In Williams v. Bridgeport Music, Inc., decided on May 5, 2014, the US District Court for the Southern District of New York quashed a subpoena served by counsel for Pharrell Williams, Robin Thicke and Clifford Harris (plaintiffs) seeking an expert musicologist's report that analyzed the similarities between two musical hits from different eras (No. 14 Misc. 73-Pl., (May 5, 2014)). The underlying suit, pending in the Central District of California, arose from allegations that plaintiffs' song, "Blurred Lines," infringed on Marvin Gaye's song, "Got To Give It Up" and the Funkadelic's song, "Sexy Ways" (see Williams v. Bridgeport Music, Inc., No. 13-cv-06004 (C.D. Cal. Aug. 15, 2013)). In the California action, plaintiffs sued Bridgeport Music, Inc., Frankie Gaye, Marvin Gaye III, Nona Gaye, and Does 1 through 10 for declaratory relief.

Although not parties to the California action, Anthony Kyser, the Director and CEO of All Things Marvin Gaye Limited, and the Gayes' mother, Jan Gaye, hired Dr. Lawrence Ferrara, a New York City-based musicologist, to analyze the similarities between Marvin Gaye's hit, "Got to Give it Up," and plaintiffs' contemporary hit, "Blurred Lines." Within a week of Ferrara's report, plaintiffs sought to hire him as their own expert in the California action. Ferrara declined and informed plaintiffs of the conflict. Months later, on March 3, 2014, plaintiffs served Ferrara with a subpoena seeking the files on his analysis. On March 18, 2014, Nona and Frankie Gaye (the Gayes) moved to quash the subpoena on the grounds that Ferrara was not designated to testify as an expert at trial, and thus, his report was protected by the work-product doctrine. Subsequently, on April 4, 2014, the Gayes sent a letter to plaintiffs identifying Ferrara as a consulting expert and provided a privilege log. Various e-mails from the Gayes also explained that Ferrara was hired on behalf of Nona and Frankie Gaye, and that Ferrara's report was not shared with any unrelated third parties.

The district court began its analysis by noting that the 1970 Advisory Committee's Notes to FRCP 26 expressly preclude from discovery the identification of informally consulted experts, and that, because the 2010 Committee's Notes are silent on this issue, this rule remains in place under FRCP 26(b)(4)(D) despite the 2010 amendments to FRCP 26. The district court then addressed plaintiffs' argument that the Gayes waived any work-product protection as to Ferrara's report because the report was not commissioned by parties to the suit, noting that:

The district court then held that no waiver of the work-product protection had occurred because:

As a result, the district court held that no waiver of the work-product protection had occurred, and dismissed plaintiffs' secondary argument that the Gayes' privilege log was temporally and substantively deficient. Based on those conclusions, the district court then granted the motion to quash the subpoena.

Knowing the basics and intricacies of the work-product doctrine and when waiver of the protection may occur is critical. Practical Law has a wealth of resources on these issues in our Attorney-Client Privilege and Work Product Doctrine Toolkit, which includes the following Practice Notes: