A significant reason for a company to retain in-house counsel is to have constant supervision of business transactions. Management and staff can forward proposed contract terms and copies of communications made during business negotiations, and receive comments ranging from business advice to assessments of the legality of specific contract provisions and the anti-trust implications of certain proposed dealings.

These communications can be protected by the attorney-client privilege only if the primary work being performed by the attorney is legal rather than business. If the purpose for a communication is mixed, to the extent that the business and legal portions can be separated, courts will permit the legal portions to be excised (blackened out), and compel disclosure of the remainder. The more difficult question in the privilege determination, however, is whether there is any protected "communication" when the company sends the attorney only a copy of its correspondence with third parties. Even if the company's sole purpose for sending a copy to the attorney is to acquire legal advice, is the act of sending the copy a privileged "communication"?

As discussed in my last column on the privilege status of pre-existing documents used in attorney-client communications, the simple and persistent, albeit incorrect, answer given by the courts is no--the copy communicated to the attorney is not privileged.. Since the Supreme Court's decision in United States v. Fisher, 425 U.S. 391 (1976), courts have required that communications have been "created" for the purpose of obtaining legal advice or assistance. They have held that because the original communication prepared for business purposes is discoverable, all copies of that communication are also discoverable (regardless of the purpose for which they may have been transmitted to others). They have reiterated the assertion of the Supreme Court that a client cannot make a non-privileged communication privileged by the simple expedient of sending a copy to its attorney for legal assistance. See P.R. Rice, Attorney-Client Privilege in the United States, Sec. 5:19 (West Group 2nd ed. 1999). While this is an accurate observation with regard to the original and all other copies that were not communicated to the attorney, it does not explain why the single copy sent to the attorney is not protected by the privilege.

All copies of a non-privileged document should be as discoverable as the original only as long as those copies have not been "communicated" to the attorney for the purpose of obtaining legal assistance. To correctly acknowledge this privilege status would not affect the nonprivileged status of the original and all other copies that would still be discoverable from the client. By not acknowledging the new privilege status for the single copy, courts have equated the written instrument with the act of communicating. Fortunately, they have done this only with the written form of communication.

Instead of sending a copy of the nonprivileged document to the attorney, if the client telephoned the attorney and read the original to him in confidence for the purpose of seeking legal advice, this oral communication of the content would certainly be privileged. There should not be a different result if a Xerox copy of the nonprivileged communication is attached to a letter, rather than orally communicated.

Similarly, if the client copied the text of its original communication into another memorandum or letter, this newly created written communication is protected by the attorney-client privilege if all other elements of the privilege protection were satisfied. Yet, for privilege purpose, the sending of a Xerox copy to the attorney is as much a "creation" of a new "communication" as is the client's sending of a new piece of paper into which the same information has been incorporated. In the context of electronic communications the absurdity of this distinction becomes even more apparent. If the client cuts and pastes a previous nonprivileged communication into a new memorandum, the privilege protection will be applicable to the incorporated verbiage, but will be lost if the previous communication is sent as an attachment. To distinguish between the two confuses the "communication" with the means of communication and elevates form over substance.

A common practice of corporate clients may have contributed to the unfortunate status of the privilege in this context. When copies of non-privileged documents are regularly circulated to in-house counsel for screening for potential legal problems, these documents usually contain the notation "cc: [in-house counsel name]". This reference reveals to third parties who will later have access to the document in pretrial discovery that its contents were part of what was "communicated" to counsel. Consequently, when courts have compelled the lawyer to produce the copies of documents that have been communicated to them by the client, nothing new has been disclosed beyond what the client has already voluntarily disclosed in the other copies that were produced from its business files.

To avoid disclosure of what the client communicates to legal counsel, I recommend that when copies are sent to legal counsel, both in-house and outside, for the purpose of obtaining legal advice, reference to such copies not appear on the face of documents. Blind copies are the only way of preserving the confidentiality of those protected communications.

Not until corporate clients act in a fashion that is more appropriate for the information they believe is confidential, will they be able to convince courts that the communications are confidential and, therefore, not discoverable from the attorney.