A federal district court judge in Manhattan has ruled that Gucci America Inc.’s communications with an in-house attorney are protected under the principle of attorney-client privilege even though the lawyer was an inactive member of the California bar.
Gucci sued Guess Inc. and others for selling alleged knockoffs of its products involving the trademarked interlocking “GG” logo. Guess was seeking information from Gucci’s communications log, which Gucci considered privileged, to support its defense that Gucci was aware of Guess’ use of the alleged infringing mark, but elected to do nothing.
The Jan. 3 decision means Guess cannot access those communications.
The attorney, Jonathan Moss, was initially hired by Gucci in a nonlegal position, and was later promoted to legal counsel. Although admitted to the California bar, he voluntarily changed his status to inactive although he never informed Gucci of the change. And even though his status was inactive, Moss was still a member of the California bar. He left Gucci on March 1.
A federal magistrate judge in Manhattan in June of last year ruled in favor of Guess, determining that Gucci should have checked on Moss’ bar status.
The magistrate’s ruling was set aside Monday, after the federal district court granted Gucci’s request for a protective order. The district court judge said Gucci had a “reasonable belief that Moss was its attorney throughout the relevant period” and that “Gucci paid Moss’ California bar membership fees throughout the years of his employment.”