1. SUBPOENAS TO LAWYERS: AN ETHICAL DUTY TO RESIST?
Mid-Year Meeting
San Diego, California
February 6, 2016

2. DISCOVERY REQUESTS TO LAW FIRM
□ Hooke, Lyne & Cinquor LLP is named in a damages action by unhappy former client Barksdale Industries, LLC which had engaged the firm to prosecute a patent infringement lawsuit □ Allegation: law firm “pulled punches” because of its undisclosed concurrent – but unrelated – patent representation of one of the client’s competitors Stringer Bell Technologies, Inc. □ Theories of recovery: concurrent representation breached both common law fiduciary/loyalty duties and standard of professional care causing rejection of Barksdale’s patent application □ Barksdale’s “First Set of Requests For Production” served on Defendant Hooke, Lyne & Cinquor:

3. DISCOVERY REQUESTS TO LAW FIRM
□□ “Any and all documents relating to, or reflecting, H, L, & C’s representation of Stringer Bell Technologies, Inc., including, but not limited to, the number of separate engagements and the dates of each such engagements” □ Firm has in storage 89 boxes of files maintained in 12 separate patent related matters for Stringer Bell over the course of 21 years □ By the time the malpractice action is filed, Stringer Bell has gone out of business, been dissolved and liquidated. Despite diligent efforts, the firm is unable to locate any representative of the dissolved entity.

4. DISCOVERY REQUESTS TO LAW FIRM
How should the Hooke, Lyne & Cinquor firm, best meet its obligations in responding to Plaintiff’s Request For Production?
Respond in full to Client-Plaintiff’s RFP because firm is permitted to do so under the “comply with other law” exception in RPC 1.6(b)(6) and the “compulsion of law” phrase in Comment [3]
Respond in part by producing only those client documents that help the Law Firm “establish a defense to” Plaintiff’s claims within the meaning of the self-defense exception of RPC 1.6(b)(5)
Serve written objections to Client-Plaintiff’s RFP on the sole basis that the RFP is “burdensome, overbroad and not reasonably calculated to lead to the discovery of admissible (non-privileged) evidence”
File a Motion For A Protective Order citing the attorney-client privilege but not RPC 1.6(a)
Do nothing, await the judge’s order on Plaintiff’s motion to compel, be found in contempt, and then file an emergency petition to the appeals court for a writ of mandamus from the judge’s contempt order

5. THE BAIL JUMPER’S LAWYER
Prior to a criminal trial on a charge of bail jumping, the prosecutor serves a trial subpoena on the defendant's former counsel Maurice “Maury” Levy.
The subpoena demands testimony and documents "reflecting the date and time (but not the contents) of any and all communications between counsel and Defendant between December 13 and 22, "  
The subpoena is returnable the next day which is also the day trial is scheduled to begin.

6. THE BAIL JUMPER’S LAWYER
How should Levy best meet his obligations in responding to the prosecution’s trial subpoena?
Comply in full; bring documents to courtroom and take the stand as a prosecution witness
Review for privilege and create a Privilege Log before producing requested documents or coming to the courtroom
File a Motion to Quash

7. THE BAIL JUMPER’S LAWYER
Lawyers should not comply without making reasonable efforts to protect privileged information and should not assume they know what is confidential and what is covered by privilege.

8. THE BAIL JUMPER’S LAWYER
Rule 1.6(b)(6): “to the extent the lawyer believes reasonably necessary … to comply with law or other court order.”
Comment [15]: “should” “assert all non-frivolous claims”
State v. McDermott, 651 N.E. 2d, 985 (Ohio 1995). The court affirmed the lower court's reversal of the trial court's finding that attorney was in contempt of court for refusing to testify against his client. The court held that the Ohio statute on privileged communication evinced the sole criteria for waiving the attorney-client privilege; that is, the client must have expressly consented, or the client must have voluntarily testified on the same subject.
U.S. Attorneys’ Manual Guidelines for Issuing Grand Jury or Trial Subpoena to Attorneys for Information Relating to the Representation of Clients

9. THE BAIL JUMPER’S LAWYER
What if the bail jumper is still at large and the prosecution’s subpoena to current counsel seeks all documents and/or trial testimony relating to client’s current whereabouts?

10. THE BAIL JUMPER’S LAWYER
If bail jumping is a continuing offense can defense lawyer’s refusal to answer questions be deemed the crimes of aiding and abetting, obstructing justice or misprision of felony (18 U.S.C. §4)?
1 Hazard, Hodes and Jarvis The Law of Lawyering, Sec , "Information Concerning the Whereabouts of a Client"

11. THE ALLEGED INEFFECTIVE COUNSEL
Defense lawyer Levy gets a phone call from Assistant State’s Attorney Ruth Ruthless.
Levy’s former client Omar Little has filed a post-conviction petition for habeas corpus relief alleging a violation of his Sixth Amendment rights because Levy was ineffective in representing him at trial, at sentencing and on appeal.
□□ The state is preparing for a hearing in which it will attempt to establish that Levy’s representation of Little had not been “ineffective”
Prosecutor Ruthless invites Levy to meet with her trial team, bring his file, and be interviewed, sign an affidavit, and otherwise be prepared to testify as the State’s witness to describe his representation of Little.

12. THE ALLEGED INEFFECTIVE COUNSEL
How should Levy best meet his obligation in responding to the prosecutor’s request?
Make an appointment and agree to voluntarily appear at the court hearing.
Refuse the invitation, and upon receipt of the State’s subpoena to testify, file a motion to quash.
Refuse the invitation, appear if subpoenaed and at the hearing, but before taking the stand, request the client waive his privilege.
Refuse the invitation, appear if subpoenaed, forego filing a motion to quash, and take the stand without a court order to do so.

13. THE ALLEGED INEFFECTIVE COUNSEL
Defense counsel whose conduct of a criminal case is drawn into question may testify about the matters charged and is not precluded from disclosing the truth concerning the accusation to the extent defense counsel reasonably believes necessary, even though this involves revealing matters which were given in confidence.
□□ ABA Defense Function Standards, Standard Challenges to the Effectiveness of Counsel
□□ ABA Formal Opinion “Disclosure of Information to Prosecutor When Lawyer's Former Client Brings Ineffective Assistance of Counsel Claim” (July 14, 2010).

14. THE ALLEGED INEFFECTIVE COUNSEL
MRPC 1.6(b)(5)
* * *
To establish a claim or defense on behalf of the lawyer in a controversy between the lawyer and the client, to establish a defense to a criminal charge or civil claim against the lawyer based upon conduct in which the client was involved, or to respond to allegations in any proceeding concerning the lawyer’s representation of the client.
□ Does it matter that the party complaining about the lawyer’s performance is not seeking relief against the lawyer (à la malpractice or a disciplinary complaint)

15. SUBPOENA TO LAWYER AS BOARD MEMBER
In an ongoing civil tax penalty investigation of Colossus, Inc., an IRS administrative summons is issued to Attorney Rhonda Perelman for: “Any and all documentation reflecting your service as a member of the board of directors of Colossus, Inc.” Attorney Perelman has served on Colossus’ board of directors for over 15 years. During the relevant time period and on the date of summons is served, Perelman’s law firm acted as counsel for Colossus on all business matters, including the pending IRS investigation.

16. SUBPOENA TO LAWYER AS BOARD MEMBER
How should Attorney Perelman best meet her obligations in responding to the IRS’ summons?
Produce everything. The attorney-client privilege and RPC 1.6(a) confidentiality do not apply as the subpoena is directed entirely to non-lawyer activities and communications.
Produce all responsive documents except those that contain communications between Perelman and: (1) fellow members of the Colossus board; and (2) members of Colossus management.
Ask her law firm to file an action in the U.S. District Court to quash the summons on the ground that compliance would reveal confidential client information protected by RPC 1.6(a) and/or the attorney-client privilege.

17. SUBPOENA TO LAWYER AS BOARD MEMBER
ABA Formal Opinion “Lawyer Serving as Director of Client Corporation” (Feb. 27, 1998). “[A] director, who also is the corporation’s lawyer, may be under a duty to disclose information to third parties (such as in response to an auditor’s request) that in her role as legal counsel to the corporation she could not disclose without specific consent. Acts of a lawyer-director and her knowledge as director may prove inseparable from the lawyer’s acts and knowledge as member of a law firm. The director’s fiduciary obligations as a director and her professional obligations as a lawyer cannot be placed in convenient separate boxes. * * * There is a risk in some circumstances that the files and work processes of the law firm could become as available for discovery as are the files and records of the corporation itself.”

18. SUBPOENA TO LAWYER AS BOARD MEMBER
“[F]or purposes of this motion (to compel discovery), I suppose that a director/lawyer may, in appropriate circumstances, claim the privilege, but it is his obligation to show that the information that he seeks to protect was in fact disclosed to him only because his legal advice was sought. Where a lawyer serves as a corporate director there can be no presumption that the information he possess about the company was given to him only for purposes of legal advice. As a director he has obligations that transcend that of legal counsel.” Red Sail Easter Limited Partners v Radio City Music Hall Productions, 1992 WL at *1 ( Del. Ch. April 15, 1992).

19. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
MRPC 1.6(a) A lawyer shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation or the disclosure is permitted by paragraph (b).

20. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
MRPC 1.6(b)(6) A lawyer may reveal information relating to the representation of a client to the extent the lawyer reasonably believes necessary: * * * to comply with other law or a court order

21. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
MRPC 1.6 Comment [15] A lawyer may be ordered to reveal information relating to the representation of a client by a court or by another tribunal or governmental entity claiming authority pursuant to other law to compel the disclosure. Absent informed consent of the client to do otherwise, the lawyer should assert on behalf of the client all nonfrivolous claims that the order is not authorized by other law or that the information sought is protected against disclosure by the attorney-client privilege or other applicable law. In the event of an adverse ruling, the lawyer must consult with the client about the possibility of appeal to the extent required by Rule 1.4. Unless review is sought, however, paragraph (b)(6) permits the lawyer to comply with the court’s order.

22. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
MRPC 1.6 Comment [3]
The attorney-client privilege and work product doctrine apply in judicial and other proceedings in which a lawyer may be called as a witness or otherwise required to produce evidence concerning a client. The rule of client-lawyer confidentiality applies in situations other than those where evidence is sought from the lawyer through compulsion of law.
□ But does that mean the “rule of confidentiality” never applies “where evidence is sought from the lawyer . . .”?

23. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
MRPC 1.6 Comment [12] Other law may require that a lawyer disclose information about a client. Whether such a law supersedes Rule 1.6 is a question of law beyond the scope of these Rules. When disclosure of information relating to the representation appears to be required by other law, the lawyer must discuss the matter with the client to the extent required by Rule 1.4. If, however, the other law supersedes this Rule and requires disclosure, paragraph (b)(6) permits the lawyer to make such disclosures as are necessary to comply with the law.

24. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
MRPC 3.4(c)
A lawyer shall not:
* * *
knowingly disobey an obligation under the rules of a tribunal, except for an open refusal based on an assertion that no valid obligation exists.
□ “open refusal” = motion to quash subpoena?
□ “open refusal” = appeal/mandamus challenging court’s order enforcing subpoena?

25. LAWYER’S DUTY IN RESPONSE TO A COURT ORDER ENFORCING SUBPOENA OR DISCOVERY REQUEST: DUTY TO APPEAL OR OPTION TO APPEAL?
“Because the attorney is obliged to protect the client’s interest, the attorney should challenge any discovery order that requires disclosure of privileged or confidential material. If the trial court overrules the attorney’s objection to the discovery order, the attorney should consider whether to bring an appeal. In these circumstances, if we did not allow an appeal, then the only means for a nonparty attorney to seek review of the ruling would be to disobey the court’s order and to be held in contempt. In other words, the only way for a[n] attorney to obtain review of a trial court order he or she believes is erroneous is to violate, or at least to disregard, the Rules of Professional Conduct” Woodbury Knoll, LLC v. Shipman & Goodwin, LLP, 48 A. 3d 16, 27 (Conn. 2012) (holding that a trial court’s order enforcing compliance with a party’s subpoena to a non-party law firm is immediately appealable by the firm; citing prohibition of RPC 3.4 on “knowingly disobey[ing] the rules of a tribunal”)

26. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
What amounts to “compulsion of law” that “supersedes” RPC 1.6(a)? (Comments [3] and [12])?
□□ Why is the determination “a question of law beyond the scope of” the RPC?
□□ Subpoena or discovery requests by client?
□□ Subpoena by non-client?
□□ An “order” by a “governmental entity”? (Comment [15])
□□ An order of an arbitrator or an administrative tribunal?
□□□ “Tribunal denotes a court, an arbitrator in a binding arbitration proceeding or any other body acting in an adjudicatory capacity.” MRPC 1.0(m) (“Terminology”)
□□ An order of a trial court judge (or only if affirmed by appeals court judges)?

27. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
Statutes that might “supersede” RPC 1.6(a):
□ 26 U.S.C. §6050- IRS Form 8300 (CTR) identifying clients by name who paid lawyer $10K or more in cash
□ 31 U.S.C. §5318(g) (U.S. Patriot Act) and 31 C.F.R. § – “Suspicious Activity Report” (SAR) identifying clients by name any clients identified in a Form 8300
□ State child abuse reporting statutes
□ Audits of legal services organizations receiving public funding

28. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
The “Guidance” In MRPC 1.6 Comment [15]
□ Asserting on the client’s behalf “all nonfrivolous claims’ challenging both:
□□ The request/subpoena (“information sought”), and then;
□□ The resulting “order”
□ Lawyer “should” assert, not “must” assert, challenges

29. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
The “Guidance” In MRPC 1.6 Comment [15]
□ Grounds for “nonfrivolous” “open” forms of “refusal”:
□□ The “order” compelling disclosure “is not authorized by other [non-MRPC] law”
□□ The “information sought is protected by the” A-C privilege or “other applicable law”
□□□ Isn’t MRPC 1.6(a) “other applicable law?”

30. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
The “Guidance” In MRPC 1.6 Comment [15]
□ Disciplinary safe harbor: the lawyer complying with a court’s order compelling disclosure not subject to discipline. But conditioned on:
□□ “Must consult with client about the possibility of appeal” (not must file an appeal)

31. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
“Guidance” From the Caselaw: Take Your Pick
“Fed. R. Civ. P. 45 constitutes a law that required Winston [and Strawn] and Lane to reveal otherwise confidential, nonprivileged client information, and a subpoena issued under Rule 45 is a court order that compels compliance absent some other valid objection”
Federal Trade Commission v. Tudeau, 2013 WL at *4 (N.D. Ill. 2013) (enforcing FTC’s subpoenas to two law firms in post- judgment asset discovery in a civil action against the law firms’ client)
Rule 1.6 was “not intended to, and does not apply to judicial proceedings in which a lawyer may be required to produce evidence concerning a client”? Avoletta v. Danforth, 2012 WL at *1 (D. Conn. 2012) (emphasis added.)
□ “Required” by whom?

32. LAWYER’S DUTY IN RESPONSE TO A SUBPOENA OR DISCOVERY REQUEST
“Guidance” From the Caselaw: Take Your Pick
□ How does the lawyer fulfill the command of MRPC 1.6 that she “should assert” objection: bring to the court’s attention?
□□ In what form should the subpoenaed lawyer bring the matter to the court’s attention?
□□□ “Dear Judge . . .” ?
□□□ A motion to quash?
□□□ “Hold me in contempt. I dare you. (And I’ve brought my tooth brush)” ?

33. David P. Atkins
Pullman & Comley LLC 850 Main Street Bridgeport, CT (203)
Ellen C. Brotman
Griesing Law LLC
1717 Arch Street, Suite 3630
Philadelphia, PA 19103
(215)
Colleen H. Burke
Collins Einhorn Farrell PC
4000 Town Center, 9th Floor
Southfield, MI 48075
(248)