Google is being sued by Oracle for what could be billions of dollars in damages for alleged patent infringement. The trial judge in the case recently ruled that Oracle can show the jury a potentially-incriminating email written by a Google engineer. If the very first draft of the email had included “[ATTN: LEGAL]” in its subject line, Google’s lawyers might have legitimately withheld the email and its draft from Oracle’s lawyers.
The patents in question allegedly cover use of the Java programming system. Google was not licensed under the patents. According to a PC World story by James Niccolai, the Google engineer’s email said, in effect, we will need to negotiate a license for Java because the alternatives all suck. Google didn’t negotiate a license, though — and the judge in the case commented to the effect that that the email might suggest to the jury that Google was not just a patent infringer, but a willful infringer. That’s of special interest because a finding of willful infringement can lead to up to trebling of the damage award.
The Oracle lawyers might never have needed to see the “we need a license” email. That’s because the Google engineer, wisely, had included a Google attorney on the “to” list of the email. This apparently caused Google’s lawyers to withhold the final draft from Oracle, on grounds of attorney-client privilege. But the engineer’s earlier drafts of his email didn’t show the attorney as a recipient. Nor did the earlier drafts give any other express indication that the earlier drafts might also be legally privileged.
As a result, the search software that screened Google’s emails for possible privilege issues didn’t pick up those early drafts as documents that might need to be withheld. And so, the early drafts of the email were turned over to Oracle’s lawyers, who no doubt high-fived each other when they saw the gift they’d been given. (Google’s attorneys tried to ‘claw back’ the drafts, to no avail; the additional details aren’t relevant for our purposes here.)
Lesson for businesses: If you’re drafting an email to your lawyer that might someday have legal implications, as soon as you start typing, consider including the term “[ATTN: LEGAL]” at the end of the “subject” field. That will help future search software flag the email and its drafts for possible withholding. Doing so won’t guarantee that your email won’t have to be produced to the other side’s lawyers. But at least it will help your lawyers spot your email as one that might need to be withheld.