Gucci America v. Guess?, Inc.: Cross-Border Privilege Dispute Resolved Applying “Touch Base” Test

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The recent trademark infringement decision Gucci America, Inc. v. Guess?, Inc., 271 F.R.D. 58 (S.D.N.Y. Sept. 23, 2010), solidified the adherence of courts in the Southern District of New York to the “touch base” doctrine, under which a court assesses whether to apply U.S. privilege law by asking whether the communications at issue related to legal proceedings in the U.S. or reflected advice concerning American law. In Gucci, Magistrate Judge James Cott, following a referral by Judge Shira A. Sheindlin, held that U.S. law governed a dispute over attorney-client privilege, notwithstanding that the communications at issue were made in Italy and involved an Italian in-house counsel. Importantly, the communications were made during investigations that led to parallel infringement actions against Guess in Italy and in the U.S. Gucci America, Inc. v. Guess?, Inc., 271 F.R.D. 58, 61-64 (S.D.N.Y. Sept. 23, 2010).

Gucci America asserted the privilege with respect to communications involving Vanni Volpi, an employee in the legal department of it’s Italian affiliate Guccio Gucci S.p.A. (“GG”). Volpi’s primary responsibility was to manage GG’s trademark protection and enforcement program worldwide. Prior to joining GG in July 2006, Volpi had served as an intellectual property specialist in the legal departments of Chanel and Louis Vuitton. Volpi did not, however, have a law degree, and was not a member of the Italian bar. In 2008, Volpi began to contact the legal departments of various Gucci affiliates worldwide, including Gucci America, to obtain information about Guess’s potentially infringing activities. At issue was whether the attorney-client privilege and work-product doctrine shielded from disclosure approximately 150 of Volpi’s communications arising from Volpi’s investigation of Guess’s activities.

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