Pinnacle Pizza Avoids Disaster in Trademark Deposition
The District Court of South Dakota quashed a subpoena in Pinnacle Pizza Company, Inc. v. Little Caesar Enterprises, Inc., 2007 WL 1960585 (D.S.D. 7/3/07).
Pinnacle Pizza is a franchisee of Little Caesar's Pizza. Pinnacle claimed it invented the slogan "Hot n' Ready" and that Little Caesar's wrongfully used their slogan. James Fischer, Pinnacle's president, revealed in his deposition that he hired an attorney to perform a trademark search. When asked the results of the search, Fischer replied, the attorney opined that "Hot n' Ready was too generic to receive trademark protection. Pinnacle's counsel never objected to this line of questioning.
Little Caesar's issued a subpoena to depose the attorney. The court agreed with Pinnacle that Fischer had made an inadvertent disclosure of a statement protected by attorney-client privilege. The court adopted the five factors from Hydraflow, Inc. v. Enidine Inc., 145 F.R.D. 626 (W.D.N.Y. 1993) and held that Pinnacle did not waive the privilege through the inadvertent disclosure.
