Lg Electronics, U.s.a., Inc. v. Whirlpool Corporation

In the
United States Court of Appeals
For the Seventh Circuit
No. 09-3777
IN RE:
WHIRLPOOL CORPORATION,
Petitioner.
Petition for Writ of Mandamus
from the United States District Court for the
Northern District of Illinois, Eastern Division.
No. 08 C 242—Amy J. St. Eve, Judge.
No. 09-3795
LG ELECTRONICS, U.S.A., INC.,
Plaintiff-Appellee,
v.
WHIRLPOOL CORPORATION,
Defendant-Appellant.
Appeal from the United States District Court
for the Northern District of Illinois, Eastern Division.
No. 08 C 242—Amy J. St. Eve, Judge.
SUBMITTED FEBRUARY 3, 2010—DECIDED MARCH 3, 2010

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2 Nos. 09-3777 & 09-3795
Before EASTERBROOK, Chief Judge, and WOOD and EVANS,
Circuit Judges.
PER CURIAM. LG Electronics, U.S.A., sued Whirlpool
Corporation for infringing its trademark in a dryer that
uses steam to reduce wrinkles. When it asked Whirlpool
to produce communications between its attorneys and
its outside advertising agencies relating to the pur-
portedly infringing dryer, Whirlpool objected that the
communications were protected by the attorney-client
privilege. Whirlpool argued that the advertising agents
were not third parties, to whom the privilege typically
does not apply, but de facto employees of the company.
Whirlpool alternatively contended that the communica-
tions should be kept confidential on the ground that the
advertising agencies shared with it a common legal
interest in producing lawful advertisements. In a lengthy
and thoughtful decision, the district court rejected both
arguments and ordered Whirlpool to disclose the com-
munications.
Whirlpool immediately sought relief in this court. At
the time there was uncertainty about whether rulings
on the attorney-client privilege could be appealed as
collateral orders, because Mohawk Indus., Inc. v. Carpenter,
130 S. Ct. 599 (2009), which addressed this very issue,
was pending before the Supreme Court. Whirlpool there-
fore filed both an appeal and a petition for a writ of
mandamus. It asked us to rule on the mandamus
petition only if the Court concluded we lacked jurisdic-
tion over the appeal. We granted Whirlpool’s request to
stay proceedings in both cases pending the Supreme
Court’s decision in Mohawk.

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Nos. 09-3777 & 09-3795 3
The Supreme Court held in Mohawk that rulings that
allegedly infringe upon the attorney-client privilege are
not appealable as collateral orders. Id., 130 S. Ct. at 609.
Consequently, as the parties acknowledge, Whirlpool’s
appeal must be dismissed for lack of jurisdiction.
In its petition for a writ of mandamus, to which LG
Electronics has responded, Whirlpool submits that the
unavailability of collateral appeal requires us to relax
our standards for issuing writs of mandamus. We reject
this argument. A petitioner seeking a writ of mandamus
must show both that the challenged district court order
will be effectively unreviewable if the petitioner is
forced to wait until the end of the case and also that the
order is patently erroneous or usurpative in character.
United States v. Vinyard, 539 F.3d 589, 591 (7th Cir. 2008).
As the Supreme Court commented in Mohawk, mandamus
is reserved for “extraordinary circumstances—i.e., when
a disclosure order ‘amounts to a judicial usurpation of
power or a clear abuse of discretion,’ or otherwise works
a manifest injustice. . . .” Id., 130 S. Ct. at 607 (quoting
Cheney v. U.S. Dist. Ct., 542 U.S. 367, 390 (2004)). The
Court concluded that even though discretionary review
mechanisms such as mandamus “do not provide relief
in every case, they serve as useful ‘safety valves’ for
promptly correcting serious errors.” Id., at 607-08 (quoting
Digital Equip. Corp. v. Desktop Direct, Inc., 511 U.S. 863,
883 (1994)) (emphasis added).
This is not such a case. The district court carefully
considered Whirlpool’s arguments that communications
between its counsel and outside advertising agencies

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4 Nos. 09-3777 & 09-3795
should be protected by the attorney-client privilege,
either because agency staff functioned as de facto
Whirlpool employees or because the agencies and Whirl-
pool shared a common legal interest. And the cases
Whirlpool cites, most of them from district courts, fail
to establish that the district court’s rejection of Whirl-
pool’s position was patently erroneous or usurpative in
character—in other words, a serious error. Without that,
mandamus is inappropriate, regardless of whether Whirl-
pool has any other opportunities for appellate review,
such as refusing to turn over the documents and then
using the ensuing sanctions under FED. R. CIV. P. 37(b)(2)
as the basis of an appeal. Accordingly, Whirlpool’s
petition for writ of mandamus is DENIED.
The conclusion that we have reached makes it unneces-
sary to act on other pending motions. The clerk of this
court shall return all of the sealed envelopes to the
district court under seal.
3-3-10

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