United States District Court, D. Columbia.
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S.R.L., Petitioner: Jeffrey S. Jacobovitz, LEAD ATTORNEY,
ARNALL GOLDEN GREGORY, LLP, Washington, DC.
LUIS ALEJANDRO VELASCO, Respondent: Rebecca S. LeGrand, LEAD
ATTORNEY, KAISER, LEGRAND & DILLON PLLC, Washington, DC.
KAY, UNITED STATES MAGISTRATE JUDGE.
before the Court are Petitioner's Amended Motion to
Compel Luis Alejandro Velasco to Comply with Properly-Served
Subpoena and Incorporated Memorandum of Law (" Am.
Mot. to Compel" ) ; Respondent's Memorandum
in Opposition to Petitioner's Motion to Compel and in
Support of Mr. Velasco's Motion to Quash ("
Opp'n to Am. Mot. to Compel" ) ; Respondent's
Motion to Quash Subpoena (" Mot. to Quash"
) ; Petitioner's Reply in Support of Amended
Motion to Compel Luis Alejandro Velasco to Comply with
Properly-Served Subpoena and Incorporated Memorandum of
Law (" Reply in Supp. of Am. Mot. to Compel" )
; Petitioner HT S.R.L.'s Memorandum in Opposition
to Respondent's Motion to Quash Subpoena ("
Opp'n to Mot. to Quash" ) ; and Respondent's
Reply in Support of Respondent Luis Alejandro
Velasco's Motion to Quash Subpoena (" Reply in
Supp. of Mot. to Quash" ) . The Amended Motion to
Compel was referred to the undersigned for a resolution.
(Order ; Referral to Magistrate Judge ). For the
reasons set forth in this Memorandum Opinion, the Court
grants in part and denies in part Petitioner's Amended
Motion to Compel and denies Respondent's Motion to Quash.
S.R.L. (" Petitioner" ) is an Italian limited
liability company with a registered office in Milan, Italy
that " provides consultancy and management services for
information technology security." (Am. Mot. to Compel 1,
Ex. 1B Declaration of Roberto Glavio Tirone (" Tirone
Decl." ) [3-1] 25 at ¶ 3, Ex. 1C ("
Agreement" ) [3-1] 32). Petitioner's software
product, Galileo Remote Control System (" RCS" ),
allows " undetected monitoring of computer
activities[.]" (Am. Mot. to Compel 3; Agreement 32). On
March 1, 2012, Petitioner entered into a consultant agreement
(" Agreement" ) with Luis Alejandro Velasco ("
Respondent" ), who is self-employed and lives and works
in Annapolis, Maryland. (Opp'n to Am. Mot. to Compel 1,
3; Agreement 2).
Agreement assigns various responsibilities to Respondent,
including promoting RCS and Petitioner. (Am. Mot. to Compel
3; Tirone Decl. ¶ 5; Agreement ¶ ¶ 1.1-1.7).
In exchange for Respondent's work as Petitioner's
" U.S. marketing consultant and technical
assistant," Petitioner compensated Respondent $80,000
each year. (Opp'n to Mot. to Quash 1; Agreement ¶
4.1). Petitioner drafted the Agreement, which includes a
non-compete clause and a confidentiality clause prohibiting
Respondent from disclosing confidential information regarding
" for the entire duration of [the Agreement] and for a
period of one year starting from the termination of [the
Agreement.]" (Opp'n to Am. Mot. to Compel 1; Am.
Mot. to Compel 3-4; Tirone Decl. ¶ 7; Agreement ¶
¶ 5.1, 6.1). The Agreement also contains a choice of law
clause mandating Italian law governs the Agreement and a
choice of forum clause requiring the Court of Milan has
exclusive jurisdiction over " any disputes relating to
the interpretation or execution of the [Agreement.]"
(Agreement ¶ ¶ 12.1, 12.2; Opp'n to Am. Mot. to
March 17, 2015, Petitioner brought a civil suit ("
Italian Proceeding" ) against Respondent in the Court of
Milan, Italy (" Court of Milan" ) alleging
Respondent violated the non-compete clause of the Agreement.
(Am. Mot. to Compel 1, 4, Ex. 1D (" Italian
Complaint" ) [3-1] 39-64; Tirone Decl. ¶ 9). The
Italian Complaint alleges that Respondent represented
competitors and collaborated in developing, marketed, and
sold a competitor's software while under contract with
Petitioner, thus violating the Agreement. (Am. Mot. to Compel
4; Tirone Decl. ¶ ¶ 10-14). On April 10, 2015,
Petitioner filed an ex parte Application for an
Order Pursuant to 28 U.S.C. § 1782 to Conduct Discovery
for Use in a Foreign Proceeding in the United States District
Court for the District of Maryland. (Am. Mot. to Compel Ex. 1
(" Application" ) [3-1] 2-23). The proposed
subpoena commanding Respondent to testify at a deposition and
produce documents was attached. (Am. Mot. to Compel Ex. 1A
[3-1] 12-23). On April 17, 2015, the Honorable J. Frederick
Motz granted the Application, authorizing the issuance of the
subpoena. (Am. Mot. to Compel Ex. 2 (" Order" )
April 20, 2015, Petitioner issued the subpoena, commanding
Respondent to testify at a deposition on May 11, 2015 at
10:00 a.m. at Petitioner's counsel's office in
Washington, D.C. and produce documents at the
deposition. (Am. Mot. to Compel Ex. 3 ("
Subpoena" ) [3-3]). Respondent was served on April 23,
2015. (Am. Mot. to Compel Ex. 4 (" Affidavit of
Service" ) [3-4]). On May 5, 2015, Respondent personally
called Petitioner and requested to reschedule the deposition
due to a family graduation requiring his attendance. (Am.
Mot. to Compel 5; Opp'n to Am. Mot. to Compel 3). That
afternoon, Respondent personally e-mailed Petitioner
acknowledging the acceptance of his request to reschedule and
agreeing to appear for his deposition on May 21, 2015 (Am.
Mot. to Compel Ex. 5 [3-5], Ex. 11 [3-11]; Opp'n to Am.
Mot. to Compel Ex. D [4-1] 23). Petitioner responded that
evening accepting the request to reschedule and informing
Respondent he was still obligated to produce documents by the
date set forth in the Subpoena, May 11, 2015. (Am. Mot. to
Compel Ex. 11; Opp'n to Am. Mot. to Compel Ex. D). On May
6, 2015, Respondent replied that he also needed additional
time for the production and objected pursuant to Fed.R.Civ.P.
45(d)(2)(B) that the document " request is questionable
and overly broad and overly burdensome."  (Am. Mot. to
Compel Ex. 11; Opp'n to Am. Mot. to Compel Ex. D).
retained counsel on May 11, 2015 and she assumed
responsibility of communicating with Petitioner. (Opp'n
to Am. Mot. to Compel 3). Respondent served correspondence on
May 15, 2015, elaborating on his objections and explaining
why the discovery was improper. (Am. Mot. to Compel Ex. 6
[3-6]; Opp'n to Am. Mot. to Compel 3 Ex. E [4-1] 25-27).
On May 19, 2015, the parties exchanged a series of e-mails.
(Am. Mot. to Compel 6; Opp'n to Am. Mot. to Compel 3-4).
Petitioner explained that the objections were untimely
pursuant to Fed.R.Civ.P. 45(d)(2)(B), offered to accommodate
Respondent by deposing him in Annapolis, Maryland, and
proposed a meet and confer half an hour before the
deposition. (Am. Mot. to Compel Ex. 7 [3-7]; Opp'n to Am.
Mot. to Compel 3 Ex. F [4-1] 29-30). Petitioner also warned
that if Respondent failed to appear for his deposition,
Petitioner would file a motion to compel and move for
attorneys' fees and costs. (Am. Mot. to Compel Ex. 7;
Opp'n to Am. Mot. to Compel 3, Ex. F 30). Respondent
replied, disagreeing with Petitioner's position on
timeliness of the objections and indicating a new subpoena
would be required if the location of the deposition changed.
(Am. Mot. to Compel Ex. 8 [3-8]). Petitioner responded that
the deposition would go forward in the District of Columbia
as set forth in the Subpoena and reiterated availability to
meet and confer before the deposition. (Am. Mot. to Compel
Ex. 9 [3-9]). Respondent replied that Respondent would not
appear for the deposition and counsel was open to discussing
the discovery Petitioner sought. (Am. Mot. to Compel Ex. 10
[3-10]; Opp'n to Am. Mot. to Compel 3, Ex. G [4-1] 34).
20, 2015, the parties exchanged e-mails and scheduled a
telephonic meet and confer. (Opp'n to Am. Mot. to Compel
3 Ex. G 32-33). Respondent did not appear for his deposition
on May 21, 2015 or produce the documents requested in the
Subpoena. (Am. Mot. to Compel 6). At about 2:00 p.m. on May
21, 2015, the parties had a telephonic meet and confer but
were unable to resolve their dispute. (Am. Mot. to Compel 6).
Respondent proposed two alternatives to the Subpoena: (1)
waiting to see whether the Court of Milan ordered discovery
or (2) both parties " agree to engage in discovery
beyond what is available under Italian law, to allow Mr.
Velasco to similarly issue document requests to HT and take
depositions of key HT employees." (Opp'n to Am. Mot.
to Compel 4 Ex. H [4-1] 39).
following day, Petitioner filed a Motion to Compel Compliance
with the Subpoena. Respondent notified Petitioner that
the Motion to Compel contained " demonstrably false
Petitioner failed to disclose the fact that Respondent
personally objected to the document request on May 6, 2015.
(Opp'n to Am. Mot. to Compel Ex. I [4-1]
41-42). Petitioner then filed the instant
Amended Motion to Compel requesting an order (1) directing
Respondent to produce all documents requested in the
Subpoena, (2) establishing a date for Respondent to provide
deposition testimony and (3) instructing Respondent to pay
Petitioner's costs, including attorneys' fees,
related to compelling Respondent's compliance with the
Subpoena. (Am. Mot. to Compel 2). Respondent filed a Motion
to Quash requesting attorneys' fees and costs incurred as
a result of the Subpoena and Motion to Compel. (Mot. to
Quash). This Court held a hearing on both motions on August
Compelling Compliance with a Subpoena
to Fed.R.Civ.P. 45 (d)(2)(B), a party receiving a subpoena to
produce documents or tangible things may object to the
subpoena " before the earlier of the time specified for
compliance or 14 days after the subpoena is served."
Upon receiving objections, the serving party may then move
the court for an order compelling production after noticing
the commanded party. Id. The motion must be filed in
" the court for the district where compliance is
required[.]" Fed.R.Civ.P. 45(d)(2)(B)(i).
Enforcing a Subpoena Issued Pursuant to 28 U.S.C. §
to 28 U.S.C. § 1782(a), a district court has discretion
to " order [a person residing in its district] 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[.]" This statute authorizes a broad scope for
federal courts to assist foreign proceedings, but it does not
require discovery assistance. See Intel Corp. v.
Advanced Micro Devices, Inc., 542 U.S. 241, 247-48, 264,
124 S.Ct. 2466, 159 L.Ed.2d 355 (2004) (citing 28 U.S.C.
§ 1782(a)) (noting that the 1948 amendments to 28 U.S.C.
§ 1782(a) " substantially broadened the scope of
assistance" ). Thus, the court must first determine
whether it has the authority to permit or enforce the request
and then whether it should exercise its discretion to permit
or enforce the request. See Lazaridis v.
Int'l Ctr. for Missing & Exploited Children, Inc.,
760 F.Supp.2d 109, 112 (D.D.C. 2011) (citing Norex
Petroleum Ltd. v. Chubb Ins. Co. of Canada, 384
F.Supp.2d 45, 49 (D.D.C. 2005)).
Quashing a Subpoena
to Fed.R.Civ.P. 45 (d)(3), the court where compliance is
required may quash or modify a subpoena. If the commanding
party " timely" moves the court, the court "
must quash or modify a subpoena that: (i) fails to allow a
reasonable time to comply; (ii) requires a person to comply
beyond the geographical limits specified in Rule 45(c); (iii)
requires disclosure of privileged or other protected matter,
if no exception or waiver applies; or (iv) subjects a person
to undue burden." Fed.R.Civ.P. 45 (d)(3)(A). Quashing or
modifying a subpoena is permitted when a subpoena requires
" (i) disclosing a trade secret or
other confidential research, development, or commercial
information; or (ii) disclosing an unretained expert's
opinion or information that does not describe specific
occurrences in dispute and results from the expert's
study that was not requested by a party." Fed.R.Civ.P.
argues that this Court should compel Respondent to comply
with the Subpoena. (Am. Mot. to Compel 7). First, Judge Motz
of the District Court of Maryland reviewed the relevant
issues set forth in the Application; Judge Motz granted the
Application, authorizing the issuance of the Subpoena; and
Respondent subsequently agreed to appear at his deposition.
(Am. Mot. to Compel 7; Reply in Supp. of Am. Mot. to Compel
5). Second, Petitioner argues that Respondent's
objections set forth in the May 15, 2015 correspondence are
meritless. (Am. Mot. to Compel 7-8). Third, Petitioner argues
that Respondent did not timely file his Motion to
Quash or file a motion for a protective
order, thus failing to take " appropriate steps to
excuse compliance[.]" (Am. Mot. to Compel 7; Opp'n
to Mot. to Quash 4). Lastly, the Motion to Quash does not
comply with Local Civil Rule 7(m) and does not propound
arguments sufficient to justify quashing a subpoena pursuant
to Fed.R.Civ.P. 45(d)(3)(A). (Opp'n to Mot. to Quash
opposes Petitioner's Amended Motion to Compel and moves
this Court to Quash the Subpoena. (Mot. to Quash; Opp'n
to Am. Mot. to Compel). First, Petitioner failed to "
make a good faith effort to resolve this dispute, or even
review basic facts[.]" (Opp'n to Am. Mot. to Compel
4). Second, Petitioner's original Motion to Compel "
falsely stated" Respondent failed to object within
fourteen days of service pursuant to Fed.R.Civ.P. 45.
(Opp'n to Am. Mot. to Compel 5). Third, Petitioner filed
the Amended Motion to Compel in response to Respondent's
correspondence informing Petitioner of this error.
(Opp'n to Am. Mot. to Compel 4, Ex. I). Additionally,
Respondent argues that the factors to consider with a 28
U.S.C. § 1782(a) request weigh against allowing
discovery because (1) the discovery sought is unavailable
under Italian law, (2) failing to disclose the aforementioned
factor in the Application was an attempt to " circumvent
foreign proof-gathering restrictions," (3) Respondent
" is a participant in the foreign proceeding," and
(4) Petitioner is " 'jump[ing] the gun' on
discovery in the foreign suit" by seeking discovery
prior to " the appropriate stage" in the Italian
Proceeding. (Reply in Supp. of Mot. to Quash 3-5,
(citations omitted); Opp'n to Am. Mot. to Compel 6). With
respect to Petitioner's contentions regarding the Motion
to Quash, Respondent asserts that he attempted to confer with
he did not unreasonably delay filing his Motion to Quash, and
the Subpoena imposes an undue burden. (Reply in Supp. of Mot.
to Quash 1-3).
Amended Motion to Compel
Compliance with Local Civil Rule 7(m) and Fed.R.Civ.P.
preliminary matter, the Court notes that the Amended Motion
to Compel complies with Fed.R.Civ.P. 37 and the Local Rules
of the United States District Court for the District of
Columbia. Local Civil Rule 7(m) sets forth a " duty to
confer" with opposing counsel in a good-faith effort
when a party anticipates filing a nondispositive motion to
determine whether there is opposition and whether the scope
can be narrowed. The motion must include " a statement
that the required discussion occurred, and a statement as to
whether the motion is opposed." Id. Similarly,
Fed.R.Civ.P. 37(a)(1) requires a motion for an order
compelling disclosure or discovery to include a certification
that the movant has in good faith conferred or attempted to
confer with the person or party failing to make disclosure or
discovery in an effort to obtain it without court action.
Courts have held that conferring with the opposing party is a
prerequisite to any successful motion to compel. See
U.S. ex rel. Pogue v. Diabetes Treatment Ctrs. of Am.,
Inc., 235 F.R.D. 521, 529-30 (D.D.C. 2006) (denying
motion to compel for failure to attempt to meet and confer in
good faith prior to filing). Here, the Amended Motion to
Compel includes a certification that the parties "
conferred in good faith via telephone on May 21, 2015"
but were unable to reach a resolution. (Am. Mot. to Compel 1,
12). Petitioner subsequently filed a Motion to Compel the
does not refute that the parties conferred on May 21, 2015,
but he asserts that Petitioner failed to " make a good
faith effort to resolve this dispute" because Petitioner
rejected Respondent's May 21, 2015 proposed alternatives
to the Subpoena and rushed to file a motion to
compel. (Opp'n to Am. Mot. to Compel 4,
Ex. H). Despite rejecting these proposals, Petitioner had
previously attempted to accommodate Respondent in good
faith. (Am. Mot. to Compel Ex. 5, Ex. 7,
Ex. 11; Opp'n to Am. Mot. to Compel 3, Ex. D, Ex. F).
Respondent's May 21, 2015 proposals attempted to sidestep
the court-authorized Subpoena after Petitioner had attempted
to accommodate Respondent repeatedly in good faith. Thus, the
Court finds that Petitioner's rejections of