Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 1 of 8
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`[Counsel listed in signature block]
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
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`IN RE: PERSONAL WEB TECHNOLOGIES,
`LLC ET AL., PATENT LITIGATION
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`AMAZON.COM, INC., and AMAZON WEB
`SERVICES, INC.,
`Plaintiffs
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`v.
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Defendants,
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiffs,
`
`v.
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`TWITCH INTERACTIVE, INC. a Delaware
`corporation
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`Defendants.
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`Case No.: 5:18-md-02834-BLF
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`Case No.: 5:18-cv-00767-BLF
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`Case No.: 5:18-cv-05619-BLF
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`JOINT SUBMISSION REGARDING
`AMAZON'S MOTION TO COMPEL
`PRODUCTION OF DOCUMENTS THAT
`THE PERSONALWEB INVESTORS
`HAVE IMPROPERLY WITHHELD AS
`PRIVILEGED
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`JT SUBMISSION RE AMZ'S MOT TO COMPEL
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`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`ATTORNEYS AT LAW
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`FENWICK & WEST LLP
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`Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 2 of 8
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`I.
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`AMAZON’S STATEMENT
`Amazon requests that the Court address two issues. First, the investor entities (i.e., BDE,
`Claria, ECA, and Monto) have withheld as “privileged” communications that they had with
`PersonalWeb about their plan to demand repayment and sue PersonalWeb to obtain a receivership.1
`They withheld several hundred emails from between March 2, 2021—when the Court entered
`judgment—through April 30, 2021—about when they filed suit. Their log shows that
`PersonalWeb’s litigation counsel Jeff Gersh discussed with the investors’ litigation counsel and
`principals the draft complaint against PersonalWeb seeking the receivership, a related UCC search,
`and other litigation documents such as a proposed stipulation for “Appointment of Receiver and
`Preliminary Injunction…,” and the declaration that PersonalWeb President Michael Weiss submitted
`on behalf of PersonalWeb. (E.g., Ex. A, Nos. 279, 284, 317, 328, 638-39.)2
`The voluntary disclosure of a privileged communication to a third party waives the privilege
`as to that communication and all others on the same subject. U.S. v. Sanmina Corp., 968 F.3d 1107,
`1117 (9th Cir. 2020); Weil v. Inv./Indicators, Res. & Mgmt., Inc., 647 F.2d 18, 24 (9th Cir. 1981);
`Staley v. Gilead Sci., Inc., 2022 WL 1836820, at *2 (N.D. Cal. June 3, 2022).3 Moreover,
`communications between adverse parties are not privileged. See Hartford Fire Ins. Co. v.
`Garvey, 109 F.R.D. 323, 328 (N.D. Cal. 1985). Here, the communications involve on the one hand,
`the investors and their litigation counsel at Frandzel, and on the other, Gersh, PersonalWeb’s
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`1 Amazon has excerpted the investor privilege log to show only the March-April 2021 time frame
`as the privilege log contains over 50,000 documents. (See Ex. A.) The disputed entries are colored
`orange (Gersh a participant) and yellow (Gersh not a participant). The exhibit shows (colored blue)
`communications from the same period that were produced, including other communications between
`Brilliant Digital and PersonalWeb that concern the same subject matter of avoiding the Court’s
`judgment and seeking a receivership. (E.g., Exs. B-D.) (Investors have agreed to, but not yet
`produced the colored grey entries.)
`2 This is very troubling, as Mr. Gersh previously told this Court that Stubbs Alderton was not
`involved with the receivership. Dkt. 725 (Hearing Tr. (1/20/22)) at 14:16-20 (“I want to reiterate
`something also, and I know I said this earlier on, we are doing everything we can to ensure
`compliance with your order. We are not trying to sidestep anything. The receivership is not our
`issue, we’re not involved.” (emphasis supplied)).
`3 Investors raise Rule 502, but this rule applies to inadvertent disclosures during litigation, and it is
`not intended to address disclosures outside of litigation, nor intentional and knowing waivers in
`litigation, as occurred here.
`JT SUBMISSION RE AMZ'S MOT TO COMPEL
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`1
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`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 3 of 8
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`litigation counsel, as well as (at times) Mr. Weiss or Mr. Bermeister at their PersonalWeb email
`addresses. They concern the plan to demand “repayment” from the PersonalWeb entity and then
`sue it, and even the draft litigation documents the investors planned to use. These are subjects on
`which PersonalWeb is adverse to its creditor-investors. Id.; Waymo LLC v. Uber Tech., Inc., 2017
`WL 2485382, at *12 (N.D. Cal. June 8, 2017).4
`Counsel has argued that disclosures to Mr. Gersh did not destroy the privilege because the
`investors consulted him for advice about amending the secured loan agreements, since he personally
`had advised them on the original promissory notes (entered in 2011) and amendments. (See Ex. E.)
`But there is no evidence that Mr. Gersh ever represented these entities with respect to the loans or
`their attempt to seize control of the assets of his client PersonalWeb. Mr. Gersh did not join Stubbs
`until 2016, five years after the parties entered the secured loans. (See Ex. F.) And Mr. Gersh told
`this Court that “neither myself or Mr. Sherman have any personal knowledge” of the loan
`transactions, “other than what we’ve read and what we’ve seen.” Dkt. 725 (Hearing Tr. (1/20/22))
`at 7:12-21. As recently as January 3, 2023, Mr. Gersh claimed to have no information about whether
`anyone at Stubbs had represented the investors, rather than PersonalWeb, concerning the loan
`transactions. (See Ex. G (“I do not know the answer to your question if SAM represented both the
`investor and PWeb. It is possible but I should have a response to this by tomorrow.”).) The fact that
`Mr. Gersh did not know whether his firm represented the investors on the loans completely belies
`the claim that he had advised those entities. And in fact, BDE freely produced other emails with
`Mr. Gersh and other PersonalWeb representatives concerning the loan transactions, avoiding the
`Court’s judgment, and seeking the receivership. (See, e.g., Exs. H-I, & n.1.) That BDE voluntarily
`produced these documents shows that they are not privileged, and even if they were, there is now
`subject matter waiver on these topics.5
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`4 The Court has already held that PersonalWeb waived any privilege that it holds. See Dkt. 704.
`5 Several log entries contain inadequate subject matter descriptions, though Amazon believes they
`all relate to the same subjects. (E.g., Ex. A, Entry Nos. 344, 384-401, 403-406, 409-411, 415-430.)
`The failure to describe the subject matter in the log itself violates the Court’s rules and is insufficient
`to maintain the privilege. Civ. Disc. Standing Ord., § 12; First Resort, Inc. v. Herrera, 2014 WL
`589054, at *5 (N.D. Cal. Feb. 14, 2014).
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`JT SUBMISSION RE AMZ'S MOT TO COMPEL
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`2
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`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 4 of 8
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`The investors pivot to arguing that Mr. Gersh does not represent PersonalWeb in the
`receivership litigation. That does not matter, as his client is adverse to the investors with respect to
`the subject of that litigation, and he is not within the privilege. Investors cite no authority supporting
`their bold claim that parties on opposite sides of a lawsuit share a “common interest” in it making
`their communications privileged as to third parties. Their cases all concern valid common interest
`scenarios—a licensor and licensee defending against a patent litigation (Callwave), a debtor and
`creditors’ committee seeking to maximize assets for the benefit of all parties (Mortgage Realty), and
`co-defendants in a class action (Holmes). PersonalWeb conspiring to have its investors sue it is not
`a common legal interest, even if they intended to share the financial benefit of their misconduct.
`Second, Stubbs provided the investors with documents that are responsive to the Court’s
`discovery orders, but that Stubbs determined “belong” to the investors. Dkt. 851 (categories (a) &
`(c)). BDE and Monto are refusing produce or log the 1,313 documents provided to them, arguing
`that the Court already ordered that Stubbs did not have to log them. Dkt. 850. That the Court ruled
`that a law firm does not have to log 18,000 documents on behalf of its clients is irrelevant.
`BDE AND MONTO'S STATEMENT
`II.
`"Gersh" Emails. Amazon's attempt to discover emails between then-newly retained Frandzel, and
`representatives of BDE and ECA which included SAM partner Gersh, relies on the false premise
`that Gersh/SAM represented PW regarding enforcement of Third Parties' ("Secured Lenders’") loans
`to PW (which it did not) and the equally false premise that Gersh/SAM’s representation of PW in
`the Amazon litigation and on PW’s appeals, necessarily rendered Gersh/SAM incapable of providing
`advice to its other long-time clients, BDE and ECA, regarding the secured loans, the documents as
`to which SAM had prepared back to 2011.6 Also false is Amazon’s premise that in placing PW’s
`assets in the control of the state court through a receivership, PW’s and the Secured Lenders’
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`6 During a meet and confer session in January 2023, Frandzel counsel, Robins, told Amazon's
`counsel that he understood that Gersh had been an attorney with SAM who had participated in
`the preparation of the original and subsequent loan documents. Upon checking with Gersh and
`finding out that he had not been involved or even employed at SAM until approximately seven
`years ago, Robins so informed Amazon's counsel in writing (Amazon Exh. E) which is the source
`of Amazon's information in that regard cited in its Statement.
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`3
`JT SUBMISSION RE AMZ'S MOT TO COMPEL
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`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 5 of 8
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`interests were necessarily adverse in dealing with the common enemy, Amazon, which has never
`denied that it intended to execute on PW’s IP so that, once ownership was achieved, it could fire
`PW’s appellate lawyers and dismiss all appeals before they could be decided.7
`SAM had been a decades-long provider of legal services to BDE and ECA wholly
`independent of its representation of PW in the Amazon cases. Commencing in late March, 2022,
`Gersh, on behalf of BDE, was involved in the initial efforts to retain Ron Bender of the Levene Neale
`firm to represent the Secured Lenders’ interests with respect to Amazon’s judgment, including
`regarding "security issues relating to certain loans." (Exhs. C, D.) After Bender declined on April 2,
`2021, Neumann emailed Craig Welin of Frandzel, with Gersh and Markiles cc'd, introducing SAM
`as "a firm we have worked with for decades . . . ." (Exh. B.) Thereafter, Gersh was cc'd on emails
`between Frandzel, Neumann, Bermeister and Markiles, regarding the strategy of filing suit on the
`loans, having a receiver appointed over PW's assets and placing them in the protection of the state
`court. Neumann, Bermeister, Markiles, Frandzel and Gersh, himself, believed that Gersh's
`involvement was on behalf of the Secured Lenders. Gersh provided input at a conference call in
`April 2021, regarding the scope of the security interests granted in the PW loan documents.8 That
`over a year and a half later in January 2023, Gersh had uncertain memory of the events in late March-
`April 2021, is hardly surprising. Although Gersh was included on emails circulating drafts of the
`complaint and declaration for PW's manager, Weiss, that did not constitute providing them to PW
`and neither Gersh/SAM did so. Rather, Frandzel ultimately directly transmitted same to Weiss.
`Amazon does not address the attorney work product doctrine which also covers the Gersh
`emails. Garvey, 109 F.R.D. at 328 holds that “[w]waiver of work product immunity requires more
`than the disclosure of confidential information; the disclosure must be inconsistent with the
`adversary system.” See Sanmina, 968 F.3d at 1119-20. Disclosure of the materials to Gersh was
`not the equivalent of disclosure to PW itself, and Amazon offers no evidence to the contrary.
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`7 Amazon has repeatedly complained that Secured Lenders and PW were “colluding” to
`block Amazon’s collection efforts - - until now, when, conveniently, it proclaims that PW and
`the Lenders are “adverse parties.”
`8 Whether or not this involvement of SAM/Gersh created a conflict of interest with PW (and
`Amazon cites no authority that it did), is not for Amazon to complain about.
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`JT SUBMISSION RE AMZ'S MOT TO COMPEL
`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 6 of 8
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`Even if the Court indulges Amazon’s fictions, the communications are protected under the
`“common interest” doctrine. The elements, applicable to the attorney-client and work product
`privilege, are: The communication is (1) made by separate parties in the course of a matter of
`common interest; (2) designed to further that effort; and (3) has not been waived.9 The doctrine can
`apply where the parties’ interests are adverse in substantial respects, a future lawsuit between them
`is foreseeable, and where they may have a significant conflict of interest. See Callwave
`Communications, LLC v. Wavemarket, Inc., 2015 WL 831539 at *4 (N.D. Cal. Feb. 13, 2015); In re
`Mortgage Realty Trust, 212 B.R. 649, 653 (Bankr. C.D. Cal. 1997); Holmes v. Collection Bureau of
`America, LTD., 2010 WL 143484 at *2 (N.D. Cal. Jan. 8, 2010).
`Citing Sanmina at 1117, Amazon asserts that disclosure of information to Gersh ipso facto
`waived the privilege as to all non-Gersh emails. But, as Sanmina holds, the “fairness principle”
`(invoked to address unfair use of selectively waived materials -- not claimed by Amazon here), can
`result in limiting a claimed waiver “only as to communications about the matter actually disclosed.”
`(Id.) Determination of the extent to which non-Gersh emails should be produced requires a
`document-by-document examination -- an investigation well beyond a two and one half page joint
`statement. Thus, if the Court is inclined to overrule the BDE/Monto objections, it should order
`further proceedings with respect to the non-Gersh emails to examine whether “fairness principles”
`would require production (even though BDE/Monto have never tried to use same against Amazon)
`and if so as to what portions of such emails.
`Documents Provided by SAM. The Court should reject Amazon’s request that the documents
`SAM recently provided to counsel for BDE/Monto be separately logged. This Court found that
`SAM made a good faith determination that same were covered by privilege or owned by
`BDE/Monto and rejected Amazon’s request that SAM be ordered to log same. (Dkt 850.)
`Privilege Log. On July 25, 2022, Frandzel fully explained its intended “Redacted-legal advice
`strategy” subject line for emails on its log and cited ample authority for why the log complied with
`Ninth Circuit standards and the documents are presumptively privileged. (Exh. J, resp. to ¶ (2).)
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`9 One party to a joint interest agreement cannot waive the privilege for the other holders.
`U.S. v. Gonzales, 669 F.3d 974, 982 (9th Cir. 2012).
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`JT SUBMISSION RE AMZ'S MOT TO COMPEL
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`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 7 of 8
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`Dated: March 24, 2023
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`FENWICK & WEST LLP
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`By: /s/ Todd R. Gregorian_________
`Todd R. Gregorian
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` J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`TODD R. GREGORIAN (CSB No. 236096)
`tgregorian@fenwick.com
`CHRISTOPHER S. LAVIN (CSB No. 301702)
`clavin@fenwick.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
`MICHAEL J. BARATZ (PHV)
`mbaratz@steptoe.com
`EMMA S. MARSHAK (PHV)
`emarshak@steptoe.com
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036
`Telephone: 202.288.8106
`Facsimile: 202.261.0557
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`Attorneys for Intervenors/Plaintiff-creditors
`AMAZON.COM, INC., AMAZON WEB
`SERVICES, INC., and
`TWITCH INTERACTIVE, INC.
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`JT SUBMISSION RE AMZ'S MOT TO COMPEL
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`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 860 Filed 03/24/23 Page 8 of 8
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`Dated: March 24, 2023
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`FRANDZEL ROBINS BLOOM & CSATO, L.C.
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`By: /s/ Thomas M. Robins III_________
`Thomas M. Robins III
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`Thomas M. Robins III (State Bar No. 054423)
`trobins@frandzel.com
`Michael G. Fletcher (State Bar No. 070849)
`mfletcher@frandzel.com
`Bruce D. Poltrock (State Bar No. 162448)
`bpoltrock@frandzel.com
`FRANDZEL ROBINS BLOOM & CSATO, L.C.
`1000 Wilshire Boulevard, Nineteenth Floor
`Los Angeles, California 90017-2427
`Telephone: (323) 852-1000
`Facsimile: (323) 651-2577
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`Attorneys for Plaintiffs BRILLIANT
`DIGITAL ENTERTAINMENT, INC. and
`MONTO HOLDINGS PTY. LTD.
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`CERTIFICATION OF CONCURRENCE IN FILING
`I, Todd R. Gregorian, am the ECF user whose identification and password are being used to
`file this Joint Submission. In compliance with Civil L.R. 5-1(h)(3), I hereby attest that Thomas M.
`Robins III has concurred in this filing.
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`Dated: March 24, 2023
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`By:
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`/s/ Todd R. Gregorian______
`Todd R. Gregorian
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`JT SUBMISSION RE AMZ'S MOT TO COMPEL
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`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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