Utah First Federal Credit Union v. University First Federal Credit Union

D. Utah7/22/2024

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH

UTAH FIRST FEDERAL CREDIT UNION MEMORANDUM DECISION AND
dba UTAH FIRST CREDIT UNION, a ORDER SUSTAINING PLAINTIFF’S
federal credit union, OBJECTION TO MAGISTRATE
JUDGE’S ORDER AND GRANTING
Plaintiff, PLAINTIFF’S SHORT FORM
DISCOVERY MOTION (LEE/REDKOR
v. COMMUNICATIONS)

UNIVERSITY FIRST FEDERAL CREDIT Case No. 2:22-cv-00146-RJS-DBP
UNION dba UFIRST CREDIT UNION, a
federal credit union, Chief District Judge Robert J. Shelby

Defendant. Chief Magistrate Judge Dustin B. Pead

Before the court is Plaintiff Utah First Credit Union’s Objection to Memorandum
Decision and Order of Magistrate Judge Regarding Plaintiff’s Short Form Discovery Motion
(Lee/RedKor Communications).1 On January 22, 2024, Chief Magistrate Judge Dustin B. Pead
entered a Memorandum Decision and Order (Order) addressing two short form discovery
Motions filed by Plaintiff.2 In the first Motion (Communications Motion), Plaintiff sought to
compel Defendant UFirst Credit Union to produce certain documents and communications
involving non-parties Rushford Lee and RedKor Brands (collectively, RedKor).3 In the second
Motion (Trademark Search Motion), Plaintiff requested the court compel Defendant to produce
factual information pertaining to the results of trademark searches conducted by Defendant

1 Dkt. 156, Plaintiff’s Objection.
2 Dkt. 132, Memorandum Decision and Order.
3 Dkt. 98, Plaintiff Utah First Federal Credit Union’s Short Form Discovery Motion Lee/RedKor Communications
(Communications Motion).
during its rebranding process.4 Defendant opposed the Motions, arguing the discovery Plaintiff
sought in both Motions was subject to attorney-client privilege.5 Judge Pead’s Order appears to
have denied the Communications Motion and granted in part the Trademark Search Motion.
Plaintiff now objects to that denial and requests the court set it aside as contrary to law and grant
the Communications Motion.

For the reasons explained below, Plaintiff’s Objection is SUSTAINED. Judge Pead’s
denial is set aside as contrary to law, and Plaintiff’s Communications Motion is GRANTED.
BACKGROUND
On October 5, 2023, Plaintiff filed the Communications Motion requesting the court
compel Defendant “to produce all allegedly privileged documents and communications involving
non-parties Rushford Lee and [RedKor] Brands as identified in [Defendant’s] and [RedKor]
privilege logs.”6 Defendant’s privilege logs designated communications and documents
involving Defendant, Defendant’s law firm, Kirton McConkie, and RedKor as protected by
attorney-client privilege.7 Plaintiff argued Defendant waived attorney-client privilege by

involving third party RedKor in the communications and neither the common-interest doctrine
nor Defendant’s “functional equivalent of an employee” theory privileged the communications.8
Plaintiff filed the Trademark Search Motion on October 6, 2023, seeking the production of

4 Dkt. 99, Plaintiff Utah First Federal Credit Union’s Short Form Discovery Motion Trademark Search Results
(Trademark Search Motion).
5 Dkt. 104, Defendant’s Opposition to the Communications Motion (Communications Motion Opposition); Dkt. 105,
Defendant’s Opposition to the Trademark Search Results Motion (Trademark Motion Opposition).
6 Communications Motion at 2. RedKor is an independent branding agency hired by Defendant as a “consultant” to
assist Defendant in developing a new name and brand. Communications Motion Opposition at 2. Lee is a
partner/owner and CEO of RedKor. Communications Motion at 2; Dkt. 129, Plaintiff Utah First Federal Credit
Union’s Reply in Support of Plaintiff’s Supplemental Brief Regarding Plaintiff’s Short Form Discovery Motion
Lee/RedKor Communications (Plaintiff’s Supplemental Reply) at 4.
7 Communications Motion at 2.
8 Id. at 2–3.
factual information related to the results of trademark searches Defendant conducted during its
rebranding process—which Defendant also identified as protected by attorney-client privilege.9
Defendant opposed both Motions.10
On November 21, 2023, Judge Pead issued an order for supplemental briefing concerning
the Communications Motion.11 He noted Defendant argued the requested discovery was

privileged notwithstanding the involvement of RedKor for three reasons: (1) Defendant and
RedKor were both clients of Kirton McConkie and the communications conveyed or discussed
legal advice pertaining to Defendant’s rebrand; (2) even if not a concurrent client of Kirton
McConkie, the communications were privileged because RedKor was a de facto employee of
Defendant; and (3) those arguments aside, Defendant and RedKor had a community of interest
concerning the communications.12 Judge Pead concluded these three issues warranted further
development and directed the parties to submit supplemental briefing.13 Additionally, he ordered
Defendant to provide the subject documents for in camera review by the court.14 The parties did
so15 and, on January 22, 2024, Judge Pead entered an Order on the Motions.16

9 Trademark Search Motion at 2.
10 Communications Motion Opposition; Trademark Motion Opposition.
11 Dkt. 126, Order Regarding Plaintiff’s Short Form Discovery Motion Lee/RedKor Communications.
12 Id. at 1.
13 Id. at 2.
14 Id.
15 Dkt. 127, Plaintiff’s Supplemental Brief Regarding Plaintiff’s Short Form Discovery Motion Lee/RedKor
Communications (Plaintiff’s Supplemental); Dkt. 128, Defendant’s Response to Plaintiff’s Supplemental Brief
Regarding Plaintiff’s Short Form Discovery Motion Lee/RedKor Communications (Defendant’s Supplemental
Response); Plaintiff’s Supplemental Reply.
16 Memorandum Decision and Order.
The Order appears to resolve both the Communications Motion and the Trademark
Search Motion. It begins by briefly summarizing the discovery Plaintiff requests in each Motion
and then explains:
The court ordered additional briefing by the parties and in camera review. The
court has conducted its review and enters the following order that grants in part
Plaintiff’s motions. The motions seek related information. Therefore, the court
enters this order and directs the parties that once this order is complied with, they
meet to further discuss any communications that are at issue. Following a
meaningful meet and confer, the parties may seek further guidance from the court
if necessary.17

The remainder of the Order—the entirety of the discussion and legal analysis—focused
exclusively on the Trademark Search Motion.18 It did not discuss the Communications Motion
or the parties’ supplemental briefing concerning the Communications Motion in any way. Judge
Pead determined several documents at issue in the Trademark Search Motion involving
communications between Kirton McConkie and RedKor contained legal advice and were at least
partially privileged.19 Accordingly, he directed Defendant to produce certain complete or
redacted versions of communications related to the trademark searches.20 However, he did not
address Plaintiff’s argument that none of the communications in dispute in the Motions were
privileged because of the involvement of a third party, RedKor. Nor did Judge Pead provide a
basis for concluding the subject communications were privileged despite Defendant’s apparent
waiver. The Order concluded “Plaintiff’s motions are GRANTED IN PART AND DENIED IN
PART as set forth above.”21

17 Id. at 1–2.
18 Id. at 2–6.
19 Id.
20 Id. at 4–6.
21 Id. at 6.
Due to the lack of discussion concerning the Communications Motion, the parties were
unclear about the scope of the Order.22 In a meet and confer on January 26, 2024, they agreed
Plaintiff’s counsel would contact Judge Pead’s chambers to clarify if the Order addressed both
the Communications Motion and the Trademark Search Motion, or whether an additional order
was forthcoming.23 Plaintiff’s counsel did so on January 26 and in an email that same day, Judge

Pead’s law clerk responded that “Judge Pead intended for the order to cover both motions at this
time.”24
As ordered, Defendant began producing certain documents sought by the Trademark
Search Motion.25 After reviewing the production, Plaintiff determined some of the discovery
remained outstanding.26 The parties held a meet and confer to discuss the issue on February 2,
2024 and, on the same day, filed a stipulated motion to extend the time to file any objections to
Judge Pead’s Order until February 19, 2024.27 Judge Pead granted the stipulated request on
February 5, 2024.28
The parties remained unable to resolve their differences concerning the Trademark
Search issues raised in Judge Pead’s Order.29 Plaintiff’s counsel contacted Judge Pead’s

22 Plaintiff’s Objection at 5.
23 Id.
24 Dkt. 156-7, Exhibit G.
25 Plaintiff’s Objection at 5.
26 Id.
27 Dkt. 138, Stipulated Motion for Extension of Time to File Objection to Magistrate Judge Pead’s 01/22/2024
Order.
28 Dkt. 141, Order Granting Stipulated Motion for Extension of Time to File Objection to Magistrate Judge Pead’s
01/22/2024 Order.
29 Plaintiff’s Objection at 6. Plaintiff continued to maintain its position that none of the information and documents
it sought were protected by attorney-client privilege. However, as Judge Pead’s Order only provided direction
concerning the Trademark Search Motion, the parties’ efforts were focused on the documents at issue in that
Motion. See id. at 5 n.4.
chambers for instruction on how to seek additional guidance from the court on the matter,30 as
directed in the Order.31
On February 16, 2024, Judge Pead issued an Order Regarding Discovery Issues, directing
Plaintiff “to file a new motion . . . concerning any additional discovery it seeks pertaining to the
process and results of the trademark search,” and set forth a briefing schedule for the motion.32

This order further stated “the deadline to file any objections to [the Order] will be stayed pending
resolution of any additional discovery issues related to the process and results of the trademark
search.”33
Plaintiff filed its Motion for Further Guidance Regarding Discovery Issues Related to the
Process and Results of Defendant’s Trademark Search on February 23, 2024.34 The Motion for
Further Guidance primarily addressed the issues pertaining to the Trademark Search Motion.
However, Plaintiff reiterated that, as argued in the Communications Motion, it continued to
maintain “that RedKor, Rushford Lee, and any other pertinent employees of RedKor are third
parties to the attorney-client relationship between [Defendant] and Kirton McConkie. As such,

any communications involving Rushford Lee and/or RedKor are not protected by the attorney-
client privilege.”35 The Motion for Further Guidance was fully briefed on March 14, 2024.36

30 Id. at 6.
31 Memorandum Decision and Order at 2 (“Following a meaningful meet and confer, the parties may seek further
guidance from the court if necessary.”).
32 Dkt. 144, Order Regarding Discovery Issues at 1.
33 Id. at 2.
34 Dkt. 145, Plaintiff’s Motion for Further Guidance.
35 Id. at 5 n.2.
36 Dkt. 146, Defendant’s Response to Motion for Further Guidance; Dkt. 147, Plaintiff’s Reply in Support of Motion
for Further Guidance.
On May 22, 2024, Judge Pead held a hearing to discuss, among other things, the Motion
for Further Guidance.37 The parties presented oral argument concerning the issues raised in the
Motion for Further Guidance relating to the Trademark Search Motion. Judge Pead did not
address the Communications Motion, nor any of the legal issues raised in that Motion—
including the threshold question of whether and why any of the communications Plaintiff sought

were covered by attorney-client privilege.38 At the conclusion of the hearing, Judge Pead
granted Plaintiff’s Motion for Further Guidance and ordered Defendant to produce the
outstanding information related to Defendant’s trademark search results.39 In an order
memorializing his oral ruling from the hearing, Judge Pead explained the information sought—
pertaining only to the Trademark Search Motion—was factual in nature and not covered by
attorney-client privilege.40 He concluded by noting “the court finds the production of this
information does not impact or change its prior order regarding its in camera review,”
presumably referring to the denial of Plaintiff’s Communications Motion.41
With discovery issues related to the Trademark Search Motion resolved, Judge Pead’s
stay on the deadline to file objections to the January Order resolving both Motions was lifted.42

Pursuant to Federal Rule of Civil Procedure 72(b)(3) and 28 U.S.C. § 636(b)(1)(A), Plaintiff
timely filed the present Objection on June 7, 2024.43

37 Dkt. 151, Amended Notice of Hearing on Motion; Dkt. 154, Minute Entry.
38 Plaintiff’s Objection at 7.
39 Dkt. 152, Order Granting Motion for Discovery.
40 Id. at 3.
41 Id.
42 Judge Pead did not formally lift the stay. However, Plaintiff assumed Judge Pead’s May 24, 2024 Order Granting
Motion for Discovery indicated the stay was lifted and, pursuant to Federal Rule of Civil Procedure 72(a), its 14
days to file an objection to the January Order began to run. The court agrees this assumption was reasonable and
Plaintiff’s Objection was timely.
43 Plaintiff’s Objection.
In the Objection, Plaintiff argues Judge Pead’s denial of its Communications Motion in
his January Order was “contrary to law” and Defendant’s “[c]ommunications with a third party
are not subject to protection under attorney-client privilege.”44 Specifically, Plaintiff asserts
Judge Pead erred by “not engaging in any legal analysis of the novel privilege issues raised by
[Defendant] concerning the [Communications Motion]” and by “disregarding numerous

examples of directly relevant case law showing that the [c]ommunications should not be
protected by the attorney-client privilege.”45 Plaintiff requests the court review de novo Judge
Pead’s Order concerning the Communications Motion, set aside as contrary to law the Order as it
pertains to the disputed communications, and grant Plaintiff’s Communications Motion.
LEGAL STANDARD
Rule 72(a) of the Federal Rules of Civil Procedure requires the district court to “consider
timely objection [to a nondispositive order from a magistrate judge] and modify or set aside any
part of the order that is clearly erroneous or is contrary to law.”46 The clearly erroneous standard
applies to a magistrate judge’s factual findings, which are reversed only if, after reviewing the

evidence, “the court is left with the definite and firm conviction that a mistake has been
committed.”47 Under the contrary to law standard, the court reviews de novo “the [magistrate
judge’s] purely legal determinations”48 and makes “an independent determination of the

44 Id. at 2.
45 Id.
46 Vivint, Inc. v. Alarm.com Inc., No. 2:15-cv-392, 2020 WL 4544316, at *6 (D. Utah Aug. 6, 2020) (quoting Fed. R.
Civ. P. 72(a)); see also 28 U.S.C. § 636(b)(1)(A) (“A judge of the court may reconsider any pretrial matter under
this subparagraph (A) where it has been shown that the magistrate judge’s order is clearly erroneous or contrary to
law.”).
47 Ocelot Oil Corp. v. Sparrow Indus., 847 F.2d 1458, 1464 (10th Cir. 1988) (quotation marks and citation omitted).
48 Combe v. Cinemark USA, Inc., No. 1:08-cv-142 TS, 2009 WL 3584883, at *1 (D. Utah Oct. 26, 2009) (citation
omitted).
issues.”49 “A magistrate judge’s order is contrary to law if it ‘fails to apply or misapplies
relevant statutes, case law or rules of procedure.’”50 “The district judge is free to follow [a
magistrate judge’s order] or wholly ignore it, or, if he is not satisfied, he may conduct the review
in whole or in part anew.”51
Fundamentally, “these standards require the court to first determine whether the

magistrate judge applied the correct legal standard and, assuming [he] did, then to determine
whether the magistrate judge abused [his] discretion regarding the factual findings.”52
ANALYSIS
As explained below, the court concludes Judge Pead’s Order denying Plaintiff’s
Communications Motion fails review at the first step because it does not articulate what legal
standards were applied nor offer any analysis supporting the Order’s conclusion. Though the
Order did not specifically discuss the Communications Motion, in denying it, the Order made the
implicit legal determination the documents and information Plaintiff sought were protected by
attorney-client privilege. However, without any discussion or analysis, this determination “fails
to apply or misapplies relevant statutes, case law or rules of procedure.”53 Under its de novo

review, the court determines Judge Pead’s conclusion that the discovery at issue in Plaintiff’s
Communication Motion is protected by attorney-client privilege is contrary to law. Accordingly,

49 Ocelot Oil Corp., 847 F.2d at 1464 (quoting United States v. First City Nat’l Bank, 386 U.S. 361, 368 (1967)).
50 Hawkins v. Ghiz, No. 2:18-cv-00466, 2021 WL 308238, at *1 (D. Utah Jan. 29, 2021) (quoting Meacham v.
Church, No. 2:08-cv-535, 2010 WL 1576711, at *1 (D. Utah Apr. 19, 2010)).
51 Ocelot Oil Corp., 847 F.2d at 1464 (quoting Mathews v. Weber, 423 U.S. 261, 271 (1976)).
52 Mitchell Int’l, Inc. v. Healthlift Pharmacy Servs., LLC, No. 2:19-cv-000637-RJS-DAO, 2020 WL 5645321, at *2
(D. Utah Sept. 22, 2020) (citation omitted).
53 Hawkins, 2021 WL 308238, at *1.
Plaintiff’s Objection is sustained, Judge Pead’s Order as it relates to the Communications Motion
is set aside, and the Motion is granted.
I. The Communications Are Not Covered By Attorney-Client Privilege
In its Communications Motion, Plaintiff requests the court order Defendant to produce
certain documents and communications Defendant contends are protected by attorney-client

privilege.54 The discovery at issue comprises documents and communications involving
Defendant, Defendant’s law firm, Kirton McConkie, and third party RedKor (including
RedKor’s CEO Rushford Lee).55 Defendant asserts the communications are privileged and no
waiver has occurred.56 Specifically, notwithstanding the involvement of a third party, Defendant
contends the communications remain privileged under either the joint client doctrine, the
functional equivalent of an employee exception, or the community interest doctrine.57 The court
disagrees.
In federal-question cases such as this one, privileges are generally “governed by the
principles of the common law as they may be interpreted by the courts of the United States in the
light of reason and experience.”58 The attorney-client privilege “is the oldest of the privileges for

confidential communications known to the common law.”59 It “protects ‘confidential
communications by a client to an attorney made in order to obtain legal assistance’ from the
attorney in his capacity as a legal advisor.”60 Notably, the “mere fact that an attorney was

54 Communications Motion at 2.
55 Id.
56 Communications Motion Opposition at 2.
57 Defendant’s Supplemental Response at 2.
58 In re Qwest Commc’ns. Int’l Inc., 450 F.3d 1179, 1184 (10th Cir. 2006) (quoting Fed. R. Evid. 501).
59 Upjohn Co. v. United States, 449 U.S. 383, 389 (1981) (citation omitted).
60 In re Grand Jury Proc., 616 F.3d 1172, 1182 (10th Cir. 2010) (quoting In re Grand Jury Subpoena Duces Tecum
Issued on June 9, 1982, 697 F.2d 277, 278 (10th Cir. 1983)).
involved in a communication does not automatically render the communication subject to the
attorney-client privilege.”61 “[R]ather, the ‘communication between a lawyer and client must
relate to legal advice or strategy sought by the client.’”62 Additionally, because the attorney-
client privilege “contravene[s] the fundamental principle that the public . . . has a right to every
man’s evidence,” it must be “strictly construed.”63

In determining whether the privilege applies, the court considers, among other things,
“whether the communication between the client and the attorney is made in confidence of the
relationship and under circumstances from which it may be reasonably assumed that the
communication will remain in confidence.”64 “Because confidentiality is key to the privilege,
‘[t]he attorney-client privilege is lost if the client discloses the substance of an otherwise
privileged communication to a third party.’”65 In other words, “[a]ny voluntary disclosure by the
client is inconsistent with the attorney-client relationship and waives the privilege.”66
In this case, Defendant is the relevant client and lawyers from Kirton McConkie are
Defendant’s attorneys. RedKor is indisputably a third party to that relationship. To the extent

the purportedly privileged communications Plaintiff seeks are between Defendant and its
attorneys for the purpose of Defendant obtaining legal advice, by disclosing them or otherwise
involving third party RedKor in the communication, they are not confidential. Defendant has
thus waived the attorney-client privilege for the documents sought by Plaintiff’s Motion unless
one of the three exceptions Defendant invokes applies: the joint client doctrine, the functional

61 Id. (quoting Motley v. Marathon Oil Co., 71 F.3d 1547, 1550–51 (10th Cir. 1995)).
62 Id. (quoting United States v. Johnston, 146 F.3d 785, 794 (10th Cir. 1998)).
63 Qwest, 450 F.3d at 1185 (quoting Trammel v. United States, 445 U.S. 40, 50 (1980)).
64 Id. (quoting United States v. Lopez, 777 F.2d 543, 552 (10th Cir. 1985)).
65 Id. (quoting United States v. Ryans, 903 F.2d 731, 741 n.13 (10th Cir. 1990)).
66 Id. (quoting United States v. Bernard, 877 F.2d 1463, 1465 (10th Cir. 1989)).
equivalent of an employee exception, or the community interest doctrine.67 As the party
asserting attorney-client privilege, Defendant bears the burden of establishing it applies through
one of these exceptions.68 The court now discusses each exception in turn and explains why it
determines Defendant has failed to meet that burden.69
A. The Joint Client Doctrine

Notwithstanding the involvement of third party RedKor, Defendant asserts the subject
communications remain privileged under the joint client doctrine because both were clients of
Kirton McConkie and the communications pertain to Defendant’s rebrand, on which RedKor
was “specifically retained by [Defendant] to consult.”70 Defendant relies on several out-of-
circuit district court decisions in its discussion of the contours of the joint client doctrine.
First, citing Maplewood Partners, L.P. v. Indian Harbor Ins. Co., a case construing
attorney-client privilege under Florida law, Defendant asserts the joint client doctrine
“recognizes that the attorney client privilege can apply to joint clients of the same attorney, in the

67 In Defendant’s Supplemental Response, it suggests for the first time a “significant purpose test” used by the D.C.
Circuit also applies. Defendant’s Supplemental Response at 10. As explained below, the court is not inclined to
adopt an exception not recognized by the Tenth Circuit. Infra. pp. 21–22. Further, as Plaintiff notes, Defendant did
not raise this argument in its initial Opposition to Plaintiff’s Communications Motion and it was not one of the three
specific issues Judge Pead requested supplemental briefing on. Accordingly, Defendant has waived this argument
and the court does not engage with it further. See, e.g., Deseret Tr. Co. v. Unique Inv. Corp., No. 2:17-cv-00569,
2018 WL 8110959, *4 (D. Utah July 3, 2018) (collecting cases declining to consider argument not first raised by
defendant in its opposition brief).
68 Grand Jury Proceedings, 616 F.3d at 1183 (“The burden of establishing the applicability of the attorney-client
privilege rests on the party seeking to assert it.”) (cleaned up).
69 Defendant represents that any “[p]urely commercial or business correspondence between [Defendant] and
RedKor, which did not concern [Kirton McConkie’s] legal advice, have not been withheld as privileged and are not
at issue” in Plaintiff’s Communications Motion. Communications Motion Opposition at 2. Except as otherwise
noted in this Order, the court assumes this to be true. In other words, for purposes of this Order, the court assumes
that, absent Defendant’s waiver, the subject communications would otherwise be covered by attorney-client
privilege.
70 Defendant’s Supplemental Response at 2; Communications Motion Opposition at 2 (citing Universal Standard
Inc. v. Target Corp., 331 F.R.D. 80, 86 (S.D.N.Y. 2019) in support of joint client doctrine).
same litigation.”71 Under these circumstances, “disclosure by a client or her attorney, which
otherwise might constitute a waiver of the attorney-client privilege, is not considered a waiver if
the disclosure is made to a co-client of that attorney.”72 Defendant further explains that “while
‘parties to a prior joint representation agreement are not entitled to assert attorney-client
privilege offensively against each other . . . they are free to assert the privilege as to

outsiders.’”73 Defendant and RedKor were both clients of Kirton McConkie and, Defendant
contends, “were both seeking and obtaining legal advice for the identical matter, namely
[Defendant’s] rebrand due diligence, on which [Defendant] and RedKor were jointly working
together and for which both [Defendant] and RedKor jointly received legal counsel.”74
According to Defendant, “[t]his satisfies the joint or co-client doctrine sufficient to maintain the
privilege.”75
Defendant also discusses Kirsch v. Brightstar Corp.,76 another case interpreting the joint
client doctrine pursuant to Florida law.77 In Kirsch, as Defendant highlights, Brightstar, a party,
and TDMobility, a nonparty, had common counsel.78 According to Defendant, because they

were both involved in the litigation and communicated with their counsel concerning the
underlying issues, the court concluded they “could share privileged documents relating to th[e]

71 Defendant’s Supplemental Response at 1–2 (quoting MapleWood Partners, L.P. v. Indian Harbor Ins. Co., 295
F.R.D. 550, 594 (S.D. Fla. 2013)).
72 Id. at 2 (quoting MapleWood, 295 F.R.D. at 594).
73 Id. (quoting MapleWood, 295 F.R.D. at 596) (emphasis deleted).
74 Id. at 3.
75 Id.
76 68 F.Supp.3d 846 (N.D. Ill. 2014).
77 Defendant’s Supplemental Response at 2.
78 Id.
litigation without waiving the attorney-client privilege.”79 Defendant asserts this applies here
where “RedKor, though not a party, is involved in this litigation and has communicated with
[Kirton McConkie] alongside [Defendant] in connection with the underlying issues disputed
herein.”80
Next, Defendant discusses the joint client doctrine as articulated by Universal Standard

Inc. v. Target Corp., a decision from the Southern District of New York.81 Notwithstanding
Defendant’s favorable citation to Universal Standard in its Opposition to Plaintiff’s
Communications Motion,82 in its Supplemental Response, Defendant contends the facts of the
case are “clearly distinct from the case at bar.”83 Universal Standard, in which the court found
the joint client doctrine did not apply, involved a third party public relations agency hired to
assist with litigation publicity.84 Defendant argues this is “vastly different” than RedKor’s role
as a consultant hired to assist Defendant with its rebrand.85 According to Defendant, the joint
client doctrine applies here because, unlike Universal Standard, Kirton McConkie’s “legal
advice was essential to RedKor’s ability to consult [Defendant] as to rebrand alternatives . . . and

to [Defendant’s] ultimate determination to rebrand and select an appropriate brand premised, in
part, on that same legal advice.”86

79 Id. (quoting Kirsch, 68 F.Supp.3d at 855).
80 Id. Defendant grounds this assertion in the fact RedKor was subpoenaed to produce certain documents and
Rushford Lee was deposed. Id. n.14.
81 Id. at 3–4.
82 See Communications Motion Opposition at 2 (citing Universal Standard as “protecting confidential
communications between client and attorney regarding legal advice,” despite fact that the court there determined
privilege was waived and joint client doctrine did not apply).
83 Id.
84 Universal Standard Inc., 331 F.R.D. at 88.
85 Defendant’s Supplemental Response at 4.
86 Id.
Plaintiff counters that Defendant’s argument concerning the joint client doctrine “is
problematic for several reasons.”87 Plaintiff argues that MapleWood and Kirsch are inapt
because they interpret attorney-client privilege pursuant to Florida law, “which does not apply to
this case and is not closely analogous to the federal common law attorney-client privilege.”88
Plaintiff highlights Defendant fails to cite any controlling precedent adopting or applying the

joint client doctrine pursuant to federal common law.89 Even if these cases applied, Plaintiff
contends Defendant fails to demonstrate its entitlement to the exception under the plain language
of those decision. For example, under MapleWood, the joint client doctrine “requires something
more” than Defendant and RedKor “happen[ing] to be clients of the same law firm.”90
Additionally, Plaintiff asserts Defendant’s attempt to distinguish Universal Standard fails
because Defendant “scrambles” the standards articulated in that case.91 “RedKor was not a
necessary party to any communications between [Defendant] and [Kirton McConkie] that would
have ‘improved [Kirton McConkie’s] understanding of [Defendant’s] request for legal
advice.’”92 According to Plaintiff, even under these out-of-circuit standards, the joint client

doctrine does not prevent Defendant’s waiver of attorney-client privilege. The court agrees.
As an initial matter, Plaintiff is correct that Defendant does not cite any controlling Tenth
Circuit precedent applying the joint client doctrine, nor can the court identify a Tenth Circuit
decision expressly adopting it. However, in Qwest, the Circuit appears to approvingly mention
the doctrine in passing. In declining to adopt another waiver exception, the Tenth Circuit noted

87 Plaintiff’s Supplemental Reply at 2.
88 Id. (citing MapleWood, 295 F.R.D. at 583).
89 Id. at 3.
90 Id.
91 Id. at 5.
92 Id. at 5 (quoting Universal Standard, 331 F.R.D. at 88).
that “[w]hen disclosure is necessary to accomplish the consultation or assist with the
representation, as in the case of an interpreter, translator, or secretary, an exception to waiver
preserves the privilege.”93 This is consistent with the articulation of the doctrine discussed
below and, for these purposes, the court assumes the joint client doctrine is recognized by the
Tenth Circuit. Nevertheless, Defendant fails to establish it applies here.

Beginning with MapleWood, Plaintiff is correct to highlight the court in that case was
applying the joint client doctrine under a Florida law governing attorney-client privilege.94 In a
federal-question case such as this, attorney-client privilege is “governed by the principles of the
common law as they may be interpreted by the courts of the United States.”95 Defendant
provides no argument or authority suggesting federal common law mirrors Florida law on this
issue.96 That dubious foundation aside, Defendant’s argument is no more compelling when
considering the substantive components of MapleWood.
The portions of MapleWood Defendant cites demonstrate the joint client doctrine as
construed under Florida law does not apply simply because a third party—a non-party to the

litigation—happens to be represented by the same attorney as a party to the litigation. The
MapleWood court explained the joint client doctrine “simply recognizes that the attorney client
privilege can apply to joint clients of the same attorney, in the same litigation.”97 The court
noted as an example that plaintiffs and intervenors in the case were co-clients of the same

93 Qwest, 450 F.3d at 1195.
94 See MapleWood, 295 F.R.D. at 583 (applying a Florida codification of attorney-client privilege because the case
was brought under diversity jurisdiction so the court “look[s] to Florida law as to the attorney-client privilege”).
95 Qwest, 450 F.3d at 1184 (quoting Fed. R. Evid. 501).
96 The court acknowledges Universal Standard—which Defendant at times draws upon for support and at other
times seeks to distinguish—discusses an exception akin to the joint client doctrine under federal common law.
97 MapleWood, 295 F.R.D. at 594.
counsel. Due to that relationship and both parties’ role in the case, “[t]here is no need to evaluate
whether the legal interests of such co-clients are in common or aligned because the clients are
joint clients of a single attorney and are entitled, jointly, to a continuing attorney-client
privilege.”98
Here, the relationship between Defendant, Kirton McConkie, and RedKor is distinct from

that discussed in MapleWood. The joint client doctrine—if it applies at all—applies to “joint
clients of the same attorney, in the same litigation.”99 The parties for whom the doctrine applied
in MapleWood, plaintiffs and an intervening party, were both actual parties to the case. Further,
the communications at issue were shared at a time when the parties operated under a tacit joint
representation agreement, as defined by an insurance policy governing the relationship between
them.100 Defendant and RedKor may both separately be clients of Kirton McConkie, but they
are not both parties in this case and Defendant presents no evidence they were subject to a joint
representation agreement at the time the communications occurred. The fact Defendant,
RedKor, and Kirton McConkie previously communicated about matters that are now relevant to

this litigation does not render them joint clients in this litigation.
Further, the MapleWood court’s decision suggests the joint client doctrine under Florida
law is a narrow exception that, in certain limited circumstances, permits a party to side-step the
requirements of other privilege waiver exceptions (namely, the community interest doctrine

98 Id.
99 Id.
100 Id. at 596 (citing Brennan’s Inc. v. Brennan’s Rests., Inc., 590 F.2d 168, 172 (5th Cir. 1979) (“[P]arties to a joint
representation agreement are not entitled to assert attorney-client privilege offensively against each other as to the
matters included in that joint representation if the parties are in a subsequent dispute, but they are free to assert the
privilege as to outsiders.”)).
discussed below).101 Defendant urges the court to accept an interpretation of the doctrine that
would provide an expansive carve-out to the “fundamental principle that the public . . . has a
right to every man’s evidence.”102 The court declines that invitation.
The facts of Kirsch are similarly distinct and inapplicable. In Kirsch, the court found
disclosure of communications to a third party did not waive attorney-client privilege under the

joint client doctrine.103 However, TDMobility, the non-party, was owned by Brightstar, the party
in the case.104 TDMobility “had no in-house counsel, so Brightstar’s legal department and
outside counsel represented both Brightstar and TDMobility.”105 TDMobility was “heavily
involved” in the litigation and the court concluded, because of this involvement and the
relationship between Brightstar and TDMobility, they could share documents without waiving
attorney-client privilege.106
Here, RedKor is an independent branding firm hired by Defendant to consult on
Defendant’s rebrand. There is no shared corporate relationship between the two entities.
Moreover, RedKor is not heavily involved in the litigation. It was subpoenaed to produce certain

communications and its CEO was deposed. This is not an abnormal request of third parties in
possession of relevant discoverable information. Kirsch does not establish the joint client
doctrine shields the communications at issue in this case.

101 Id. at 594 (“There is no need to evaluate whether the legal interests of such co-clients are in common or aligned
because the clients are joint clients of a single attorney and are entitled, jointly, to a continuing attorney-client
privilege.”).
102 Qwest, 450 F.3d at 1185 (citation omitted).
103 Kirsch, 68 F.Supp.3d at 855.
104 Id.
105 Id.
106 Id.
Further, Defendant’s attempt to distinguish Universal Standard is unavailing. That case
demonstrates that, even outside the context of Florida law, Defendant has failed to establish the
doctrine applies to preserve its assertion of attorney-client privilege. In Universal Standard, the
court explained disclosure of communications to a third party does not waive privilege “where
the presence of a third party is needed to allow the client to communicate to an attorney, such as

where a translator is used or where an accountant supplies specialized knowledge to allow an
attorney to understand the client’s situation.”107 Importantly, “a communication between an
attorney and a third party does not become shielded by the attorney-client privilege solely
because the communication proves important to the attorney’s ability to represent the client.”108
The court found Universal Standard waived attorney-client privilege and the joint client doctrine
did not apply because the third party, a public relations agency hired by Universal Standard, was
not necessary to allow Universal Standard to communicate with its attorneys.109 Any questions
that arose concerning the press releases the third party was preparing “could simply have been
communicated to the attorneys by Universal Standard” without the third party’s involvement.110

The same conclusion follows here.
RedKor is a branding agency hired by Defendant to consult on and assist with
Defendant’s rebrand. Defendant’s contention that RedKor’s role is “vastly different than the
public relations agency in Universal Standard”111 because RedKor required Kirton McConkie’s
legal advice to properly consult on Defendant’s rebrand, flips the test on its head. The question

107 Universal Standard, 331 F.R.D. at 87 (collecting cases within the Second Circuit).
108 Id. (quoting United States v. Ackert, 169 F.3d 136, 139 (2d Cir. 1999)). In Ackert, the Second Circuit held
attorney-client privilege was waived because the third party, an investment banker, was not acting “as a translator or
interpreter of client communications.” Ackert, 169 F.3d at 139.
109 Universal Standard, 331 F.R.D. at 88.
110 Id.
111 Defendant’s Supplemental Response at 4.
is not whether the third party required the legal advice of Defendant’s counsel. The question is
whether the nature of the communication is so technical and specialized that Defendant’s counsel
required the third party to effectively serve as a translator in order to understand the client’s
situation. Defendant presents no evidence that is the case here. Defendant offers no compelling
rationale to conclude communications concerning branding are so distinct from public relations

that Defendant could not have communicated with its own attorneys without RedKor’s
involvement.
In sum, assuming the doctrine is recognized in the Tenth Circuit, the court determines
Defendant has not demonstrated the joint client doctrine would apply in this case. Defendant and
RedKor may have independently engaged the same counsel, but they were not joint clients of the
same attorney in the same case. Moreover, Defendant has not established the communications at
issue required RedKor’s involvement in order for Defendant’s counsel to properly serve
Defendant. The joint client doctrine does not excuse Defendant’s waiver of attorney-client
privilege by involving a third party in Defendant’s communications with its attorney.

B. Functional Equivalent of an Employee Exception
Alternatively, Defendant argues it did not waive attorney-client privilege because
RedKor “clearly qualifies as a de facto or functionally equivalent employee of [Defendant].”112
The functional equivalent exception is an offshoot of the Supreme Court’s decision in Upjohn
Co. v. United States, where the Court held lower-level employees outside a company’s “control
group” may communicate with corporate counsel without waiving the company’s attorney-client

112 Defendant’s Supplemental Response at 4.
privilege.113 Following the decision, some courts have extended its rationale to independent
contractors who, based on the circumstances, are determined to be the functional equivalent of an
employee.114 For example, in In re Bieter Co., the Eighth Circuit held that, in certain situations
where an independent contractor or consultant “possesses[es] a significant relationship to the
client and the client’s involvement in the transaction that is the subject of legal services,” the

consultant’s communication with the client’s counsel would not waive attorney-client
privilege.115
As Plaintiff notes, the functional equivalent exception to the waiver of attorney-client
privilege is an exception not previously recognized by the Tenth Circuit, and the court cannot
identify a previous adoption of the exception in the District of Utah. Moreover, despite
Defendant’s contention that there is a “majority application” of this exception,116 as the parties’
briefing illustrates, there is broad disparity in the standards and tests used by the courts applying
it.117
The court is skeptical the case law Defendant cites—absent any binding Tenth Circuit

precedent—supports recognition of the functional equivalent exception. In declining to adopt a
different waiver exception to attorney-client privilege, the Tenth Circuit has cautioned “these

113 Upjohn, 449 U.S. at 391 (holding attorney-client privilege may protect communications between lower-level
employees and corporate counsel because these employees “can, by actions within the scope of their employment,
embroil the corporation in serious legal difficulties, and it is only natural that these employees would have the
relevant information needed by corporate counsel if he is adequately to advise the client with respect to such actual
or potential difficulties”).
114 See e.g., In re Bieter Co., 16 F.3d 929 (8th Cir. 1994); McCaugherty v. Sifferman, 132 F.R.D. 234 (N.D. Cal.
1990); Exp.-Imp. Bank of the U.S. v. Asia Pulp & Paper Co., 232 F.R.D. 103 (S.D.N.Y. 2005); A.H. ex rel. Hadjih v.
Evenflo Co., No. 10-cv-02435, 2012 WL 1957302 (D. Colo. May 31, 2012); In re Restasis Antitrust Litig., 352
F.Supp.3d 207 (E.D.N.Y. 2019).
115 Bieter Co., 16 F.3d at 938 (internal quotation omitted) (cleaned up).
116 Defendant’s Supplemental Response at 7.
117 See id. at 7–8; Plaintiff’s Supplemental Reply at 7.
exceptions to the demand for every man’s evidence are not lightly created nor expansively
construed, for they are in derogation of the search for truth.”118 The court is mindful that “[t]he
attorney-client privilege is the oldest of the privileges for confidential communications known to
the common law.”119 In view of that lengthy common law tradition and the Tenth Circuit’s
cautionary admonitions concerning the privilege, the Circuit’s silence on this question gives the

court pause about recognizing an exception not previously endorsed by binding authority. That
said, even assuming the functional equivalent exception is permitted, Defendant fails to establish
it applies here.
Though the Tenth Circuit has not adopted the functional equivalent exception, the
District of Colorado has adapted a three-factor test articulated by the Southern District of New
York in Asia Pulp to determine if an outside consultant is functionally equivalent to an
employee: “(1) whether the consultant had primary responsibility for a key corporate job, (2)
whether there was a continuous and close working relationship between the consultant and the
company’s principals on matters critical to the company’s position in litigation, and (3) whether
the consultant is likely to possess information possessed by no one else at the company.”120 The

Southern District’s standards are more rigorous than the tests devised in other courts, which
Defendant urges the court to accept. For these purposes, acknowledging the Tenth Circuit’s
guidance concerning the strict construction of attorney-client privilege, the court determines,
were it to adopt the exception, this test is more appropriate than the more permissive standards
Defendant advocates for.121

118 Qwest, 450 F.3d at 1195.
119 Upjohn, 449 U.S. at 389 (citation omitted).
120 Evenflo Co., 2012 WL 1957302, at *3 (quoting Asia Pulp & Paper Co., 232 F.R.D. at 113).
121 See Defendant’s Supplemental Response at 5–7.
In Asia Pulp, the Southern District of New York found an independent financial advisor
hired by a company to consult on the company’s debt restructuring, who regularly communicated
with the company’s attorneys, was not functionally equivalent to an employee.122 The advisor
“occupied a broad role that reflected a considerable degree of responsibility.”123 The company’s
management did not have restructuring experience and the advisor was hired to “negotiate on

behalf” of the company, to “help formulate the company’s financial strategies,” and “to articulate
[the company’s] positions to the creditor community.”124 Despite that extensive involvement,
contemplating the factors noted above, the court determined the advisor was not functionally
equivalent to an employee because his “efforts are precisely those that any financial consultant
would likely make under the circumstances.”125 Additionally, even though the advisor spent
“eighty to eighty-five percent of his time” on work for the company, he was still independent
enough “to start and build a successful consulting business.”126 The court determined these facts
“contradict[ed] the picture of [the advisor] as so fully integrated into the [the company’s]
hierarchy as to be a de facto employee of [the company].”127

Defendant’s facts are less compelling than those in Asia Pulp and fail to demonstrate
RedKor was the functional equivalent of an employee. RedKor did not have primary
responsibility for a key corporate job. As Defendant states, RedKor was retained to “assist
[Defendant’s] marketing team with rebranding due diligence” and otherwise consult on

122 Asia Pulp, 232 F.R.D. at 112–14.
123 Id. at 113.
124 Id.
125 Id.
126 Id. at 114.
127 Id.
Defendant’s rebrand.128 Unlike Asia Pulp, where the company hired the advisor to perform a
role it did not have its own personnel for, Defendant acknowledges it had employees responsible
for managing the public-facing aspects of Defendant’s business. Defendant employs marketing
personnel, but it hired RedKor to “assist” them in aspects of Defendant’s rebrand—not to take
primary responsibility for the endeavor. Further, though it is not clear how much of RedKor’s

time was devoted exclusively to Defendant, RedKor is an independent branding agency
providing its services to numerous other clients.129 As in Asia Pulp, these facts all suggest
RedKor was not so “fully integrated” into Defendant’s hierarchy as to be functionally equivalent
to an employee. Rather, RedKor’s efforts were “precisely those that any [branding agency]
would likely make under the circumstances.”130
The court determines that, even if it were to adopt the functional equivalent exception,
Defendant has not established RedKor satisfies the exception’s standards. RedKor was an
independent outside consultant hired to assist Defendant’s own employees on a discrete project
pertaining to their responsibilities. RedKor simply performed the function any branding

consultant would be expected to perform and the functional equivalent exception does not apply.
C. The Community Interest Exception
Lastly, Defendant argues that, because it “shared an exactly identical legal interest” with
RedKor, the community interest doctrine preserved attorney-client privilege with respect to the

128 Defendant’s Supplemental Response at 7.
129 See Plaintiff’s Objection, Exhibit A (RedKor’s Website).
130 Asia Pulp, 232 F.R.D. at 113. Defendant also asserts RedKor qualifies as the functional equivalent of an
employee because it “had relevant branding and consumer data” that Defendant did not possess. Defendant’s
Supplemental Response at 7. Although it is not clear from the parties’ briefing, the court observes that if the
discovery at issue involved communication concerning this branding and consumer data, Defendant’s privilege
argument is problematic for a more fundamental reason. Attorney-client privilege “only protects disclosure of
communications; it does not protect disclosure of the underlying facts by those who communicated with the
attorney.” Upjohn, 449 U.S. at 395. “[R]elevant branding and consumer data” are underlying facts that would not
be covered by the privilege in the first instance.
subject communications.131 The community interest doctrine generally “operates as a shield to
preclude waiver of the attorney-client privilege when a disclosure of confidential information is
made to a third party who shares a community of interest with the represented party.”132 “A
community of interest exists where different persons or entities have an identical legal interest
with respect to the subject matter of a communication between an attorney and a client

concerning legal advice . . . . The key consideration is that the nature of the interest be identical,
not similar, and be legal, not solely commercial.”133 Defendant contends it shared a common,
identical legal interest with RedKor because they “both sought to obtain legal advice from
[Kirton McConkie] regarding trademark due diligence and branding issues.”134 The court is not
persuaded.
To the extent Defendant and RedKor had a common interest, Defendant fails to establish
it was anything more than commercial. Defendant and RedKor may have had a shared desire
that Defendant would avoid future legal complications resulting from the rebrand Defendant
retained RedKor to assist with, but this is not an identical legal interest—it is merely a function
of their commercial relationship.135 Defendant possessed the final authority in selecting its new

name and brand and it is now Defendant who faces potential legal liability for its alleged

131 Defendant’s Supplemental Response at 8–9.
132 Frontier Refining, Inc. v. Gorman-Rupp Co., Inc., 136 F.3d 695, 705 (10th Cir. 1998) (citing NL Indus., Inc. v.
Com. Union Ins. Co., 144 F.R.D. 225, 230–31 (D.N.J. 1992)); see also Qwest, 450 F.3d at 1195 (“[T]he ‘joint
defense’ or ‘common interest’ doctrine provides an exception to waiver because disclosure advances the
representation of the party and the attorney’s preparation of the case.”).
133 Brigham Young Univ. v. Pfizer, Inc., No. 2:06-cv-890 TS, 2011 WL 2516935, at *3 (D. Utah June 23, 2011)
(quoting NL Indus., Inc., 144 F.R.D. at 230–31. In Frontier Refining, 136 F.3d at 705, the Tenth Circuit also cited
the same portion of NL Indus.
134 Defendant’s Supplemental Response at 9.
135 See, e.g., Beltran v. InterExchange, Inc., No. 14-cv-03074-CMA-CBS, 2018 WL 839927, at *4 (D. Colo. Feb.
12, 2018) (citing In re Urethane Antitrust Litig., MDL No. 1616, 2013 WL 4781035, *2 (D. Kan. Sept. 5, 2013) (“A
common commercial interest and a common desire for the same outcome in a legal matter are not sufficient to
establish a common interest.”)).
infringement of Plaintiff’s trademarks. RedKor is not a party to this litigation and Defendant
does not present any argument or evidence establishing RedKor has any legal exposure—directly
or vicariously—for Defendant’s alleged infringement.136 Accordingly, Defendant’s waiver of
attorney-client privilege concerning the subject communications is not shielded by the
community interest exception.

In sum, RedKor is a third party to Defendant’s attorney-client relationship with Kirton
McConkie. When Defendant involved RedKor in communications with Defendant’s counsel, it
waived any attorney-client privilege it may have otherwise been entitled to. The exceptions
Defendant raises do not apply in this case and do not excuse its wavier of attorney-client
privilege concerning the communications at issue in Plaintiff’s Communications Motion.

136 See id. at *9 (finding no identical legal interest where defendant’s legal interest was “to escape liability for the
underpayment” alleged in the case and the third party “has no interest in escaping liability” because it could not be
held liable for the underpayments); Servicemaster of Salina, Inc. v. United States, No. 11-1168-KHV-GLR, 2012
WL 1327812, at *3 (D. Kan. Apr. 17, 2012) (holding plaintiffs and third parties do not share a common interest
where only plaintiffs “confront[ed]” the legal issue of tax deductibility for payments under a benefits plan
administered and sold by the third parties because the shared desire that plaintiff’s tax treatment theory was correct
was a business or commercial interest, not legal).
CONCLUSION
For the reasons explained above, Plaintiff’s Objection’ to Magistrate Judge Pead’s
Order is SUSTAINED. Judge Pead’s Order* denying Plaintiffs Communications Motion was
contrary to law. As it relates to the Communications Motion, the Order is set aside. Plaintiff's
Communications Motion’? is GRANTED. Defendant is ORDERED to produce within 14 days
the communications identified in Plaintiffs Motion.
So ordered this 22nd day of July 2024.
BY THE COURT:

United Stes Chief District Judge

B7Dkt. 156.
B8 Dkt. 132.
Dkt. 98.

27

Utah First Federal Credit Union v. University First Federal Credit Union

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