kim askew dallas, texas - texasbarcle askew dallas, texas chris griesel dallas, ... may 22-23, 2003...

DEALING WITH CONFIDENTIAL AND PROPRIETARY INFORMATION

Authored by:

ERNEST [SKIP] REYNOLDS IIIFort Worth, Texas

KIM ASKEWDallas, Texas

CHRIS GRIESELDallas, Texas

PAUL J. VAN OSSELAERAustin, Texas

State Bar of Texas16TH ANNUAL

ADVANCED EVIDENCE AND DISCOVERY COURSEMarch 6-7, 2003 - DallasMay 1-2, 2003 - Houston

May 22-23, 2003 - San Antonio

CHAPTER 16

ERNEST [SKIP] REYNOLDS III

Attorney: Trial and appellate practice in state and federal courts with emphasis on litigation, includingmatters involving tort and casualty claims, insurance law and defense, healthcare issues,professional liability, medical device claims, toxic tort, product liability, transportation claims,industrial casualties, commercial disputes, casualties and disputes relating to oil and gasproduction, and complex multi-party litigation.

Juris Doctor: UNIVERSITY OF TEXAS SCHOOL OF LAW [Honors] [1977] [member: Legal Research Board; editor-in-chief: A.J.C.L.]

Member: TEXAS DISCIPLINARY RULES OF PROFESSIONAL CONDUCT COMMITTEE [State Bar of Texas]; former

vice chair: CONTINUING LEGAL EDUCATION COMMITTEE [State Bar of Texas]; former member: COURT

RULES COMMITTEE [State Bar of Texas]; ADMINISTRATION OF RULES OF EVIDENCE COMMITTEE [StateBar of Texas]; chair: Continuing Legal Education Planning for 1999 Convention of The State Bar ofTexas [1998-1999]; AMERICAN HEALTH LAWYERS ASSOCIATION

Course Director: THE ULTIMATE TRIAL NOTEBOOK: MASTER OF TRIAL [1993] [sponsored by the State Bar of Texas]

Charter Fellow: TARRANT COUNTY BAR FOUNDATION; past president: TARRANT COUNTY CIVIL TRIAL LAWYERS

ASSOCIATION; member: Fee Arbitration Committee [Tarrant County Bar Association]; member:Tarrant County Bar Association Judicial Evaluation and Polls Committee [2000-]; recipient:[Tarrant County Bar Association] President's Certificate of Outstanding Achievement [June, 1999]

Publications: Author of several published legal articles; contributing author for several books; editor of onebook; consultant for Matthew-Bender Company in connection with preparation and initialpublication of TEXAS TORTS AND REMEDIES treatise [also a contributing author for this publication].Publications include:

Managing the Defense of a Multi-Defendant Case, 29 THE PRACTICAL LAWYER 81

General Principles of Professional Liability, I TEXAS TORTS AND REMEDIES [appearing there asChapter 10]

Outline: Experts, Attorneys, and the Resolution of Energy Industry Disputes [an outline preparedfor and distributed to an audience on February 15, 2000, in conjunction with a lecture presentationto attendees at THE 2000 NORTH TEXAS ENERGY COUNCIL SYMPOSIUM]

Consultant: MEDICAL PHYSICISTS AND MALPRACTICE [Medical Physics Publishing 1996] [legal consultant toauthors]

Provider: Mr. Reynolds has been placed by invitation on the list of Continuing Legal Education Providersfor the Court of Appeals, Second District of Texas

Member: TEXAS GIRLS ' CHOIR BOARD OF DIRECTORS; member: Board of Directors of Republican Forum ofTarrant County; member: Aviation Committee [Fort Worth Chamber of Commerce]; member:Zoning Board of Adjustment [Place 2], City of Colleyville, Texas; member: THE PRESIDENT 'S CLUB

OF THE HERITAGE FOUNDATION [2000-2001]

Former college level teacher

Mr. Reynolds is an A.V.-rated [Martindale-Hubbell] attorney. He is listed in the Marquis publication WHO'S WHO IN

THE WORLD.

KIM J. ASKEW

Hughes & Luce, L.L.P. Home Address:1717 Main Street, Suite 2800

Dallas, Texas 75201 3710 Holland, No. 6(214) 939-5579 Dallas, Texas 75219

FAX: (214) 939-5849 (214) 443-0717Internet Address: [email protected] FAX: (214) 443-9805

EDUCATION

B.S., Commerce, summa cum laude, Knoxville College (1979)J.D., Georgetown University Law Center (1983)

(Selected as one of the inaugural “Outstanding Alumnae” of the law school - 1998)

EMPLOYMENT

Kim Askew is a partner and member of the Management Committee at Hughes & Luce, L.L.P.,a 160-attorney Texas firm with offices in Dallas, Austin and San Francisco. Ms. Askew handlescomplex commercial litigation and labor and employment cases and has successfully triedcases to jury verdict. Prior to joining Hughes & Luce, L.L.P., she served as a law clerk to theHon. Jerry Buchmeyer, Chief Judge of the United States District Court for the Northern Districtof Texas, from 1983 through 1984.

PROFESSIONAL ACTIVITIES

• Member, The American Law Institute (since 1997)

• Sustaining Life Fellow of Texas Bar Foundation

• Fellow of the American and Dallas Bar Foundations2001 District 6 Nominating Co-Chair (Texas Bar Foundation)

• Member, Patrick E. Higginbotham Inn of Court, Dallas, Texas (1997-2000)

• Research Fellow of the Southwestern Legal Foundation

• Member, District of Columbia Bar, admitted 1983

• Member, State Bar of Texas, admitted 1984

Board of Directors (2001-04)Continuing Legal Education Committee (Chair - 1997-2000)Litigation Section Council (Chair - 2001-02) (Previously served as Vice-Chair, Secretary and Treasurer)Special Committee to Nominate ABA Delegates (1999-2000)Board of Bar Examiners, District 6, Committee on Admissions (1999-2000)Grievance Committee, District 6A (1992-96) (Chair, Evidentiary Panel - 1996)Sunset Committee Minorities in the Profession Committee Texas Minority Counsel Committee

• American Bar Association

Chair - Committee of the Litigation Section Council on Diversity (2000-2001)Liaison from the Litigation Section to the ABA Committee on Racial and Ethnic Diversity inthe Profession (2000-2001)

Co-Chair, Americans With Disabilities Act Subcommittee of the EmploymentLabor Relations Law Committee (2000-2003)

Co-Chair, Litigation Section Annual Meeting (1998)Member, Litigation Section Council (1999-2002)Standing Committee on Continuing Education of the Bar (2000-2003)Advisory Committee - Litigation Section (1999-2000)Standing Committee on Meetings and Travel (1997-2000)ABA Commission on Women in the Profession (1994-97)Litigation Section Advisory Committee on Nominations (1999)

Co-Chair, Public Dialogue Task Force (1997) Planning Committee, Conference on the Woman Advocate (1993-1995)

Task Force on the Minority Trial Lawyer (1994-99)Gavel Awards Committee

(Standing Committee - 1992-1996; Screening Committee 1996 to date)

• Dallas Bar AssociationJudiciary Committee (Co-Chair - 1997-98 and Vice-Chair - 1996-97)Minority Participation CommitteeSpeakers CommitteeStrategic Planning Committee

• Regional Advisory Council, American Arbitration Association (1997-99)• Member of the Civil Justice Reform Act Advisory Committee of

the United States District Court for the Northern District of Texas (1995-97)• Chair - Subcommittee on Revisions to the Summary Judgment Rule (1997)• Committee for a Qualified Judiciary• J.L. Turner Legal Society• Dallas Association of Black Women Attorneys• Texas Women Lawyers

ADMISSIONS TO PRACTICE

• United States Supreme Court• Supreme Court of Texas• District of Columbia Bar• Fifth, Fourth and Eighth Circuit Courts of Appeals• United States District Court for the Northern District of Texas

HONORS

• High Profile Lawyer of Dallas, Dallas Bar Association, February 2000• Presidential Citation, State Bar of Texas (Recognized outstanding contributions as chair of the

Continuing Legal Education Committee of the State Bar) 2000• Featured in Successful “Pathways to Leadership” in the ABA, Goal IX Update , ABA

Commission on Women in the Profession, February 2000 • Gene Cavin Award for Excellence in CLE - State Bar of Texas

(Awarded annually to a Texas lawyer to recognize excellence in contributions tocontinuing legal education) 1999

• Significant Women of Dallas 1999• Outstanding Alumnae of Georgetown University Law Center (Recognized the first year this

award was instituted by the law school) 1998• Litigation All-Stars, 1998, 1999, 2000 (Recognized as one of the State Bar of

Texas’ top continuing legal education speakers)

CIVIC AND COMMUNITY SERVICE ACTIVITIES

• Trustee - Board of Regents, Georgetown University, Washington, DC• Trustee - Paul Quinn College, Dallas, Texas

• Board - Greater Dallas Chamber of CommerceExecutive Committee (1998-2000)Chair of Member Services - 2000Board Liaison - Dallas Women’s Covenant - 2000Chair - Nominating Committee - 1999Chair - Marketing and Administration Committee - 1998

• Board - Leadership Dallas Association - 2000• Board - Dallas 2012 Olympic Committee• Board, Executive Committee and Secretary - Dallas Museum of Art• Board - Hockaday School (1994-2000)• Board - Zale Lipshy Hospital• Board and Executive Committee - Victim's Outreach• Board - Junior League of Dallas (1994 and 1996); member since 1990• Member of Georgetown University Law Center

National Law Alumni Board

Formerly served on the Boards (and Executive Committees of several) of:

• Bryan’s House /Open Arms (AIDS House for Children)• Center for Nonprofit Management• Dallas Child Guidance Center• CHANCE Center• Incest Recovery Center• Troy Aikman Foundation

LAW RELATED PUBLICATIONS AND LECTURES

Author/Lecturer:

Texas Practice Guide (co-authored with Judge A. Hedges) Published in 1999How the Fair Credit Reporting Act Expands the Privacy Rights of Employees, ALI-ABA

Business Law Course Materials Journal, December 2000, Vol. 24, No. 6Women Rainmakers: How to Become a Successful Rainmaker,

Leadership and Management Directions, American Bar Association,Law Practice Management Section, Fall 1997, Vol. 8, No. 1

24th Annual ALA-ABA Course of Study: Employment & Labor Relations Law for theCorporate Counsel and the General Practitioner, American Law Institute -American Bar Association Committee on Continuing Legal Education, January2001, San Francisco, CA

Emerging Issues in Employment Law and Litigation, American Law Institute-AmericanBar Association Committee on Continuing Legal Education, September 2000,

Washington, DC23rd Annual ALA-ABA Course of Study: Employment & Labor Relations Law for the

Corporate Counsel and the General Practitioner, American Law Institute-American Bar Association Committee on Continuing Legal Education, May 2000,Chicago, Illinois

Demonstrative Evidence, American Law Institute-American-Bar Association Committee on Continuing Legal Education, June 2000

The New Rules of Discovery: Issues for Business, Personal Injury and Family Law Litigators - Written Discovery Under the New Texas Rules of Civil Procedure - 1999

WJF Institute’s Management and Leadership Workshop -Women in Marketing - 1999

Litigation All-Stars (Annual Meeting)New Rules of Discovery Update - 1999

CHRIS GRIESELRule Attorney, Supreme Court of Texas

P.O. Box 12248Austin, Texas

(512) [email protected]

Chris Griesel was raised in the rural ranching community of Dallas. He attended the best littlecow colleges in Texas: Texas A&M and Texas Tech School of Law. Besides being Order of the Coifand editor-in-chief of his law review, he also worked as a night watchman for Lubbock’s greatestattraction: Prairie Dog Town. Boy, the tales he can tale. (Pun intended). He was a briefing attorney forChief Justice Phillips in 1988-1989 and worked for Haynes and Boone as an appellate lawyer for threeyears after that.

He spent eight years at the Texas Legislative Council as an attorney drafting legislation andcounseling members and their staffs in many areas. His areas of practice included local government law,higher education law and “sin”- a combination of alcoholic beverage, gambling, and entertainmentregulation and ethics.

In September 2000, he rejoined the Texas Supreme Court as the court’s rules attorney and assiststhe Court in the process of drafting rules and orders adopted by the Court. He also answers questionsfrom the lawyers and others on the rules and the rulemaking process. He is a frequent lecturer on theCourt’s rules, higher education law, legislative process and legal ethics.

He is married to a woman who is a much better lawyer than he is. (Her quote: “I’m atrial lawyer, you’re a litigator.”) They have two wonderful children who are occasionallythreatened with boarding school. If he were a tree, he believes he would be an oak.

Paul J. Van OsselaerHughes & Luce, L.L.P.

111 Congress Avenue, Suite 900Austin, Texas 78701

(512) 482-6800

Education

B.A., University of Texas, 1971

J.D., University of Texas, 1975

Employment

Partner, Hughes & Luce, L.L.P.

Principal Activities and Honors

Civil Justice Reform Act Advisory Committee, U.S. District Court for the Western District of Texas

Admissions Committee, U.S. District Court for the Western District of Texas, Austin Division

Insurance Coverage Committee, ABA Section of Litigation (Co-Chair, Bad Faith Subcommittee)

Federal Procedure Committee, ABA Section of Litigation

Listing, Best Lawyers in America, "Business Litigation" category

Recent CLE Presentations and Articles:

Chair, 1998 Advanced Evidence and Discovery Seminar (State Bar of Texas)Speaker, 1996 Advanced Evidence and Discovery Seminar (State Bar of Texas)Speaker, 1996 Advanced Civil Trial Seminar (State Bar of Texas)Speaker, 1996 Spring Meeting of Texas Association of Defense CounselSpeaker, 1995 Products Liability Conference (University of Texas)Speaker, 1994 Advanced Evidence and Discovery Seminar (State Bar of Texas)Author, "Linking Tort Reform and Insurance: A Harbinger from Texas?" Vol. 5, No. 5, Coverage 7 (Insurance Coverage Committee of the ABA Section of Litigation, Sept./Oct. 1995)

Discovery Update (Including Sanctions & Privileges) - 1998Advanced Evidence and Discovery Law Course:

A Survey of Texas Law on Privilege - 2000, 2001Written Discovery Under the New Rules: Drafting Effective Requests and Proper Responses - 1999, 2000Sanctions - 1996-97, 1997-98The New Federal Rules - 1994Course Moderator - 1993Bills of Exception - 1991-92Supplementation - 1990-91

Advanced Commercial and Consumer Law CourseNew Discovery Rules for the Consumer/Commercial Lawyer - 1999

Advanced Civil Trial Law Course:Business Litigation Update - 2001Survey of the Law of Privilege in State and Federal Courts in Texas - 2000Discovery Update - 1997, 1998, 1999Scope of Discovery - 1990, 1991, 1992, 1993, 1995, 1996Coordination of Discovery Techniques - 1994

Jury Persuasion Institute 1997:Persuasive Presentation of Evidence

Advanced Family Law Course:Preparing Witnesses for Depositions in Divorce Cases - 1995Supplementing Discovery Responses - 1994

Litigation Update Institute:New Discovery Rules Update - 1999Discovery Update - 1995, 1996, 1997, 1998, 1999, 2000Scope of Discovery - 1994

The Center for Nonprofit Management:Legal Duties & Responsibilities of Board Members -1998, 1999

Advanced Women and the Law Course:Federal Rules Update - 1996

19th Annual Page Keeton Products Liability & Personal Injury Law Conference:

Recent Developments in Texas Procedure & Discovery - 1995The Ultimate Trial Notebook: Persuasive Presentation of Evidence:

Motions in Limine - 1994Selected Issues in Family Law and Civil Litigation - Scope of Discovery - 1994The Ultimate Trial Notebook: Personal Injury Law:

The Art of Cross Examination - 1994Texas Association of Defense Counsel

Spring Program - Presentation - Primer on Civil Litigation for TortLawyers - 1998Fall Program - Scope of Discovery - 1993

Advanced Personal Injury Law Course - Evidence Update - 1993

The Ultimate Trial Notebook: Masters of TrialEffective Cross-Examination - 1993

The Ultimate Pre-Trial Notebook - Judgments/Dismissals/Nonsuits - 1992

Dealing with Confidential and Proprietary Information Chapter 16

i

TABLE OF CONTENTS

I. INTRODUCTION AND OVERVIEW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1A. Scope of This Article . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1B. The Main Things to Remember . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

II. PRACTICAL CONSIDERATIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1A. Strategy and Tactics . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1B. Do Not Forget the “Law of Unforeseen Consequences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

III. PRIVILEGES AND CLAIMING PRIVILEGE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1A. The Attorney-Client Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

1. General Parameters - Texas . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12. No Anticipation of Litigation Requirement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13. Extends to Preliminary Pre-Hiring Discussions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24. Who Is the “Client”? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

a. Client as Defined Under the “Subject-Matter” Test . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2b. Privilege Belongs To The Corporation; Not To An Individual Employee of A Corporation

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2c. Trustee Is the Client When the Trustee Seeks Legal Advice to Administer a Trust

on Behalf of a Beneficiary . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2d. A Governmental Body may be a “Client” . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

5. Who is a “Lawyer”? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26. What is a “Communication”? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

a. Underlying Facts and Documents Are Not Privileged, Even If Communicated to theLawyer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

b. An Attorney’s Computer Files Containing Work Product are Not “Communicationsbetween Attorney and Client” . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

7. What Communications are “Confidential”? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38. Exceptions to the Attorney-Client Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

a. The Crime-Fraud Exception . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3b. Breach of a Duty by the Lawyer or Client to the Other . . . . . . . . . . . . . . . . . . . . . . . . . . 3c. The Joint-Client or Joint-Defense Exception . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

9. The Privilege Continues After the Client’s Death . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4B. The Work Product Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

1. Work Product Defined . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4a. Texas Definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4b. Continuing Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4c. “In Anticipation of Litigation” . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

2. Protection for Work Product . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43. Need and Hardship Exception for Non-Core Work Product . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 54. Work Product Exceptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 55. Waiver . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

C. The Consulting Expert Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51. New Rule . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 52. No Substantial Need Test . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

D. The Trade Secret Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51. What is a Trade Secret? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

a. Customer Lists . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6b. Supplier Lists . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

2. How does a Party Prove the Existence of a Trade Secret? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63. Under What Circumstances Will a Court Compel Disclosure of a Trade Secret . . . . . . . . . . . . . . . . 64. Waiver of Trade Secrets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

E. Husband-Wife Communication Privilege-Rule 504 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7F. Clergy Communicant Privilege- Rule 505 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8


ii

G. Physician-Patient Privilege - Rule 509 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 81. The Physician/Patient Privilege Protects Identities from Discovery . . . . . . . . . . . . . . . . . . . . . . . . . 82. The Physician/Patient Privilege Belongs to the Patient - Not The Physician . . . . . . . . . . . . . . . . . . 83. Exceptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

H. The Mental Health Privilege-Rule 510 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8I. Self-Evaluation or Self-Critical Analysis Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8J. Invoking and Proving a Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

1. Asserting A Privilege Under Texas Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82. Request for a Log . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 93. The Privilege Log . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

a. The Procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9b. Preparing the Log . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9c. Exemptions from Current Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

4. Getting Behind a Privilege Assertion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95. Proof and Burdens . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

a. Requesting a Hearing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10b. Proof - Affidavits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10c. Proof - In Camera Review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10d. Burden Shift . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10e. Reviewing An Order Requiring The Production of Privileged Documents . . . . . . . . . . . 10

K. Protecting Privileged Documents Inadvertently Produced . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

L. No Offensive Use of Privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

IV. PATENTS AND RELATED INFORMATION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

V. TRADE SECRETS: RULE 76a AND PROTECTIVE ORDERS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11A. A Tale of Two Rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11B. Rule 76a . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

1. Overview of the Rule . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112. What are "Court Records?" . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

a. Documents Filed of Record . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12b. Settlement Agreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12c. Unfiled Discovery . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12d. Retention Policies and Lawyers' Files As Court Records . . . . . . . . . . . . . . . . . . . . . . . . 12e. The interplay between Rule 76a and Rule 192.6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

1. The Rules. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142. General Tire v. Kepple. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 143. Standard for a Sealing Order . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144. Motion and Notice Requirement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 155. The Hearing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156. Non-party Intervention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167. Temporary Sealing Orders . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168. The Sealing Order . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169. Continuing Jurisdiction and Modification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1610. Immediate Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1611. Burden Issues . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

12. Family Law Cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1713. Constitutional Issues . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

C. Rule 192.6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181. Authority of the Court . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 182. Required Showing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 183. Who May Seek an Order . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 184. When is a Motion Required? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 185. Content of Motion and Order . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 196. Trade Secrets and Rule 192.6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19


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7. "Umbrella"confidentiality Orders . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 208. Modification of a Protective Order . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 209. Constitutional Issues . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

D. Confidentiality Agreements Without Orders . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

VI. THE ELECTRONIC JUNGLE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21A. The Internet . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21B. Cell Phones And E-mail . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21C. Computerized And Electronic Data, And Rule 196.4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

VII. THE IMPACT OF THE “NOT SO NEW” DISCOVERY RULES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21A. A Brief History: Whence they Came and How They Seem to be Working . . . . . . . . . . . . . . . . . . . . . . . . . . 21B. Three Broad Areas of Significant Change (In Scope of Discovery) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

1. Proportionality . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 212. Work Product . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 213. Protective Orders . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

C. Rule 193 - Making Objections and Asserting Privileges: Summary of Changes . . . . . . . . . . . . . . . . . . . . . . . 221. Affirmative Duty to Respond . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 222. Procedures for Asserting Privileges . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 223. Elimination of Prophylactic Objections and Privilege Claims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 234. Other Restrictions on Gamesmanship With Objections . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

5. New Inadvertent Disclosure and Supplementation Rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 236. Presumption of Authenticity

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

VII. RESPONDING TO DISCOVERY, MAKING OBJECTIONS, ASSERTING PRIVILEGES: RULE 193 . . . . . . . . . 24A. A Full Response is Required. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

1. Full Response. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 242. Complying with Non-Objectionable Discovery. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 243. Restate Request. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

B. Procedure for Objecting to Written Discovery under Rule 193 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 241. Object. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 242. Timely. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 243. Basis. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 244. Amend/Supplementation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 245. Waiver. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 246. Good Faith. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

C. Examples of Objections. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 241. Time and Place. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

a. Objection to Time and Place of Production - Proper Objection . . . . . . . . . . . . . . . . . . . 25b. Objection to Time and Place of Production - Improper Objection . . . . . . . . . . . . . . . . . 25

2. General Objections. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25a. General Objections - Objection to Part of a Request . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25b. General Objection - Example of an Improper General Objection . . . . . . . . . . . . . . . . . . 25c. General Objections - Objection to an Entire Request . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

D. Asserting a Claim of Privilege under the New Rules. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

1. Asserting a privilege. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252. Examples - Assertion of Privilege. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

a. Proper Assertion of Privilege in Response . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26b. Proper Assertion - Withholding Statement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26c. Improper Objection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

3. Obtaining what’s Behind the Privilege. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 264. Responding to the Request for Details on the Information Being Withheld. . . . . . . . . . . . . . . . . . . 26

E. Handling Privileged Documents When the Document Concerns the Present Litigation . . . . . . . . . . . . . . . . . 261. Files in the Litigation at Issue. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26


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2. Undiscoverable Documents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 262. Affirmative Duty to Return. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

IX. ADDRESSING PRIVILEGE RULINGS BY MANDAMUS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

X. JOINT DEFENSE AGREEMENTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

XI. THE MEDIATION PRIVILEGE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

XII. CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27


1

DEALING WITH CONFIDENTIAL ANDPROPRIETARY INFORMATION

I. INTRODUCTION AND OVERVIEWA. Scope of This Article

This article, which is limited to consideration ofTexas Law, discusses dealing with confidential andproprietary information. Any mention of federal law ispurely incidental. The article is structured and presentedas an overview, fairly broad in scope, but clearly definedby the various headings and sub-headings which appearin the body of the article [and are reflected in the table ofcontents]. It consists, in roughly equal parts, of somediscussion of applicable law, various comments in thegeneral nature of practice tips, and a fairly broad overviewof the designated topic designed to enhance the level ofawareness of a practicing lawyer. Though somewhatdetailed in its discussion of the topical material dealingwith confidential and proprietary information this articleis by no means an exhaustive treatise in this area.

B. The Main Things to RememberThere are really two main things to remember when

dealing with confidential and proprietary information.First, identify it; and, second, protect it.

Identification starts with being constantly aware ofthe two main points. Identification requires also aconstant vigilance to seek out and identify all confidentialand proprietary information at the earliest possible pointin time.

Protection requires a different type of vigilance.Protection requires safeguarding against any improperdisclosure, whether it be inadvertent or otherwise; and, inthe context of litigation, protection requires knowledge of,and appropriate use of, various laws and procedural rules,many of which may be highly technical in nature.

II. PRACTICAL CONSIDERATIONSA. Strategy and Tactics

When dealing with confidential and proprietaryinformation it is important to think carefully, especially inconnection with any litigation, or any potential litigation,before acting. This is equally true for both plaintiffs anddefendants.

From the plaintiff’s perspective, one potential hazardcan be the risks of “winning the battle, but losing thewar.” This could occur, for example, if a plaintiff sues adefendant and prevails, but in the process is compelled todisclose proprietary or trade secret information which ismuch more valuable than the amount recovered by thatplaintiff in the lawsuit. From a strategic point of view, itmight well be best to refrain from bringing such a lawsuit.

Defendants, too, may face similar dilemmas. Theycannot control the filing of a suit, perhaps, but they canexercise some control over what issues are interjected into

a lawsuit; and sometimes they can take steps to preventa suit from being filed. A potential defendant, if trying toprotect proprietary or trade secret information frompossible disclosure through discovery, may choose toresolve a claim through pre-suit negotiations. Adefendant, once sued, may elect to forgo pleading somedefenses or counter-claims if, by pleading them, issueswill be raised that might permit an opponent to discoverhighly valuable proprietary or trade secret information. B. Do Not Forget the “Law of Unforeseen

ConsequencesWhen dealing with confidential and proprietary

information it is important, as always, to remember the“Law of Unforeseen Consequences.” Doing, or refrainingfrom doing, one thing, may lead, in consequence, to theoccurrence of unforeseen consequences. Nobody canforesee the future with perfect clarity, no matter how hardthey may try to do so. This is a good reason, even if therewere no other good reasons, to proceed with care whendealing with confidential and proprietary information.

Perhaps the case of Doubleday vs. Rogers, 674

S.W.2d 751 (Tex.1984) is a good an example as any of theapplication of the “Law of Unforeseen Consequences” inaction. Plaintiff Rogers brought a libel suit againstdefendant Doubleday, and the jury found for plaintiff andrendered a substantial punitive damages verdict. Plaintiffdid not plead for, or seek, recovery of any actual damages.This decision was app arently made by plaintiff in order tolimit issues so as to preclude any possibility of defendantobtaining through discovery any confidential orproprietary information about plaintiff’s income orbusiness dealings. Only punitive damages were soughtin plaintiff’s petition. See Rogers v. Doubleday, 644S.W.2d 833, 834 (Tex.App.- - Beaumont 1982). At theconclusion of trial, and with the jury awarding exemplarydamages in the amount of $2,500,000, the trial court signeda judgment favoring the defendant, and this take-nothingjudgment was ultimately affirmed by the Supreme Court ofTexas, see 674 S.W.2d 751, because of the rule of Texaslaw that, generally, punitive damages are not recoverablein the absence of actual damages. Id. at 753-754.

III. PRIVILEGES AND CLAIMING PRIVILEGEA. The Attorney-Client Privilege1. General Parameters - Texas

Texas Rule of Evidence 503 codifies the attorney-

client privilege. This privilege protects confidentialcommunications between an attorney and client relatingto the attorney’s rendition of legal services. See TEX. R.EVID. 503(b); Huie v. DeShazo, 922 S.W.2d 920, 922 (Tex.1996). This is one of the oldest privileges of confidentialcommunications in the common law. Ford Motor Co. vLeggat, 904 S.W.2d 643, 647 (Tex. 1995). The client, theclient’s representative, or the attorney on behalf of theclient may assert the privilege. See TEX. R. EVID. 503(c).

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A client has a privilege to refuse to disclose and toprevent any other person from disclosing confidentialcommunications made for the purpose of facilitating therendition of professional legal services to the client.TEX.R. EVID. 503(1).

In criminal cases, a client has a privilege to presentthe lawyer or lawyer’s representative from disclosing anyother fact which came to the knowledge of the lawyer orthe lawyer’s representative by reason of the attorney-client relationship. TEX. R. EVID. 503(2).

2. No Anticipation of Litigation Requirement Unlike the work product privilege, the attorney-client

privilege is not limited solely to communications made inanticipation of litigation. In re Texas Farmers Ins. Exch.,990 S.W.2d 337, 340 (Tex. App-Texarkana 1999, leavedenied).

3. Extends to Preliminary Pre-Hiring DiscussionsUnder Texas law, the attorney-client privilege

extends to all preliminary confidential communicationsbetween a lawyer and the potential client made for thepurpose of the client obtaining legal advice. Communi-cations are protected even if the attorney has not beenhired or retained at the time the communication is made.Hart v. Gossum, 995 S.W.2d 958, 962 (Tex. App.--FortWorth 1999, orig. proceeding).

4. Who Is the “Client”?a. Client as Defined Under the “Subject-Matter” Test

Texas has adopted the “subject matter” test todetermine who qualifies as a representative of a corporateclient entitled to assert the privilege. Prior to March 1,1998, the Texas attorney-client privilege extended only tothose in a corporation’s “control group.” The controlgroup was narrowly defined to include only thoseemployees with authority to obtain legal services for thecorporation or to act on legal advice on behalf of thecorporation. See TEX. R. EVID. 503(a)(2) (repealed March1, 1998); National Tank Co. v. Brotherton, 851 S.W.2d193, 197 (Tex. 1993) (noting that the “control group” testgenerally protects communications made between theattorney and the “upper echelon” of a corporation).

Effective March 1, 1998, Rule 503 was amended toincorporate the “subject matter” test for determining whoqualifies as a representative of a corporate client. See

TEX. R. EVID. 503 (comment to 1998 change). New Rule503(a)(2) defines a “representative of the client” to includethose in the corporation’s control group and

any other person who, for the purpose ofeffecting legal representation for the client,m a k e s o r r e c e i v e s a c o n f i d e n t i a lcommunication while acting in the scope ofemployment for the client.

TEX. R. EVID. 503(a)(2)(B)

b. Privilege Belongs To The Corporation; Not To AnIndividual Employee of A CorporationLike individuals, corporations have a right to refuse

to disclose privileged attorney-client communications.C.F. Upjohn v. United States, 449 U.S. 383 (1981); Nguyenv. Excel Corp, 197 F. 3d 200, 206 (5th Cir. 1999). c. Trustee Is the Client When the Trustee Seeks Legal

Advice to Administer a Trust on Behalf of aBeneficiaryIn Huie v. DeShazo, 922 S.W.2d 920 (Tex. 1996), the

Texas Supreme Court held that the attorney-clientprivilege protected communications between a trustee anda lawyer the trustee retained to offer legal advice relatingto the administration of a trust. In Huie, a trustbeneficiary sued the trustee for breach of his fiduciaryduties relating to the administration of the trust. Duringdiscovery, the beneficiary deposed a lawyer hired by thetrustee to offer advice relating to trust administrationissues. The lawyer refused to answer several questionsregarding the content of communications between thetrustee and lawyer on the basis of the attorney-clientprivilege. Id. at 922.

The Supreme Court of Texas upheld the invocationof the attorney-client privilege, holding that the trustee’sfiduciary duty of disclosure to the trust beneficiary didnot override the privilege between the trustee and hisattorney. Id. at 923. Although the trustee must discloseall “material facts” to the beneficiary, this duty does notinclude disclosing confidential communications, such aslegal advice from the attorney. Id. The Court made clear,however, that the attorney-client privilege would notprotect facts communicated by the trustee to the attorneyof which the client had knowledge independent of thecommunication. Id . In other words, “a person cannotcloak a material fact with the privilege merely bycommunicating it to an attorney.” Id. The Court alsoemphasized that its holding did not release the trusteefrom his obligation to disclose all material facts relating tohis administration of the trust. Id.

d. A Governmental Body may be a “Client”Rule 503 defines “client” to include public

organizations or entities. TEX. R. EVID. 503(a)(1). Thus, acity council, Markowski v. City of Marlin, 940 S.W.2d720, 726-27 (Tex. App.--Waco 1997, pet. denied) (notingthat TEX. GOV’T CODE § 551.071 allows a governingbody to consult with an attorney about pending orcontemplated litigation), or a County CommissionersCourt, Hart v. Gossum , 995 S.W. 958 (Tex. App.--FortWorth 1999, orig. proceeding), may be the client.

5. Who is a “Lawyer”? The Texarkana Court of Appeals has held that the





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at torney-c l ien t pr iv i lege does not apply tocommunications made between a lawyer and the lawyer’sclient if the attorney is acting in a capacity other than anattorney. In re Texas Farmers Insurance Exchange, 990S.W.2d 337 (Tex. App.-Texarkana 1999, leave denied).The court of appeals found that only the attorney’sinvestigation after the claim was denied was privilegedbecause it was work product. The court held that pre-denial communications were not work product, aslitigation was not yet anticipated; nor were they attorney -client communications, because the lawyer was acting asan investigator rather than a lawyer. The court noted thata blanket privilege would allow insurance companies to“simply hire attorneys as investigators at the beginningof a claim investigation and claim privilege as to all theinformation gathered.”

It is well established that a lawyer must be acting asa lawyer to claim the benefit of the privilege. See Goode,et al., 1 TEXAS PRACTICE: TEXAS RULES OF EVIDENCE 332(2d edition 1993 & supp. 1999) (noting that the privilegeis inapplicable if the attorney is acting in a capacity otherthan an attorney, such as an accountant, bail bondsman,or friend.) See also Huie, 922 S.W.2d at 926-27 (remandingto determine whether lawyer was providing accounting orlegal services). 6. What is a “Communication”?a. Underlying Facts and Documents Are Not

Privileged, Even If Communicated to the LawyerRule 503 allows a client to refuse to disclose (and

prevent others from disclosing) “communications”between lawyers, clients and their representatives.

The privilege does not extend to the disclosure ofunderlying facts. The privilege only protects confidentialattorney-client communications. In re Texas Farmers Ins.Exch., 990 S.W.2d 337, 341 (Tex. App.--Texarkana 1999,orig. proceeding); Huie, 922 S.W.2d at 923. Similarly,documents are not covered by the attorney clientprivilege simply because they are passed to a lawyer andmaintained in the lawyer’s files. C.F. Smith v. Texaco, 186F.R.D. 354, 356 (E.D. Tex. 1999) (employer’s internal studyof race and employment not protected by the attorneyclient privilege even though the information wasorganized under the direction of counsel in anticipation oflitigation); see also National Union Fire Ins. Co. ofPittsburgh v. Valdez , 863 S.W.2d 458, 460 (Tex. 1993)(party does not cloak document with attorney-clientprivilege simply by forwarding it to her attorney).

b. An Attorney’s Computer Files Containing WorkProduct are Not “Communications betweenAttorney and Client”In In re Bloomfield Mfg. Co. , 977 S.W.2d 389 (Tex.

App.--San Antonio 1998, orig. proceeding), the SanAntonio Court of Appeals rejected a claim that a computer

database containing an attorney’s opinions as to thenature of the plaintiffs’ claims, the injury, and the ultimatelikelihood of success of each claim was a“communication” between the attorney and clientprotected by the attorney-client privilege. Id. at 392.Although the court based its determination on the factthat the party asserting the privilege had offered no“proof’ that the database was a communication, the courtalso noted that an “instrument” protected by theattorney-client privilege is one that “owe[s] its existenceto an effort to transmit information from one to the other.”Id. (Citing Suddarth v. Poor, 546 S.W.2d 138, 141 (Tex.Civ. App.--Tyler 1977, writ ref’d n.r.e.)). CompareBloomfield with Pittsburgh Corning Corp. v. Caldwell,861 S.W.2d 423, 425 (Tex. App.--Houston [14th Dist.] 1993,orig. proceeding) (holding that memorandum from claimsdirector to the lawyer is privileged) and Enos v. Baker , 751S.W.2d 946 (Tex. Civ. App.-Houston [14th Dist.] 1988, orig.proceeding) (holding that an attorney’s “client files,”presumably containing communications between theattorney and client, are privileged). The Bloomfield court,however, protected the database as work product. Id.

7. What Communications are “Confidential”?T exas Rule 503(a)(5) defines a “confidential”

communication as one “not intended to be disclosed tothird persons other than those to whom disclosure ismade in furtherance of the rendition of professional legalservices . . . .” Carmona v. State, 947 S.W.2d 661, 663(Tex. App.--Austin 1997, no writ).

8. Exceptions to the Attorney-Client Privilegea. The Crime-Fraud Exception

The crime-fraud exception to the attorney-client privilege applies “[i]f the services of the lawyer weresought or obtained to enable or aid anyone to commit orplan to commit what the lawyer knew or reasonablyshould have known to be a crime or fraud.” TEX. R. EVID.503(d)(1).

In order to establish the crime-fraud exception, theparty seeking to destroy the privilege must present primafacie proof that the client was engaged in an ongoingcrime or fraud or was seeking to commit a crime or fraud.Granada Corp. v. Honorable First Court of Appeals, 844S.W.2d 223, 227 (Tex. 1992). A mere allegation of fraud inthe pleadings is not enough to establish a prima facie

case. In re Monsanto Co., 998 S.W.2d 917, 934 (Tex.App.--Waco 1999, orig. proceeding).

b. Breach of a Duty by the Lawyer or Client to theOtherTEX. R. EVID. 503(d)(3) eliminates theprivilege “[a]s

to a communication relevant to an issue of breach of dutyby a lawyer to the client or by a client to the lawyer.” SeeJudwin Properties, Inc. v. Griggs & Harrison, P.C., 981

















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S.W.2d 868 (Tex. App.--Houston [1 s t Dist.] 1998, pet.denied per curiam, 11 S.W.3d 188 (Tex. 2000).

c. The Joint-Client or Joint-Defense ExceptionThe joint-client exception removes the privilege “as

to a communication relevant to a matter of commoninterest between two or more clients if the communicationwas made by any of them to a lawyer retained orconsulted in common, when offered in an action betweenor among the clients.” TEX. R. EVID. 503(d)(5).

In In re Valero Energy Corp., 973 S.W.2d 453 (Tex.App.--Houston [14th Dist.] 1998, orig. proceeding), theFourteenth Court of Appeals determined whether theexception applied in a lawsuit between two parties to ajoint venture.

A partner to a joint venture to operate a gas pipelinesued the other joint venture partner for diverting financialopportunities and profits belonging to the joint venture.

During discovery, the defendant partner refused todisclose certain documents prepared by the defendants’in-house attorneys, invoking the attorney-client privilege.The plaintiff responded that the documents were preparedfor the benefit of the joint venture and therefore fell withinthe “joint-client” exception to the attorney-client privilege.Id. at 458.

The court ruled that plaintiff had failed to establishthat the joint venturers were “joint clients” of thedefendants’ in-house attorneys. Id.

T he court in In re Monsanto, 998 S.W.2d 913(Tex.App. - - Waco 1999, orig. proceeding), addressed theapplicability of the joint defense privilege under Tex. R.Evid. 503(b)(1)(C). The court recognized that the “jointdefense” privilege is included within the attorney-clientprivilege and covers:

Confidential communications made for thepurpose of facilitating the rendition of legalservices by the client or a representative of theclient, or the client’s lawyer to a representativeof the lawyer, to a lawyer or a representative ofa lawyer representing another party in apending action concerning a matter of commoninterest therein.

998 S.W.2d at 922.

9. The Privilege Continues After the Client’s DeathIn Swidler & Berlin v. United States, 524 U.S. 399

(1998), the United States Supreme Court held that thefederal attorney-client privilege survives the death of aclient. The court based its decision on the rationale thatthe continuance of the privilege after the client’s deathfurthers the client’s intent, and encourages the client tocommunicate “freely and frankly” with his or her attorney .Id. at 2085-86. Swidler & Berlin’s interpretation of the

Federal Rules of Evidence is in agreement with the scopeof the attorney-client privilege in Rule 503 of the TexasRules of Evidence. See TEX. R. EVID. 503(c) (stating thatthe privilege may be claimed by a deceased client’srepresentative or the client’s attorney).

B. The Work Product PrivilegeThe new discovery rules codify the “investigative”

privileges, which were formerly set out in TEX. R. CIV. P.166b(3) and clarified in the case law. Several of thoseprivileges have been consolidated into the “workproduct” privilege, now codified at TEX. R. CIV. P. 192.5.The consulting expert privilege has been codified at TEX.R. CIV. P. 192.3(e). New Rule 192.5 clarifies and refines thedefinition of “work product” itself, eliminates the witnessstatement privilege; and offers different levels ofprotection for “core” versus “other” work product.

1. Work Product Defineda. Texas Definition

Rule 192.5(a) defines “work product” as materials

prepared and mental impressions developed inanticipation of litigation or for trial by or for a party or aparty’s representatives, and communications made inanticipation of litigation or for trial between or among aparty and the parties' representatives. A party’s“representatives” explicitly include its “attorneys,consultants, sureties, indemnitors, insurers, employees, oragents.” Thus, this rule encompasses all work product,whether it is a lawyer’s or client’s, an opinion or ordinarywork product, or party communications.

b. Continuing PrivilegeCombining party communications and attorney work

product into one work product privilege makes all trialpreparation privileges continuing privileges that a partymay assert in litigation other than the litigation in whichthe protected materials were prepared. Even under priorTexas practice, the attorney-client privilege and theattorney work product privilege were continuingprivileges. See Owens Corning Fiberglas Co. v.Caldwell, 818 S.W.2d 749, 750-52 (Tex. 1991).

Because the party communications rule hadlanguage that limited its application to the specific lawsuitfor which the communication was made, the partycommunication privilege was not continuing. See

Republic Ins. Co. v. Davis , 856 S.W.2d 158, 164 (Tex.1993). Consequently, while an attorney’s work productwas protected from discovery in later related cases,discovery was available for trial preparation materials thatwere party communications, but were not attorney workproduct. Rule 192.5 changes this: all work product is nowprotected in all subsequent cases, subject to the need andhardship exception for ordinary work product, or partycommunications.







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c. “In Anticipation of Litigation”A crucial definitional aspect of work product is the

requirement that it be prepared “in anticipation oflitigation or for trial.”See Rule 192.5(a)(1) and (2); In r eTemple-Inland, Inc., 8 S.W.3d 459, 462 (Tex. App--Beaumont 2000, orig. proceeding).

In its 1993 opinion National Tank Co. v. Brotherton,851 S.W.2d 193 (Tex. 1993) (orig. proceeding) (modifyingFlores v. Fourth Court of Appeals, 777 S.W.2d 38 (Tex.1989) (orig. proceeding)), The Supreme Court of Texasinterpreted the “in anticipation of litigation” requirementunder the Former Rule 166b.3 exemptions. The Courtstated a two-part test for determining whether aninvestigation was conducted in anticipation of litigation.First, the objective prong asks whether “a reasonableperson would have concluded from the totality of thecircumstances surrounding the investigation that therewas a substantial chance that litigation would ensue.” Id.at 195. Second, the subjective prong asks whether “theparty resisting discovery believed in good faith that therewas a substantial chance that litigation would ensue andconducted the investigation for the purpose of preparingfor such litigation.” Id.

The Supreme Court based its National Tank opinionon a thorough review of opinions and commentaryconstruing the requirement under Federal Rule of CivilProcedure 26(b)(3) and its state counterparts. NationalTank , 851 S.W.2d at 203-07. Because the new workproduct rule follows the federal rule, there is no reason tobelieve that the 1999 amendments affect National Tank ’sholding. Hence, National Tank and its progeny remainvalid law. See Oyster Creek Fin. Corp. v. Richwood Inv.II, Inc., 957 S.W.2d 640, 646 (Tex. App.--Amarillo 1997, pet.denied) (citing National Tank’s two-part test); Henry P.

Roberts Inv., Inc. v. Kelton, 881 S.W.2d 952, 955-57 (Tex.App.--Corpus Christi 1994, orig. proceeding) (applyingNational Tank’s two-part test).

2. Protection for Work ProductRule 192.5(b) specifies the protection provided to

work product. Subparagraph (1) provides the mentalimpressions and opinions of an attorney or attorney’srepresentative-called “core” work product with ultimateprotection: they are not discoverable.

Subparagraph (2) provides protection to other workproduct, but like the federal rule, also subjects it todiscovery upon a showing of need and hardship.Subparagraph (4) also tracks the federal rule-it cautionscourts to protect against discovery of opinion workproduct when ordering discovery under circumstances ofneed and hardship.

Subparagraph (3) is unique to Texas. It recognizesthat parties often argue that any discovery of workproduct under circumstances of need and hardship“incidentally discloses by inference attorney mental

processes. Rule 192.5(b)(3); see also Occidental Chem.Corp. v. Banales, 907 S.W.2d 488, 490 (Tex. 1995) (orig.proceeding) (per curiam). Nevertheless, it instructs thatsuch incidental inferential disclosure does not violatesubparagraph (1).

3. Need and Hardship Exception for Non-Core WorkProductThe primary exception to the work product doctrine

is the substantial need and undue hardship exception,which applies to all work product other than “core workproduct.” See Rule 192.5(b)(2). This exception is not newto Texas practice, as it previously applied to the witnessstatement and party communication exemptions. FormerRule 166b.3.

4. Work Product ExceptionsRule 192.5(c) contains a list of matters that are

exempt from the work product privilege. The rule provides:

Even if made or prepared in anticipation of

litigation or for trial, the following is not workproduct protected from discovery:

(1) information discoverable under Rule192.3 concerning experts, trial witnesses,witness statements, and contentions;

(2) trial exhibits ordered disclosed underRule 166 or Rule 190.4;

(3) the name, address, andtelephone numberof any potential party or any person withknowledge of relevant facts;

(4) any photograph or electronicimage ofunderlying facts (e.g., a photograph of theaccident scene) or a photograph or electronicimage of any sort that a party intends to offerinto evidence; and

(5) any work product created under circum-stances within an exception to the attorney-client privilege in Rule 503(d) of the Rules ofEvidence.

TEX. R. Civ. P. 192.5(c). Most of these exceptionsexisted to some extent prior to adoption of the newdiscovery rules. See Former Rule 166b(3)(a), (c), (e).

5. WaiverUnlike the attorney-client privilege, the work product

privilege is held by both the client and attorney, andeither one may assert it. Waiver by a client of the workproduct privilege will not deprive the attorney of her own









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work product privilege, and vice versa.C.F. In re GraveJury Proceedings, 43 F.3d 966, 972 (5th Cir. 1994)

C. The Consulting Expert Privilege1. New Rule

New Rule 192.3 preserves the former consultingexpert privilege from old Rule 166(b)(3). Rule 192.3(e)states:

The identity, mental impressions, and opinionsof a consulting expert whose mentalimpressions and opinions have not beenreviewed by a testifying expert are notdiscoverable.

TEX. R. CIV. P. 192.3(e). The new rule makes nosubstantive changes in the scope of the privilege. Like“core work product” the privilege is absolute; it is notsubject to the “substantial need” exception in Rule192.5(b)(2). However, because it is found in Rule 192.3,rather than Rule 192.5, it appears not to be subject to theexceptions of Rule 192.5(c).

At least one Texas Court has addressed theapplicability of the consulting expert privilege under newRule 192, when a designated testifying expert is re-designated as a consulting expert. The issue arose in Inre Doctors Hosp. of Laredo, 2 S.W.3d 504 (Tex. App.--SanAntonio 1999, (orig. proceeding) when discovery wassought of a doctor who was originally designated as atestifying witness, but later redesignated as a consultingexpert. None of the witnesses or testifying experts hadreceived any of the re-designated doctor’s opinions. Thecourt held that Rule 197.3(e) prevented discovery of theconsulting experts’ opinion as long as the opinions hadnot been reviewed by a testifying expert. Id. at 505. Thetestifying expert could be redesignated as long as it wasnot an effort to suppress evidence or for an improperpurpose.

2. No Substantial Need TestA party cannot obtain the opinions, work product,

or identity of a true consulting expert (one whoseopinions have not been reviewed by a test ifying expert)based on the substantial need test . See Tex.R.Civ.P.192.3(e); and c.f. General Motors v. Gayle, 951 S.W.2d 469(Tex. 1997).

D. The Trade Secret PrivilegeThe trade secret privilege is codified in Texas Rule of

Evidence 507. Rule 507 states:

A person has a privilege, which may beclaimed by the person or the person’s agent oremployee, to refuse to disclose and to preventother persons from disclosing a trade secret

owned by the person, if the allowance of theprivilege will not tend to conceal fraud orotherwise work injustice. When disclosure isdirected, the judge shall take such protectivemeasure as the interests of the holder of theprivilege and of the parties and the furtheranceof justice may require.

Questions likely to arise under this rule are: (1) whatis a “trade secret” for purposes of Rule 507; (2) how doesa party resisting discovery prove the existence of a tradesecret; (3) under what circumstances will a court requiredisclosure of a trade secret under the exceptions in Rule507; and (4) what are the resisting party’s options to limitthe potentially harmful effect of disclosure of a tradesecret? These questions are addressed in turn.

1. What is a Trade Secret?Rule 507 does not define the term “trade secret.” In

a recent lawsuit based on misappropriation of tradesecrets, however, the Texas Supreme Court defined “tradesecret” as “any formula, pattern, device or compilation ofinformation which is used in one’s business and presentsan opportunity to obtain an advantage over competitorswho do not know [to] use it.” Computer Assocs. Int’l, Inc.v. Altai, Inc., 918 S.W.2d 453, 455 (Tex. 1996) (citingRESTATEMENT OF TORTS § 757). See also Seatrax v.Sonbeck Intern. Inc., 200 F.3d 358, 365 (5th Cir. 2000) (FifthCircuit recognizes this as the trade secret definition underTexas law). No court has specifically addressed whetherthis common-law definition of trade secret should applyto Rule 507.

However, in a concurring opinion in Chapa v.Garcia, 848 S.W.2d 667 (Tex. 1992), Justice Doggettinterpreted “trade secret” as used in Rule 507 to beconsistent with the Restatement definition. Id. at 670(Doggett, J., concurring) (listing the six factors set out inRESTATEMENT OF TORTS § 757 cmt. b as determinative ofthe existence of a trade secret); cf. Upjohn Co. v.Freeman, 906 S.W.2d 92, 96 (Tex. App.--Dallas 1995, nowrit) (applying the Restatement definition of trade secretwhen interpreting T EX. R. CIV. P. 76a regarding sealingorders). Unless and until the Texas courts specificallyaddress the issue, practitioners should consultmisappropriation of trade secrets cases when definingtrade secret as used in Rule 507.

a. Customer ListsOdell Geer Construction Co. sought the discovery of

a customer list in litigation against a competitor in thecrushed-stone business (Frost) who proved that the listwas a trade secret, and the court entered an orderprohibiting any party from reviewing the list except theattorneys and experts. In re Frost, 998 S.W.2d 938 (Tex.App.--Waco 1999, orig. proceeding). Frost than filed a










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mandamus proceeding seeking to prevent the productionof the list on the basis that it was a trade secret.

The court conditionally granted the mandamus,finding that once a party resisting discovery establishesthat the information is a trade secret, the burden shifts tothe requesting party to establish that the information isnecessary for a fair adjudication of the claims. Id. at 939.Rule 507 contemplates a higher burden of proof than themere relevance of the information. Here, Geer did not meetits heightened burden of showing that the list wasnecessary for a fair adjudication of its claims. It arguedthat the list was necessary to an issue of “custom andusage” with customers, but no evidence of fairadjudication was presented.

b. Supplier ListsA supplier’s list of suppliers of hair care products

was found to be a trade secret in John Paul MitchellSystems v. Randalls Food Market, Inc., 17 S.W.3d 721(Tex.App. - - Austin 2000, n.pet.h.).

2. How does a Party Prove the Existence of a TradeSecret?A party resisting discovery on the basis of a trade

secret must persuade the court that the items requestedare indeed trade secrets, without revealing the trade secretitself to the requesting party or the public. In reContinental Gen. Tire Inc., 979 S.W.2d 609, 612 (Tex.1998); John Paul Mitchell Systems, v. Randalls FoodMarket, Inc., 17 S.W.721, 738-39 (Tex. App.--Austin 2000,n. pet. h.).

The resisting party should therefore first attempt toprove the existence of a trade secret through affidavits ortestimony that describe how the information sought isproprietary and sensitive, but not reveal the contents ofthe information. See, e.g., Automatic Drilling Machs., Inc.v. Miller, 515 S.W.2d 256, 260 (Tex. 1974) (noting that atrial court could determine trade secret status based on awitness’ “description of the secret processes and devicesin terms sufficiently general” to protect the resistingparty); Enron Oil & Gas Co. v. Flores , 810 S.W.2d 408,411-13 (Tex. App.--San Antonio 1991, orig., proceeding)(affirming the trial court’s reliance on expert testimonydescribing the “sensitive and secret” nature of annual gasreserve reports in general to determine whether thereports were trade secrets). The resisting party must atleast identify the particular document or material allegedto be a trade secret. See Chapa, 848 S.W.2d at 168; In reLeviton Mfg. Co. Inc, 1 S.W.3d 898, 902 (Tex. App.--Waco1999 orig. proceeding).

The resisting party’s affidavits or testimony mustamount to more than conclusory evidence or assertionsthat the information or material sought is a trade secret.See Automatic Drilling Machs., 515 S.W.2d at 260;Humphreys v. Caldwell, 881 S.W.2d 940, 946 (Tex. App.--

Corpus Christi, 1994, orig. proceeding), approved, 888S.W.2d 469 (Tex. 1994); see also Chapa, 848 S.W.2d at 671(Doggett, J., concurring) (noting that a “single secretaffidavit” cannot support trade-secret status as a matterof law). If affidavits or testimony are insufficient todetermine the privileged nature of the information, theresisting party may also request that the trial courtconduct an in camera inspection of the information,possibly aided by an expert. See id.

3. Under What Circumstances Will a Court CompelDisclosure of a Trade SecretAs noted by Justice Doggett in Chapa v. Garcia,

848 S.W.2d at 670-71 (Doggett, J., concurring) Rule 507’sprivilege is a “qualified privilege.”. Rather than provideabsolute protection of a trade secret, Rule 507 forbidsdisclosure of a trade secret only “if the allowance of theprivilege will not tend to conceal fraud or otherwise workinjustice.” TEX. R. EVID. 507.

In its opinion in In re Continental Gen. Tire, 979S.W.2d 609 (Tex. 1998), The Supreme Court of Texasclarified the circumstances under which trade secrets mustbe disclosed in litigation. The Continental Gen. Tire caseinvolved a products liability suit against the manufacturer(Continental Gen. Tire) of an allegedly defective tire.During discovery, the plaintiffs requested ContinentalGen. Tire’s formula for its “skim stock” rubber compound.Continental Gen. Tire used the compound to help bondthe inner and outer belts of its tires. Id. at 610. ContinentalGen. Tire objected to the plaintiffs’ request on thegrounds that the formula was a trade secret. In theensuing litigation, the parties agreed that the skim stockcompound was a trade secret. At issue was whetherdisclosure of the formula would work an “injustice”sufficient to protect Continental Gen. Tire under Rule 507.

The Supreme Court first noted that Rule 507 seeksto accommodate two competing interests: (1) theimportance of trade secrets as valuable property intereststhat are worthy of protection; and (2) the fair adjudicationof individual lawsuits. Id. at 612. The first interest isfurthered by the existence of the privilege itself. Thesecond interest is incorporated into the “injustice”exception in Rule 507. Thus the court imposed a burden-shifting scheme to incorporate both interests:

First, the party resisting discovery must

establish that the information is a trade secret.The burden then shifts to the requesting partyto establish that the information is necessaryfor a fair adjudication of its claims. If therequesting party meets this burden, the trialcourt should ordinarily compel disclosure ofthe information, subject to an appropriateprotective order.















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Id. at 613.

To determine whether disclosure of a trade secret isnecessary for a “fair adjudication of claims,” the Courtinvoked a balancing test: “[T]he trial court must weigh thedegree of the requesting party’s need for the informationwith the potential harm of disclosure to the resistingparty.” Id.

A party does not establish the requisite degree of“need” simply by demonstrating that the information isrelevant to its case. See Id. at 613 (“[B]ecause relevance isthe standard for discovery in general, . . . this approachlikewise would render Rule 507 meaningless.”). Instead,t he Court looked to the plaintiffs’ proffered reasons forobtaining the formula. The plaintiffs maintained that thecompound used in the tire at issue did not contain the“right ingredients”, and that compound used in the tire atissue improperly contained sulfur. Id. The Court rejectedthese reasons primarily because the plaintiffs failed tosupport them with expert testimony or other evidence.Specifically, the plaintiffs’ expert failed to show that heneeded the compound formula to determine whether thecompound contained the proper ingredients; the plaintiffshad no other compound for purposes of comparison; andthe plaintiffs presented no evidence to support theirtheory that the compound may have improperly containedsulfur. See Id.

With respect to the other side of the balance thepotential harm of disclosure -- a major factor to beconsidered is how effective a protective order is likely tobe in securing the particular trade secret. See id. at 614(rejecting the argument that a protective order can neveradequately protect against disclosure of a trade secret;instead, the “potential inadequacies” of a given protectiveorder should be accounted for when the court conductsits balancing test); see also Jampole v. Touchy, 673S.W.2d 569, 574-75 (Tex. 1984) (refusing to apply theprivilege because a protective order could adequatelysafeguard against leaking of the trade secret to the party’sbusiness competitors).

After Continental Gen. Tire, practitioners seeking tocompel disclosure of a trade secret should present well-supported reasons for needing the trade secret to provetheir case. These reasons should focus on the likelyactual impact of the secret on the party’s case, rather thanthe centrality of the secret to the party’s trial strategy.Parties seeking to avoid disclosure should attempt tospecifically point out, with supporting evidence ifpossible, how and why a protective order is unlikely to beeffective, given the facts of the particular case. SeeContinental Gen. Tire, 979 S.W.2d at 614 (noting that atrial court should be more willing to affirm nondisclosurewhen presented with “specific, fact-based grounds forbelieving that trade secrets may be disclosed in violationof its protective order”).

The Court in In re Leviton Mfg. Co. Inc., 1 S.W.2d898 (Tex. App.--Waco 1999, orig. proceeding), providedan excellent real world analysis of the shifting-burdenconcept in proving a trade secret:

The concept of “shifting burdens” and theway in which cases discuss it is oftenmisleading. The cases discuss that where ap arty establishes a given set of facts the“burden shifts” for the other party to provesome other fact. There is no discreet point atwhich the judge turns to the parties and says -“O.K. the trade secret privilege has beenestablished, the burden has shifted, now youmust establish that the information isnecessary for a fair adjudication of your claimsor defenses. There is only the one hearingwhen the evidence is submitted. Only after thetrial court has ruled can the niceties of a“shifting burden” be discussed and reviewed.It is incumbent upon the parties to anticipatewhat the evidence may establish and make theobjections and submit the evidence necessaryto establish each fact necessary to support therequested relief.

Id. at 902, n. 2.

4. Waiver of Trade SecretsThe court in In re Leviton Mfg. Co., 1 S.W.3d 898

(Tex. App.--Waco 1999, orig. proceeding) addressed theissue of whether the trade secret privilege had beenwaived. In response to an initial motion to compel seekingthe production of prototypes, the relators responded thatthe prototypes did not exist or to the extent they did exist,they had previously been produced. In response to asecond motion to compel, the relators realized that thescope of the discovery request had been broadened toinclude items protected from discovery by the trade secretprivilege and asserted a timely written objection inresponse to the request. Under these facts the courtfound that the privilege had not been waived.

E. Husband-Wife Communication Privilege-Rule 504Rule 504 provides that a person has a privilege

during marriage and afterwards to refuse to disclose andto prevent another from disclosing a confidentialcommunication made to the person’s spouse while theyare married. Sterling v. State, 814 S.W.2d 261 (Tex. App.--Austin 1991, writ ref’d). The privilege only protectsconfidential communications, not observed acts. C.F.Emery v. Johnson, 139 F.3d 191 (5th Cir. 1997), cert denied525 U.S. 969 (1998). Further, there is no privilege underthe rule if the communication is made to enable or aidanyone to plan to commit a crime or fraud. Tex. R. Evid.








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504(a)(2).

F. Clergy Communicant Privilege- Rule 505 The clergy-communicant privilege under TEX. R.

EVID. 505 protects from disclosure any communicationthat a person makes to a member of the clergy acting inthe capacity of clergy when the communication is madewith a reasonable expectation of confidentiality.Nicholson v. Wittig, 832 S.W.2d 681 (Tex. App.--Houston[1 s t Dist.] 1992, no writ). (communications to hospitalchaplin protected under clergy claimant privilege);Simpson v. Tennant, 871 S.W.2d 301, 306-07 (Tex. App.--Houston [14th Dist.] 1994, no writ) (privilege protectedcommunications made while seeking spiritual advice andguidance from a reverend). Rule 505 defines “clergyman,”“confidentiality,” and permits the privilege to be claimedby the person, his guardian or conservator, or by theperson’s representative if the person is deceased.

G. Physician-Patient Privilege - Rule 509TEX. R. EVID. 509 protects as privileged confidential

communications between a physician and patient relativeto or in connection with professional services. Thephysical patient privilege (Rule 509) and the mental healthprivilege (Rule 510) did not exist at common law, and arebased only on statutory law. R. K. v. Ramirez, 887 S.W.2d836, 839 (Tex. 1994). The Texas Supreme Court has statedthat the purpose of the privilege is to (a) encourage fullcommunication between a physician and patientnecessary for effective treatment; and (b) to prevent theunnecessary disclosure of highly personal information.Id. at 839. Like the mental health privilege, the physicianpatient privilege can be waived. Id.

1. The Physician/Patient Privilege Protects Identitiesfrom DiscoveryIn In re Anderson, 973 S.W.2d 410 (Tex. App.--

Eastland 1998, no pet. h.), the court addressed the issueof the scope of the physician-patient privilege. In a sexualassault case against a physician and his clinic, a partysought to discover the identity of persons withknowledge of relevant facts, including persons who hadmade a complaint against the doctor or the clinic. The trialordered the identity-name, address and telephone numberof persons with knowledge of relevant facts, includingt hose persons who had made a claim against thedefendants.

On mandamus, the appellate court determinedwhether the disclosure was proper.

The court distinguished the typical evidentiary rulefrom Rule 509 which specifically covers the physician-patient privilege. In the words of the court:

Unlike other privileges which protect onlycommunications or reports, the physician

privilege by its express terms goes beyondthat and also protects identities . . . . Here, theplain terms of the privilege do prohibitdisclosure of identity. If disclosure wererequired, the privilege would be meaninglessto the patient who holds a legitimate interest init.

Although a waiver issue was raised, the court heldthat the privilege belonged to the patient and only thepatient could waive.

2. The Physician/Patient Privilege Belongs to thePatient - Not The PhysicianIn In re Anderson, 973 S.W.2d 410, 411 (Tex. App.--

Eastland 1998, no pet h.), the court rejected the argumentthat the physician had failed to properly object todiscovery requests and had waived the physician/patientprivilege. The privilege belongs to the patient not to thedoctor. Thus, there was no waiver.

3. ExceptionsThe mental health (Rule 510) and physician patient

(Rule 509) privileges do not apply if the party relies uponthe mental, physical or emotional condition as a part oftheir claim or defense. TEX. R. EVID. 509(d)(5); Ramirez ,887 S.W.2d at 840-41.

H. The Mental Health Privilege-Rule 510TEX. R. EVID. 510 affords protection in civil cases to

mental heath records that might reveal the identity,diagnosis, evaluation or treatment of a patient that arecreated or maintained by a physician or professional.

I. Self-Evaluation or Self-Critical Analysis PrivilegeLitigants frequently assert self-evaluation or self-

critical analysis privileges in which they try to prevent thediscovery of internal investigations. Neither the state norfederal courts in Texas have recognized such a privilege,but litigants keep trying.

This privilege was first articulated in Bredice v.

Doctors Hosp., Inc., 50 F.R.D. 249 (D.D.C. 1970); aff’d, 479F.2d 920 (D.C. Cir. 1973), to protect internal evaluationsand investigations from discovery. Bredice provides aqualified privilege for such materials that can be overcomeif the discovering party can cite extraordinarycircumstances that give rise to good cause for theproduction of the information.

J. Invoking and Proving a Privilege1. Asserting A Privilege Under Texas Law

The new rules seek to eliminate prophylaticobjections by eliminating the need to raise an objectionbased on privilege to discovery requests. See Rule193.2(f) ("A party should not object . . . on the grounds










10

that . . . information . . . is privileged but should insteadcomply with Rule 193.3"). The "privilege statement"under Rule 193.3(a) now takes the place of a privilegeobjection. In Re Monsanto, 998 S.W.2d 917, 924 (Tex.App.--Waco 1999, orig. proceeding).

Under this procedure, a party may withholdprivileged information from the discovery response, butmust notify the other side he is doing so. Thisnotification may be in the discovery response documentitself or in a separate document, and must contain thefollowing information:

(1) the statement that information or materialresponsive to the request has been withheld;(2) the request to which the withheldinformation relates;(3) the privilege(s) asserted.

In re Monsanto, 998 S.W.2d at 925.

Simply put, a party asserting a privilege may note

that it is withholding privileged material and, if requested,prepare a privilege log. In re Lavernia Nursing Facility,Inc., 12 S.W.3d 566, 571 N.2 (Tex. App.--San Antonio1999, orig. proceeding)(In this case a nursing home wasrequired to provide disciplinary reports and counselingrecords because it failed to follow the procedures of Rule193.3 in protecting the records through affidavits orotherwise).

2. Request for a LogAfter receiving a discovery response in which a

privilege is asserted, the party seeking the discovery mustserve a written request upon the withholding partyrequesting the identity of the information and materialwithheld. TEX . R. CIV. P. 193.3; In re Monsanto, 998S.W.2d at 926.

3. The Privilege Loga. The Procedure

Upon receipt of that request, the withholding partymust serve a response within 15 days that:

a. Describes the information or materialswithheld that, without revealing the privilegedinformation itself or otherwise waiving theprivilege, enables other parties to assess theapplicability of the privilege; and

b. Asserts a specific privilege for each item orgroup of items withheld.

T EX. R. CIV. P. 193.3; In re Monsanto, 998 S.W.2d at 926.

b. Preparing the LogWhile parties must now prepare privilege logs to

give notice of the documents in which privileges areasserted, the mere listing of a specific privilege in aresponse of a privilege logs does not prove a particularprivilege. In re Monsanto, 998 S.W.2d at 926. Courtshave the power to review a privilege log in great detail toensure that the log matches and fairly describes thedocuments in which a privilege is asserted. Id. at 929.

The privilege log must describe the withheldinformation with enough specificity to allow therequesting party to evaluate the applicability of theprivilege, and must assert a specific privilege for each itemor group of items withheld. In re Monsanto, supra, 998S.W.2d at 925.

The mere listing of a privilege in a privilege log doesnot establish the validity of a privilege. In re Monsanto,998 S.W.2d at 930. The party asserting the privilege muststill provide evidence proving the privilege. If theobjecting fails to prove the privilege, then the trial courtmay properly order production of the documents. In re

Leviton Mfg. Co., 1 S.W.3d 898 (Tex. App.--Waco 1999,no pet.)(trade secrets).

c. Exemptions from Current LitigationThe revised Texas Rules specifically exempt from the

privilege log requirements any privileged communicationsto or from a lawyer or the lawyer’s representative that iscreated or made from the point at which a party consultsa lawyer to obtain legal services in the prosecution ordefense of a specific claim in the litigation in whichdiscovery is requested and concerning the litigation inwhich the discovery is requested. Those materials aretreated as privileged without the need for counsel toassert a claim of privilege or to describe the informationwithheld. TEX. R. CIV. P. 193.3(c); Official Comment 3 toRule 193.

4. Getting Behind a Privilege AssertionThere is no need to request a ruling on your own

objections or assertions of privilege in order to preservethe objection or privilege. TEX. R. CIV. P. 193.4(b).

5. Proof and BurdensOnce the privilege is challenged, the party asserting

the privilege bears the burden of demonstrating that theprivilege applies and generally must take several steps inorder to do so.

Generally, proving the privilege requires a privilegelog, affidavits (regarding representations on the privilegelog as to the identity and position of the people listed asauthors and recipients), and often the privilegeddocuments themselves. See In re Monsanto, 998 S.W.2dat 925-26, in which the court provides guidance on how toreview claims or privilege using a privilege log, affidavits















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and in camera review. The Waco court reviewed theclaims of privilege as follows:

The court reviewed documents in camera andused the privilege logs to determine whetherdocuments matched the descr ip t ionscontained in the privilege logs.

The courts reviewed documents in camera todetermine whether there was a prima faciashowing of a privilege.

In determining whether the attorney-clientprivilege applied to various documents,including e-mails, the court looked for the useof language like “suggestions,” “review,” and“input” to show that legal advice was beingsought between Monsanto’s attorneys andrepresentatives.

In re Monsanto, 998 S.W.2d at 926-31.

A party must properly assert the privilege and followthese procedures to prevent the discoverability ofprivileged information.

a. Requesting a HearingAny party may request a hearing on a claim of

privilege asserted under Rule 193, and meet its burden ofproving the privilege by presenting live testimony oraffidavits served at least seven days before the hearing.In re Monsanto, 998 S.W.2d at 925.

b. Proof - AffidavitsOnce the party asserting a privilege had made a

prima facie case of privilege on the materials it seeks toprotect from discovery, the discovering party must pointout to the court the specific documents that is believesrequires inspection. In re Monsanto, 998 S.W.2d at 925-26.

When appropriate, affidavits may be used to proveup a claim of privilege. Affidavits must be based on thepersonal knowledge of the affiant. Id. at 926. It is criticalthat the affidavits reference the privilege log anddocuments in the log if it is being used to prove aprivilege. Further, affidavits must contain factualallegations that will support a privilege.

c. Proof - In Camera ReviewIn some instances, an in camera review of

documents may still be the best way to substantiate aclaim of privilege. In re Monsanto, supra, 998 S.W.2d at929. Here, the appellate court conducted an independentreview of the documents at issue to determine theapplicability of the privilege. If documents are provided

in camera, the discovering party should point out to thecourt the specific documents that it believes requiresinspection. Id. At 928.

If the allegedly privileged documents are the onlyevidence to show that the privilege applies, the partymust produce the documents for an in camera inspection.Marathon Oil Co. v. Moye, 893 S.W.2d 585 (Tex. App.--Dallas 1994, no writ).

d. Burden ShiftOnce a party provides a prima facie showing

(through affidavits, privilege logs and tendering of thedocuments), the burden shifts to the party seeking theinformation to refute the privilege. In re Valero EnergyCorp., 973 S.W.2d 453, 457 (Tex. App.--Houston [14th

Dist.] 1998, no pet.).

e. Reviewing An Order Requiring The Production ofPrivileged DocumentsTexas courts have generally held that mandamus is

generally available as a remedy because there is noadequate remedy at law when a trial court orders theproduction of alleged privileged documents. See Walkerv. Parker , 827 S.W. 2d 833, 843 (Tex. 1992).

K. Protecting Privi leged Documents InadvertentlyProduced Prior to the 1999 changes to the Texas Rules,

production of documents containing attorney-clientcommunications through “inadvertence” could result inwaiver of the privilege. As an example, in a GranadaCorp. v. First Court of Appeals , 844 S.W.2d 223 (Tex.1992) (orig. proceeding), the Court held that inadvertentp roduction waived the privilege unless the party provedthat the inadvertent production was “involuntary” underthe meaning of Rule 511 of the Texas Rules of Evidence,which required the producing party to show that “effortsreasonably calculated to prevent the disclosure wereunavailing.”

The Granada court concluded that where thedocument s were not segregated during the producingp arty’s multiple opportunities to review the production,the inadvertent production was not “involuntary” and,therefore, the privilege was waived. See also Gulf OilCorp. v. Fuller, 695 S.W.2d 769 (Tex. App.--El Paso 1985,no writ).

Under the new TEX. R. CIV. P. 193.3(a), a party whoinadvertently produces privileged documents may nowobtain the return of the privileged documents andcontinue to assert the privilege until a court rules that thedocuments are not privileged. A party that producesprivileged material without intending to waive thep rivilege, in response to a written discovery request, doesnot waive the privilege if the party amends the responsewithin 10 days (or a shorter time designated by the court)










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after discovering the inadvertent production. Theamended response must identify the privileged materialinadvertently produced and must state the privilegeasserted. Upon receipt of such amended response, theparty who received the inadvertently produced materialsmust return the specified material and any copies. TEX.R. CIV. P. 193.3(d).

L. No Offensive Use of PrivilegeUnder Texas law a party offensively asserts a

privilege when (1) the party seeks affirmative relief; (2) theprivileged information, if believed by the fact finder, in allprobability would be outcome determinative of the causeof action asserted; and (3) the evidence is otherwise notavailable to the opposing party. Republic Ins. Co. v.Davis , 856 S.W.2d 158, 163 (Tex. 1993).

A client cannot claim a privilege to precludediscovery while simultaneously seeking affirmative reliefon the basis of the information sought to be withheld fromdiscovery. Marathon Oil Co. v. Moye, 893 S.W.2d 585(Tex. App.--Dallas 1994, no writ).

A party may not use - at any hearing or trial -material or information withheld fromdiscovery under a claim of privilege, includinga claim sustained by the court, without timelyamending or supplementing the party’sresponse to that discovery.

TEX. R. CIV. P. 193.4(c).

A party who uses the discovery privilegeoffensively (as a sword) rather than as a shield, waives aprivilege. Marathon Oil Co. v. Moye, 893 S.W.2d 585(Tex. App.-Dallas 1994, no writ). As noted by TheSupreme Court of Texas in discussing the offensive usedoctrine:

A plaintiff cannot use one hand to seekaffirmative relief in court and with the otherlower an iron curtain of silence against other-wise pertinent and proper questions whichmay have a bearing upon his right to maintainhis action.

National Union Fire Ins. Co. v. Valdez, 863 S.W.2d 458,461 (Tex. 1993).

IV. PATENTS AND RELATED INFORMATIONWhen dealing with patents and related materials and

information unique issues arise. Because these issues arematters of federal, not Texas, law, any detailed discussionof them is beyond the scope of this article; but because ofthe importance of these issues, coupled with the fact thatit can become necessary from time to time in matters not

pending in any federal tribunal to deal with confidentialand proprietary information which may include patentsand related materials and information, Texas attorneysmay sometimes need background information about howto deal with patents and related materials and information.Such background information is available in an excellentarticle of recent vintage prepared by two fine Texasattorneys. Thomas H. Watkins and T. Ray G u y ,Evidentiary and Privilege Issues in Patent Litigation (alsolisted sub nom: Expert and Privilege Issues in IntellectualProperty Law Cases ) [originally published in theProfessional Development Program book 14th AnnualAdvanced Evidence and Discovery Course: 2001(S.B.O.T.)].

V. TRADE SECRETS: RULE 76a AND PROTECTIVEORDERS

A. A Tale of Two RulesPractitioners have long been familiar with protective

orders issued under the authority of old Rule 166b(5) andnow Rule 192.6. But there was some consternation whenRule 76a was adopted. It seemed straight forwardenough-if "court records" were to be sealed, the publichad a greater interest and practitioners had to additionallycomply with the requirements of that rule. However, otherthan Rule 192.6’s very brief reference to Rule 76a, the tworules are silent as to how they relate to each other.Particularly with the inclusion of unfiled discovery in thedefinition of "court records," there was a question for along time as to whether determination of whetherdocuments are "court records" under Rule 76a is onewhich is to be made under Rule 76a, with all of its noticerequirements, or can be made under the protective orderrule (now Rule 192.6). Fortunately, that issue has beenresolved; and, most courts and practitioners believe thatRule 76a has not been the procedural nightmare many hadinitially feared.

B. Rule 76aRule 76a was adopted in 1990 and finds its origin in

Section 22.010 of the Texas Government Code, whichrequired the Texas Supreme Court to "adopt rulesestablishing guidelines for the courts of this state to usein determining whether in the interest of justice therecords in a civil case, including settlements, should besealed." TEX. GOV'T CODE ANN. § 22.010 (Vernon Supp.1994). Since its adoption, Rule 76a has been the subjectof considerable debate among commentators as courtsand parties try to apply it in a variety of practical contexts.While certain questions about the application of Rule 76astill exist, the rule is (on its face, at least) clear, specific,and mandatory. Its provisions cannot be waived by thep arties and are not mooted by settlement or trial.Chandler v. Hyundai Motor Co., 844 S.W.2d 882, 883(Tex. App.-Houston [1st Dist.] 1992, no writ)("Chandler







13

III").While Texas courts have addressed the sealing of

court records by the adoption of a detailed rule of civilprocedure, the general analysis is unchanged from thatpreceding the rule: to preserve the openness of what areperceived to be court records and to only permit them tobe sealed from public view upon a proper showing thatother interests outweigh the presumption of openness.Texas courts, recognize that public access to courtproceedings and records is not unlimited. See, e.g.,Dallas Morning News v. Fifth Court of Appeals, 842S.W.2d 655, 659-60 (Tex. 1992)(orig. proceeding).

1. Overview of the RuleDespite a changing landscape of judicial decisions

interpreting Rule 76a, the rule itself has been unchangedsince its adoption. Any analysis must begin with thelanguage of the rule itself. While the full text of the rule is,of course, the best source, the following is a summary ofits nine (9) paragraphs:

Paragraph 1: provides that "court records" arepresumed to be open and provides thestandard by which they can be sealed. (Seediscussion in Part V.B.3, below)

Paragraph 2: defines "court records" forpurposes of the rule, including, notably,certain unfiled materials . (See discussion inPart V.B.2, below.)

Paragraph 3: describes the procedures forobtaining a sealing order, including whatpublic notice is required. (See discussion inPart V.B.4, below.)

Paragraph 4: describes the hearing on themotion to seal (See discussion in Part V. B.5,below) and gives non-parties a right tointervene. (See discussion in Part V.B.6,below.)

Paragraph 5: provides for temporary sealingorders if the procedures under paragraphs 3and 4 are inadequate. (See discussion in PartV.B.7, below.)

Paragraph 6: sets out the required provisionsof a sealing order. (See discussion in PartV.B.8, below.)

Paragraph 7: provides for continuingjurisdiction over sealing issues after judgmentand for the modification of orders. (Seediscussion in Part V.B.9, below.)

Paragraph 8: allows for immediate appeal of anorder to seal or unseal "court records." (Seediscussion in Part V.B.10, below.)

Paragraph 9: provides for the rule's limitedapplication to cases pending as of theeffective date.

2. What are "Court Records?"Paragraph 2 was initially the most controversial part

of Rule 76a. It defines "court records" for purposes of therule. There are three general categories of "courtrecords:" filed documents (with a few exceptions), certainsettlements agreements, and certain unfiled discovery.a. Documents Filed of Record

Under paragraph 2(a), all documents filed inconnection with a civil case are "court records" underRule 76a. There are only three categories of fileddocuments removed from the definition and thus from thecoverage of Rule 76a: (1) documents filed with the courtfor in camera inspection as to their discoverability; (2)documents to which access is otherwise restricted by law(such as, juvenile, adoption and mental health records);and (3) documents filed in an action originally broughtunder the Family Code (see also discussion in Part V.B.12relating to family law cases).

The most difficult part of this aspect of the definitionof "court records" is the exception created for documentssubmitted for in camera inspection. In order to fall underthis exception, and thus out of the coverage of Rule 76a,the documents must be submitted "solely for the purposeof obtaining a ruling on the discoverability of suchdocuments." Thus, documents submitted to the court forin camera inspection as to whether they are in fact "courtrecords"-such as the submission of unfiled discoverymaterials to see if they could have a probable adverseeffect on the general public health and safety (which isnot an issue of discoverability)-are arguably not entitledto this exception and are thus "court records." But seeTexas United Education Fund v. Texaco, Inc., 858 S.W.2d38, 40 (Tex. App.-Houston [14th Dist.] 1993, writ denied).

b. Settlement AgreementsUnder paragraph 2(b), settlement agreements-even

if they are never filed with the court-are "court records" ifthey "seek to restrict disclosure of information concerningmatters that have a probable adverse effect upon thegeneral public health or safety, or the administration ofpublic office, or the operation of government."

If a settlement agreement is determined to be a"court record," the rule does provide that "all reference tomonetary consideration" is not included and presumablythat information may be redacted.

Even when an unfiled settlement agreement containsinformation concerning matters having a probable






14

adverse effect upon health or safety, it is not necessarilya "court record." Paragraph 2(b) would only make suchan agreement a court record if it "seek[s] to restrictdisclosure of" such information.

Practice Tip: In drafting a settlementagreement which could contain informationwhich could have probable adverse effectupon health and safety, the party desiring toprotect such information may want to considerwhether it is preferable to not restrictdisclosure-especially if, as a practical matter,the opposing party has an incentive to keepthe agreement confidential because of someother provision which that party would notwant widely known. Of course, the risks ofsuch an approach should be discussed withthe client.

c. Unfiled DiscoverySub-paragraph (2)(c) of Rule 76a has received the

most attention from litigants and courts. It labels as"court records" unfiled discovery "concerning mattersthat have a probable adverse effect upon the generalpublic health or safety, or the administration of publicoffice, or the operation of government." TEX. R. CIV. P.76a(2)(c). This includes documents produced indiscovery.

The only exception recognized in the rule is"discovery in cases originally initiated to preserve bonafide trade secrets or other intangible property rights."TEX. R. CIV. P. 76a(2)(c). Notice that to fall within thisexception, the case must have been "originally initiated"as one for the protection of such intangible rights-asserting such a case by counterclaim is not enough. Theexception does not address the possibility that a tradesecret claim may be one of many asserted. Presumably,though, the trade secret claim must be a material part ofthe case and not just a "tag on" claim. Notice also thatthe language of the exception removes from "courtrecords" discovery within such a case and not just thatdiscovery which relates to the trade secret issue.

Practice Tip: Because of this exception, in acommercial dispute where one of severalcompeting claims involves protection of tradesecrets, the party with the trade secret claimmay want to be the first to the courthouse.

d. Retention Policies and Lawyers' Files As CourtRecordsOne practical effect of Rule 76a is to make certain

unfiled discovery materials in lawyers' offices "courtrecords" to which the public has access. Even after thecase is over, unfiled discovery covered by the rule retains

its status as a "court record," likely rendering ineffective(and possibly sanctionable) any agreement requiring theimmediate return or destruction of covered documents.Cf. Chandler v. Hyundai Motor Co. ("Chandler III"), 844S.W.2d at 883 ("Rule 76a by its very terms operates tobenefit the public at large and not just the party litigants.The public's interest cannot be 'mooted' or settled by theparty litigants."). Although a procedure is not specifiedin the rule, a member of the public would merely have tomake a request to an attorney of record for reasonableinspection of such a "court record." If the documentsought was actually filed, either sealed or unsealed, withthe court, referring the inquiring party to the clerk's officewould likely be sufficient.

Practice Tip: If a non-party's request to theattorney is unreasonable, and the trial courthad earlier entered a sealing order with respectto such documents, the attorney or the clientcould invoke the trial court's continuingjurisdiction under Rule 76a(7) to restrict accessfurther, to extend the sealing, or, in the case ofwhere the sealing has expired, to reinstitute it.A prophylactic solution, suggested by formerJustice Doggett and Michael. Mucchetti, is tofile all such documents with the court and/or,in unusual circumstances, file them nominallyand obtain a Rule 166b(5) protective orderspecifying future access (while the trial courtstill has jurisdiction). Lloyd Doggett &Michael J. Mucchetti, Public Access to PublicCourts: Discouraging Secrecy in the PublicInterest, 69 TEX. L. REV. 643, 668 (1991). Ofcourse, such a solution raises to the forefrontwhether the document is a "court record" andthe practitioner and the client may prefer theanonymity and uncertainty. It can be arguedthat consistent with a court's continuingjurisdiction to consider an intervenor's requestto "seal or unseal" court records "before orafter" judgment under Rule 76a(7), the trialcourt should be able to retain unlimitedjurisdiction of its own court records, eventhough they may physically be in the lawyer'soffice. A related practical effect of the ruleis to make it advisable for lawyers to considerRule 76a in connection with their own policiesof retention and destruction of closed files thatcontain unfiled documents which a court has,or may in the future, determine to be a "courtrecord." While the rule does not specify howlong such records should be retained by thelawyer, one commentary on Rule 76a hasaddressed the issue. Former Justice Doggettand Mr. Mucchetti, taking guidance from the




15

Texas Supreme Court's order for court clerksrelating to depositions (recited in full textfollowing Rule 209 of the Texas Rules of CivilProcedure), recommend that attorneys retainunfiled discovery which could be subject tothe rule for a minimum of one year followingfinal judgment and the expiration of all appeals.Doggett & Mucchetti, 69 TEX. L. REV. at 664.The analysis should be made on a case-by-case basis and the more likely a document is tobe a court record, the better it is to retain itlonger. The problem, of course, is that justbecause a court was never asked to rule onwhether a document is a "court record" doesnot mean that it is not. Lawyers must use theirbest judgment in determining whether anunfiled document in a closed file is a "courtrecord" under Rule 76a(2)(c).

Practice Tip: In addition to the order relatingto court clerks, practitioners should also beguided by other comparable statutes andregulations governing a party's recordretention in the ordinary course of business.The lawyer should review how long the recordwould be retained under an existing recordretention program. If the lawyer's firm doesnot have such a program, it should seriouslyconsider creating one for a variety of reasons.See David O. Stephens, The Record RetentionSchedule: A Key Element of LegalAdministration, 4 LEGAL ADMINISTRATOR 26,27 (1985) (listing advantages to having recordsretention program). Compliance with aconsistent schedule for the retention ofdocuments could be one factor in determiningfor how long records should be retained.Additionally, retention periods for certainclasses of documents may be prescribed byeither statute or regulation. E.g. OFFICE OF

THE FEDERAL REGISTER, GUIDE TO RECORD

RETENTION REQUIREMENTS IN THE CODE OF

FEDERAL REGULATIONS (rev. 1994); Thomas J.Griffith, Corporate Counsel's Guide to theRecords Retention and Posting Requirementsunder the Family and Medical Leave Act of1993, 10 CORP. COUNS. Q. 116, 117-18 (1994).Both stat utory and regulatory requirementsaffecting an organization's record retentionschedule should be considered in decidinghow long to retain records under Rule 76a.

If the trial court has already addressed whether anunfiled document is a court record, then development ofa post-trial retention policy becomes a little easier. If the

court ruled the unfiled discovery document is not a courtrecord, then the lawyer's ordinary retention anddestruction policy can be used. If the court ruled that thedocument is a court record and did not seal it, thedocument is probably in the public domain as a result ofthe hearing, but it should still be retained by the lawyerunder a Rule 76a retention plan. If the court ruled thedocument to be a court record and issued a sealing order,the order itself will state how long it is to remain sealed(see Rule 76a(6)), and former Justice Doggett and Mr.Mucchetti recommend retention for a period of at leastone year beyond the expiration of the sealing order.

Practice Tip: Most lawyers retain closed filesfor considerably longer than one year, butsome will return to the client or discardvoluminous discovery materials. If an unfileddiscovery document could later be construedas a "court document," the safest course is toretain it as long as you do your file (assumingit is longer than a year) or, if you do return it toyour client, do so with clear instructionsexplaining the requirements for its retention.The difficulty with returning it to your client isthat, in explaining the need for retention, youwould feel obligated to offer the explanationthat it may be a "court record"-something towhich you may not want to commit yourself ina possibly unprivileged communication, in theevent you find yourself in a post-trial hearingon whether the public may have access to thedocument.

e. The interplay between Rule 76a and Rule 192.6The most significant case on the interplay between

Rule 76a and Rule 192.6 is the Supreme Court’s opinion inGeneral Tire, Inc. v. Kepple, 970 S.W.2d 520 (Tex. 1998);and c.f. In Re The Dallas Morning News, Inc., 10 S.W.3d298 (Tex.1999). Although Kepple was decided when oldRule 166b governed protective orders, it is equallyapplicable to new Rule 192.6.

To understand the significance of General Tire v.

Kepple, it is important to understand the confusing stateof law prior to then. General Tire answered the mostunsettled issue under Rule 76a: When a trial court makesa determination whether unfiled discovery documents are“court records” under Rule 76a, should it do so underRule 76a or under Rule 166b(5), relating to protectiveorders? That may seem like a simple question. But, if thedetermination is made under Rule 76a, then the rigmaroleof that rule applies, with all of its public noticerequirements.

1. The Rules.Rule 76a does not mention Rule 192.6 or protective





16

orders at all. However, Rule 192.6 provides that anyprotective order sealing or otherwise protecting theresults of discovery "be subject to the provisions of Rule76a." TEX. R. CIV. P. 192.6 (b)(5). The rule is silentregarding whether "court record" status is a determinationto be made under Rule 192.6 or Rule 76a.

2. General Tire v. Kepple. In General Tire, the Supreme Court held that:

The special procedures of Rule 76a apply onlyto the sealing of “court records.” Thelanguage of the rule does not authorize trialcourts to also apply these special proceduresto the threshold determination of whetherparticular unfiled discovery is, indeed, a courtrecord subject to the rule.

General Tire, Inc. v. Kepple, 970 S.W.2d at 524.

As for non-p arty intervenors, the Court recognized

their right under Rule 76a to have a voice in whetherdocuments are “court records.” But the Court held thattrial courts “should not allow intervenors access to therecords over the moving party’s objection until the courtdetermines that they are court records which cannot besealed. Id. at 524-25.

The Court summarized the procedure as follows:

In summary, we hold that when a party seeksa protective order under Rule 166b(5)(c) [nowRule 192.6] to restrict the dissemination ofunfiled discovery, and no party or intervenorcontends that the discovery is a “courtrecord,” a trial court need not conduct ahearing or render any findings on that issue.If a party or intervenor opposing a protectiveorder claims that the discovery is a “courtrecord,” the court must make a thresholddetermination on that issue. However, publicnotice and a Rule 76a hearing are mandatedonly if the court finds that the documents arecourt records. While a trial court is notrequired to determine whether unfileddiscovery constitutes a court record untilrequested to do so by a party or intervenor,the court may raise this issue on its ownmotion. However, as previously discussed, atrial court may not apply the specialprocedures of Rule 76a (except forintervention) until it determines that thedocuments are court records.

Id. at 525 (emphasis in original).

3. Standard for a Sealing OrderRule 76a(1) provides that "court records" are

presumed to be open and that they "may be sealed upona showing of all of the following:"

(a) a specific, serious and substantialinterest which clearly outweighs:

(1) this presumption of openness;[and](2) any probably adverse effect thatsealing will have upon the general publichealth and safety; [and]

(b) no less restrictive means than sealingrecords will adequately and effectively protectthe specific interest asserted.

The rule also provides that a court order may not besealed under any circumstances.

The rule does not describe the nature of theinterests which might be asserted to support a sealing,other than to say that they must be "specific, serious andsubstantial." In fact, the Texas Supreme Court AdvisoryCommittee considered enumerating interests, but rejectedsuch language out of a concern that courts might sealdocuments falling under listed interests and not engagein the required balancing. See Lloyd Doggett & MichaelJ . Mucchett i , Public Access to Public Courts:Discouraging Secrecy in the Public Interest, 69 TEX. L.REV. 643, 668 n. 117 (1991).

By conspicuously using different language thanRule 192.6, which permits a protective order to be basedupon consideration of such interests as avoiding"harassment or annoyance," it seems that the interests tosupport the sealing of court records must meet a higherstandard by being more "serious and substantial." TEX.R. CIV. P. 192.6 and 76a.

The Texas Supreme Court has identified tradesecrets as at least one interest meeting the threshold of"serious and substantial." Eli Lilly & Co. v. Marshall("Eli Lilly I"), 829 S.W.2d at 158. In a related case, theSupreme Court held that federal regulations establishingthe confidentiality of doctors who reported adverse drugreactions did not preempt Texas discovery law or,presumably, Rule 76a, but that the trial court is obligatedto consider federal policy expressed in such regulationsas an interest to be balanced under Rule 76a. Eli Lilly &

Co. v. Marshall, 850 S.W.2d 155, 160 (Tex. 1993)("Eli LillyII"), on subsequent mandamus proceeding, 850 S.W.2d164 (Tex. 1993)("Eli Lilly III").

One set of commentators identifies the followinginterests as clearly being sufficiently serious andsubstantial for entering balancing arena: (1) the right ofprivacy, including that relating to employment records,financial information, lists of group members and medicalrecords; (2) trade secrets; (3) law enforcement and






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national security; (4) personal safety; and (5) the right toa fair trial. Doggett & Mucchetti, 69 TEX. L. REV. at 669-677. Such a suggested list is by no means an exclusivelist. The trial court may balance any interest which isdeemed to be "specific, serious and substantial" againstthe presumption of openness and any probable adverseupon public health and safety. The court in Boardman v.Elm Block Development Ltd. Partnership, 872 S.W.2d297, 199 (Tex. App.-Eastland 1994, no writ) held that thetrial court abused its discretion in sealing certain portionsof the pleadings . After reviewing in camera the partiesreasons for seeking protection, the court of appeals heldthat the reasons were inadequate. The court took care,however, to avoid revealing those reasons for fear ofmooting any potential writ of error to be taken from theappeal. The court's silence, though, provides littleguidance as to what constitutes adequate reason.

In Fox. v. Anonymous, 869 S.W.2d 499 (Tex. App.-San Antonio 1993, writ denied), the Court held that thetrial court did not abuse its discretion when it sealed theterms of a settlement agreement on basis that disclosureof the financial terms of the settlement with a minorwould, given the nature of the underlying tort, causesevere emot ional problems and risks in the minor'scontinuing treatment. Fox should not broadly be read topermit the sealing of the financial terms of settlements onprivacy and psychological grounds because of thecompelling facts present in that case. Also, Fox and othercases discussing the application of the standards forsealing may be of little precedential value because theapplication of the sealing standards is committed to thetrial court's discretion. See Part V.B.10, below).

4. Motion and Notice RequirementRule 76a(3) requires that records may be sealed

"only upon a party's written motion, which shall be opento public inspection."

The movant is also required to post a public noticeof the motion in the place where county governmentnotices are posted. Under the rule, such notice isrequired to state, at a minimum: (1) that a hearing will beheld on the motion in open court, (2) that any person mayintervene and be heard concerning the motion, (3) thespecific time and place of the hearing, (4) the style andnumber of the case, (5) a brief and specific description ofthe nature of the case and of the records sought to besealed, and (6) the identity of the movant.

The final task of the movant is to file a verified copyof the public notice with the clerk of the court in whichthe case is pending and with the Clerk of the SupremeCourt of Texas "immediately" after posting the notice.

Practice Tip: The verification may becontained in the same document as the notice,but it is advisable that each court receive an

original verification.

5. The HearingRule 76a(4) requires that the hearing on the motion

to seal be open to the public and be held "as soon aspracticable," but the hearing may not be held less than 14days after the later of the filing of the motion and theposting of the public notice.

Paragraph 4 also permits the court, in connectionwith the hearing, to review the affected records in cameraand to determine the matter "in accordance with theprocedures prescribed by Rule 120a." Rule 120a, amongother things, allows for proof by way of pleadings,stipulations, affidavits with attachments and oraltestimony and allows the court to continue the hearing ifnecessary.

Caveat: Rule 120a also requires that affidavitsbe served at least 7 days before a hearing.While the court's use of Rule 120a ispermissive under Rule 76a(4), it is advisable tononetheless serve the affidavits within thetime provided by Rule 120a.

6. Non-party InterventionParagraph 4 of Rule 76a also addresses intervention.

It provides that non-parties may intervene of right in thehearing, upon payment of the fee required for any plea inintervention. There is no apparent requirement that theintervening non-party be threatened with any injury as aresult of any sealing or unsealing to have standing.

Even after the hearing and at any time before or afterjudgment, a non-party may intervene for the limitedpurpose of requesting that the court seal or unseal courtrecords-whether or not any party has sought such relief.TEX. R. CIV. P. 76a(7). However, a non-party who hadnotice of an earlier Rule 76a hearing, but declined toparticipate, may not later intervene and challenge the trialcourt's order. Public Citizen v. Insurance Serv. Office,824 S.W.2d 811, 813 (Tex. App.-Austin 1992, no writ).Also, one court has held that an intervenor may beprevented from a plea being considered more than thirtydays after judgment if the trial court, during the time it hadplenary jurisdiction, did not conduct any Rule 76ahearing. See Texas United Education Fund v. Texaco,Inc., 858 S.W.2d at 40-41; but see In Re The Dallas

Morning News, Inc., 10 S.W.3d 298 (Tex.1999). In General Tire v. Kepple, 970 S.W.2d at 524-525,

the Supreme Court expressly recognized the right ofintervenors to be heard on whether unfiled documents are“court records.” Even though the Court said that theother aspects of Rule 76a should not be followed inmaking that determination, if intervenors are aware of theissue being considered (presumably in the context of aprotective order hearing), they may intervene on the









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issue. However, they may not review the questioneddocuments until the court has made its determination thatthey are court records which cannot be sealed. Id.

7. Temporary Sealing OrdersParagraph 5 of Rule 76a provides for a temporary

sealing order. Such an order may be issued upon ashowing "of compelling need for specific facts shown byaffidavit or by verified petition that immediate andirreparable injury will result to a specific interest of theapplicant" before the hearing and notice provisions ofparagraphs 3 and 4 can be complied with. TEX. R. CIV. P.76a(5)(emphasis added). A motion for a temporary sealingorder must be served upon all parties who have answered.

A temporary sealing order must set the time for thehearing under paragraph 4 and must direct that themovant give immediate public notice under paragraph 3.Upon motion by any party or intervenor, with notice tothe parties, the court may modify or withdraw thetemporary sealing order.

While paragraph 5 concerns only temporary sealing

orders issued by the trial court, it has been held thatcourts of appeals also may temporarily seal documentsduring any consideration of an appeal from an orderdenying a sealing. Dallas Morning News v. Fifth Court ofAppeals, 842 S.W.2d at 658-660. [As a matter of context,the Dallas Morning News case arose out of the same caseas was involved in Upjohn v. Marshall and Upjohn v.Freeman, discussed in Parts V.B.10 and V.B.11, below.]

8. The Sealing OrderRule 76a(6) requires that the order on a motion to

seal court records-whether the decision was to seal or notto seal: (1) be in writing, be open to the public; (2) be aseparate document; (3) contain "specific reasons forfinding and concluding" whether the required showinghad been made: and (4) if sealing any documents,describe the specific portions of the court records to besealed and state the length of time they will be sealed.

9. Continuing Jurisdiction and ModificationRule 76a(7) provides that "a court that issues a

sealing order" retains continuing jurisdiction afterjudgment "to enforce, alter, or vacate" a sealing order.See In Re The Dallas Morning News, Inc. 10 S.W.3d 298(Tex.1999).

Paragraph 7 also provides that reconsideration ofany sealing motion may not be sought by any party orintervenor who had actual knowledge of the originalhearing, absent a showing of "changed circumstancesmaterially affecting the order."

10. Immediate AppealParagraph 8 of Rule 76a provides for an immediate

appeal from "any order (or portion of an order or

judgment) relating to sealing or unsealing court records."The order is "deemed to be severed from the case" and"may be appealed by any party or intervenor whoparticipated in the hearing."

Further, a trial court's decision made under Rule 76aas to whether a document is a "court record" may itself bean order such as would give an aggrieved party the rightto an interlocutory appeal under Rule 76a(8). Chandler v.Hyundai Motor Co. ("Chandler II"), 829 S.W.2d at 775;Eli Lilly & Co. v. Marshall ("Eli Lilly I"), 829 S.W.2d at158.

During the pendency of any appeal, the court ofappeals, if the trial court refused the sealing, may issue itsown temporary order sealing the records in order topreserve the issue during its consideration of the appeal.Dallas Morning News v. Fifth Court of Appeals, 842S.W.2d at 658-660. That court also held that, upon receiptof such a temporary sealing order from the court ofappeals, a party merely has to bring it to the attention ofthe trial court and that it is not necessary for there to bea Rule 76a hearing in order to carry out the order from thecourt of appeals. Id. at 659. After that decision, the trialcourt proceeded to trial before the court of appealsconsidered the merits of the sealing issue and, despite thecourt of appeals' order temporarily sealing the records, thetrial court denied the producing party's request to honorsuch order. The Dallas Court of Appeals then promptlyvacated the order of the trial court requiring production,Upjohn Co. v. Marshall, 843 S.W.2d 203 (Tex. App.-Dallas 1992)(orig. proceeding), and issued its decision onthe merits of the sealing appeal in Upjohn Co. v. Freeman,847 S.W.2d 589 (Tex. App.-Dallas 1992, no writ).

In General Tire, Inc. v. Kepple, 970 S.W.2d 520 (Tex.1998), the Supreme Court ended a split among the courtsof appeals, holding that decisions of the trial court underRule 76a, as with decisions under Rule 166b (andpresumably now Rule 192.6) will be reviewed under anabuse of discretion standard.

11. Burden IssuesOnce documents are determined to be "court

records," the burden of establishing that they should besealed is on the party seeking to have them sealed . TEX.R. CIV. P. 76a(7). Such a burden follows logically from thefact that under Rule 76a, "court records are presumed tobe open to the general public." TEX. R. CIV. P. 76a(1).

As to what documents are "court records," theburden of establishing that filed documents are "courtrecords" is obviously not an issue. But as to unfiledsettlement agreements and discovery, who has the burdenin a hearing to determine whether they are "courtrecords", i.e., the burden of establishing a probablyadverse effect upon the general public health or safety , orthe like? Rule 76a is silent as to such burden and there isno presumption in the rule that unfiled discovery









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documents are court records. Eli Lilly & Co. v. Biffle, 868S.W.2d 806, 808 (Tex. App.-Dallas 1993, no writ)("Eli LillyIV"). Thus it has been held that "the burden of proofrests with the party opposing the motion to seal becauseit is that party who contends the discovery is open to thegeneral public." Id. The party moving to seal unfileddocuments does not have to show that they are not courtrecords-i.e., the movant does not have to prove that thedocuments lack material having a probable adverse effectupon the general public health and safety.

12. Family Law CasesRule 76a(2)(a)(3) expressly provides that "court

records" under the Rule does not include "documentsfiled in an action originally arising under the FamilyCode." Not only are such documents not "courtrecords," but the entirety of Rule 76a is inapplicable tosealing of documents in Family Code cases. See P.I.A. ofFort Worth, Inc. v. Sullivan, 837 S.W.2d 844, 845-46 (Tex.App.-Fort Worth 1992)(orig. proceeding). This holdingmay have eased the concern of some family lawpractitioners who feared that, despite the fact thatproperty agreements are not "court records" under therule, their incorporation by reference in the final judgmentmeant that they were available for public view under thatprovision of Rule 76a(1) which provides that no order maybe sealed.

13. Constitutional IssuesProtective orders and sealing orders are, by their

nature, restrictions upon speech. Thus, at first blush,First Amendment issues are raised. That is why, absentan order to the contrary, there are no restrictions ondissemination of materials received in a lawsuit. However,the United States Supreme Court has held that as long asa protective order (1) is issued upon a showing of goodcause, (2) is limited to pretrial discovery, and (3) does notpurport to restrict a party's use of materials obtainedoutside of discovery, the First Amendment is notoffended. Seattle Times Co. v. Rhinehart, 467 U.S. 20, 32-36 (1984). Thus, to the extent an order restricts a party'suse of material received from a source other than thediscovery process, it is constitutionally questionable.

In Texas, the affirmative guarantee of free speechunder the Texas Constitution is arguably broader than theFirst Amendment. TEX. CONST. art. I, § 8; see alsoDavenport v. Garcia, 834 S.W.2d 4, 10 (Tex. 1992). Oneset of commentators has implied that this broader Texasconstitutional provision provides a stronger presumptionof openness for consideration in the balancing requiredunder Rule 76a. Doggett & Mucchetti, 69 TEX. L. REV. at661 n.83.

As to traditional court records, there is apresumption of openness based upon a common-law rightof access. In Texas, the presumption of openness

afforded to court records arguably goes beyond commonlaw because of the "open courts" provision of the TexasConstitution. TEX. CONST . art. I, § 13. This presumptionof openness is expressly recognized in Rule 76a. T EX. R.CIV. P. 76a(1)(a)(1). However, to the extent Rule 76awould make "court records" out of unfiled documents, itdoes not appear to codify either a Texas constitutional orcommon-law requirement.

Constit utional interests also weigh in on the side ofconfidentiality and sealing. Any constitutional right ofprivacy would, for example, clearly be a "serious andsubstantial" interest under a Rule 76a(1) analysis. SeeDoggett & Mucchetti, 67 TEX L. REV. at 670-673.

C. Rule 192.6Rule 192.6 is the source of a trial court's power to

balance one party's legitimate need for discovery withanother party's need for the discovered information toremain confidential. It replaced the former Rule 166b(5) onprotective orders, which remains a good source forresearch to the extent that the language of the standardswas not changed.

1. Authority of the CourtRule 192.6 relates to "Protective Orders." The full

text of the rule appears in Appendix A. The term"confidentiality order," which parties frequently use inseeking to protect confidential information or tradesecrets, does not appear in the rules. Rather, a"confidentiality order" is a short-hand reference to onetype of protective order. The court has wide discretion toenter an appropriate protective order. Rule 192.6(b)describes the power of the court:

[T]o protect the movant from undue burden,unnecessary expense, harassment , annoyance,or invasion of personal, constitutional, orproperty rights, the court may make any orderin the interest of justice and may - among otherthings - order that:(1) the requested discovery not be sought inwhole or in part;(2) the extent or subject matter of discovery belimited;(3) the discovery not be undertaken at thetime or place specified;(4) the discovery be undertaken only bysuch method or upon such terms andconditions or at the time and place directed bythe court;(5) the results of the discovery be sealed orotherwise protected, subject to the provisionsof Rule 76a.

Thus, consideration of a confidentiality order relates







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not to the discoverability of information, but rather to itsdisclosability by the party receiving it.

While the trial court has discretion to fashion anappropriate order, if “court records” are involved (asdefined by Rule 76a), a more stringent analysis isrequired. The only express limitation on the court's broadauthority under Rule 192.6 is that a protective orderdirecting that the discovery be sealed or protected fromdisclosure, is “subject to the provisions of Rule 76a.”TEX. R. CIV. P. 192.6 (b)(5).. [For purposes of theremainder of this discussion of Rule 192.6, unlessotherwise expressly stated, it will be assumed that Rule76a does not apply-i.e., that the documents covered underthe confidentiality order are not "court records." If courtrecords are involved, such as Rule 76a is implicated, seediscussion in Part V.B., above.

2. Required ShowingUnlike the former Rule 166b(5), Rule 192.6 does not

expressly require that a motion for a protective order"specify the grounds" for the motion. Nor does Rule192.6, as the old rule did for one type of protective order,expressly require a showing of “good cause.” But, as apractical matter, because the burden lay with the movant,specifying the grounds is required. And, it is likely thatthe Rule’s silence on any “good cause” requirement issimilarly of no significance. In fact, while only one part ofthe old rule had an express reference to "good cause," theTexas Supreme Court had no difficulty holding that ashowing of "good cause" was required for the issuanceof any order under the old rule. See Masinga v.Whittington, 792 S.W.2d 940, 940-941 (Tex. 1990). Onlythe daring would take the position that “good cause” isnot necessary.

There is no precise definition of "good cause," andTexas courts have been encouraged to look for guidancein federal interpretations of Rule 26(c) of the Federal Rulesof Civil Procedure. Garcia v. Peeples, 734 S.W.2d 343,345 (Tex. 1987).

3. Who May Seek an OrderA motion under Rule 192.6 must be made by “a

person from whom discovery is sought." Non-parties, aswell as parties, from whom discovery is sought may seekrelief.

4. When is a Motion Required?New Rule 192.6 ends some uncertainty that existed

under the old rule. Old Rule 166b required a motion forthe entry of any protective order, which (at least intheory) raised a question about such an order beingentered in the context of simple objections to discovery ora motion to compel.

Now, Rule 162.6(a)requires a motion, but expresslyincludes this language:

A person should not move for protectionwhen an objection to written discovery [a termdefined in Rule 162.7] or an assertion ofprivilege is appropriate.

If a person asserting an objection or a privilege doesfile a motion, though, the rule is reassures the movant thatthe motion does not waive the objection or privilege. Inother words, “should not” does not mean “shall not.”

Also, keep in mind that Rule 192.6 (a) requires thatany motion for a protective order be made “within the timepermitted for response to the discovery request.”

5. Content of Motion and Order The movant must, of course, state the grounds for

the motion and, as discussed above, must as a practicalmatter make a showing of “good cause.” But Rule 192.6is very particular on one particular grounds: If the basisof the motion is protection from the time and place of thediscovery, the movant “must state a reasonable time andplace for discovery with which the person will comply.”The old motions, which essentially said, “guess anothertime” will not work anymore. This is in keeping with thenew rules’ philosophy that discovery matters should beworked out.

Rule 192.6 also, for example, provides that themovant “must comply with a request to the extentprotection is not sought.” The only exception is ifcompliance with the remainder of it prior to a court ruling“is unreasonable under the circumstances.”

When specifying your grounds for “good cause,”keep in mind the Supreme Court’s requirement that therebe a demonstration of "a particular, articulated anddemonstrable injury, as opposed to conclusoryallegations." Garcia v. Peeples, 734 S.W.2d 343, 345 (Tex.1987). Thus, a motion should do more than merely allegethat unrestricted disclosure would invade "personal,constitutional, or property rights," even though that isthe express language of the rule. It also should do morethan merely state that the information sought is "highlyconfidential and proprietary and a trade secret." To meetthe required showing, the motion should, by way ofspecific examples and/or articulated reasoning, give thecourt the necessary facts upon which to base an order.

With regard to proof, Rule 192.6 does not, as the oldrule did, expressly encourage affidavits and other proof inmaking the requisite showing. But, they are a good ideaand there is nothing to prohibit in camera inspections,which can be useful in making the required showing tothe court.

Remember also that a motion for protective order isa discovery motion, triggering a requirement of acertificate to the court indicating that counsel hadattempted to work out the issue before approaching thecourt for relief.





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Practice Tip relating to the Order: While thecourt need not make detailed findings, anopposed protective order is less subject tolater attack if it recites that the order wasentered upon motion, contains a finding that aparticularized showing of good cause has beenestablished, and contains a finding that theorder is no more restrictive than is necessaryto balance the interests of the parties andpublic policy. If the parties or the court desireto provide for procedures relating to anyfuture modification of the order, other thanwhat would be the case normally, the ordershould also set forth any such procedures.

6. Trade Secrets and Rule 192.6Rule 507 of the Texas Rules of Evidence provides for

a trade secret privilege. It provides:

A person has a privilege, which may beclaimed by the person or the person’s agent oremployee, to refuse to disclose and to preventother persons from disclosing a trade secretowned by the person, if allowance of theprivilege will not tend to conceal fraud orotherwise work injustice. When disclosure isdirected, the judge shall take such protectivemeasure as the interest of the holder of theprivilege and of the parties and the furtheranceof justice may require.

TEX. R. EVID. 507.

Thus, under Rule 192.6, if a trade secret is sought inwritten discovery, the resisting party need not file amotion for a protective order, but may timely assert theprivilege as a reason for not responding to the discoveryrequest. Then, in the context of a motion to compel (or amotion for a protective order if one is nonetheless filed),the court will address the trade secret objection. In thecontext of a deposition, of course, the person need onlyassert the privilege.

The question then arises as to the procedure thecourt is to use in evaluating trade secret objections. Theprocedure was set forth by the Supreme Court in In ReContinental General Tire, Inc., 979 S.W.2d 609 (Tex.1998). The Court said:

We therefore hold that a trial courtshould apply Rule [of Evidence] 507 asfollows. First, the party resisting discoverymust establish that the information is a tradesecret. The burden then shifts to therequesting party to establish that theinformation is necessary for a fair adjudication

of its claims. If the requesting party meets thisburden, the trial court should ordinarily compeldisclosure of the information, subject to anappropriate protective order. In eachcircumstance, the trial court must weigh thedegree of the requesting party’s need for theinformation with the potential harm ofdisclosure to the resisting party.

Id. At 613.

In that case, Continental Tire had argued that aprotective order for trade secrets would, as a practicalmatter, be ineffective, since the trial court could laterdetermine that the documents were “court records” andmake them available to the public under Rule 76a. TheSupreme Court was not persuaded. It noted that justbecause the unfiled discovery documents were tradesecrets did not necessarily mean that they “court records”and, even if they were determined to be court records,Rule 76a still allowed them to remain sealed upon certainfindings. Id. at 614.

7. "Umbrella"confidentiality OrdersWhile the language of Rule 192.6 is geared toward

consideration of discovery requests on an individualbasis to determine whether protection is necessary, it isnot uncommon for one party or all parties to seek aninterim or "umbrella" confidentiality order. Such an orderis entered without individual consideration of eachdocument or discovery request, but rather allows a partyto designate any document or product of discovery as"Confidential" and thereby place it under the aegis of theconfidentiality order without further action by the court.A practical effect of such an order is to shift to the partyreceiving the discovery the onus to approach the court ifthe order with respect to such document or discoveryproduct is unacceptable. Such an order also usuallyaddresses which party has the burden in connection withany modification of the order with respect to suchdocument. One approach would be to place the burdenon the producing party to defend the protection for thedocument. Another would be to place the burden uponthe party believing that the existing order is unacceptablewith respect to a particular document. Unless the orderprovides otherwise, the burden to remove a documentfrom coverage of the order will likely lie with the partyseeking the modification.

Umbrella confidentiality orders have been widelyhailed as promoting efficiency in the conduct of civillitigation, particularly document-intensive cases. Whilesuch orders are not provided for in the rules, the TexasSupreme Court implicitly approved what it called"blanket" protective orders in Garcia v. Peeples , 734S.W.2d at 348 as long as such an order was narrowly





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tailored to protect proprietary interests while allowingexchange of covered documents.

8. Modification of a Protective OrderAny protective order may be modified upon some

showing of good cause. However, reliance upon theoriginal order by one or more parties will be considered.In the context of an agreed confidentiality order, onecourt has held that once the agreed order is entered bythe court and relied upon by a party, it can be modifiedonly in "exceptional circumstances or to meet acompelling need." Times Herald Printing Co. v. Jones ,717 S.W.2d 933, 938 (Tex. App.-Dallas 1986), vacated, 730S.W.2d 648 (Tex. 1987). Although the Supreme Courtvacated this decision, it is a good indication of the burdenthat a party seeking modification will face under thesecircumstances.

Practice Tip: Before a party seeks amodification of an order, that party shouldreview the order to determine whether itspecifies the manner in which a modificationmay be sought, the standards to be applied toany modification, and who has the burden toseek a modification. Such modificationprovisions are common in agreed orders or in"umbrella" orders.

9. Constitutional IssuesAs discussed in PartV.B., above, a protective order

does not offend the First Amendment to the U.S.Constitution if that order is issued upon a showing ofgood cause, relates to pretrial discovery, and does notpurport to restrict use of materials obtained outside thecourt process. Seattle Times v. Rhinehart, 467 U.S. at 37.

In Texas, there is additionally an affirmativeconstitutional guarantee of free speech, which has beeninterpreted as more expansive than the federalconstitution's proscription of laws abridging free speech.TEX. CONST. art. I, § 8; see Davenport v. Garcia, 834S.W.2d 4, 10 (Tex. 1992). No Texas court has based anydecision relating to confidentiality orders upon any suchdistinction. However, one article has intimated that, in thecontext of orders governing "court records" under Rule76a, the Texas Constitution may, in fact, provide astronger countervailing interest to confidentiality. LloydDoggett & Michael J. Mucchetti, Public Access to PublicCourts: Discouraging Secrecy in the Public Interest, 69TEX. L. REV. 643, 662 (1991).

D. Confidentiality Agreements Without OrdersRule 11 of the Texas Rules of Civil Procedure

provides that no agreement between attorneys or partieswill be enforced unless it is in writing and filed, or unlessit is made of record in open court. A Rule 11 agreement is

a handy way to accomplish an agreed protective order,particularly when it relates to such things as schedulingof discovery. Keep in mind, though, that parties cannotoperate in violation of and contrary to the Texas Rules ofCivil Procedure, even if the trial court has approved theagreement. See Missouri Pac. R.R. Co. v. Cross, 501S.W.2d 868, 872 (Tex. 1972).

When the Rule 11 agreement relates to protection ofconfidential information or trade secrets, though, mostcounsel still prefer the supposed added assurance of anagreed court order, especially if there is a possibility thatRule 76a may be implicated and there is some desirabilityto a court finding that “court records” are not involved.

VI. THE ELECTRONIC JUNGLEA. The Internet

The internet can be a very beneficial tool, but itshould be used with caution when dealing withconfidential and proprietary information. Transmittingsuch information over the internet, if not done withappropriate care, may result in the information being madepublicly available, or being intercepted by persons whoshould not have access to it. Further, some types ofinternet communications can be the subject of discoveryrequests.

B. Cell Phones And E-mailCell phones and e-mail must be used with caution

when dealing with confidential and proprietaryinformation. It is well known that cell phonecommunications can be intercepted by persons other thanthe intended recipients of the information which is beingdiscussed during a cell phone conversation. The CBradio, now not so widely used as in past years, presentedthe same sort of problems; and one commentator hasdescriptively likened e-mail to a “corporate CB radio”.Grossman, E-Mail Can be Discovered in Litigation: Even‘Deleted’ Messages Can Come Back to Haunt You, 96LWUSA 251 (March 11, 1996) . However, unlike a CBradio, e-mail leaves a record.

C. Computerized And Electronic Data, And Rule 196.4Texas Rule of Civil Procedure 196.4, which is one of

the “new” discovery rules, is captioned: “Electronic orMagnetic Data.” It states:

To obtain discovery of data or information thatexists in electronic or magnetic form, therequesting party must specifically requestproduction of electronic or magnetic data andspecify the form in which the requesting partywants it produced. The responding party mustproduce the electronic or magnetic data that isresponsive to the request and is reasonablyavailable to the responding party in its










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ordinary course of business. If the respondingparty cannot - through reasonable efforts -retrieve the data or information requested orproduce it in the form requested, theresponding party must state an objectioncomplying with these rules. If the court ordersthe responding party to comply with therequest, the court must also order that therequesting party pay the reasonable expensesof any extraordinary steps required to retrieveand produce the information.

VII. THE IMPACT OF THE “NOT SO NEW”DISCOVERY RULES

A. A Brief History: Whence they Came and How TheySeem to be WorkingFollowing nearly a decade of study, discussion and

comment, amendments to the Texas Rules of CivilProcedure became effective in 1999 which made a trulywatershed change in discovery. The “new” rules havebeen well received by bench and bar, and appear to begenerally fair and workable. See Kenneth E. Shore, AHistory of the 1999 Discovery Rules: The Debates &Compromises, 20 REV.OF LIT. 89, 185-186 (2001).

B. Three Broad Areas of Significant Change (In Scopeof Discovery)

1. ProportionalityRule 192.4 is a new provision, modeled on Rule

26(b)(2) of the Federal Rules of Civil Procedure, whichgives a trial court power to limit the otherwise permissiblescope of discovery if it determines, on motion or its owninitiative and on reasonable notice, that the discoverysought is unreasonably cumulative or duplicative, isobtainable from some other source that is moreconvenient, less burdensome, or less expensive, or thatthe burden or expense of the proposed discoveryoutweighs its likely benefit, taking into account the needsof the case, the amount in controversy, the parties’resources, the importance of the issues at stake in thelitigation, and the importance of the proposed discoveryin resolving the issues. This limitation, however, is to beapplied in a manner consistent with the broader policiesunderlying the 1999 discovery rules amendments — toprevent unwarranted delay and expense, not tounreasonably restrict a party’s access to informationthrough discovery. Rule 192, comment 7.

2. Work Product“Work product” is defined for the first time in Rule

192.5. Generally speaking, work product subsumes andreplaces the “attorney work product” and “partycommunications” discovery exemptions under the formerdiscovery rules. Comment 8. Work product comprises (1)materials prepared or mental impressions developed in

anticipation of litigation or for trial by or for a party or aparty’s representatives; or (2) communications made inanticipation of litigation or for trial between a party andthe party’s representatives or among a party’srepresentatives. Rule 192.5(a).

Rule 192.5 also codifies standards for discovery ofwork product. “Core” work product — work productcontaining mental impressions, conclusions, opinions, orlegal theories — is not discoverable. Rule 192.5(b)(1).Other types of work product are discoverable on ashowing of substantial need and undue hardship, but thecourt, in ordering such discovery, must protect againstdisclosure of core work product to the extent possible.Rule 192.5(b)(2) & (4). However, it is not a violation ofthis rule if disclosure ordered under Rule 192.5(b)(1)discloses attorney mental processes by inference. Rule192.5(b)(3).

Exceptions to the work product protections includeinformation made discoverable under Rule 192.3concerning experts, trial witnesses, witness statements,and contentions; trial exhibits; information concerningpersons with knowledge of relevant facts; photographs orelectronic images of underlying facts or that will be usedas evidence; or work product created under circumstanceswithin one of the exceptions to the attorney-clientprivilege under Rule 503(d) of the Texas Rules ofEvidence. Rule 192.5(c).

3. Protective OrdersRule 192.6 governs protective orders. It is

essentially identical to former Tex. R. Civ. P. 166b(7), butwith two important modifications. First, a person seekinga protective order now has an affirmative duty to respondt o the discovery request at issue to the extent protectionis not sought unless it is unreasonable to do so beforeobtaining a ruling on the motion. Rule 192.6(a). If aperson seeks protection regarding the time or place ofdiscovery, the person must state a reasonable time andplace for discovery with which the person will comply. Id.These are the same duties imposed on parties whenobjecting or asserting privileges in response to writtendiscovery, and are discussed in greater detail in referenceto those rules.

Second, Rule 192.6 clarifies that persons should notmove for a protective order when an objection orassertion of privilege under other rules is appropriate. Id.However, to avoid creating a “trap” or breeding satellitelitigation concerning when protective orders versusobjections are appropriate, the rule provides that a motionfor protective order does not waive an objection orassertion of privilege. Id.

In addition to these changes, Rule 192.6, in amanner similar to Rule 176.6(e), clarified that any personaffected by discovery, and not merely a person or party towhom discovery is directed, may seek a protective order


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C. Rule 193 - Making Objections and AssertingPrivileges: Summary of Changes

1. Affirmative Duty to RespondA party has an affirmative duty to respond to written

discovery requests within the time periods required bythe rules governing that form of written discovery. Rule193.1. This applies even if the party objects or asserts aprivilege against the request. When objecting, a partymust state the extent to which they are refusing to complywith the request and must comply with so much of therequest as to which the party has made no objectionunless it is unreasonable under the circumstances to doso before obtaining a ruling on the objection. Rule193.2(a) & (b). Examples of circumstances where it wouldbe unreasonable for a party to respond before obtaininga ruling on their objection include a grossly overbroadrequest like “all documents relevant to the lawsuit” or arequest for exclusively privileged documents. Rule 193,comment 2. If a party objects to a request for documentsfrom a remote time periods, the party should produce thedocuments from more recent, relevant periods unless thatproduction would be burdensome and duplicative of theproduction that would be required if the objection later isoverruled. Id.

If a party objects to the time or place of discovery,the party must state a reasonable time and place forcomp lying with the request and must comply at such timeor place without further request or order. Rule 193.2(b).

Also, consistent with this duty to respond, partiesare required to supplement discovery responsesreasonably promptly after the need for supplementationis discovered. Rule 193.5(b).While supplementation withinthirty days prior to trial is presumptively not madereasonably promptly, id., this standard may requiresupplementation well before that deadline.

Failure to comply with the duties to respond orsupplement may be grounds for exclusion of evidence.Rule 193.6(a), discussed below.

2. Procedures for Asserting Privileges To assert a privilege — which includes work

product, see Rule 192.5(d) — against written discovery,parties no longer assert objections, but withhold theprivileged materials from disclosure. Rule 193.2(f) &comment 3. When withholding privileged materials orinformation, the responding party must state — in eitherthe response to written discovery or a separate document— that (1) information or material responsive to thewritten request has been withheld; (2) the request towhich the information or material relates; and (3) theprivileges asserted. Rule 193.3(a). Upon written requestof the party seeking discovery, the responding partymust, within 15 days, serve a response (1) specifying thenature of the information or materials withheld that,without revealing the privileged information itself or

otherwise waiving the privilege, enables other parties toassess the applicability of the privilege; and (2) asserts aspecific privilege for each item or group of items withheld.Rule 193.3(b). These disclosure and identificationrequirements, however, do not apply to attorney-clientcommunications withheld from disclosure that concernthe litigation in which the discovery is requested. Rule193.3(c). (But this does not bar a party from specificallyrequesting such communications if the party has a goodfaith basis for asserting that the materials arediscoverable. An example would be material within thecrime-fraud exception to the attorney-client privilege.Comment 3.).

3. Elimination of Prophylactic Objections and PrivilegeClaimsUnder the former discovery rules, objections and

privilege claims against a discovery request had to beasserted within the time for responding or else they werewaived. This frequently led parties, out of an abundanceof caution, to assert voluminous prophylactic objectionsthat, as discovery progressed, often proved to beunnecessary and unfounded. These types of objectionsobscured the true state of facts underlying the objectionsand responses — thus defeating the purposes ofdiscovery — and gave rise to unnecessary expense asparties had to seek hearings, enter Rule 11 agreements, ortake other measures simply to discern which of theiropponent’s objections were “real.” Rule 193 eliminatedthe perceived need for these practices by requiring partiesto object or assert privileges only to the extent that agood faith factual and legal basis for the objection orprivilege claim exists and could be ascertained afterreasonable inquiry at the time the objection or claim ismade Rule 193.2(c) & comment 3; see also Rule 193.2(d) &comment 3 (permitting parties to amend or supplementobjections or privilege claims to state bases that did notexist and could not have been ascertained withreasonable inquiry at time the initial objection or privilegeclaim was made).

4. Other Restrictions on Gamesmanship WithObjectionsThe new restrictions on prophylactic objections,

coupled with the affirmative duty to respond, wasdesigned to help eliminate the abuse of parties “burying”the truth behind an avalanche of all objections thatconceivably could be applicable (and/or are available asforms on the party’s word processing systems). Tocombat such tactics, moreover, Rule 193.2(e) provides thatany objection obscured by numerous unfoundedobjections is automatically waived unless the courtexcuses the waiver for good cause shown.

Furthermore, even if a party has asserted validprivileges in response to discovery, the party cannot use


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the withheld information or materials in a hearing or trialwithout first timely amending or supplementing theirdiscovery responses to disclose the information andmaterials. Rule 193.4(c). All of these measures are hopedto help eliminate modern day “trial by ambush” throughtactical use of objections or privilege claims and reducethe need for parties to seek hearings to prevent it.

5. New Inadvertent Disclosure and SupplementationRulesRule 193 seeks to moderate or eliminate several

“traps” in prior Texas discovery practice that have tendedto elevate form over substance. For one, it liberalized theformer standards governing inadvertent disclosure see,e.g., Granada Corp. v. First Court of Appeals , 884S.W.2d 223 (Tex. 1992), by permitting parties who haveinadvertently disclosed privileged information or materialsto reclaim the privilege within ten days of discovering thedisclosure, or such shorter time as the trial court mayorder. Rule 193.3(d). The focus is on the producingparty’s intent to waive the particular privilege, not his orher intent to produce the information or materials. Id. &comment 4. To avoid logistical problems or ambush attrial, a party seeking to use potentially privilegeddocuments may serve the producing party with an exhibitlist in advance of trial, thereby compelling the producingparty to assert any applicable privilege claims within tendays. Rule 193.3(d) & comment 4. A trial court also mayorder this procedure. Comment 4.

Additionally, Rule 193 moderates the former rules’rigid exclusion of evidence not timely disclosed orsupplemented in discovery in two ways. First, parties arenot required to formally supplement materials orinformation request ed in discovery, except for personswith knowledge of relevant facts, trial witnesses orexperts, if the materials or information previously havebeen made known to other parties in writing, on therecord during a deposition, or through other discoveryresponses. Rule 193.5(a). Second, where formalsupplementation is required, late supplementation can beexcused where either (1) there is good cause for thefailure to disclose; or (2) the failure to timely disclose willnot unfairly surprise or unfairly prejudice the otherparties. Rule 193.6.

These changes to the supplementation requirementwere not a retreat from the general principle that partiesshould timely supplement discovery. Instead, partiesnow have a new affirmative duty to respond to discoverywhen due and are required to supplement reasonablypromptly whenever the need for supplementation isrequired. Moreover, the burden to demonstrate goodcause for late supplementation or lack of unfair surpriseremains with the party seeking to call the witness or usethe evidence. Rule 193.6(b). The changes to thesupplementation requirements seek only to prevent the

exclusion of witnesses or evidence on hypertechnicalgrounds where the information already has beendisclosed or due to relatively minor and inadvertent errorsin disclosure of witnesses’ phone numbers or addresses.

Finally, Rule 193, along with Rule 197, resolves thevexing questions as to whether and when supplementalinterrogatory responses have to be verified and theeffects of failing to verify them. Rule 193.5(b) specifiesthat where responses to written discovery are required tobe formally supplemented, the supplementation must bein the same form that was required of the originalresponse. Rule 193.5(b). This means that, among otherthings, supplemental responses to interrogatories must beverified if the original responses had to be verified. Id.However, Rule 197 does not require verification of alloriginal interrogatory responses. See discussion of Rule197 below. Furthermore, Rule 193.5(b) clarifies that failureto verify an amended or supplemental interrogatoryresponse does not make the response untimely or requireexclusion of evidence unless and until the formal defect ispointed out and the responding party fails to correct itwithin a reasonable time. This should eliminate wastefulsatellite disputes in which parties attempt to excludewitnesses merely because the responding party did notverify the supplemental interrogatory response in whichthe witnesses were identified.

6. Presumption of AuthenticityA party’s production of documents in response to

written discovery presumptively authenticates thatdocument for use against that party in a pretrialproceeding or at trial. Rule 193.7.

The producing party may object to the authenticityof a document within ten days (or such shorter time as thecourt may order) after the party obtains actual notice thatthe document will be used in a hearing or trial. Rule 193.7.The objection must be either on the record or in writingand must have a good faith factual or legal basis. Id. Toprevent logistical problems or ambush at trial, a partyseeking to use a document may, in manner similar to thepractice under Rule 193.3(d), trigger the producing party’sobligation to raise authenticity objections by serving anexhibit list. Id. & comment 7. A court also may order thisprocedure. Comment 7. If an authenticity objection ismade, the party seeking to use the affected documentsmust be given a reasonable opportunity to establishauthenticity.

VII. RESPONDING TO DISCOVERY, MAKINGOBJECTIONS, ASSERTING PRIVILEGES: RULE193

A. A Full Response is Required.1. Full Response.

A party must fully respond to written discovery,subject to proper objections and privileges, within the


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time periods specified in the rules or by court order. Thewritten responses must be complete based on informationreasonably available to the parties or their attorneys at thetime they respond. Rule 193.1 and Comment 1.

2. Complying with Non-Objectionable Discovery.A party is now generally prohibited from making a

general assertion of privilege and from objecting to andrefusing to answer an entire discovery request. Even incircumstances in which the request calls for privileged orobjectionable information, the party must comply with theportion of the request that is not objectionable. Rule193.2(a) and (b). Importantly, a party can no longer refuseto produce discoverable information until objections andclaims of privilege are resolved. This is a major changeform discovery practice under the old rules. Of course, ifthe request is overbroad under Martin v. Loftin, 776S.W.2d 145 (Tex. 1989), i.e., “all documents relevant to thelawsuit,” one may properly object to a request and refuseto answer it in its entirety. Comment 2 to Rule 193.

3. Restate Request.A party must restate each discovery request before

the answer, objection or other response. Rule 193.1.

B. Procedure for Objecting to Written Discoveryunder Rule 193Rule 193.2 replaces former Rule 166(b)(4) which

permitted objections on the grounds, scope, form andprivilege. Rule 193.2 does not apply to an assertion ofprivilege.

1. Object.Object in writing, either in the response or in a

separate document. Rule 193.2(a).

2. Timely.Object on a timely basis. Rule 193.2(a).

3. Basis.State the factual or legal basis for the objection and

the extent to which the party is refusing to comply withthe discovery request. Rule 193.2(a).

4. Amend/Supplementation.A party can amend or supplement a response or

objection that was unknown after reasonable inquiry orinapplicable at the time a party made its initial response.Rule 193.2(d).

5. Waiver.A party waives an objection that is untimely or

obscured by numerous unfounded objections, unlessgood cause is shown. Rule 193.2(e)

6. Good Faith.Of course, a party may object only if a good faith

factual or legal basis exists at the time of the objection.Rule 193.2(c).

C. Examples of Objections.1. Time and Place.

Objection Rule193.2(b) provides that if a partyobjects to the time and place of production, it mustspecify another reasonable time and place for theproduction.

a. Objection to Time and Place of Production - ProperObjectionDefendants object to the production taking place at

the office of Plaintiff’s counsel as set forth in the Requestfor Production. All documents will be produced at theoffices of [put address or place for production], on__________ at ______.m. or at such time as mutuallyagreed to by counsel for the parties.

b. Objection to Time and Place of Production -Improper Objection Defendants object to the production taking place at

the office of Plaintiff’s counsel as set forth in Plaintiff’sFirst Request for Production.

2. General Objections.A frequently asked question regarding Rule 193 is

whether parties can still make general objections(overbreath, relevance) based on the failure of a requestto comply with the discovery rules. The answer is aresounding “yes.” Indeed, such objections must be madeto preserve them. The new rules do not take away aparty’s right to make objections. Objections can still bemade, but a party may waive a proper objection iffrivolous objections are made. Rule 193.2(d). Also, onecannot delay discovery by making objections. A partymust respond to the portion of the request that is notobjectionable. Examples of proper objections mayinclude:

a. scope objections,b. burdensomeness, harassment,c. cumulative or duplication of other discovery, and d. relevance.

a. General Objections - Objection to Part of a RequestRequest: All notes, records and memoranda related

to the contract at issue from June 1, 1982 to date.Response: To the extent Request No. ___ seeks the

production of documents dating back to January 1, 1982,Defendant objects to the request as overly broad, andbecause it seeks documents that are not relevant to the




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claims or defenses in this lawsuit and are not reasonablycalculated to lead to the discovery of admissibleevidence. Subject to this objection, Defendant willproduce any responsive documents in its possession,control for the period from June 3, 1997, the date theevents at issue in this lawsuit occurred.

b. General Objection - Example of an Improper GeneralObjectionRequest: Any and all documents showing that

Plaintiff complained of the alleged harassment to hersupervisor on June 3, 1998.

Response: Defendant objects to all of the requests,which due to their scope, could be construed as seekingdocuments consisting of documents prepared inanticipation of litigation, party communications, attorneyclient documents, work product documents, joint defensedocuments and all matters exempt from discoverypursuant to Tex. R. Civ. P. 192 or under applicable Texaslaw. These general objections are incorporated herein byreference for all purposes into each of Defendant’sresponses as if set forth in full.

c. General Objections - Objection to an Entire RequestRequest: Any and all documents that you contend

supports your allegations in Plaintiff’s Original Petition.Response: Defendant objects to Request No. __

because it is overbroad and fails to comply with therequirements of Rule 196 that a request describe each itemor category of items with reasonable particularity.Defendant will not respond to any part of this request.

D. Asserting a Claim of Privilege under the NewRules. Under the new rules, parties do not object to written

discovery on the basis of privilege. Rule 193.2(f). Therule "dispenses with objections to written discoveryreques ts on the basis that responsive information ormaterials are protected by a specific privilege fromdiscovery". Comment 3 to Rule 193. While a partymaking an objection does not waive the privilege, therules for asserting a claim of privilege are modified andmust be asserted in accordance with Rule 193.3.Privileges should not be asserted “prophylactically, butonly when specific information and materials have beenwithheld.” Comment 3, Rule 193.

1. Asserting a privilege.The procedures for asserting a privilege are set forth

in Rule 193.3.

a. Withhold the requested information ordocument, and notify the requesting party,either in the written discovery response or ina separate document (withholding statement)

that information or documents responsive tothe request have been withheld. Rule193.3(a)(1). Importantly, one prepares awithholding statement only if they areresponding to written discovery. If anobjection is made so that the party is notrequired to comply with any portion of therequest, the party need not prepare awithholding statement.

b. The writing must contain a statement ofthe request to which the withheld informationof material relates, and the privileges asserted.Rules 193.3(a)(2) and (3).

That’s it. You have preserved your privilege for thepurpose of your response.

2. Examples - Assertion of Privilege.a. Proper Assertion of Privilege in Response

Defendant is withholding documents requested in

Request No. 3 based on the work product privilege.

b. Proper Assertion - Withholding StatementIn a separate document state the responding party

is withholding documents requested in Request No. 3based on the work product privilege. [It makes sense tosimply assert the privilege in the response to the requestfor production of documents and not serve a separatewithholding statement.]

c. Improper Objection Defendant objects on the basis that the documents

sought in response to Request No. 3 are protected fromdiscovery under the party communications privilege.DON’T OBJECT - ASSERT THE APPLICABLEPRIVILEGE.

3. Obtaining what’s Behind the Privilege.Under Rule 193.3(b), the requesting party who

receives the response or withholding statement may servea request asking the objecting party to identify theinformation and material withheld. An effectivepractitioner should follow this procedure whenever theyreceive discovery responses or a withholding statementshowing that documents or information has beenwithheld based on a privilege.

4. Responding to the Request for Details on theInformation Being Withheld.Within 15 days of receiving the request for withheld

information, the withholding party must produce aprivilege log. The log must describe the informationbeing withheld (without revealing or waiving theprivileged information) and assert a specific privilege for


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each group of items or information withheld. Rule193.3(b).]

E. Handling Privileged Documents When theDocument Concerns the Present Litigation

1. Files in the Litigation at Issue.Rule 193.3 treats the records and files of a lawyer in

a case as privileged without the need to assert as claim ofprivilege, as long as the privileged information concernsthe litigation in which discovery is requested or thedocument or material was created after a party consulteda lawyer to obtain professional advice related to a claim ordefense in the litigation. Rule 193.3(c). This rule onlyapplies to documents prepared in the litigation in whichthe discovery is served.

2. Undiscoverable Documents.Because privileged documents created in the

litigation at is sue do not have to be disclosed, there maybe a broad category of documents that may never bedisclosed even with a request for information under Rule193.3(b). Moreover, the rules do not appear to provide aprocedure by which a party can identify the documents inwhich a class is privileged.

F. Handling Waivers Through Inadvertent Productionor Disclosure

1. The Procedure.Rule 193.3(d) addresses the issue of the inadvertent

or unintentional production of privileged informationcommon in today’s complex litigation. Under Rule193.3(d), a party who inadvertently produces informationdoes not waive a claim of privilege under the Rules ofCivil Procedure or the Rules of Evidence if the followingis done within 10 days of discovering the inadvertentresponse:

a. Amend the response;b. Identify the material or informationinadvertently produced; andc. state the privilege asserted.

2. Affirmative Duty to Return.Rule 193.3(d) imposes an affirmative duty on the

requesting party to return the specified material andinformation, including any copies, pending a ruling by thecourt denying the privilege. This procedure has beenfrequently used in federal practice and simply reflects therealities of today’s practice. In adapting this rule, theTexas Supreme Court appears to have recognized that awaiver should not occur unless the party intended towaive the privilege. The mere inadvertent production ofa document or disclosure of information is not anautomatic waiver.

Also, to avoid trial complications, a party may

identify prior to trial documents to be offered at trial,thereby triggering the obligations to assert anyoverlooked privilege. Comment 4.

G. How to Obtain a Ruling on a Claim of Privilege oran Objection? Rule 193.4 provides that a party may, at any

reasonable time, request a hearing on an objection orclaim of privilege. New provisions provide that a partyneed not request a hearing on its own claims of privilege,but the party cannot use the document or information attrial without amending or supplementing the discoveryrequest. Rule 193.4(c). If the court overrules the claim ofprivilege, the party must produce the requestedinformation or material within 30 days after the court’sruling. Rule 193.4(b). The party avoiding discoveryalways has the burden of proving the privilege orobjection. Comment 5 to Rule 193.

IX. ADDRESSING PRIVILEGE RULINGS BYMANDAMUSMandamus is often available to test the validity of

trial court rulings on questions of privilege, because inconnection with such rulings there is generally no otheradequate remedy available. Mandamus is appropriate toaddress privilege rulings in three situations:

1.) T he trial court erroneously orders thedisclosure of privileged information that willmaterially affect the rights of the aggrievedparty, such as documents protected by theattorney-client privilege.

2.) Appellate review is precluded because the trialcourt disallows discovery and the missingdiscovery cannot be made a part of theappellate record.

3.) Mandamus will lie where a party’s abil i t y t opresent a viable claim or defense is severelycompromised or vitiated because the partydoes not have access to information necessaryfor the presentation of the case.

In re Family Hospice, Ltd.,62 S.W.3d 313(Tex.App.–El Paso 2001, orig. proceeding); see alsoWalker v. Packer, 827 S.W.2d 833, 843-844 (Tex. 1992).

X. JOINT DEFENSE AGREEMENTSIn the case of In re Monsanto, 998 S.W.2d 917

(Tex.App. - - Waco 1999, orig. proceeding), the courtaddressed the applicability of the joint defense privilegeunder Tex.R.Evid.503(b)(1)(C), recognizing that the jointdefense privilege is included within the attorney-clientprivilege and covers:

Confidential communications made for





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the purpose of facilitating the rendition of legalservices by the client or a representative of theclient, or the client’s lawyer to a representativeof the lawyer, to a lawyer or a representative ofa lawyer representing another party in apending action concerning a matter of commoninterest therein.

Id. at 922.

XI. THE MEDIATION PRIVILEGEThe mediation privilege of the Alternative Methods

of Dispute Resolution Act, TEX.CIV.PRAC.&REM. CODEANN §154.073(a), protects the confidentiality of materialsused in mediation. However, this is not an absoluteprivilege. There are exceptions to this privilege, such asthe one found at §154.073(e) which provides an exceptionif there is a “legal requirement for disclosure.” A closereading of the statute is recommended. There is not muchcase law, but there are some rather interesting, informativepoints to be found in case law. In the case of In re

Learjet, Inc., 59 S.W. 3d 842 (Tex.App. - - Texarkana 2001),a party edited some videotapes of witness statements andpresented the edited videotape at a mediation which failedto resolve the dispute. Later, the trial court granted amotio to compel discovery of the edited videotapes, andmandamus relief was sought at the court of appeals,which denied the petition. The opinion noted thatTEX.CIV.PRAC.&REM. CODE ANN. §154.073(c) providesthat: “An oral communication or written material used inor made a part of an alternative dispute resolutionprocedure is admissible or discoverable if it is admissibleor discoverable independent of the procedure.” In reLearjet, Inc. 59 S.W.2d at 845. In the case of Avary v.

Bank of America, N.A., 72 S.W.3d 779 (Tex.App.– Dallas2002), the court of appeals in Dallas discussed someaspects of the mediation privilege in some detail, Id. at793-802, and stated that “where a claim is based on a newand independent tort committed in the course of themediation proceedings, and that tort encompasses a dutyto disclose, section 154.073 does not bar discovery of theclaim where the trial judge finds in light of the ‘facts,circumstances, and context’, disclosure is warranted.” Id.at 803. The same opinion, by way of background, alsodiscussed an exception to the mediation privilege “inactions to enforce settlement agreements made undersection 154.071 of the ADR Statute . . . .” Id. at 799; c.f.Cadle Co. v. Castle, 913 S.W.2d 627, 632 (Tex. A p p . - -Dallas 1995, writ denied); see also Mantas v. Fifth Courtof Appeals , 925 S.W.2d 656, 658-659 and n.2 (Tex. 1996).

XII. CONCLUSION Remember: there are really only two main things to

remember when dealing with confidential and proprietaryinformation. First, identify it; and, second, protect it.



