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Republic Technologies (NA), LLC v. BBK Tobacco & Foods, LLP

United States District Court, N.D. Illinois, Eastern Division

January 14, 2020




         Currently before the Court is Defendant HBI's Application under 28 U.S.C. § 1782 for an Order to Take Discovery for Use in a Foreign Proceeding [677]. The question presented before this Court is whether Defendant employed the correct procedure in seeking discovery of documents for a litigation in Germany. For the reasons and to the extent stated below, Defendant's Application under 28 U.S.C. § 1782 [677] is denied.


         This case involves a trademark battle over the packaging and advertising for organic hemp cigarette rolling papers. Plaintiff Republic makes and distributes cigarette paper booklets under the OCB brand name, whereas Defendant HBI markets and distributes rolling papers under the RAW brand name. Id. Doc. [609] at 3, 6. In 2009, HBI introduced its RAW Organic Hemp cigarette rolling papers in the United States. Id. at 6. Republic subsequently introduced its competing OCB Organic Hemp papers in the United States in 2014. Id. Following Republic's launch, HBI asserted that the packaging design for the OCB Organic Hemp Papers was so similar to HBI's that consumers would be confused about whether the organic hemp papers were HBI papers. Id. at 7. HBI further claimed that Republic's packaging and advertising for its OCB Organic Hemp papers copied HBI's RAW Organic Hemp packaging and advertising, which are covered by HBI's copyright. Id.

         Republic disagreed and initiated the present lawsuit, asking for a judgment that the OCB Organic Hemp packaging and advertising does not violate any rights HBI has in its packaging and advertising designs. Doc. [609] at 7. In addition to seeking a declaration, Republic brings claims against HBI for: false and misleading statements to the public in violation of federal law; deceptive trade practices in violation of state law; and unfair competition in violation of state law. Id. at 4-5. In turn, HBI brings five counterclaims against Republic: (1) trade dress infringement; (2) false designation of origin and unfair competition; (3) deceptive trade practices in violation of state law; (4) state common law trademark and unfair competition; and (5) copyright infringement. Id. at 8.


         HBI moves the Court for an order to take discovery for use in a foreign proceeding, pursuant to 28 U.S.C. § 1782. According to HBI, Republic has produced documents in this litigation regarding the ingredients of the OCB papers that are directly relevant to a case pending in Germany. Doc. [685] at 3. In the German litigation, a cigarette rolling paper trade group sued HBI Europe GmbH (HBI's European affiliate) and HBI's CEO for unfair competition and false statements regarding competitor ingredients. Id. at 3. HBI claims that because Republic is not a party to the German case, and because Republic is not present in Germany, HBI Europe will not be able to obtain the Republic ingredient papers in the German proceedings. Id. at 3-4. HBI additionally acknowledges that the already-produced ingredient documents were designated as “Confidential” or “Highly Confidential” under the protective order in this case, meaning that HBI is not authorized to use the documents in another litigation, and that the review of the ingredients documents is largely limited to HBI's outside counsel. Id. at 2.

         The Court finds that HBI has failed to follow the proper procedure to seek relief under 28 U.S.C. § 1782. In this Court's view, HBI's application for foreign discovery should have been filed as a separate action, and not as a discovery motion[1] in the present litigation. Specifically, the legislative history of Section 1782, the immediate appealability of a Section 1782 order, and the relatedness-or lack thereof-between HBI's request for foreign discovery and the present litigation, inform the Court's decision.

         I. Legislative History of 28 U.S.C. § 1782

         “Section 1782 is the product of congressional efforts, over the span of nearly 150 years, to provide federal-court assistance in gathering evidence for use in foreign tribunals.” Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 247 (2004). In 1855, the precursor-act to Section 1782 enabled foreign tribunals to send letters rogatory, [2] which were forwarded to American courts through diplomatic channels. Id. (citing Act of Mar. 2, 1855, ch. 140, § 2, 10 Stat. 630). Section 1782, codified in 1948, “substantially broadened the scope of assistance federal courts could provide for foreign proceedings” by “eliminat[ing] the prior requirement that the government of a foreign country be a party or have an interest in the proceeding.” Id. at 247-48. In 1964, Section 1782's assistance to foreign tribunals was expanded, allowing the discovery of documentary and other tangible evidence in addition to testimony. Id. at 248. The 1964 amendments further allowed the request of discovery from any “interested person, ” who the legislative history stated could be a “person designated by or under a foreign law, or a party to the foreign or international litigation.” S. Rep. No. 1580, 88th Cong., 2d Sess. (1964), reprinted in 1964 U.S.C.C.A.N. 3782, 3789. In the most recent amendment from 1996, the scope of Section 1782 was once more enlarged, this time to encompass discovery for foreign criminal investigations conducted before formal accusation. Intel, 542 U.S. at 249.

         As a result of the preceding legislative expansions, Section 1782(a) now broadly empowers a district court to order many types of discovery for use in various foreign proceedings, upon receiving a letter rogatory, a request by a foreign or international tribunal, or upon the application of any interested person:

The district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal, including criminal investigations conducted before formal accusation. The order may be made pursuant to a letter rogatory issued, or request made, by a foreign or international tribunal or upon the application of any interested person and may direct that the testimony or statement be given, or the document or other thing be produced, before a person appointed by the court. By virtue of his appointment, the person appointed has power to administer any necessary oath and take the testimony or statement. The order may prescribe the practice and procedure, which may be in whole or part the practice and procedure of the foreign country or the international tribunal, for taking the testimony or statement or producing the document or other thing. To the extent that the order does not prescribe otherwise, the testimony or statement shall be taken, and the document or other thing produced, in accordance with the Federal Rules of Civil Procedure.
A person may not be compelled to give his testimony or statement or to produce a document or other thing in violation of any legally applicable privilege.

28 U.S.C. § 1782(a). From its far-reaching text and legislative history, it is clear that Section 1782's “twin aims are ‘providing efficient assistance to participants in international litigation and encouraging foreign countries by example to provide similar assistance to our courts.'” In reApplication for an Order for Judicial Assistance in a Foreign Proceeding in the Labor Court of Brazil, 466 F.Supp.2d 1020, 1025-26 (N.D. Ill. 2006) (citation omitted). Put another way, Section 1782 was ...

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