FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

In re: PACIFIC PICTURES 

CORPORATION; IP WORLDWIDE,

LLC; IPW, LLC; MARC TOBEROFF;

MARK WARREN PEARY; LAURA

SIEGEL LARSON; JEAN ADELE PEAVY,

PACIFIC PICTURES CORPORATION; IP

WORLDWIDE, LLC; IPW, LLC;

MARK WARREN PEARY, as personal representative of the Estate of No. 11-71844 Joseph Shuster; MARC TOBEROFF, D.C. No. an individual; JEAN ADELE PEAVY; LAURA SIEGEL LARSON, an  2:10-cv-03633-

ODW-RZ

individual,

OPINION

Petitioners, v.

UNITED STATES DISTRICT

COURT FOR THE CENTRAL

DISTRICT OF CALIFORNIA, LOS

ANGELES,

Respondent,

D.C. COMICS,

Real Party in Interest.  Petition for Writ of Mandamus

Argued and Submitted February 7, 2012—Pasadena, California

Filed April 17, 2012

4239 4240 IN RE PACIFIC PICTURES Before: Alex Kozinski, Chief Judge, Diarmuid F. O’Scannlain and N. Randy Smith, Circuit Judges.

Opinion by Judge O’Scannlain 4242 IN RE PACIFIC PICTURES

COUNSEL

Richard B. Kendall, Kendall Brill & Klieger LLP, Los Ange- les, California, argued the cause and filed the briefs for the petitioners. With him on the briefs were Laura W. Brill, Ken- dall Brill & Klieger, LLP, Los Angeles, California, as well as Marc Toberoff and Keith G. Adams, Toberoff & Associates, P.C., Los Angeles, California.

Matthew T. Kline, O’Melveny & Myers LLP, Los Angeles, California, argued the cause and filed the brief for the real party in interest. With him on the brief were Daniel M. Petro- celli and Cassandra L. Seto, O’Melveny & Myers LLP as well as Patrick T. Perkins, Perkins Law Office, P.C., Cold Spring, New York.

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OPINION

O’SCANNLAIN, Circuit Judge:

We must decide whether a party waives attorney-client privilege forever by voluntarily disclosing privileged docu- ments to the federal government.

I

In the 1930s, writer Jerome Siegel and illustrator Joe Shuster joined forces to create the character that would even- tually become Superman. They ceded their intellectual prop- erty rights to D.C. Comics when they joined the company as independent contractors in 1937.1 Since the Man of Steel made his first appearance in 1938, he has been fighting for “truth, justice, and the American way.” Shuster, Siegel, their heirs (“Heirs”), and D.C. Comics have been fighting for the rights to his royalties for almost as long.

Marc Toberoff, a Hollywood producer and a licensed attor- ney, stepped into the fray around the turn of the millennium. As one of his many businesses, Toberoff pairs intellectual property rights with talent and markets these packages to movie studios. Having set his sights on Superman, Toberoff approached the Heirs with an offer to manage preexisting liti- gation over the rights Siegel and Shuster had ceded to D.C. Comics. He also claimed that he would arrange for a new Superman film to be produced. To pursue these goals, Tober- off created a joint venture between the Heirs and an entity he owned. Toberoff served as both a business advisor and an attorney for that venture. The ethical and professional con- cerns raised by Toberoff’s actions will likely occur to many readers, but they are not before this court. 1 The name and corporate structure of the real party in interest has changed a number of times since 1938. For simplicity, we refer to it as “D.C. Comics.” 4244 IN RE PACIFIC PICTURES While the preexisting litigation was pending, Toberoff hired lawyer David Michaels to work for one of his compa- nies. Michaels remained in Toberoff’s employ for only about three months before absconding with copies of several docu- ments from the Siegel and Shuster files. Unsuccessful in his initial attempt to use the documents to solicit business from the Heirs, Michaels sent the documents to executives at D.C. Comics. While he did not include his name with the package, he did append a cover letter, written in the form of a timeline, outlining in detail Toberoff’s alleged master plan to capture Superman for himself.

This happened no later than June 2006, and the parties have been battling over what should be done with these documents ever since. Rather than exploiting the documents, D.C. Com- ics entrusted them to an outside attorney and sought to obtain them through ordinary discovery in the two ongoing lawsuits over Superman. Considering every communication he had with the Heirs to be privileged—regardless of whether the communication was in his capacity as a business advisor or an attorney—Toberoff resisted all such efforts. Ultimately, in April 2007, a magistrate judge ordered certain documents, including Michaels’ cover letter, turned over to D.C. Comics. A few months later, Toberoff at long last reported the incident to the authorities (specifically the Federal Bureau of Investi- gation). In December 2008, Toberoff finally produced at least some of the documents.

In 2010, D.C. Comics filed this lawsuit against Toberoff, the Heirs, and three entities in which Toberoff owned a con- trolling interest (collectively, the “Petitioners”), claiming that Toberoff interfered with its contractual relationships with the Heirs. Michaels’ cover letter formed the basis of the lawsuit and was incorporated into the complaint. Toberoff has contin- ued to resist the use of any of the documents taken from his offices, including those already disclosed to D.C. Comics and especially Michaels’ letter.

IN RE PACIFIC PICTURES 4245

About a month after the suit was filed, Toberoff asked the Office of the United States Attorney for the Central District of California to investigate Michaels. In response to a request from Toberoff, the U.S. Attorney’s Office issued a grand jury subpoena for the documents as well as a letter stating that if Toberoff voluntarily complied with the subpoena the Govern- ment would “not provide the . . . documents . . . to non- governmental third parties except as may be required by law or court order.” The letter also confirmed that disclosure would indicate that “Toberoff has obtained all relevant per- missions and consents needed (if any) to provide the . . . doc- uments . . . to the government.” Armed with this letter, Toberoff readily complied with the subpoena, making no attempt to redact anything from the documents.

D.C. Comics immediately requested all documents dis- closed to the U.S. Attorney, claiming that the disclosure of these unredacted copies waived any remaining privilege. Examining the weight of authority from other circuits, the magistrate judge agreed that a party may not selectively waive attorney-client privilege. The magistrate judge reasoned that, because a voluntary disclosure of privileged materials breaches confidentiality and is inconsistent with the theory behind the privilege, such disclosure waives that privilege regardless of whether the third party is the government or a civil litigant. Having delivered the documents to the govern- ment, the magistrate judge concluded, Petitioners could not rely on the attorney-client privilege to shield them from D.C. Comics.

However, the magistrate judge noted that this circuit has twice declined to decide whether a party may selectively waive the attorney-client privilege, and stayed his order to allow Petitioners to seek review. The district court denied review. Petitioners seek to overturn the magistrate’s order through a writ of mandamus. 4246 IN RE PACIFIC PICTURES II

A writ of mandamus is an extraordinary remedy. A party seeking the writ has the “burden of showing that [his] right to the issuance of the writ is clear and indisputable.” Bauman v. U.S. Dist. Ct., 557 F.2d 650, 656 (9th Cir. 1977) (internal quotation marks omitted). In evaluating whether a petitioner has met that burden, we consider: (1) whether he “has no other adequate means” of seeking relief; (2) whether he “will be damaged or prejudiced in a way not correctable on appeal” after final judgment; (3) whether the “district court’s order is clearly erroneous as a matter of law”; (4) whether the order “is an oft-repeated error”; and (5) whether the order “raises new and important problems, or issues of first impression.” Id. at 654-55. We have established no specific formula to weigh these factors, but failure to show what is generally listed as the third factor, error, is fatal to any petition for man- damus. See Burlington N. & Santa Fe. Ry. v. U.S. Dist. Ct., 408 F.3d 1142, 1146 (9th Cir. 2005).2

III

[1] Under certain circumstances, the attorney-client privi- lege will protect communications between clients and their attorneys from compelled disclosure in a court of law. See Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). Though this in some way impedes the truth-finding process, we have long recognized that “the advocate and counselor 2 Petitioners assert that, because this case presents an issue of first impression, they must demonstrate simple rather than clear error. We have not always been precise as to whether we look for “error” or “clear error” where our sister circuits have addressed an issue, but we have not. Com- pare Anon. Online Speakers v. U.S. Dist. Ct., 661 F.3d 1168 (9th Cir. 2011) (applying the clear error standard in a circuit split situation), with San Jose Mercury News, Inc. v. U.S. Dist. Ct., 187 F.3d 1096 (9th Cir. 1999) (applying the simple error standard when other circuits had weighed in on parts of an issue). We assume but do not decide that Petitioners need show only error.

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[needs] to know all that relates to the client’s reasons for seeking representation” if he is to provide effective legal advice. Trammel v. United States, 445 U.S. 40, 51 (1980); see also 8 John Henry Wigmore, Evidence § 2290 (John T. McNaughton, ed. 1961). As such, we recognize the privilege in order to “encourage full and frank communication between attorneys and their clients and thereby promote broader public interests in the observance of law and administration of jus- tice.” Upjohn Co., 449 U.S. at 389.3

[2] Nonetheless, because, like any other testimonial privi- lege, this rule “contravene[s] the fundamental principle that the public has a right to every man’s evidence,” Trammel, 445 U.S. at 50 (internal alterations and quotation marks omitted), we construe it narrowly to serve its purposes, see, e.g., United States v. Martin, 278 F.3d 988, 999 (9th Cir. 2002).4 In partic- ular, we recognize several ways by which parties may waive the privilege. See, e.g., Hernandez v. Tanninen, 604 F.3d 1095, 1100 (9th Cir. 2010). Most pertinent here is that volun- tarily disclosing privileged documents to third parties will generally destroy the privilege. Id. The reason behind this rule is that, “ ‘[i]f clients themselves divulge such information to third parties, chances are that they would also have divulged it to their attorneys, even without the protection of the privi- lege.’ ” Comment, Stuffing the Rabbit Back into the Hat: Lim- ited Waiver of the Attorney-Client Privilege in an 3 Because Petitioners have never challenged the district court’s applica- tion of federal law, we assume but do not decide that this was correct even though this case involves diversity claims to which state privilege law would apply. Lewis v. United States, 517 F.2d 236, 237 n.2 (9th Cir. 1975) (per curiam). 4 Because no one challenges whether these communications would have been privileged absent waiver, we do not address that issue. For example, we assume but do not decide that these communications were all made for the purpose of obtaining legal as opposed to business advice. Cf. United States v. Ruehle, 583 F.3d 600, 608 n.8 (9th Cir. 2009) (noting that busi- ness advice does not fall within the purview of attorney-client privilege even if the advisor is a lawyer). 4248 IN RE PACIFIC PICTURES Administrative Agency Investigation, 130 U. Pa. L. Rev. 1198, 1207 (1982). Under such circumstances, there simply is no justification to shut off judicial inquiry into these communica- tions.

Petitioners concede that this is the general rule, but they assert a number of reasons why it should not apply to them.

A

[3] Petitioners’ primary contention is that because Tober- off disclosed these documents to the government, as opposed to a civil litigant, his actions did not waive the privilege as to the world at large. That is, they urge that we adopt the theory of “selective waiver” initially accepted by the Eighth Circuit, Diversified Industries, Inc. v. Meredith, 572 F.2d 596 (8th Cir. 1978) (en banc), but rejected by every other circuit to consider the issue since, see In re Qwest Commc’ns Int’l, 450 F.3d 1179, 1197 (10th Cir. 2006); Burden-Meeks v. Welch, 319 F.3d 897, 899 (7th Cir. 2003); In re Columbia/HCA Healthcare Corp. Billing Practices Litig., 293 F.3d 289, 295 (6th Cir. 2002) [hereinafter “In re Columbia“]; United States v. Mass. Inst. of Tech., 129 F.3d 681, 686 (1st Cir. 1997); Genentech, Inc. v. United States Int’l Trade Comm’n, 122 F.3d 1409, 1416-18 (Fed. Cir. 1997); In re Steinhardt Part- ners, L.P., 9 F.3d 230, 236 (2d Cir. 1993); Westinghouse Elec. Corp. v. Republic of Philippines, 951 F.2d 1414, 1425 (3d Cir. 1991); In re Martin Marietta Corp., 856 F.2d 619, 623-24 (4th Cir. 1988); Permian Corp. v. United States, 665 F.2d 1214, 1221 (D.C. Cir. 1981).

As the magistrate judge noted, we have twice deferred judgment on whether we will accept a theory of selective waiver. United States v. Bergonzi, 403 F.3d 1048, 1050 (9th Cir. 2005) (per curiam); Bittaker v. Woodford, 331 F.3d 715, 720 n.5 (9th Cir. 2003) (en banc). But we share the concerns expressed by many of our sister circuits about the cursory analysis behind the Diversified rule. The Eighth Circuit—the

IN RE PACIFIC PICTURES 4249

first court of appeals to consider the issue—adopted what has become a highly controversial rule only because it concluded that “[t]o hold otherwise may have the effect of thwarting the developing procedure of corporations to employ independent outside counsel to investigate and advise them in order to pro- tect stockholders.” Diversified, 572 F.2d at 611. This appre- hension has proven unjustified. Officers of public corporations, it seems, do not require a rule of selective waiver to employ outside consultants or voluntarily to cooper- ate with the government. See, e.g., Westinghouse Elec. Corp., 951 F.2d at 1426.

More importantly, such reasoning does little, if anything, to serve the public good underpinning the attorney-client privi- lege. That is, “selective waiver does not serve the purpose of encouraging full disclosure to one’s attorney in order to obtain informed legal assistance; it merely encourages volun- tary disclosure to government agencies, thereby extending the privilege beyond its intended purpose.” Id. at 1425.

It may well be that encouraging cooperation with the gov- ernment is an alternative route to the ultimate goal of promot- ing adherence to the law. In re Columbia, 293 F.3d at 311 (Boggs, J., dissenting). And there are those who assert that “an exception to the third-party waiver rule need [not] be moored to the justifications of the attorney-client privilege.” Id. at 308 (emphasis omitted). We disagree. If we were to unmoor a privilege from its underlying justification, we would at least be failing to construe the privilege narrowly. Cf. Univ. of Pa. v. EEOC, 493 U.S. 182, 189 (1990) (citing Trammel, 445 U.S. at 50; United States v. Bryan, 339 U.S. 323, 331) (1950)). And more likely, we would be creating an entirely new privilege. In re Qwest Commc’ns Int’l, 450 F.3d 1179; Westinghouse, 951 F.2d at 1425.

It is not beyond our power to create such a privilege. Univ. of Pa., 493 U.S. at 189 (noting that Fed. R. Evid. 501 pro- vides certain flexibility to adopt privilege rules on a case-by- 4250 IN RE PACIFIC PICTURES case basis). But as doing so requires balancing competing societal interests in access to evidence and in promoting cer- tain types of communication, the Supreme Court has warned us not to “exercise this authority expansively.” Id.; see also United States v. Nixon, 418 U.S. 683, 710 (1974). Put simply, “[t]he balancing of conflicting interests of this type is particu- larly a legislative function.” Univ. of Pa., 493 U.S. at 189.

[4] Since Diversified, there have been multiple legislative attempts to adopt a theory of selective waiver. Most have failed. Report of the Advisory Committee on Evidence Rules, May 15, 2007, at 4, available at http://www.uscourts.gov/ uscourts/RulesAndPolicies/rules/Reports/2007-05-Committee _Report-Evidence.pdf (reporting the selective waiver provi- sion separately from the general proposed rule); SEC State- ment in Support of Proposed Section 24(d) of the Securities Exchange Act of 1934, 16 Sec. Reg. & L. Rep. 461 (Mar. 2, 1984). But see H.R. Rep. No. 870, 96th Cong., 1st Sess. (1980), codified at 15 U.S.C. § 1312. Given that Congress has declined broadly to adopt a new privilege to protect disclo- sures of attorney-client privileged materials to the govern- ment, we will not do so here. Univ. of Pa., 493 U.S. at 189 (requiring federal courts to be particularly cautious when leg- islators have “considered the relevant competing concerns but [have] not provided the privilege”).

B

Petitioners next assert that even if we reject selective waiver as a general matter, we should enforce a purported confidentiality agreement based upon the letter from the U.S. Attorney’s Office. Though no circuit has officially adopted such a rule, at least two have “left the door open to selective waiver” where there is a confidentiality agreement. In re Columbia, 293 F.3d at 301 (discussing Steinhardt and Dell- wood Farms, Inc. v. Cargill, 128 F.3d 1122 (7th Cir. 1997)); see also In re Qwest Commc’ns Int’l, 450 F.3d at 1192-94

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(describing such a rule as a “leap” but declining to reject it completely).

[5] Assuming that this letter constitutes a confidentiality agreement, Petitioners have provided no convincing reason that post hoc contracts regarding how information may be revealed encourage frank conversation at the time of the advice. Indeed, as the Sixth Circuit has noted, while this approach “certainly protects the expectations of the parties to the confidentiality agreement, it does little to serve the ‘public ends’ of adequate legal representation that the attorney-client privilege is designed to protect.” In re Columbia, 293 F.3d at 303. Instead, recognizing the validity of such a contract “merely [adds] another brush on an attorney’s palette [to be] utilized and manipulated to gain tactical or strategic advan- tage.” Steinhardt, 9 F.3d at 235; cf. Permian Corp., 665 F.2d at 1221. And it would undermine the public good of promot- ing an efficient judicial system by fostering uncertainty and encouraging litigation. Upjohn, 449 U.S. at 393 (noting that an “uncertain privilege . . . is little better than no privilege at all”).

[6] The only justification behind enforcing such agree- ments would be to encourage cooperation with the govern- ment. But Congress has declined to adopt even this limited form of selective waiver. See Statement of Congressional Intent Regarding Rule 502 of the Federal Rules of Evidence, 154 Cong. Rec. H. 7817 (2008), reprinted in Fed. R. Evid. 502 addendum to comm. n subdivision (d) (noting that Rule 502 “does not provide a basis for a court to enable parties to agree to a selective waiver of the privilege, such as to a fed- eral agency conducting an investigation”). As such, we reject such a theory here.

C

[7] Petitioners next aver that, because Toberoff was the victim of the crime rather than the target of the grand jury 4252 IN RE PACIFIC PICTURES probe, his disclosure should be treated differently. But if it is unnecessary to adopt a theory of selective waiver to encour- age potential defendants to cooperate with the government, In re Qwest Commc’ns Int’l, 450 F.3d at 11; Westinghouse, 951 F.2d at 1425, it is even less necessary to do so to encourage victims to report crimes to the government. The desire to see the crime prosecuted is sufficient impetus to cooperate.

We are unconvinced by Petitioners’ argument that adopting such a rule will drastically impair law enforcement attempts to investigate espionage against “attorneys, financial institu- tions, medical providers, national security agencies, judges, large corporations, or law firms.” This has not occurred despite near universal rejection of a selective waiver rule. Fur- thermore, most of these documents are not covered by attorney-client privilege because they do not represent com- munications between a lawyer and his client for the purpose of obtaining legal advice. Cf. Ruehle, 583 F.3d 608-09 & n.8 (rejecting a presumption of privilege even when a communi- cation involves a lawyer). And, even if they were originally covered by the privilege, they would eventually have to be made public if they are to become evidence in a criminal trial. To the extent that timing is a concern, it can be ameliorated by properly seeking a protective order. Fed. R. Evid. 502(d).

We are similarly unpersuaded that, because Toberoff was a victim of the crime, Petitioners have a common interest with the government. Rather than a separate privilege, the “com- mon interest” or “joint defense” rule is an exception to ordi- nary waiver rules designed to allow attorneys for different clients pursuing a common legal strategy to communicate with each other. See Hunydee v. United States, 355 F.2d 183, 185 (9th Cir. 1965); see also In re Grand Jury Subpoenas, 902 F.2d 244, 249 (4th Cir. 1990) (collecting cases). How- ever, a shared desire to see the same outcome in a legal matter is insufficient to bring a communication between two parties within this exception. Id. Instead, the parties must make the communication in pursuit of a joint strategy in accordance

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with some form of agreement—whether written or unwritten. Cf. Continental Oil Co. v. United States, 330 F.2d 347, 350 (9th Cir. 1964).

[8] There is no evidence that Toberoff and the Office of the U.S. Attorney agreed before the disclosure jointly to pur- sue sanctions against Michaels. Toberoff is not strategizing with the prosecution. He has no more of a common interest with the government than does any individual who wishes to see the law upheld. Furthermore, the statements here were not “intended to facilitate representation” of either Toberoff or the government. Hunydee, 355 F.2d at 185 (limiting privilege to those circumstances); accord United States v. BDO Seidman, 492 F.3d 806, 816 (7th Cir. 2007) (same).

D

[9] Petitioners also argue that they should be treated differ- ently because Toberoff produced these documents subject to a subpoena. Involuntary disclosures do not automatically waive the attorney-client privilege. United States v. De La Jara, 973 F.2d 746, 749-50 (9th Cir. 1992). But without the threat of contempt, the mere existence of a subpoena does not render testimony or the production of documents involuntary. Westinghouse Elec. Corp., 951 F.2d at 1414; see also United States v. Plache, 913 F.2d 1375, 1380 (9th Cir. 1990). Instead, whether the subpoenaed party “chose not to assert the privilege when it was appropriate to do so is [also] relevant to the waiver analysis.” In re Grand Jury Proceedings, 219 F.3d 175, 187 (2d Cir. 2000); cf. In re Subpoenas Duces Tecum, 738 F.2d 1367, 1369-70 (D.C. Cir. 1984).

[10] Toberoff both solicited the subpoena and “chose not to assert the privilege when it was appropriate to do so. . . .” In re Grand Jury Proceedings, 219 F.3d at 187. That is, even though the subpoena specifically contemplated that Toberoff may choose to redact privileged materials, he did not. Peti- tioners assert that the U.S. Attorney would not have been sat- 4254 IN RE PACIFIC PICTURES isfied with redacted documents, but we will never know because Toberoff never tried. As such, we conclude that the district court properly treated the disclosure of these docu- ments as voluntary.5

E

[11] Finally, Petitioners asserted for the first time in oral argument that these documents should remain confidential because the Heirs themselves did not take the affirmative step to disclose the documents. We generally do not consider issues raised for the first time during oral argument, unless “failure to do so would result in manifest injustice” and the appellee would not be prejudiced by such consideration. United States v. Ullah, 976 F.2d 509, 514 (9th Cir. 1992) (internal quotation marks and emphasis omitted). There are several instances in which an attorney’s behavior may waive the privilege, even without an explicit act by the client. See, e.g., Himmelfarb v. United States, 175 F.2d 924, 939 (9th Cir. 1949); see generally 8 Wigmore, Evidence § 2325 (listing actual and implied consent as well as theft of documents from the attorney’s office). As many of these documents fall within these situations, we do not consider it a manifest injustice to hold Petitioners to their apparent acceptance of Toberoff’s authority to waive the privilege on behalf of his clients, who have never disputed his authority to do so.6 5 As these preexisting documents were “sought for [their] own sake rather than to learn what took place before the grand jury” and as their “disclosure will not compromise the integrity of the grand jury process,” Petitioners’ argument that the disclosure was protected by Federal Rule of Criminal Procedure 6(e)(2)(B) is similarly without merit. United States v. Dynavac, Inc., 6 F.3d 1407, 1411-12 (9th Cir. 1993). 6 Indeed, there is even circumstantial evidence that the Heirs affirma- tively consented to Toberoff’s actions. There is also evidence that Tober- off should himself be treated as a co-client. After all, Toberoff represented all of the Petitioners, including a joint venture between the Heirs and him- self in which he had a controlling interest. As such, he likely had authority unilaterally to waive the privilege on at least some of these documents. Restatement (Third) of Law Governing Lawyers § 76 cmt. g; see also In re Teleglobe Commc’ns Corp., 493 F.3d 345, 363 (3d Cir. 2007).

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IV

Because Petitioners have not established error, we need not discuss the other Bauman factors. The petition for mandamus is DENIED.