VANS, INC., et al. v. WALMART, INC., et al Case No. 8:21-cv-01876-DOC-KESx United States District Court, C.D. California Filed June 05, 2023 Scott, Karen E., United States Magistrate Judge PROCEEDINGS (IN CHAMBERS): ORDER GRANTING Vans' Motion to Compel Discovery (Dkt. 141) *1 On April 7, 2023, Plaintiffs Vans, Inc. and VF Outdoor, LLC (collectively, “Vans”) noticed an informal discovery conference (“IDC”) asking Defendant Walmart, Inc. (“Walmart”) to produce certain documents in unredacted form over Walmart's claim of privilege. (Dkt. 141.) The parties submitted letter briefs (Dkt. 148, 149) and the Court conducted a telephonic hearing on April 21. (Dkt. 151 (minutes); Dkt. 168 (transcript).) As discussed at the hearing, the parties agreed to submit supplemental briefs (Dkt. 153, 154) and to email the disputed documents to chambers for in camera review. For the reasons stated herein, the Court grants Vans's motion to compel production. I. Background. On November 15, 2021, Vans filed this lawsuit alleging trademark and trade dress infringement and other claims based on certain shoes sold by Walmart. Vans alleged that certain Vans shoes with a horizontal, wavey side stripe were being “knocked off” by Walmart shoes features a somewhat π-shaped side stripe and other alleged similarities, including colors and stitching. (Dkt. 1 at 4-7 (comparative pictures).) On March 31, 2022, the District Judge granted a preliminary injunction prohibiting Walmart's sale of certain shoes and other “colorways” or “imitations” of those shoes. (Dkt. 65.) The injunction order acknowledges Vans's allegation that its wavey side stripe mark was infringed by Walmart's π-shaped side stripe. (Id. at 5-8.) The District Judge found, “the similarities between Walmart's side design and Vans' Side Stripe Mark are unmistakable.” (Id. at 16.) The enjoined shoes all feature the π-shaped side stripe. (Id. at 27-30 (pictures).) The District Judge enjoined Walmart from using the π-shaped side stripe “or any mark substantially similar thereto, on or in connection with any of Walmart's shoes or related services.” (Id. at 30.) On November 8, 2022, Vans filed the operative First Amended Complaint (“FAC”). (Dkt. 103.) The FAC added allegations of infringement involving Walmart's “Tredsafe” shoes which use a π-shaped side stripe. (Id. at 14.) Vans also added “ACI as a party to the lawsuit, as ACI acted in concert with Walmart to design several of the infringing shoes. ACI has resisted, arguing that it has opinion letters by McCarter & English LLP demonstrating that Vans' trade dress is not protectable and that the shoes designed by ACI and Walmart do not infringe on Vans' trademarks or trade dress.” (Dkt 122 at 3 (Joint Rule 26(f) Report).) Meanwhile, the disputed email communications that are the subject of the instant motion to compel occurred between January and March of 2022, i.e., after the filing of the Complaint but before entry of the preliminary injunction and before Vans filed the FAC. Vans filed four versions of the disputed email chain as Exhibits A1, A2, A3, and A4 to its letter brief. (Dkt. 149) On April 21, 2023, counsel for Walmart emailed the Court both redacted and unredacted versions of WM-VANS0006589, an email chain. Counsel represented that “the redacted portions in WM-VANS0006589 are the same in all four documents Vans has requested be unredacted.” Exhibit A4 (Dkt. 149 at 50-64) matches the BATES number of the version Walmart provided to the Court for in camera review. II. Summary of the Disputed Emails. *2 Below, without disclosing the substance of redacted content, the Court summarizes the disputed email chain in Exhibit A4, putting the communications in chronological order, bolding the names of legal personnel, and numbering the redactions, as follows: Page 6602 Rdt. #1 6601 Rdt. #2 6600-01 Rdt. #3 6600 Rdt. #4 6600 Rdt. #5 6600 Rdt. #6 6599 Rdt. #7 6599 Rdt. #8 6599 Rdt. #9 6598 Rdt. #10 6598 Rdt. #11 6598 Rdt. #12 6597 Rdt. #13 6597 Rdt. #14 6596 Rdt. #15 6596 Rdt. #16 6595 Rdt. #17 6595 Rdt. #18 Rdt. #19 6594 Rdt. #20 6594 Rdt. #21 6593 Rdt. #22 6593 Rdt. #23 6592 Rdt. #24 6591 Rdt. #25 6590 6589 Unredacted Information There is boilerplate indicating that “this email message” is from the law firm of McCarter & English LLP (“McCarter”), outside counsel for Walmart. There is also a reference to Nick Troll, an employee of Troll Design Company, a third party who works for Walmart designing shoes. 1/14/22: Danica Acosta (inhouse lawyer at Walmart) writes to others at Walmart, including inhouse lawyer Jenna Johnson, asking for information relevant to legal decision-making and the Vans litigation. 1/17/22: Jenna Johnson writes back to Ms. Acosta. 1/17/22: Ms. Johnson also writes Tineke Carroll. 1/18/22: Ms. Carroll responds. 1/18/22: Ms. Johnson responds. 1/18:22: Ms. Acosta writes to Ms. Johnson. 1/18:22: Ms. Johnson writes back to Ms. Acosta. 1/20/22: Ms. Acosta emails the whole team. 1/20/22: Ms. Carroll writes to Ms. Acosta. 1/20/22: Ms. Acosta writes back to Ms. Carroll. 1/21/22: Ms. Carroll writes again to Ms. Acosta. 1/21/22: Ms. Acosta writes to Monica Gavilan (Walmart's inhouse paralegal) 1/24/22: Ms. Gavilan writes to Lori Shyavitz, Walmart's outside counsel at McCarter. 1/24/22: Ms. Shyavitz emails legal advice. 1/27/22: Ms. Acosta writes to McCarter and Ms. Gavilan. 1/27/22: Ms. Gavilan forwards Ms. Shyavitz's 1/24 email to Ms. Carroll and others at Walmart. 1/28/22: Ms. Carroll forwards the emails to Ms. Gavilan, Mr. Abramson, and his supervisor, Salvo Farina. (“Hi Mitch”) Same (“Hi Monica”) 2/2/22: Mr. Abramson responds to Ms. Carroll, cc'ing Ms. Gavilan and Mr. Farino. 2/2/22: Ms. Carroll forwards Mr. Abramson's information to Ms. Gavilan and Ms. Shyavitz, cc'ing others including Ms. Johnson, Ms. Acosta, and Mr. Abramson. 2/10/22: Ms. Carroll sends a follow-up email. 2/10/22: Ms. Shyavitz responds, cc'ing everyone on the 2/2 emails. 2/28/22: Mr. Abramson sends an email to Ms. Shyavitz cc'ing Ms. Gavilan, Ms. Johnson, Ms. Acosta, and another McCarter attorney, Alexander Reid. 3/1/22: Mr. Reid responds cc'ing the whole team. 3/1/22: Mr. Abramson forwards the emails to Nick Troll, a third-party designer, asking if he can change a shoe design per Mr. Reid's input. 3/2/22: Mr. Troll sends Mr. Abramson new CADs reflecting the requested changes. 3/4/22: Mr. Abramson responds by asking for some additional design changes, cc'ing Mr. Farina and third-party Steven Brilliant. 3/4/22: Mr. Troll confirms that he is working on new CADs and will send them soon. 3/4/22: Mr. Troll sends 3 options, cc'ing Mr. Farina and third-party Steven Brilliant. 3/4/22: Mr. Abramson asks Mr. Troll his preference. 3/4/22: Mr. Troll responds that he prefers Option C. Work Product?[1] Yes. Rdt. #1 is part of the same message as Rdt. #2. Yes. Yes. Yes. Yes. Responds to a lawyer's question. No. Does not reveal lawyer's mental impressions. Yes. No. Does not reveal lawyer's mental impressions. Yes. Yes. Asks questions that reveal lawyer's mental impressions. Yes. Yes. Reports status and asks questions that reveal lawyer's mental impressions. Yes. Yes. Yes. Yes. No. Does not reveal lawyer's mental impressions. Yes. Relays attorney's mental impressions. No. Does not reveal lawyer's mental impressions. No. Does not reveal lawyer's mental impressions. No. Does not reveal lawyer's mental impressions. No. Does not reveal lawyer's mental impressions. Yes. Yes. Repeats lawyer's mental impression. Yes. No privilege claimed. No privilege claimed. No privilege claimed. No privilege claimed. No privilege claimed. No privilege claimed. No privilege claimed. III. Procedural Issues. *3 As a threshold issue, Walmart contends that it did not agree to decide this dispute through the Court's IDC procedure. (Dkt. 153 at 3.) Judge Scott publishes IDC procedures on her online Procedures and Schedules that provide as follows: With the agreement of the parties, the Court will conduct informal telephonic conferences to resolve discovery disputes outside the formal Local Rule 37 procedures. Before any such telephonic conference, the parties must engage in the pre-filing conference of counsel required by Local Rule 37-1. During such conference, the parties should consider whether the issue can be presented through an informal telephone conference rather than through the filing of a formal motion. Should the parties agree to an informal telephonic conference, the prospective moving party should contact the Court's Courtroom Deputy by e-mail ... to schedule a conference. ... Upon receiving a confirmed date/time from the Court, the moving party shall e-file a “Notice of Discovery Motion and Telephonic Conference” .... To avoid surprise and confusion, the Notice shall state the discovery in dispute. See http://www.cacd.uscourts.gov/honorable-karen-e-scott. Thus, Judge Scott requires the consent of the parties to use the IDC process but expects that the parties will understand the nature of the dispute based on their thorough pre-filing conference. Here, counsel for Vans emailed Judge Scott's Courtroom Deputy (“CRD”) on May 5, 2023, to request an IDC, copying defense counsel. The CRD wrote back, “Assuming both parties have agreed to proceed with an IDC, Judge Scott is available on 4/11 at 2:00pm. If that date and time works for both parties, the moving party may go ahead and file a Notice of Discovery Motion and Telephonic Conference.” On April 7, counsel for Walmart emailed, advising that he was the attorney “who has primarily been responsible for the issues to be discussed at the 4/11 IDC.” He asked to reschedule the IDC due to a family medical emergency. The same day, the CRD emailed the parties offering April 20 or 21 for the rescheduled IDC. Still on April 7, counsel for both parties emailed the CRD saying that April 21 was acceptable. Later on April 7, Vans filed a notice for an IDC on April 21 to address: (1) Walmart's clawback of documents without further justification of its assertion of privilege; and (2) Walmart's redaction of materials shared with third parties [referring to the disputed emails]. (Dkt. 141.) The parties filed their letter briefs on April 20. (Dkt. 148, 149.) Vans' letter brief addressed, “Walmart's improper redaction of certain communications based on an assertion of attorney-client privilege, and Walmart's attempt to belatedly assert an advice of counsel defense, while maintaining privilege protection over that precise advice of counsel.” (Dkt. 149 at 3.) Vans noted, “The communications in question obviously pertain to advice of counsel concerning shoe design edits necessary to avoid any prospective trademark or trade dress infringement.” (Id. at 4.) Exhibits to that letter brief included an April 19, 2022 “meet and confer” email in which Walmart's counsel said: Walmart maintains that these documents are privileged. In light of ACI's production of McCarter & English's opinion letters, however, Walmart no longer intends to withhold WM-VANS0007025-32. Walmart will be supplementing its discovery responses to assert an advice of counsel defense. As such, Walmart is waiving the common interest privilege concerning the ACI shoes referred to in WM-VANS0007025-032, and is in the process of preparing a supplemental production. Walmart is not otherwise waiving any privilege. We trust that, in light of the above, Issue One set forth in the Notice of Discovery Motion and Telephonic Conference (ECF No. 141) of the upcoming IDC is moot. As such, we now understand and intend that the only issue to be addressed at the IDC is Issue Two. *4 Dkt. 149 at 78. Consistent with this, Walmart's letter brief advised that the noticed Issue One was moot. (Dkt. 148 n. 1.) Walmart's letter brief addressed Issue Two, including Vans's arguments about waiver. Walmart offered to submit unredacted copies of the disputed emails for in camera review. (Id. n. 2.) The Court conducted a telephonic IDC on April 21. (Dkt. 168 (transcript).) At the hearing, there was no discussion about the propriety of following the IDC procedures until near the end. The Court asked if either party would like to file a supplemental brief. (Id. at 27.) Vans requested the opportunity to brief opposition to Walmart's argument that it had only asserted an advice-of-counsel defense as to ACI shoes, such that any privilege waiver applied only to attorney work-product involving ACI shoes. (Id.) The Court invited both parties to file a supplemental brief not exceeding five pages. (Id. at 28.) Counsel for Walmart then requested clarification, as follows: [I]t's a little unclear to me what point is being briefed supplementally. I mean, is this turning into a motion as to the scope of the waiver for the ACI opinion and whether it encompasses all three shoes? I mean, I thought what I heard at the beginning of this call was that the subject was whether Vans just needed these four documents, which are really one, unredacted. Is this transforming into some other type of briefing and motion? (Id. at 28-29.) The Court clarified that this was still a motion by Vans to compel Walmart's production of the “four documents” (i.e., Exhibits A1, A2, A3, and A4, all variations of the one, disputed email chain), and the Court would be ruling on whatever privilege and waiver arguments the parties had raised in support of or in opposition to that motion. (Id. at 29.) Counsel responded that he was concerned the Court's ruling might be “broader than the four documents as to the waiver as to other documents.” (Id.) The Court explained it could not promise that its ruling and the underlying reasoning would not have “implications beyond these four documents,” but that the basis of the ruling would be the “facts and content” relevant to evaluating the privilege arguments as applied to the four documents. (Id. at 30.) In its April 24 supplemental brief, Walmart contends, “Vans raised a brand-new position at the IDC, broadening the issues and seeking much broader relief than they originally sought in the Notice and IDC. In this regard, Vans argued that Walmart's waiver of the ACI shoes extends to Maxhouse's TredSafe shoes (i.e., the redacted materials) in Issue (2), even though the opinions for which there was a waiver in Issue (1) related to the different shoes supplied by ACI.” (Dkt. 153 at 2-3.) Walmart continues, “Had Vans put Walmart on notice of this new position prior to the IDC, Walmart would have told Vans that it would not agree to IDC but would only agree to brief this issue through the Court's formal procedures for a motion to compel.” (Id. at 3.) The Court disagrees that the April 7 notice did not sufficiently alert Walmart that Vans sought to compel production of emails that Walmart had redacted based on the attorney-client communication and attorney work-product privileges. While the parties' arguments may have evolved in response to hearing new facts and new arguments from the other side, the nature of this dispute has remained the same -- whether Walmart could properly redact the disputed emails based on privilege. Walmart's statements in its first letter brief and at the IDC show that Walmart understood this was the nature of the dispute. The Court, therefore, finds that Walmart agreed to using the IDC process to resolve Vans's motion to compel. *5 Of course, parties who agree to the IDC process do not waive their right to seek review of a magistrate judge's non-dispositive discovery rulings under Federal Rule of Civil Procedure 72(a). IV. Summary of the Parties' Privilege Arguments. The parties agree that in this federal question case, federal privilege law applies. Both parties cite federal law in their supplemental briefs. (Dkt. 153, 154.) Walmart contends that the redacted content of the emails is protected from discovery by the attorney-client communication and attorney work-product privileges. Vans contends that both privileges were waived when (1) Mr. Abramson forwarded the emails to third parties and/or (2) Walmart asserted an “advice of counsel” defense as to an allegedly infringing design element that is common to the ACI shoes and TredSafe shoes, i.e., the pi-shaped side stripe. Walmart responds that (1) Mr. Abramson was not authorized to waive legal privileges on behalf of Walmart and (2) it has only asserted an “advice of counsel” defense to infringement allegations based on ACI shoes, because ACI did so. As to (1), Vans counters that either Mr. Abramson was sufficiently senior (i.e., a member of the “control group”) such that he could waive the privilege, or not a member of the control group, such that by sending him the email, Walmart's lawyers and executives waived the privilege. As to (2), Vans counters that the privilege waiver created by assertion of the “advice of counsel” defense goes to the entire subject matter, i.e., why Walmart made certain design choices for its shoes' side stripes. Vans contends it is irrelevant which suppliers produced the various shoes with the same or similar allegedly infringing side stripes. V. The Privilege Protecting Confidential Attorney-Client Communications There is no dispute that (1) absent waiver, the redacted emails would be protected by the attorney-client communication privilege, and (2) Mr. Abramson forwarded the emails to third parties. The dispute is over the legal consequences of that disclosure. Did it waive the privilege for confidential attorney-client communications? A. The Purpose of the Attorney-Client Communication Privilege. Attorney-client communications “made in the presence of, or shared with, third-parties destroys the confidentiality of the communications and the privilege protection that is dependent upon that confidentiality.” Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 578 (N.D. Cal. 2007) (citation omitted). The purpose of the privilege protecting confidential attorney-client communications is to “encourage full and frank communication between attorneys and their clients and thereby promote broader public interests in the observance of law and administration of justice.” Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). There are several ways to waive the privilege. As relevant here, voluntarily disclosing privileged documents to third parties will generally destroy the privilege. See, e.g., Hernandez v. Tanninen, 604 F.3d 1095, 1100 (9th Cir. 2010). “The reason behind this rule is that if clients themselves divulge such information to third parties, chances are that they would also have divulged it to their attorneys, even without the protection of the privilege. Under such circumstances, there simply is no justification to shut off judicial inquiry into these communications.” Pac. Pictures Corp. v. United States Dist. Court, 679 F.3d 1121, 1127 (9th Cir. 2012) (citations omitted). If courts “unmoor a privilege from its underlying justification,” they at best “fail to construe the privilege narrowly” and at worst “create[e] an entirely new privilege.” Id. at 128. *6 The attorney-client privilege applies in situations where the client is a corporation. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). However, given that a corporate client is an inanimate entity, courts had historically held that the privilege only covers those individuals in the corporation that can be said to “possess an identity analogous to the corporation as a whole” – the “control” group. Id. at 390-391 (“control group” consisting of the “officers and agents ... responsible for directing the company's actions in response to legal advice”). In Upjohn, the Supreme Court extended the privilege to cover certain situations involving lower level employees in a corporate context. The Court noted that, in that context, “it will frequently be employees beyond the control group ... who will possess the information needed by the corporation's lawyers.” Id. at 391. Conversely, it is often that the “attorney's advice will also frequently be more significant to noncontrol group members than to those who officially sanction the advice.” Id. at 392. With this background, the Court held that the privilege also applies to communications between corporate counsel and employees not in the control group made “at the direction of corporate superiors in order to secure legal advice from counsel.” Id. at 394. B. Waiver of the Attorney-Client Communication Privilege. Ordinarily, the “power to waive the corporate attorney-client privilege rests with the corporation's management and is normally exercised by its officers and directors.” Commodity Futures Trading Comm'n v. Weintraub, 471 U.S. 343, 348 (1985); see also United States v. Chen, 99 F.3d 1495, 1502 (9th Cir. 1996) (finding comptroller who left the company was not authorized to waive the company's privilege). Sometimes, however, the privilege can be waived by “lower-level employees [who] inadvertently yet voluntarily disclose privileged material while acting within the scope of their authority.” Phx. Ins. Co. v. Diamond Plastics Corp., No. C19-1983-JCC, 2020 U.S. Dist. LEXIS 131630, at *8 (W.D. Wash. July 24, 2020) (citing cases). The “disclosure waives the corporation's attorney-client privilege if the corporation took inadequate steps to prevent the disclosure.” Id. To exempt corporations from this general rule “would be unfair” because then “corporations would have no responsibility to monitor how their low-level employees handle privileged communications even though those employees are covered by modern expansions of the attorney-client privilege.” Id. C. Waiver Analysis. Walmart contends that the emails were privileged when forwarded to Mr. Abramson, and that “Mr. Abramson is not competent to, and does not have the authority to, waive Walmart's [attorney-client communication] privilege.” (Dkt. 148 at 2.) Mr. Abramson is not an officer or director. He is “a first level product design and sourcing manager who reports to more senior managers.” (Id. at 3.) Vans counters that the privilege for attorney-client communications can be waived by employees who are not officers or directors. (Dkt. 154 at 6, citing cases finding waiver by insurance adjustors, claims specialists, and “non-management” employees.) Vans argues that either Mr. Abramson had sufficient authority to waive the privilege, or the privilege was waived when Walmart's more senior officers sent the email chain to Mr. Abramson without taking adequate steps to prevent him from disclosing it outside of Walmart. (Id.) Mr. Abramson reports to Mr. Farina who reports to Ms. Carroll. (Dkt. 148 at 2 n. 3.) Ms. Carroll is the Director of Product Development and Sourcing for Shoes. (Id.) In the disputed email chain, Ms. Carroll was directly involved in responding to inquiries from counsel. Per the summary chart above, Ms. Carroll chose to include Mr. Abramson in communications with both in-house and outside counsel about shoe design. Ms. Carroll cc'd Mr. Abramson on communications with the McCarter law firm. Ms. Carroll delegated authority to Mr. Abramson, asking him to work with the supplier to implement McCarter's legal advice. See WM-VANS0006595. When he needed further direction, Mr. Abramson communicated directly with McCarter, cc'ing inhouse lawyers at Walmart. WM-VANS0006591-92. Others at Walmart were aware of these direct communications between Mr. Abramson and McCarter, as evidenced by the cc's. When Mr. Abramson eventually forwarded the legal advice to the third-party supplier, he did so intentionally, not inadvertently. He intended to disclose the legal advice so that the supplier would consider it in the design process. Nothing in the emails shows that anyone more senior at Walmart ever instructed Mr. Abramson to keep the email chain confidential. No one instructed him not to provide the legal advice about shoe design to the suppliers responsible for shoe design. *7 These facts lead the Court to conclude that Mr. Abramson was acting within the scope of his authority when he received the emails, communicated with counsel, and then forwarded counsel's messages outside of Walmart because he determined that the third-party recipients should use the information to perform their design work. While Walmart did not waive the privilege by including Mr. Abramson in the communications, he had sufficient authority to waive Walmart's attorney-client communication privilege and he did so. VI. The Privilege Protecting Attorney Work-Product. A. Scope of the Work-Product Privilege. The work product doctrine, codified in Federal Rule of Civil Procedure 26(b)(3), protects “from discovery documents and tangible things prepared by a party or his representative in anticipation of litigation.” Admiral Ins. Co. v. United States District Court, 881 F.2d 1486, 1494 (9th Cir. 1989). If the privilege is not waived, then such documents may only be ordered produced upon an adverse party's demonstration of “substantial need [for] the materials” and “undue hardship [in obtaining] the substantial equivalent of the materials by other means.” Fed. R. Civ. P. 26(b)(3)(A)(ii). Even then, courts should “protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of a party's attorney ... concerning the litigation.” Fed. R. Civ. P. 26(b)(3)(B). The work-product doctrine is a “qualified” privilege that protects from discovery documents and tangible things prepared by a party or his representative in anticipation of litigation. At its core, the work-product doctrine shelters the mental processes of the attorney, providing a privileged area within which he can analyze and prepare his client's case, and protects both material prepared by agents for the attorney as well as those prepared by the attorney himself. The primary purpose of the work-product rule is to prevent exploitation of a party's efforts in preparing for litigation. United States v. Sanmina Corp. & Subsidiaries, 968 F.3d 1107, 1119 (9th Cir. 2020) (citations omitted). Thus, to qualify for work-product protection, the document must reveal the mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning litigation. It may do so either because it was prepared (1) by an attorney or an attorney's agent; (2) by a client in response an attorney's questions, thereby revealing the attorney's mental impressions; or (3) by a client but repeats the attorney's mental impressions. Per the summary chart above, 7 of the challenged 25 redactions do not involve emails that qualify as attorney work-product. Having found waiver of the attorney-client communication privilege above, the Court GRANTS Vans's motion to compel production of these 7 emails in unredacted form without relying on waiver of the work-product privilege. B. Waiver of the Work-Product Privilege. Unlike the privilege for confidential attorney-client communications, “disclosure of work product to a third party ... does not waive the protection unless such disclosure is made to an adversary in litigation or has substantially increased the opportunities for potential adversaries to obtain the information.” United States v. Sanmina Corp. & Subsidiaries, 968 F.3d 1107, 1121 (9th Cir. 2020). No one contends that this kind of waiver happened here. The attorney work-product privilege, however, is also subject to implied waiver when the client puts “the lawyer's performance at issue during the course of litigation.” Id. at 1117, 1119. This kind of waiver rests on principles of fairness. “In practical terms, this means that parties in litigation may not abuse the privilege by asserting claims the opposing party cannot adequately dispute unless it has access to the privileged materials.” Id. at 1117 (citations omitted). When this kind of implied waiver occurs, it is not a “blanket” waiver of the privilege as to all attorney work-product claims; rather, the waiver covers the subject matter for which the attorney's work-product is at issue. Hernandez v. Tanninen, 604 F.3d 1095, 1101 (9th Cir. 2010). *8 Where a party has asserted an advice of counsel defense, that party, relying on advice of counsel, “waives attorney-client privilege with respect to the entire subject matter of the waiver....” Verizon California Inc. v. Ronald A. Katz Tech. Licensing, L.P., 266 F. Supp. 2d 1144, 1148 (C.D. Cal. 2003). The waiver applies to all communications regarding the same subject matter and is not restricted to any specific communication. Monster Energy Co. v. Integrated Supply Network, LLC, No. EDCV1700548CBMRAO, 2018 WL 6133717, at *1 (C.D. Cal. June 18, 2018). Furthermore, “all documents and communications that are probative of the infringer's state of mind, whether admissible at trial or not, should be discoverable.” Verizon California Inc., 266 F. Supp. 2d at 1149; see also AKEVA L.L.C. v. MIZUNO Corp., 243 F. Supp. 2d 418, 423 (M.D.N.C. 2003) (“...once a party asserts the defense of advice of counsel, this opens to inspection the advice received during the entire course of the alleged infringement...”). For example, when a party asserts advice of counsel as a defense to infringement, the opposing party may fairly discovery documents revealing “what information ... counsel considered, the reasonableness of its advice, and whether [the client] relied on the advice in good faith.”[2] United Specialty Ins. Co. v. Dorn Homes, Inc., 334 F.R.D. 542, 545 (D. Ariz. 2020). C. Waiver Analysis. Vans asserts that an implied waiver occurred, because Walmart is relying on the “advice of counsel” defense to explain why certain of its shoe designs are not infringing. Walmart did not plead advice of counsel as an affirmative defense in its Answer to the FAC. (Dkt. 117.) Walmart's supplier, ACI, did plead advice of counsel as an affirmative defense. (Dkt. 120 at 22.) ACI alleges: In designing, importing, and distributing the accused shoes, ACI sought, obtained, and reasonably relied upon the advice of its outside counsel, McCarter & English LLP, which repeatedly rendered the opinion that, in sum, the accused shoes did not infringe on any of Vans' valid trademark rights the Vans Side Stripe Mark. ... Critically, McCarter & English LLP was simultaneously representing Vans as its outside counsel on trademark and trade dress matters, including as counsel of record in other actions concerning Vans' very same trade dress and trademark rights, the Vans Side Stripe Mark, as in the opinion letters and the subject of the present Action. (Id.) ACI attached three McCarter opinions letters to its Answer. (Id.) In the November 2022 operative FAC, Vans alleges that it “recently discovered that Walmart released another line of shoes under its ‘Tredsafe’ line with another slightly modified version of its already enjoined side stripe design.” (Dkt. 103 ¶ 15.) Vans alleges that ACI acted as the “co-designer, manufacturer, and importer for most, if not all, of Walmart's infringing in-house shoes pictured above,” referring to shoes including TredSafe shoes. (Dkt. 103 ¶ 16.) From the FAC's pictures, it is apparent that the “side stripe” on the TredSafe shoes is the same or nearly the same as on the athletic shoes designed by ACI. (Id. at 83-84.) The Court agrees with Vans that the relevant subject matter here is not limited by the name of a particular shoe line or supplier. The relevant subject matter is the advice given by McCarter to Walmart and its suppliers about designing shoes with side stripes so as not to infringe the Vans Side Stripe Mark. To define the relevant subject matter more narrowly would allow Walmart to benefit from its supplier's assertion of an “advice of counsel” defense but yet protect from discovery documents relevant to testing the validity of that defense. Such a result is antithetical to the fairness concerns underlying the implied waiver doctrine. VII. Disposition *9 For these reasons the Court GRANTS Vans's motion to compel. Walmart shall produce unredacted copies of the disputed email chain corresponding to Exhibits A1, A2, A3, and A4. The Court STAYS the effect of this order for fourteen (14) days and during any review sought by Walmart under Federal Rule of Civil Procedure 72(a). MINUTES FORM 11 CIVIL-GEN Footnotes [1] If the email was not written by a lawyer but determined to be protected by the attorney work-product privilege, the Court has included an explanation. [2] Some cases have held that waiver based on reliance on advice of counsel ends once litigation is filed. United Specialty Ins. Co., 334 F.R.D. at 546-47. But this temporal limit would not apply here, where the discussion in the challenged emails concerns TredSafe shoes, and Vans had not yet filed its FAC adding infringement claims targeting TredSafe shoes.