In a case involving licensing rights for early musical recordings of Bob Marley and the Wailers, the 9th Circuit ruled 
that an antitrust defendant’s assertion of the Noerr–Pennington defense does not implicitly waive the attorney–client privilege. Rock River Communications, Inc. v. Universal Music Group, Inc., 730 F.3d 1060 (CA9 2013). The Ninth Circuit joined the Fifth Circuit in this non-waiver ruling. See In re Burlington Northern, Inc., 822 F.2d 518 (CA5 1987).
Facts
Rock River Communications purchased non-exclusive licensing rights to 16 musical recordings of Bob Marley and the Wailers. Rock River then produced remixes of Marley’s music, created an album titled “Roots, Rock, Remixed,” and secured the album’s distribution via iTunes and record stores. Rock River also secured a deal with Relatively Media to include its remix of Marley’s “Lively Up Yourself” on the soundtrack to the 2010 Dear John motion picture.
But Universal Music Group (UMG) sent Rock River a cease-and-desist letter claiming it had exclusive licensing rights to Marley’s music, and further sent Apple and Relatively Media letters threatening suit if they distributed or used Rock River’s Marley recordings. As a result, Relatively Media decided not to use “Lively Up Yourself” on the Dear John soundtrack and Apple pulled “Roots, Rock, Remixed” from its iTunes store.
Before reading further and diving into the ever-intriguing Noerr–Pennington doctrine and related privilege issues, you should absorb a little Bob Marley, “lively up yourself and don’t be no drag.”
Noerr–Pennington Doctrine
Rock River sued UMG for, among other causes of action, antitrust violations and the common-law tort of intentional interference with prospective economic advantage, and UMG asserted the Noerr–Pennington defense to the antitrust claims. The Noerr–Pennington doctrine arises from the Supreme Court’s rulings in Eastern Railroad Presidents Conference v. Noerr Motor Freight, Inc., 365 U.S. 127 (1961) and United Mine Workers v. Pennington, 381 U.S. 127 (1965), and holds that litigation activity, including pre-litigation cease-and-desist letters, cannot form the basis of antitrust liability unless the activity was a sham.
Non-Waiver Ruling
UMG objected to producing various documents, asserting the attorney–client privilege. Rock River claimed that UMG’s assertion of the Noerr–Pennington defense waived
the privilege, analogizing to the at-issue waiver doctrine. Rock River claimed that UMG bore the burden of proving the genuineness of its cease-and-desist letter and related activities and, by injecting this defense into the case, waived the attorney–client privilege as to that issue.
The 9th Circuit disagreed. While recognizing that a defense placing attorney–client communications at issue waives the privilege, the court ruled that the Noerr–Pennington defense, unlike an advice-of-counsel defense, does not implicitly waive the privilege. Although UMG asserted the Noerr–Pennington defense, it was Rock River that had the burden of proving that UMG’s litigation activity was a sham. Consequently, the court held that “the Noerr–Pennington defense does not necessarily place attorney–client communications at issue” and does not constitute privilege waiver.