## Facts

- Gucci sued Guess and related entities for alleged infringement and counterfeiting of multiple Gucci trademarks and trade dress across many products.
- In discovery, Gucci withheld and logged communications involving (1) Jonathan Moss, Gucci’s former U.S. in-house counsel, and (2) an Italian affiliate’s in-house intellectual property counsel.
- Guess deposed Moss and learned he was an inactive member of the California Bar during part of his employment.
- Guess demanded Moss-related communications, arguing attorney-client privilege could not apply due to Moss’s inactive status.
- Gucci moved under Federal Rule of Civil Procedure 26(c) for a protective order to prevent disclosure of communications involving Moss and the Italian in-house counsel.
- The motion was referred to a magistrate judge, who conducted a privilege/work-product analysis and ruled on categories of documents and communications.

## Issues

1. Whether U.S. or Italian privilege law governs communications involving the Italian affiliate’s in-house intellectual property counsel in connection with U.S. trademark litigation.
2. Whether attorney-client privilege protects communications with the Italian in-house counsel when acting as an agent of Gucci’s U.S. legal team for purposes of U.S. litigation.
3. Whether work-product protection applies to communications and materials related to a cease-and-desist letter and related pre-suit activities.
4. Whether attorney-client privilege applies to communications involving Moss during periods when his bar membership was inactive, and if so, under what conditions.

## Decision

- The court granted the protective-order motion in part and denied it in part.
- The court held U.S. privilege law governed the Italian in-house counsel communications because they “touched base” with U.S. litigation and U.S. law.
- The court held attorney-client privilege covered communications with the Italian in-house counsel to the extent she functioned as an agent assisting Gucci’s in-house and outside counsel in gathering evidence and preparing for U.S. litigation.
- The court held work-product protection did not categorically cover cease-and-desist-related communications that were part of routine enforcement or predated reasonable anticipation of litigation, but did protect materials prepared after litigation was reasonably anticipated.
- The court rejected categorical rules for Moss: inactive bar status did not automatically destroy privilege for all communications, but Gucci could not treat all Moss communications as privileged merely because he was labeled in-house counsel.
- The court ordered production of many Moss communications where he functioned primarily in a business capacity or where Gucci did not show a reasonable basis to treat the exchange as legal advice, while protecting a narrower set of communications reflecting legal work (often in coordination with outside counsel) and a reasonable client expectation of legal advice.

## Legal Principles

- A party seeking a protective order under Rule 26(c) bears the burden to show good cause and a particular need for protection, typically by establishing privilege or work-product protection.
- In cross-border privilege disputes, the “touch base” test applies: communications tied to U.S. proceedings or advice on U.S. law are governed by U.S. privilege law; communications tied to foreign proceedings or foreign law are governed by the foreign jurisdiction’s law.
- Attorney-client privilege can extend to foreign in-house counsel when the counsel functions as an agent of the U.S. legal team in support of U.S. litigation and the communications are for legal advice or litigation preparation.
- Work-product protection applies only to materials prepared in anticipation of litigation; routine business or enforcement activity (including some cease-and-desist communications) is not protected absent a showing that litigation was reasonably anticipated.
- For an in-house employee with inactive bar status, privilege turns on function and context: whether the communication reflects legal advice and whether the client reasonably believed the person was acting as a lawyer, not solely on title or licensure formalities.

## Conclusion

The court applied U.S. privilege law to foreign-counsel communications tied to U.S. trademark litigation, protected litigation-support communications where the foreign in-house lawyer acted as an agent of U.S. counsel, limited work-product protection to materials prepared when litigation was reasonably anticipated, and required a document-by-document assessment of privilege for communications with an in-house “counsel” whose bar membership was inactive, focusing on reasonable client belief and legal versus business function.


Gucci Am., Inc. v. Guess?, Inc., 271 F.R.D. 58 (S.D.N.Y. 2010)