PALETERIA LA MICHOACANA, INC. et al., Plaintiffs & Counter-Defendants,
PRODUCTOS LACTEOS TOCUMBO S.A. DE C. V. Defendant & Counter-Claimant.
MEMORANDUM OPINION Re Document Nos.: 70, 72, 75
RUDOLPH CONTRERAS, District Judge.
DENYING PROLACTO'S MOTION FOR A PROTECTIVE ORDER; GRANTING PROLACTO'S MOTION TO SEAL; OVERRULING AS MOOT PLM'S OBJECTIONS TO EVIDENCE
The parties in this matter claim the exclusive right to use various trademarks in connection with the sale of their food products, including ice cream and fruit popsicles, in the United States. The defendant and counter-claimant now seeks a protective order requiring that the deposition of its corporate designees take place in or near Mexico City, Mexico. Alternatively, the defendant and counter-claimant seeks an order requiring that the plaintiffs and counter-defendants pay for the corporate designees' travel, lodging, and per diem expenses if the deposition goes forward in the United States. Because the defendant and counter-claimant has not shown that deposition of its corporate designees in the United States will be unduly burdensome, the Court will deny its motion.
II. FACTUAL BACKGROUND
The plaintiffs and counter-defendants, Paleteria La Michoacana, Inc. and Paleteria La Michoacana, LLC (collectively, "PLM"), are closely related companies that produce and distribute ice cream bars known as "paletas." The defendant and counter-claimant, Productos Lacteos Tocumbo S.A. de C.V. ("Prolacto"), is a Mexican company that operates in the same industry. This trademark dispute began in 2007, when Prolacto initiated a proceeding in the United States Patent and Trademark Office ("USPTO") seeking cancellation of certain trademarks registered by PLM. See 2d Am. Compl. (Dkt. No. 40) § 29. In 2011, the Trademark Trial and Appeal Board ("TTAB") granted Prolacto's petition and denied PLM's later request for reconsideration of the cancellation. See id. Exs. A-B (Dkt. Nos. 40-1 to 40-2).
In September 2011, PLM filed a civil action in this Court seeking judicial review of the TTAB's cancellation and asserting several other causes of action. See Compl. (Dkt. No. 1). Despite its success before the USPTO, Prolacto's operative pleading in this case includes a cross-appeal of certain TTAB findings adverse to Prolacto. See Answer 2d Am. Compl. & Countercls. (Dkt. No. 41) at 16-29. Prolacto also asserts seven affirmative counterclaims against PLM under both federal and D.C. law. See id. at 29-43.
Discovery in this case has been underway since June 2012. On February 28, 2013, PLM noticed the deposition of Prolacto pursuant to Federal Rule of Civil Procedure 30(b)(6). See Mot. Prot. Order Ex. A (Dkt. No. 70-2). PLM's notice sets Washington, D.C. as the location of the deposition, but the notice included a cover letter indicating that PLM is "amenable to working with [Prolacto] if there is a different location in the United States that is more convenient." See Liou Decl. Ex. E (Dkt. No. 71-6). Prolacto insisted that the deposition take place in Mexico City, where Prolacto is headquartered and the deponents reside. See id. Ex. F (Dkt. No. 71-7). After the parties' further correspondence failed to resolve the location issue, Prolacto moved for a protective order requiring that its corporate designees be deposed in Mexico City or, alternatively, that PLM pay for all of the transportation, lodging, and per diem expenses associated with a deposition of Prolacto's designees in the United States. See Mot. Prot. Order (Dkt. No. 70). PLM opposed the motion. See Opp'n Mot. Prot. Order (Dkt. No. 71). Prolacto filed a reply brief and supporting declaration, which it seeks to have sealed in part. See Mot. Seal (Dkt. No. 72). PLM objects to Prolacto's introduction of new evidence on reply and, in the alternative, seeks leave to file a sur-reply. See Obj. Evid. Reply (Dkt. No. 75).
III. PROLACTO'S MOTION FOR A PROTECTIVE ORDER
A. Legal Standard
A party served with a notice of deposition may move for a protective order pursuant to Federal Rule of Civil Procedure 26(c):
A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending-or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense....
Fed. R. Civ. P. 26(c)(1). Rule 26(c) empowers the Court to "specify terms, including time and place, for the disclosure or discovery" at issue upon a showing of good cause. Id. at 26(c)(1)(B). The burden of showing good cause falls upon the party moving for the protective order. See United States v. Kellogg Brown & Root Servs., Inc., 285 F.R.D. 133, 134 (D.D.C. 2012). "In considering where the deposition of a corporate agent is to take place, there is a general presumption that the deposition will occur at the corporation's principal place of business. However, this presumption is rebuttable and the Court can focus on several factors to determine if it would be inappropriate to have the deposition at the foreign defendant corporation's principal place of business." Rundquist v. Vapiano SE, 277 F.R.D. 205, 212 (D.D.C. 2011) (citations omitted). "The matter of the location of depositions of defendants ultimately is within the discretion of the Court, and instances of defendants having to appear for depositions at the place of trial are not unusual." Fin. Gen. Bankshares, Inc. v. Lance, 80 F.R.D. 22, 23 (D.D.C. 1978).
When determining whether it is appropriate to override this general presumption, courts consider the following factors: "location of counsel for both parties; size of defendant corporation and regularity of executive travel; resolution of discovery disputes by the forum court; and the nature of the claim and the relationship of the parties." Nat'l Cmty. Reinv. Coal. v. NovaStar Fin., Inc., 604 F.Supp.2d 26, 31 (D.D.C. 2009). These factors are not exhaustive, and when the proposed deposition involves foreign nationals courts have also considered such factors as the legal impediments to holding a deposition in the foreign nation and the potential affront to that nation's sovereignty. See, e.g., McKesson v. ...