In Re: Robinson v.

USCA1 Opinion









UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
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Nos. 97-1002
97-1003

IN RE: GRAND JURY SUBPOENAS

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APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Michael A. Ponsor, U.S. District Judge]

____________________

Before

Torruella, Chief Judge,

Bownes, Senior Circuit Judge,

and Lynch, Circuit Judge.

_____________________

Michael W. Reilly, with whom Tommasino & Tommasino and
Michael G. West were on joint brief for appellants the Client and
the Owner.
John P. Pucci, with whom Jeanne M. Kaiser and Fierst & Pucci
were on brief for appellant Law Firm.
Andrea N. Ward, Assistant United States Attorney, with whom
Donald K. Stern , United States Attorney, was on brief for appellee
United States.



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August 13, 1997
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TORRUELLA, Chief Judge. The case before us is a small

piece in a much larger puzzle. A federal grand jury, sitting in

Massachusetts, has been investigating possible criminal activity on

the part of a firm ("firm" or "client") and its owner ("owner").

The firm was in the business of assisting inventors in promoting

their discoveries and in obtaining patents. The government

suspected fraud and began an investigation. During the

investigation, a search warrant was executed at the business

offices of the client. As a result of some of the materials seized

during this search, the government requested and received a grand

jury subpoena directed at the custodian of records at the office of

the firm's legal representative ("law firm"). The subpoena sought

all records "pertaining to charges or billing for legal services"

performed by the law firm for the client. The information sought

included:

1) all documents relating to the establishment
of such entities as clients;
2) all diary entries and other summaries
indicating the hours worked, the hours
charged, the nature or subject of the services
performed, and the identity of the client; and
3) all invoices or bills of any kind.

Subpoena to Testify Before Grand Jury, dated August 5, 1996.

The client and the firm filed separate motions to quash

the subpoena, arguing principally that the billing records




On February 5, 1997, a "Consent Motion to Seal and Redact" was
granted by the district court. In accordance with Federal Rule of
Criminal Procedure 6(e)(6), no references to the parties have been
made in this opinion. See, e.g., United States v. (Under Seal),
748 F.2d 871 (4th Cir. 1984).

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contained detailed descriptions of the legal work performed and

that disclosure thereof would violate the attorney-client

privilege.

On December 18, 1996, the district court denied the

motions to quash, holding that "records of the sort exemplified by

Ex. 2 to the Offord Affidavit (attached to the Government's

Response to the Motion to Quash) are not sufficiently specific to

be protected by the attorney-client privilege." See Motion to

Quash Subpoena, Record Appendix, at 24 (margin order). Both the

client and the law firm have appealed the denial of the motion to

quash.

I. Appellate Jurisdiction

As an initial matter, we must determine whether this

court has jurisdiction to hear the appeal.

It is established that, under normal circumstances, a

party seeking to quash a subpoena cannot appeal a court order to

comply without first resisting that order and subjecting itself to

a citation for contempt. United States v. Ryan, 402 U.S. 530, 533

(1971); Cobbledick v. United States, 309 U.S. 323, 328 (1940);

Corporacion Insular de Seguros v. Garcia, 876 F.2d 254, 257 (1st

Cir. 1989).

This rule disposes of the law firm's appeal. The law

firm has not been cited for contempt and, therefore, we lack

jurisdiction to hear the appeal. The client's appeal, however,

implicates a more complex jurisdictional analysis.




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An exception to the rule requiring a contempt citation

prior to appeal exists when subpoenaed documents are in the hands

of a third party. In that case, the owner of the documents may

seek immediate appeal of a district court's order requiring

production of those documents. This exception, known as the

"Perlman doctrine," exists because it is unlikely that a third

party will risk contempt simply to create an appealable order for

the benefit of the owner of the documents. See Perlman v. United

States, 247 U.S. 7, 12-13 (1918). In other words, the district

court order is effectively final with respect to a party that is

powerless to prevent compliance with the order.

When the third party is the document owner's lawyer,

however, a different rule applies. In this circuit, the "question

[of] whether a client may appeal to the court of appeals from a

district court's order directing his attorney to testify before the

grand jury with respect to a communication allegedly covered by the

attorney-client privilege," was decided in In re Oberkoetter, 612

F.2d 15, 16 (1st Cir. 1980). In that case, an attorney had been

ordered by the district court to testify before a grand jury. He

initially declined to do so on the grounds of attorney-client

privilege. Id. The district court ordered him to testify despite

the claim of privilege. The attorney's client then filed an appeal

from the district court order. This court held that it lacked

appellate jurisdiction until such time as the attorney received a

contempt citation.




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The facts of the instant case fall squarely with the

scope of Oberkoetter. We believe, however, that it is time to

reconsider our holding in that case.

We begin by noting the tension between Perlman and

Oberkoetter. In Perlman, exhibits belonging to Perlman were in the

hands of the clerk of the district court in connection with patent

litigation. The district court subsequently ordered the clerk to

produce the exhibits for presentation to a grand jury investigating

charges that Perlman had perjured himself in the patent suit.

Perlman claimed privilege with respect to the exhibits. The

district court denied his petition to restrain their presentation

to the grand jury. Perlman appealed. The Supreme Court ruled that

his appeal should be allowed on the grounds that "Perlman was

powerless to avert the mischief of the order." Perlman, 247 U.S.




Ordinarily, prior panel decisions are binding on future panels
and it is for an en banc court to reexamine the status of a prior
opinion. In rare instances, however, where it has become
relatively clear that a prior precedent of this court was
erroneously decided or is no longer good law, we have achieved the
same result more informally by circulating a proposed panel opinion
that reverses a prior panel to all the active judges of the court
for pre-publication comment. See, e.g., Gallagher v. Wilton
Enters., Inc., 962 F.2d 120, 124 n.4 (1st Cir. 1992); Trailer
Marine Transp. Co. v. Rivera Vazquez, 977 F.2d 1, 9 n.4 (1st Cir.
1992); United States v. Bucuvalas, 909 F.2d 593, 598 n.9 (1st Cir.
1990); see also Ionics, Inc. v. Elmwood Sensors, Inc., 110 F.3d
184, 187 n.3 (1st Cir. 1997) (overturning a circuit precedent in
order to comply with controlling authority). While this practice
is to be used sparingly and with extreme caution, we have employed
it in the special circumstances of this case, with the result that
a majority of the active judges of this court has approved the
overruling of Oberkoetter on the point at issue. Of course, by
resorting to this mechanism, we neither foreclose any party from
filing a formal petition for rehearing en banc nor commit any
member of the court to a position in respect to any such petition.

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at 13. We believe that the reasoning of Perlman is directly

applicable to this case and requires us to accept jurisdiction over

the instant appeal. Even though it is an attorney that is

subpoenaed for his or her client's records, the client here has

been denied the opportunity to avert the mischief of the order by

allowing himself to be held in contempt. The client is at the

mercy of his or her attorney and can only gain a review of the

district court's order if the attorney is prepared to risk a

contempt citation. The real possibility of a serious conflict of

interest cannot be overlooked or denied.

We also take note of the fact that the Supreme Court has

not overruled Perlman. In Oberkoetter, Judge Wyzanski stated that

"he expects the Supreme Court to ultimately overrule Perlman."

Oberkoetter, 612 F.2d at 18. With the benefit of hindsight we know

that Perlman has not been overruled and continues to bind this

court. To whatever extent the Oberkoetter court believed that

Perlman's applicability had faded, and to whatever extent this may

have influenced its ruling, the reasoning in Oberkoetter was

incorrect.

Most of our sister circuits have interpreted Perlman to

apply in instances when an attorney is ordered by a court to

produce client records in the face of a claim of privilege. See

Conkling v. Turner, 883 F.2d 431, 433-34 (5th Cir. 1989) (order

directing the testimony of appellant's attorney is immediately

appealable); In re Grand Jury Subpoena, 784 F.2d 857, 859-60 (8th

Cir. 1986) (same); In re Klein, 776 F.2d 628, 630-32 (7th Cir.


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1982) ("Like several other courts, this one has treated Perlman as

a holding that clients always are entitled to appeal as soon as

their attorneys are required to produce documents."); United States

v. (Under Seal) , 748 F.2d 871, 873 n.2 (4th Cir. 1984) ("[W]hen the

one who files the motion to quash, or intervenes, is not the person

to whom the subpoena is directed, and the movant or intervenor

claims that production of the subpoena documents would violate his

attorney-client privilege, the movant or intervenor may immediately

appeal."); In re Grand Jury Proceedings , 722 F.2d 303, 305-07 (6th

Cir. 1983) (allowing immediate appeal of an order compelling the

testimony of movant's attorney); In re Grand Jury Proceedings,

Appeal of Twist, 689 F.2d 1351, 1352 n.1 (11th Cir. 1982) (same);

In re Grand Jury Subpoena Served Upon Doe, 759 F.2d 968, 971 n.1

(2d Cir. 1985) (same); In re Grand Jury Proceedings , 604 F.2d 798,

800 (3d Cir. 1979) (same).

Only three other circuits have determined that an order

directing an attorney to testify regarding material that is alleged

to be privileged is not automatically appealable. The Ninth

Circuit allows an appeal if the attorney no longer represents the

owner of the documents, but does not allow immediate appeal where

the attorney is currently representing the owner. See, e.g., In re

Grand Jury Subpoenas Dated December 10, 1987, 926 F.2d 847, 853

(9th Cir. 1991). The District of Columbia Circuit has ruled that

such an order is appealable when "circumstances make it unlikely

that an attorney would risk a contempt citation in order to allow

immediate review of a claim of privilege." In re Sealed Case , 754


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F.2d 395, 399 (D.C. Cir. 1985). The Tenth Circuit does not allow

the appeal of district court orders compelling the testimony of an

attorney who claims privilege unless the attorney has accepted a

contempt citation or the owner of the records can "prove that the

attorney will produce the records rather than risk contempt." In

re Grand Jury Proceedings, Subpoena to Vargas , 723 F.2d 1461, 1464-

66 (10th Cir. 1983).

No circuit outside of our own has adopted a rule as

extreme as the Oberkoetter rule, which bars an appeal until the

lawyer is cited for contempt.

In addition to the persuasive case law from other

circuits, we are troubled by the tenuous logic of Oberkoetter. In

particular, that opinion assumed that "[a]n attorney, in his

client's interest and as proof of his own stout-heartedness, might

be willing to defy a testimonial order and run the risk of a

contempt proceeding." In re Oberkoetter , 612 F.2d at 18. Although

we do not doubt that some lawyers would accept a contempt citation

in order to provide their clients with the opportunity to appeal,

we are persuaded by the following reasoning of the Fifth Circuit:

Although we cannot say that attorneys are
in general more or less likely to submit
to a contempt citation rather than violate
a client's confidence, we can say without
reservation that some significant number
of client-intervenors might find
themselves denied all meaningful appeal by
attorneys unwilling to make such a
sacrifice. That serious consequence is
enough to justify a holding that a client-
intervenor may appeal an order compelling
testimony from the client's attorney.



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In re Grand Jury Proceedings in Matter of Fine, 641 F.2d 199, 203

(5th Cir. 1981). Mindful that it would be unduly optimistic to

anticipate that all attorneys will accept contempt rather than

compromise their clients' appeal, we think it unwise to require

such an action before permitting an appeal.

Oberkoetter relies heavily on the premise that the

appellate review will interfere with the normal course of

litigation. The greatest of these concerns, in the eyes of the

Oberkoetter court, appears to have been the delay caused by an

appeal. While there is something to this argument, it ultimately

fails to justify a total bar on appeals in cases such as this. A

party who accepts contempt is permitted to appeal the contempt

citation and, thereby, seek review of the order compelling

testimony. Granting the same opportunity to appeal to a party who

does not have the option of accepting contempt is unlikely to lead

to greater delay than exists in cases that have featured a contempt

citation.

Finally, we add that allowing an appeal only if the

attorney accepts a contempt citation pits lawyers against their

clients in a manner that we do not believe is in the interests of

justice. See generally United States v. Edgar, 83 F.3d 499, 507-08

(1st Cir. 1996). A lawyer should not be required to choose between

the interests of his or her client and his or her own interests.

A rule that promotes conflicts of interest hinders the fair

representation of the client and makes it less likely that clients

will be well served by their attorneys.


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In light of the above discussion, therefore, we overrule

In re Oberkoetter, 612 F.2d 15 (1st Cir. 1980). In its place, we

adopt the majority rule and apply the Perlman exception to those

cases wherein a client seeks immediate appeal of an order

compelling production of a client's records from his attorney.

Appellee advances one additional argument in support of

its claim that we lack jurisdiction over this appeal. It claims

that there is no jurisdiction unless the facts of the case, in

addition to being an appeal from the denial of a motion to quash a

subpoena directed at the law firm, meet the requirements of the

collateral order doctrine. See United States v. Billmyer, 57 F.3d

31, 34 (1st Cir. 1995). We are unpersuaded by the government's

argument. It cites to no authority, nor do we find any, that

states that the denial of a motion to quash is reviewable only if,

in addition to meeting the requirements of the Perlman doctrine, it

also meets the requirements of the collateral order doctrine. We

decline to adopt such a rule in this context.

II. Attorney-Client Privilege

Having overturned Oberkoetter, we have jurisdiction to

entertain this appeal. Upon review of the record and the briefs on

appeal, we are of the opinion that there is simply not enough

information for us to form a reasoned judgment as to whether the

records at issue are privileged.

Appellant alleges that the records at issue contain, in

part, substantive descriptions of legal work rendered. We

certainly agree that the documents are not per se non-privileged


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merely because they were intended primarily for billing purposes.

What matters is not the form of the information, but its content.

See, e.g., United States v. Olano, 62 F.3d 1180, 1205 (9th Cir.

1995); In re Grand Jury Proceedings , 896 F.2d 1267, 1273 (11th Cir.

1990); Matter of Witnesses Before Special March 1980 Grand Jury,

729 F.2d 489, 495 (7th Cir. 1984). Whatever the form of the

information, it is privileged if: (1) the client was, or sought to

be, a client of the law firm; (2) the lawyer acted as a lawyer in

connection with the information at issue; (3) the information

relates to facts communicated for the purpose of securing a legal

opinion, legal services, or assistance in a legal proceeding; and

(4) the privilege has not been waived. See United States v.

Wilson, 798 F.2d 509, 512 (1st Cir. 1986).

On the other hand, based on the one unredacted invoice

that was submitted to the district court by appellants, we do not

believe it is possible to determine whether the documents, as a

group, are privileged. The submitted invoice includes several

entries that are clearly not privileged, and one entry that names

the former accountant and chief financial officer of the client and

that reads "IRS Power of Atty. forms and corp. penalty abatements;

Correspondence to client." From this information, appellants urge

this court to conclude that the records at issue are privileged,

pointing out that the parties would expect to be able to discuss

IRS corporate penalty abatements and power of attorney forms

without the IRS learning about it. Appellee, on the other hand,

claims that this entry, described as "typical" of the group of


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records, demonstrates that there is no privilege. We cannot agree

with either argument.

It is at least arguable that the entry meets the criteria

of a privileged communication. Furthermore, when taken as a group,

it is possible that the bills would reveal considerable privileged

information. This possibility is compounded by the fact that the

government has already seized the client's business records, making

it more likely that the government can deduce the privileged

substance of the notations of the records. See In re Grand Jury

Proceedings, 517 F.2d 666, 674 (5th Cir. 1975) ("[I]nformation, not

normally privileged, should also be protected when so much of the

substance of the communications is already in the government's

possession that additional disclosures would yield substantially

probative links in an existing chain of inculpatory events or

transactions.").

We cannot, however, base our decision on this mere

possibility. We believe that further inquiry into the question of

privilege is necessary.

Given that an in camera review of the documents was never

conducted, we are uncertain as to how the district court arrived at

its conclusion that the documents are not privileged. Appellants,

at bottom, ask us to accept their statements that the records

contain privileged information, while appellees urge us to assume

that they do not. We are unwilling to base our decision on such

assertions. See United States v. Wujkowski, 929 F.2d 981, 984 (4th

Cir. 1991).


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Accordingly, we vacate the district court's ruling on the

privilege issue and remand with instructions that the district

court conduct a more complete inquiry into the question. See

Icicle Seafoods, Inc. v. Worthington, 475 U.S. 709, 714 (1986) ("If

the Court of Appeals believed that the District Court had failed to

make findings of fact essential to a proper resolution of the legal

question, it should have remanded to the District Court to make

those findings."). We also note that, in light of Oberkoetter, the

parties and the district court may have been operating under the

assumption that no appeal from the district court's ruling would be

possible. Based on this reasonable, though ultimately incorrect,

assumption, those involved may have failed to produce a record

sufficient for appellate purposes. Our remand allows for the

production of such a record. Cf. Millipore Corp. v. Travelers

Indemnity Co., 115 F.3d 21, 34 (1st Cir. May 30, 1997).

Appellants also argue that the subpoena is the fruit of

an impermissible violation of the attorney-client relationship.

This issue was raised by both parties below but was not decided by

the district court. Accordingly, we need not reach the issue. We

leave the issue to be decided, in the first instance, by the

district court on remand.

III. Conclusion

For the foregoing reasons, we dismiss the law firm's

appeal, vacate the district court ruling as to the client's appeal,

and remand for further proceedings.




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