## Facts

- A civil dispute arose over rights connected to the Superman character, including claims involving heirs of the original creators and D.C. Comics.
- Marc Toberoff, an attorney and producer, worked with the heirs and related entities in connection with litigation and film-development efforts.
- A former employee stole documents from Toberoff’s files and provided them to D.C. Comics with allegations about Toberoff’s plans regarding the rights at issue.
- Toberoff requested a federal investigation into the theft; the U.S. Attorney’s Office issued a subpoena for the stolen materials.
- Toberoff produced the requested documents to the U.S. Attorney’s Office in full, under an understanding that the government would not disclose the materials to nongovernmental third parties absent legal compulsion.
- In the related civil action, D.C. Comics sought the same documents in discovery.
- The magistrate judge ordered production, concluding that producing the materials to the government waived attorney-client privilege as to those documents; the district judge declined to disturb that ruling.
- Petitioners sought a writ of mandamus directing the district court to treat the documents as privileged as against D.C. Comics.

## Issues

1. Whether voluntary disclosure of attorney-client privileged materials to federal prosecutors can be treated as a “selective waiver” that preserves the privilege against private litigants.
2. Whether a confidentiality or non-disclosure understanding with the government prevents waiver of the attorney-client privilege as to third parties.
3. Whether the Ninth Circuit should recognize selective waiver as a matter of federal common law to encourage cooperation with government investigations.
4. Whether the discovery order was “clearly erroneous as a matter of law,” justifying mandamus relief.

## Decision

- The Ninth Circuit denied the petition for a writ of mandamus.
- The court held that petitioners’ voluntary production of privileged documents to the U.S. Attorney’s Office waived attorney-client privilege as to those documents for all purposes, including against D.C. Comics.
- The court declined to adopt selective waiver in the circuit.
- The court held that the confidentiality understanding with prosecutors did not preserve the common-law privilege against third parties.
- Because petitioners failed to show the district court’s discovery ruling was clearly erroneous, mandamus relief was unavailable.

## Legal Principles

- Attorney-client privilege is narrowly construed; voluntary disclosure of privileged communications to a third party generally waives the privilege because confidentiality is surrendered.
- “Selective waiver” is not recognized in the Ninth Circuit; disclosure to the government does not preserve privilege as against private parties absent a specific legal protection.
- A confidentiality or non-disclosure arrangement with the government may limit further dissemination by the government but does not prevent waiver caused by the holder’s intentional disclosure to a non-client third party.
- For mandamus challenging a discovery order, failure to demonstrate clear legal error is dispositive; mandamus is an extraordinary remedy not used for routine discovery review.

## Conclusion

The Ninth Circuit refused to create a selective-waiver doctrine and held that producing privileged documents to federal prosecutors—despite confidentiality terms—constitutes a waiver of attorney-client privilege as to third parties, making mandamus inappropriate absent clear legal error in the discovery ruling.


In re Pac. Pictures Corp., 679 F.3d 1121 (9th Cir. 2012)