In Re Pacific Pictures Corp.

679 F.3d 1121 (9th Cir. 2012)


Jerome Siegel and Joe Shuster created Superman. They ceded their intellectual property rights to D.C. Comics when they joined the company as independent contractors in 1937. Shuster, Siegel, their heirs, and D.C. Comics have been fighting over the right to royalties since 1938 when Superman was introduced to the public. Marc Toberoff, a licensed attorney, stepped into the fray. Toberoff approached the Heirs with an offer to manage preexisting litigation 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. Toberoff 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. Toberoff hired a new lawyer to work for one of his companies. This attorney allegedly absconded with copies of several documents from the Siegel and Shuster files. This attorney 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. D.C. Comics entrusted the documents to an outside attorney and sought to obtain them through ordinary discovery. Toberoff considered all communications to be subject to attorney-client privilege. In April 2007, a magistrate judge ordered certain documents, including the attorney's 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 Investigation). 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 controlling interest claiming that Toberoff interfered with its contractual relationships with the Heirs. The attorney's cover letter formed the basis of the lawsuit and was incorporated into the complaint. 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 Government would 'not provide the . . . documents . . . to non-governmental third parties except as may be required by law or court order.' Toberoff complied making no attempt to redact anything from the documents. D.C. Comics immediately requested all documents disclosed to the U.S. Attorney, claiming Toberoff had waived privilege. The magistrate judge agreed that a party may not selectively waive attorney-client privilege as they were no longer privileged. The District Court denied review. Toboroff filed a writ of mandamus.