles in the operation
of TRP and/or familial relationship with Mr. Pominville in
the relevant timeframes based on the affidavits from Ms.
Hanson, Mr. Hanson, and Mr. Pominville, and other evidence
TRP submitted. ECF Nos. 88-3, 88-4, 88-5. Their
communications with attorneys Long and Hanifan, or concerning
their advice, were therefore privileged communications
between TRP and these attorneys.
IS SO ORDERED.
 The confidential and sealed versions
of Similasan Corporation's Motion to Compel and Reply are
reflected in the docket at ECF No.'s 87 and 93. These and
the other related confidential filings ...