## Facts

- Calvin Klein Trademark Trust and Calvin Klein, Inc. (CKI) licensed Calvin Klein trademarks to Warnaco (controlled by Linda Wachner) to manufacture and distribute branded goods and operate outlet stores.
- Plaintiffs sued Wachner/Warnaco for trademark infringement, dilution, and related Lanham Act claims, alleging discounting and mass-marketing of goods, sales of low-quality goods to unauthorized distributors, and conduct that diluted the marks and deceived consumers.
- During discovery, defendants sought documents and testimony from public relations firm Robinson Lerer & Montgomery (RLM) and its employee, Donald Nathan.
- RLM had an existing business relationship with CKI, and later was retained by plaintiffs’ litigation counsel (Boies, Schiller & Flexner LLP) in anticipation of filing the lawsuit to provide communications-related consulting.
- Plaintiffs withheld RLM-related materials, asserting attorney–client privilege and work-product protection; the court reviewed the disputed materials in camera.
- The court found many documents appeared to be routine public relations recommendations about presenting favorable “spin” on developments in the litigation.

## Issues

1. Whether communications and documents involving a public relations firm retained by litigation counsel are protected by the attorney–client privilege.
2. Whether those materials are protected by the work-product doctrine, and if so, what portions may be withheld.

## Decision

- The court denied attorney–client privilege for the RLM-related documents and testimony sought; none of the disputed materials qualified.
- The court sustained the work-product claim only in part, protecting materials solely to the extent they revealed counsel’s litigation strategy or mental impressions about the conduct of the litigation.
- The motion to compel was granted in part and denied in part consistent with these rulings.

## Legal Principles

- Attorney–client privilege requires confidential client communications made for the purpose of obtaining legal advice; communications with third-party consultants are not privileged absent a showing they are necessary (or highly useful) to legal consultation and involve protected client confidences.
- Public relations advice aimed at managing publicity or crafting favorable messaging, without conveying confidential client communications for legal advice, is not protected by attorney–client privilege even if the PR firm is retained by counsel.
- Work-product protection can apply to materials prepared because of anticipated or ongoing litigation, including materials involving non-lawyer consultants.
- Work-product protection is limited to content that reflects attorneys’ mental impressions, opinions, or litigation strategy; routine public relations “spin” and reputation management that do not reveal litigation strategy are discoverable.

## Conclusion

The court held that involving a public relations firm in litigation-related communications does not, by itself, create attorney–client privilege, and it limited work-product protection to those PR-related materials that disclosed counsel’s litigation strategy or mental impressions, requiring production of ordinary publicity guidance.


Calvin Klein Trademark Tr. v. Wachner, 198 F.R.D. 53 (S.D.N.Y. 2000)