METRICOLOR, LLC v. L'OREAL USA, INC., ET AL Case No. 2:18-cv-00364-CAS-Ex United States District Court, C.D. California Filed August 29, 2023 Snyder, Christina A., United States District Judge Proceedings: (IN CHAMBERS) - PLAINTIFF'S EX PARTE APPLICATION TO VACATE OR SUSPEND FORENSIC REVIEW (Dkt. 314, filed on July 19, 2023) DEFENDANTS' MOTION TO ENFORCE COURT ORDERS RE: FORNESIC REVIEW OF COHEN IMAGE (Dkt. 316, filed on July 24, 2023) I. INTRODUCTION *1 Presently before the Court are the parties' cross motions to vacate or enforce the Court-imposed forensic review. The history of this case is well-known to the parties and set forth in the Court's October 26, 2022 Order. See Dkt. 228. On January 6, 2020, upon reassignment and remand from the Federal Circuit, this Court granted Metricolor leave to amend its complaint. Dkt. 56. On March 6, 2020, Metricolor filed its first amended complaint against L'Oreal USA, Inc., L'Oreal USA Products, Inc., L'Oreal USA S/D, Inc., and Redken 5th Avenue NYC, LLC (collectively, “defendants” or “L'Oreal”). Dkt. 57 (“FAC”). The FAC asserts the following claims: (1) breach of contract; (2) misappropriation of trade secrets in violation of the Defend Trade Secrets Act (“DTSA”); (3) breach of the implied covenant of good faith and fair dealing; (4) violation of the California Unfair Competition Law (“UCL”); (5) breach of confidence; and (6) misappropriation of trade secrets in violation of the California Uniform Trade Secrets Act (“CUTSA”). See generally id. In 2021, during the course of depositions taken by the parties, defendants came to believe that certain of Metricolor's documents were inauthentic. On September 24, 2021, defendants informed plaintiff of their belief that several documents seemed likely fabricated or altered after litigation began. See Dkt. 114-3. Plaintiff's expert, Kevin Cohen, created an image of Sal D'Amico's computer (referred to by the parties as the “Cohen Image”) on or about October 8, 2021. Later that month, on October 22, 2021, L'Oreal applied ex parte to suspend the case deadlines pending a forensic review of Metricolor's devices. In opposing L'Oreal's request, Metricolor submitted a declaration from Cohen on November 17, 2021, relating to L'Oreal's plan for making an image of Sal D'Amico's computer but did not disclose that Cohen had created his own image. See Dkt. 292 at 14; On November 22, 2021, and December 20, 2021, the Court repeatedly ordered the parties to meet and confer regarding the forensic investigation and to establish a joint protocol for review. Dkts. 135, 143. Additionally, the Court directed L'Oreal to take a forensic image by Setec Investigations of Sal D'Amico's computer for the purpose of conducting the review (referred to by the parties as the “Setec Image”). The Setec Image was created on December 2, 2021. Neither the Court nor defendants were aware of the existence of the Cohen Image at the time Setec created the Setec Image. On December 22, 2021, the Court adopted a joint proposed forensic inspection protocol to address defendants' concerns relating to the authenticity of certain documents. Dkt. 145 (“Forensic Protocol”). That forensic review was limited to 14 specific documents based upon the Setec Image.[1] Id. The protocol established a multi-step process for review. First, forensic expert Paul French would examine the collected data and then provide a production log to Metricolor. Then, Metricolor would have 5 business days to review the production log and materials, identify items to be redacted or withheld on the basis of privilege, redact any privileged material, and distribute a redacted production log to Paul French and to defendants. Thereafter, Paul French would produce to defendants all unredacted material and the parties would meet and confer to resolve any outstanding issues with privilege claims. Id. *2 French and the parties completed this protocol for the first forensic review in 2022.[2] French determined that 4 of the 14 documents selected for review contained edits including deletions and insertions made after litigation in the case began. On this basis, defendants filed a motion for terminating sanctions alongside a motion for summary judgment. The Court denied both motions on October 26, 2022. Dkt. 228. As stated above, two months before Setec took an image of Sal D'Amico's laptop, plaintiff's expert Cohen apparently made his own image of the laptop. Plaintiff did not represent to defendants or the Court in 2021 or 2022 that this Cohen Image existed. Defendants first learned about the Cohen Image in March 2023 during an expert deposition of Cohen and subsequently requested a copy of it. On March 20, 2023, defendants filed a motion for reconsideration of the Court's order denying terminating sanctions, which remains pending. Dkt. 267. On March 27, 2023, the Court held a status conference to address defendants' request to receive a copy of the Cohen Image. The Court directed Metricolor to provide French with a copy of the Cohen Image. On April 10, 2023, French received a copy of the Cohen Image and after “pre-process[ing]” the Cohen Image, French made an “initial assessment” that “more than fifty thousand files” present on the Cohen Image are not present on the Setec Image. On May 15, 2023, the Court held a hearing on other motions brought by the parties, including defendants' motion for reconsideration of sanctions. At the hearing, the Court discussed defendants' request for a forensic review of alleged discrepancies between the Cohen and Setec Images. The Court directed the parties to conduct a review of the Cohen Image in accordance with the same protocol established for the prior forensic review. Additionally, the Court indicated that it would reserve judgment as to defendants' motion for reconsideration of sanctions pending completion of the forensic review of the Cohen Image. On July 19, 2023, plaintiff filed an ex parte application to vacate or suspend the forensic review of the Cohen Image and requested a status conference with the Court. Dkt. 314 (“Ex Parte App.”). On July 21, 2023, defendants filed an opposition to the application, agreeing to a status conference but opposing the request to vacate or suspend the review. Dkt. 315. On July 24, 2023, defendants filed a motion to enforce the Court's orders establishing the forensic review of the Cohen Image and to compel production of files related to the review. Dkt. 316 (“MTC”). On July 25, 2023, the Court indicated its intention to hear the parties' application and motion together. On August 1, 2023, plaintiff filed an opposition to defendants' motion to enforce the forensic review. Dkt. 318 (“Opp.”). On August 7, 2023, defendants filed a reply in support of their motion. Dkt. 324 (“Reply”). On August 21, 2023, the Court held a hearing. Having carefully considered the parties' arguments and submissions, the Court finds and concludes as follows. II. BACKGROUND As stated above, at the May 15 2023 hearing, the Court directed the parties to proceed with the forensic protocol to review the Cohen Image. On June 12, 2023, French used search terms to narrow the scope of documents from the Cohen Image to be reviewed and delivered a production log of 5,653 files to Metricolor. According to the forensic protocol, Metricolor was supposed to respond by June 20, 2023, with any privilege or privacy objections. Metricolor conferred with L'Oreal to seek additional time to respond. The parties established a schedule by which Metricolor would complete its step of the forensic protocol and review the production log and files in four tranches over the course of eight weeks. *3 On July 7, 2023, Metricolor completed the first tranche of review, withholding 1,412 out of 1,413 documents on various grounds. As stated above, on July 19, 2023, Metricolor filed an ex parte application to suspend the forensic review, citing in part the burdensome nature of the review. The Court denied Metricolor's request to suspend the forensic review before the August 21, 2023 hearing. Dkt. 317. Thereafter, on July 21, 2023, Metricolor completed the second tranche of review and withheld 1,395 out of 1,413 documents on various grounds. On August 2 and 11, 2023, Metricolor completed its third and forth tranches of reviews. The parties do not provide the specific number of documents Metricolor withheld or permitted to be produced in those finals tranches. See Reply at 7. By the time of the Court's August 21, 2023 hearing, Metricolor has only permitted French to produce to L'Oreal approximately 115 of the 5,653 files identified in the forensic production log. Metricolor has objected to the vast majority of the files identified in the log on the basis that they do not fall within the scope of the forensic review. Additionally, Metricolor has also asserted attorney–client privilege and/or work–product protection as to approximately 996 documents. III. LEGAL STANDARD A. Litigation Discovery and Forensic Review Federal Rule of Civil Procedure 34 governs pretrial discovery by the parties of electronically stored information. “The purpose of Rule 34 is to make relevant and nonprivileged documents, electronically stored information, and objects in the possession of one party available to the other, thus eliminating strategic surprise and permitting the issues to be simplified and the trial to be expedited.” 8B Charles A. Wright et al., Fed. Prac. & Proc. Civ. § 2202 (3d ed.). Rule 34 “necessarily vests in the district court a sound discretion, on objection, whether and within what limits and under what conditions inspection of documents or things should be ordered.” Id. § 2215. Additionally, Federal Rule of Evidence 706 provides that “[o]n a party's motion or on its own, the court may order the parties to show cause why expert witnesses should not be appointed and may ask the parties to submit nominations. The court may appoint any expert that the parties agree on and any of its own choosing.” Thus, “Rule 706 allows the court to appoint a neutral expert on its own motion, whether or not the expert is agreed upon by the parties.” Students of California Sch. for the Blind v. Honig, 736 F.2d 538, 549 (9th Cir. 1984), judgment vacated on other grounds, 471 U.S. 148 (1985). “Appointments under Rule 706 are reviewable only for abuse of discretion,” and so long as the appointment follows the requirements of Rule 706, including the ability of both parties to “thoroughly cross-examine” the Court's appointed expert, such appointment is “proper.” Id. “Rule 706 powers are properly invoked where the issues are complex and the parties' experts have presented conflicting testimony that is difficult to reconcile or have otherwise failed to provide a sufficient basis for deciding the issues.” 29 Charles A. Wright et al., Fed. Prac. & Proc. Evid. § 6302 (2d ed. 2022)). Finally, federal courts possess certain “inherent powers,” not conferred by rule or statute, “to manage their own affairs so as to achieve the orderly and expeditious disposition of cases.” Goodyear Tire & Rubber Co. v. Haeger, 581 U.S. 101, 107 (2017) (quoting Link v. Wabash R. Co., 370 U.S. 626, 630–631 (1962)). These inherent powers include district courts' powers “to control their dockets,” Ferdik v. Bonzelet, 963 F.2d 1258, 1260 (9th Cir. 1992), and to “provide themselves with appropriate instruments required for the performance of their duties,” Perez v. Barr, 957 F.3d 958, 965 (9th Cir. 2020) (citation omitted). B. Attorney–Client Privilege and Work–Product Protection *4 “The attorney-client privilege protects confidential disclosures made by a client to an attorney in order to obtain legal advice, ... as well as an attorney's advice and response to such disclosures.” United States v. Ruehle, 583 F.3d 600, 607 (9th Cir. 2009) (citations and quotations omitted). “Typically, an eight-part test determines whether information is covered by the attorney-client privilege: (1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) unless the protection be waived.” Id. (citations and quotations omitted). Work-product protection is a “qualified” privilege that “protect[s] from discovery documents and tangible things prepared by a party or his representative in anticipation of litigation.” Admiral Ins. Co. v. U.S. Dist. Ct., 881 F.2d 1486, 1494 (9th Cir. 1989) (citing Fed. R. Civ. P. 26(b)(3)); see also United States v. Nobles, 422 U.S. 225, 237–38 (1975). “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.” Nobles, 422 U.S. at 238-39. “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., 968 F.3d 1107, 1119 (9th Cir. 2020) (citation omitted). “The privilege derived from the work-product doctrine is not absolute [and l]ike other qualified privileges, it may be waived.” Nobles, 422 U.S. at 239. The proponent of the privilege bears the burden of showing the applicability of the privilege, as well as the burden of showing no waiver has occurred. See United States v. Martin, 278 F.3d 988, 999-1000 (9th Cir. 2002); Weil v. Investment/Indicators, Research Advantagement, Inc., 647 F.2d 18, 25 (9th Cir. 1981). Typically, pursuant to Federal Rule of Procedure 26(b)(5), the party asserting privilege must “expressly make the claim” and “describe the nature of the documents, communications, or tangible things not produced or disclosed—and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim.” However, a party opposing the privilege assertion may request that the Court conduct an in camera review. To do so, the opposing party “must make a factual showing sufficient to support a reasonable, good faith belief that in camera inspection may reveal evidence that information in the materials is not privileged.” Rutter Group Prac. Guide Fed. Civ. Proc. Before Trial (Nat Ed.) Ch. 11 (III)-B. “If the party makes such a showing, the decision whether to conduct the review rests within the discretion of the district court.” Id. (citing In re Grand Jury Investigation, 974 F.2d 1068, 1074–75 (9th Cir. 1992); United States v. Zolin, 491 U.S. 554, 572 (1989)). IV. DISCUSSION As described above, Metricolor has permitted French and L'Oreal to have access to only approximately 19 of the 5,653 files identified in the forensic production log, effectively halting the review. The parties have filed cross motions to resolve this impasse. Metricolor's ex parte application requests that the Court vacate the forensic review, raising various objections to the scope of the review, as well as asserting privilege claims as to many of the documents. In its motion, L'Oreal asks the Court to overrule Metricolor's objections to the forensic review and to order Metricolor to produce all withheld files that have not been marked as privileged. Additionally, L'Oreal requests that the Court resolve the outstanding privilege disputes of the other documents. *5 The Court first addresses Metricolor's objections to the scope of review and its withholding of documents on that basis, and then addresses L'Oreal's objections to Metricolor's privilege assertions. A. Metricolor's Objections to the Scope of the Forensic Review of the Cohen Image Metricolor requests that the Court vacate the current forensic review of the Cohen Image on the basis that the forensic production log created by French exceeds the “scope” of the review. Metricolor has marked thousands of files in French's production log as exceeding the scope of the review, withholding production of those documents to L'Oreal and restricting French's ability to conduct his analysis of those files. Metricolor argues that the “present forensic review was expressly limited to identifying files in the Cohen image that had been deleted before Setec created its image about two months later.” Ex Parte App. at 5. However, according to Metricolor, “many” of the files identified in French's production log are duplicates of files that exist on the Setec Image and had also been produced by Metricolor to L'Oreal in discovery. Metricolor argues that such files are not within the scope of the present forensic review. Additionally, “L'Oreal revealed in its meet-and-confer email that much of the data in the Cohen image is ‘corrupt’ (through no stated fault of Metricolor or Mr. Cohen).” Id. at 10. According, to Metricolor, “if data differs between the Cohen and Setec images, it may well be due to the corruption of data in the Cohen image rather than because data was ‘deleted’ before Setec created its image.” Id. Finally, Metricolor notes that approximately 45% of the documents listed in French's production log were located in “unallocated clusters” in the Cohen Image. According to Metricolor, “unallocated clusters” are “computer space occupied by files that are deleted/inactive” so “they necessarily were not deleted by Mr. D'Amico during the period between the creation of the Cohen image and the Setec image” as implied by L'Oreal in its filings. Id. at 11. L'Oreal disputes Metricolor's characterization of the scope of the forensic review and the substance of the documents identified in French's production log. According to L'Oreal, the purpose of the forensic review of the Cohen Image is to ensure that both parties have access to the same file copies and set of documents. MTC at 3. While deleted files are perhaps the most important focus of the forensic review, L'Oreal contends that comparing any potentially material differences between previously produced documents is also relevant for the purpose of the review. Id. at 6. Moreover, L'Oreal argues that Metricolor mischaracterizes the extent to which there are deleted documents identified in French's production log. As to the “corrupted” files on the Cohen Image, L'Oreal argues that data “corruption can often trap previously deleted data in active files and give a forensic investigation insight into about what happened to deleted files on a machine.” Id. at 8. Similarly, L'Oreal disputes Metricolor's contention that the files in unallocated clusters are not deleted files, because unallocated clusters are “where deleted files go before they are overwritten.” Id. at 4. *6 The Court finds that Metricolor's arguments are unavailing. At the March 27, 2023 status conference during which L'Oreal first raised the issue of the Cohen Image, the Court explained, “we cannot go to trial with each side relying on different forensic copies of what's on the computer. Everyone has to know what was there when your expert copied it, and they have to know what was there when their expert copied it....” Dkt. 278-2 at 10–11. Then, at the May 15, 2023 hearing, the parties discussed whether to adhere to or modify the pre-existing forensic protocol in this case for the purpose of reviewing files on the Cohen Image. Counsel for plaintiff sought to modify the protocol for the purpose of reviewing the Cohen Image, on the grounds that the prior protocol would be overly burdensome and that a broad review of the Cohen Image would be improper. Counsel for defendants requested that review of the Cohen Image proceed according to the prior protocol. Counsel for defendants explained, “We want to be able to compare both images and see what the differences are, including the deleted files.” Dkt. 316-5 at 22. The Court agreed with defendants and stated that the “expert [will] review the files and present ... those files where there has been some – what is perceived to be a relevant change.” Id. at 37. The Court clearly set forth the scope of the current forensic review in its March 27 status conference and May 15 hearing with the parties: the purpose of reviewing the Cohen Image is to identify and examine material elements of relevant documents, including differences in documents as well as documents that may have been deleted or otherwise not produced to defendants. As plaintiff suggests, versions of files located on the Cohen Image may only differ in immaterial ways from documents that have already been produced. However, it is premature and inappropriate for plaintiff to make that determination and withhold review of documents at a preliminary phase of the forensic protocol. It is precisely the purpose of the protocol to ascertain the materiality of any differences in files present on the Cohen Image, including the nature of “corrupted” documents and files located in “unallocated clusters.” The procedure set forth in the protocol for Metricolor to withhold or redact documents is intended to protect documents that are properly privileged, or that contain private medical data or “proprietary information unrelated to the allegations in this case.” See Dkt. 145 at 7. However, Metricolor has instead attempted to withhold thousands of documents based on argumentative positions relating to the perceived impropriety of the forensic review. Thus, to the extent that plaintiff has marked files in French's production log to be withheld on plaintiff's perceived basis that they are “not a deleted file” or that they exceed its own preferred scope of review, those objections are hereby overruled. The Court hereby DENIES plaintiff's ex parte application and GRANTS IN PART L'Oreal's motion to enforce the forensic review, as set forth at the end of this order. The Court addresses the privileged documents in the following section. B. L'Oreal's Objections to Metricolor's Privilege Assertions As noted above, in addition to attempting to withhold documents on the basis that they do not fall within the “scope” of the forensic review, Metricolor has also asserted attorney-client privilege and work-product protection to approximately 996 files in French's production log, preventing review of those documents. L'Oreal claims that Metricolor's privilege log is insufficiently vague to properly assert privilege. Additionally, L'Oreal contends that Metricolor's privilege assertions relating to certain communications with third parties, in particular with Steven Trzaska, Rand Brenner, and Michael D'Amico, should be overruled and those documents should be produced to L'Oreal. As to the remaining privileged assertions in Metricolor's log, L'Oreal requests that Magistrate Judge Eick or this Court conduct an in camera review. The Court addresses each argument in turn. 1. Communications with Steven Trzaska L'Oreal argues that Metricolor has withheld and labelled approximately 100 documents involving an individual named Steven Trzaska as attorney-client privileged, despite allowing 35 other files involving Trzaska files to be produced. MTC at 11; Dkt. 324-2 at 1. L'Oreal argues that Metricolor's communications with Trzaska cannot be attorney-client privileged because Trzaska was in-house counsel for L'Oreal from approximately August 2004 to January 2015, months before the communications between Trzaska and Sal D'Amico began. Id. Additionally, L'Oreal notes that because Metricolor has produced some files involving Trzaska, it has waived attorney–client privilege with respect to the other files involving Trzaska. Id. *7 In opposition, Metricolor argues that Trzaska was an attorney for Metricolor and later served as both in-house counsel and as a business partner of Metricolor. Opp. at 17. Metricolor's explanation. To the extent that Trzaska was ethically conflicted from representing Metricolor in negotiations with L'Oreal, Metricolor argues that (1) the appropriate remedy is disqualification and not “vitiat[ion of] the attorney-client privilege; and (2) the “D'Amicos, being non-lawyers, reasonably relied on Trzaska's assurances.” Id. at 19. Additionally, to the extent that it has produced some documents relating to Trzaska and not others, Metricolor contends that it is because Trzaska served a dual role as business partner and counsel. Id. at 21. In reply, L'Oreal argues that Metricolor's privilege assertion as to Trzaska contradicts Metricolor's interrogatory responses, amended initial disclosures, and Sal D'Amico's deposition testimony about Trazska. Reply at 9 (“For example, Metricolor identified Mr. Trzaska as a fact witness on its initial disclosures, stating that he could provide information regarding Metricolor's ‘negotiations with Defendants and disclosure of trade secrets.’ ”). According to L'Oreal, “Metricolor's newly minted privilege claim is further belied by Metricolor cherry picking some files that it agrees should be produced – presumably files it thinks help its case – while claiming privilege over all others.” Id. at 10. Instead, L'Oreal argues that if “there ever was a privilege (there was not) Metricolor waived the privilege through Mr. D'Amico's deposition testimony about his communications with Mr. Trzaska and its selective production of files before and during Mr. French's investigation.” Id. at 10-11. First, the Court notes that Metricolor has not filed any declaration from Trzaska asserting the nature and extent of his business and attorney-client relationship with plaintiff. Crucially, Metricolor has been evasive in clearly and accurately setting forth the potential grounds of Trzaska and Metricolor's attorney–client relationship with respect to its negotiations with L'Oreal in 2015-2016. It appears that prior to the instant motion, Metricolor and its executives had not previously represented in this litigation that Trzaska had served at any point in time as Metricolor's counsel. Instead, it appears that Metricolor had listed Trzaska as a fact witness in the case and had produced in discovery many (but not all) of his email communications with Sal D'Amico. Moreover, in the instant briefing, Metricolor submitted two emails dated April 1, 2015, in which Sal D'Amico asked Trzaska, “Do you have any kind of ‘Non-compete’ clause or agreement of any other legal nature which may preclude you from your possible involvement with us during future negotiations with L'Oreal?” Dkt. 318-3. That day, Trzaska first answered. “I am not subject to any agreement which would preclude me from representing you in future negotiations with L'Oreal.” According to Metricolor's opposition brief, “Trzaska agreed without disputing the attorney-client relationship.” Opp. at 18. However, Metricolor did not submit the subsequent email Trzaska sent three days later in which he told Sal D'Amico, “Upon further reflection, I will be unable to assist you in this matter.” Dkt. 324-2, Ex. F. Trzaska sent this email to Sal D'Amico shortly after the two first became acquainted and only months after Trzaska left employment at L'Oreal in January 2015. This email reveals on its face that Trazska expressly declined to become Metricolor's attorney at that time. Additionally, Metricolor has produced an email by Trzaska to Metricolor sent in March 2016, in which Trzaska offered to invest up to $20,000 in Metricolor to become a partner and serve as legal counsel. See Opp. at 18; Dkt. 318-3. Metricolor claims that the “D'Amicos and Trzaska finalized the partnership arrangement a few days later, including Trzaska's role as legal counsel,” but submits no documents evidencing a finalized partnership agreement. Id. Importantly, Metricolor provides absolutely no explanation as to why Trzaska told Sal D'Amico in 2015 that he “will be unable to assist you” with L'Oreal, but then subsequently offered a year later in 2016 to work on plaintiff's negotiations with L'Oreal in putative roles as business partner and in-house counsel. *8 Finally, as defendants note, “it has been widely held that voluntary disclosure of the content of a privileged attorney communication constitutes waiver of the privilege as to all other such communications on the same subject.” Weil v. Inv./Indicators, Rsch. & Mgmt., Inc., 647 F.2d 18, 24 (9th Cir. 1981); see also 1 McCormick On Evid. § 93 (8th ed.) (“If the client elicits testimony from the lawyer-witness as to privileged communications this obviously would waive as to all consultations relating to the same subject, just as the client's own testimony would.”). Here, plaintiff has already disclosed many documents involving Trzaska's involvement in Metricolor's 2015–2016 negotiations with L'Oreal and has thus waived whatever putative privilege it could have asserted to any remaining Trzaska communications that have been withheld with respect to those negotiations. See, e.g., Dkt. 324-2 (citing Metricolor's productions of MC004703–4704; MC003947–3948); Dkt. 318-3 (attaching 7 communications involving Trzaska). 2. Communications with Rand Brenner Metricolor has asserted attorney–client privilege as to attorney-client communications that included or were forwarded to Rand Brenner, a “third-party fact witness for Metricolor who is not an attorney.” MTC at 10. L'Oreal argues that any communications sent to Rand Brenner or involving him are not privileged. Id. In opposition, Metricolor agrees that two communications from Sal D'Amico to Brenner that “bcc'd” Metricolor's litigation counsel are not privileged. However, Metricolor claims that “Brenner was Metricolor's paid licensing consultant under written contract to handle [licensing discussions with L'Oreal] and was a necessary party to the discussions with Metricolor's prospective licensing counsel.” Id. at 16. Metricolor argues that “communications between an entity's counsel and an outside consultant may be covered by the entity's attorney-client privilege.” Id. (emphasis added). In reply, L'Oreal cites to the Ninth Circuit's standard that an outside consultant must be a “functional equivalent of an employee” for his communications with the company's counsel to be privileged. Reply at 11 (citing United States v. Graf, 610 F.3d 1148, 1159 (9th Cir. 2010)). L'Oreal argues that Metricolor “fails to meet [its] burden to establish privilege protection” because it has not demonstrated that Brenner operated as a “functional equivalent of an employee” of Metricolor. Id. The Court agrees with L'Oreal that Metricolor has not made the requisite showing that Brenner's consultancy operated at the level of a “functional equivalent of an employee” of Metricolor. Graf, 610 F.3d at 1159 (holding outside consultant was “functional equivalent of an employee” where he “importantly... was the company's primary agent in its communications with corporate counsel”). Specifically, Metricolor has not substantiated its vague position that some emails involving Brenner and Metricolor's counsel are not privileged but others “may be.” Accordingly, communications sent to and received by Brenner are not privileged and must be produced. 3. Communications with Michael D'Amico L'Oreal argues that approximately 91 files involving communications with Sal D'Amico's son, Michael D'Amico, are not privileged because Michael D'Amico is not associated with Metricolor and not an attorney. MTC at 10–11. These files consist of documents and emails sent between Sal D'Amico and Metricolor's attorneys that Sal later forwarded to Michael through email. *9 In opposition, Metricolor claims that the documents disclosed to Michael D'Amico are attorney work product, and that disclosure to him does not waive work-product protection. Opp. at 10–11 (citations omitted). In reply, L'Oreal notes that Metricolor only asserted work–product protection for these files in its opposition brief and not in the production log (which only labeled the files as attorney–client privileged). Reply at 10–11. Furthermore, L'Oreal notes that Metricolor does not make the requisite showing to establish that any of the disputed files constitute work product. Id. The Ninth Circuit has repeatedly held that “waiver of attorney-client privilege by disclosure to a third party does not necessarily affect the work product protection since the two are designed to accomplish different results.” United States v. Sanmina Corp., 968 F.3d 1107, 1120 (9th Cir. 2020); see also Transamerica Computer Co., Inc. v. Int'l Bus. Machines Corp., 573 F.2d 646, 647 n.1 (9th Cir. 1978). In United States v. Sanmina, the Ninth Circuit addressed the standard for waiver of work product by disclosure to a third party: “[C]onsistent with our sister circuits as well as precedent on the unique purposes for the work-product doctrine, we hold that 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. ’ ” Id. at 1121 (quoting 8 Charles Alan Wright & Arthur R. Miller, Federal Practice & Procedure § 2024 (3d ed. 2020). In that case, the Ninth Circuit concluded that the party's disclosure of attorney memos to “DLA Piper for the purpose of obtaining a valuation analysis may render DLA Piper a third party insofar as attorney-client privilege is concerned, but it does not transform DLA Piper into an adversary or even a potential adversary with respect to the memoranda” for work-product protection. Id. at 1122. Similarly, in United States v. Stewart, cited in L'Oreal's moving papers, the court concluded that Martha Stewart's disclosure of an attorney communication to her daughter waived attorney–client privilege but did not waive work–product protection. 287 F. Supp. 2d 461, 462 (S.D.N.Y. 2003). Here, it appears that—assuming the documents are properly work product—Sal D'Amico's disclosure to his son of those documents would not waive work-product protection. However, in its privilege log, Metricolor only asserted that these documents were attorney-client privileged; it asserted they were work-product protected for the first time in its briefing for the instant motions. Accordingly, Metricolor must set forth the requisite showing that the documents at issue constitute attorney work product in the first instance when it amends its forensic production log, as set forth in further detail at the end of this order. 4. Metricolor's Other Privilege Assertions L'Oreal requests that “Metricolor be ordered to present its privilege claims to Magistrate Judge Eick or the Court for in camera review to determine the validity of Metricolor's privilege claims.” Reply at 12. As set forth above, the legal standard for exercising discretion to order in camera review is whether the opposing party has made a sufficient showing that there is a “reasonable, good faith belief that in camera inspection may reveal evidence that information in the materials is not privileged.” Rutter Group Prac. Guide Fed. Civ. Proc. Before Trial (Nat Ed.) Ch. 11 (III)-B. In light of the incoherent and unsubstantiated privilege claims that have been asserted with respect to Trzaska, Brenner, and Michael D'Amico, some degree of in camera review of plaintiff's other privilege assertions is warranted. *10 It appears that there are approximately 878 other documents as to which Metricolor has asserted attorney–client privilege or work–product protection that do not relate to Trzaska, Brenner, or Michael D'Amico.[3] The Court orders the parties to meet and confer to narrow the scope of disputed privileged documents to no more than 400 documents to be presented for in camera review. Accordingly, the Court GRANTS IN PART and DENIES IN PART defendants' motion to enforce the forensic review, as set forth at the end of this order. V. CONCLUSION In accordance with the foregoing, the Court DENIES plaintiff's ex parte application to vacate the review and GRANTS IN PART AND DENIES IN PART defendants' motion to enforce the review as follows. As noted above, French identified 5,653 files in the forensic production log as to which Metricolor asserted privilege claims and made other objections. Metricolor asserted attorney–client privilege and/or work–product protection as to approximately 996 documents, of which 100 documents relate to Trzaska and 10 documents each relate to Brenner and Michael D'Amico. Separate from these privilege assertions, Metricolor has also objected to and withheld production of approximately 4,542 documents on various grounds, including that L'Oreal has not proved that a specific file has been deleted or that the document falls outside the scope of the review. The Court makes the following findings with respect to the parties' motions: 1. The only permissible bases for Metricolor to withhold or redact documents pursuant to the forensic protocol are privilege, private medical data, and proprietary information unrelated to the allegations in the case.[4] See Dkt. 145. Thus, to the extent that Metricolor objected to and withheld production of approximately 4,542 documents on other, separate grounds, including that L'Oreal has not proved that a specific file has been deleted or that the document falls outside Metricolor's perceived scope of the review, those objections are overruled. 2. Metricolor's communications with Rand Brenner are not privileged. The Court directs as follows: 3. As noted above, approximately 4,542 documents on the forensic production log are not identified as privileged but were withheld by Metricolor for various grounds that the Court hereby overrules. For the purpose of completing the present forensic review, Metricolor is directed to identify and produce only 2,500 documents to L'Oreal that are representative of these 4,542 non-privileged documents in the production log. Metricolor is directed to identify these 2,500 non-privileged documents from French's forensic production log and provide its list to French and defendants no later than September 15, 2023; 4. Metricolor is directed to provide a declaration, no later than September 29, 2023, from Trzaska to support its assertion that he became a member of Metricolor, LLC, and served as in-house counsel in relation to his status as LLC member, including but not limited to details supporting those claims; 5. Separately from the documents identified in paragraphs 1 and 3, because Metricolor has asserted privilege as to approximately 1,000 total documents, the parties are directed to meet and confer to narrow the scope of disputed privileged documents to no more than 400 documents to be presented for in camera review. In connection with this review, Metricolor is directed to produce an amended privilege log for the current forensic review that sets forth the names and identities of the parties to the communication or document, the date of the document, the basis for asserting the privilege of the document, a description of the nature of the document in a manner that does not reveal the information itself privileged or protected, and any other information that will help the Court assess the claims at issue. Metricolor is directed to produce an amended privilege log to French and defendants no later than September 15, 2023; *11 6. As part of the amended privilege log required by paragraph 5 above, Metricolor is directed to submit the basis for its claims that the documents disclosed to Michael D'Amico are attorney work product; and 7. The parties are directed to file a joint motion for in camera review of 400 outstanding privileged documents at issue pursuant to Local Rule 37-2, no later than September 29, 2023. The Court will determine at a later date whether disputed documents will be presented to the magistrate judge or the district judge for in camera review. IT IS SO ORDERED. Footnotes [1] As stated below, the Court and defendants were not made aware of the Cohen Image until March 2023, so the forensic review protocol established in December 2021 did not include review of contents of the Cohen Image. [2] During the prior forensic review, the parties disputed the privilege status of 4 documents. The parties consented to in camera review by the Court, and the Court found one of the documents, BRG_903, to be privileged, but ordered the other three documents, BRG_291 and BRG_374/BRG_790, to be produced. See Dkt. 166. [3] At oral argument, plaintiff's counsel indicated that it had asserted privilege as to 996 documents total, with approximately 100 documents of the 996 documents relating to Trzaska and 10 documents each relating to Brenner and Michael D'Amico. [4] For instance, at oral argument, plaintiff's counsel emphasized that some of the files identified in French's forensic production log include unrelated and private documents, such as Sal D'Amico's medical records, personal tax returns, and family photos. In accordance with the forensic protocol, plaintiff is directed to clearly identify on the production log the items that will be withheld from production and review on this basis.