MEMORANDUM ORDER
TREVOR
N. MCFADDEN, U.S.D.J.
Before
the Court is a Motion to Quash Subpoenas Duces Tecum and/or
For a Protective Order, ECF No. 1, filed by law firm
Petitioners Cahn & Samuels, LLP, and Maurice U. Cahn,
Esq. Since several of the core issues raised in this case are
already pending in the underlying suit, and for other reasons
explained below, the Court finds that exceptional
circumstances warrant transferring this matter to the court
that issued the subpoenas, the Southern District of New York.
I.
In the
underlying lawsuit, the Topps Company claims that Koko's
Confectionary and Novelty has committed intellectual property
violations relating to a popular Topps' candy product,
the Juicy Drop Pop. Mot. Quash 1; Opp. 2. Topps is also suing
an individual named Paul Lapeyrouse on related allegations,
in the Eastern District of Louisiana. Unsatisfied with
Koko's discovery productions, Topps served subpoenas on
the intellectual property lawyers who represented Koko's
and Mr. Lapeyrouse, although not in New York litigation: Mr.
Cahn and his firm, Cahn & Samuels. ECF Nos. 1-2, 1-3
(subpoenas duces tecum); Opp. Mot. Quash 8. The
Petitioners filed the instant Motion to Quash. In addition to
briefing that motion, the parties have each filed motions to
strike portions of the others' briefing. Petitioners'
Motion to Disregard and/or Strike Declaration of Jean-Paul
Ciardullo, ECF No. 4; Respondent's Motion to Strike (1)
Petitioner's New Arguments on Reply, and (2) Koko's
Improper Submission at Dkt. 5, ECF No. 7. All motions are now
fully briefed.
The
Petitioners do not consent to transfer, Notice, ECF No. 15,
and a court may transfer subpoena-related motions to the
court of issuance only “if the person subject to the
subpoena consents or if the court finds exceptional
circumstances.” Fed.R.Civ.P. 45(f). The Advisory
Committee Note explains how courts should interpret
“exceptional circumstances”:
In the absence of consent, the court may transfer in
exceptional circumstances, and the proponent of transfer
bears the burden of showing that such circumstances are
present. The prime concern should be avoiding burdens on
local nonparties subject to subpoenas, and it should not be
assumed that the issuing court is in a superior position to
resolve subpoena-related motions. In some circumstances,
however, transfer may be warranted in order to avoid
disrupting the issuing court's management of the
underlying litigation, as when that court has already ruled
on issues presented by the motion or the same issues are
likely to arise in discovery in many districts. Transfer is
appropriate only if such interests outweigh the interests of
the nonparty served with the subpoena in obtaining local
resolution of the motion.
Fed. R. Civ. P. 45(f) advisory committee's note (2013
amendments). Factors to consider “include the
complexity, procedural posture, duration of pendency, and the
nature of the issues pending before, or already resolved by,
the issuing court in the underlying litigation.”
Judicial Watch, Inc. v. Valle Del Sol,
Inc., 307 F.R.D. 30, 34 (D.D.C. 2014) (citations
omitted).
II.
Here,
exceptional circumstances exist for two reasons. First, the
Respondents only seek this information from the Petitioners
because they are concerned that they cannot get it from
Koko's. Opp. Mot. Quash 8. The propriety of these
third-party subpoenas necessarily turns on what Topps can
obtain from Koko's, and that issue is already
before the originating court. Second, even the issue of
attorney-client privilege raised in the Petitioners'
Motion to Quash rests on factual and legal developments that
the underlying court will be in a better position to manage.
Topps
has already filed, and fully briefed, a Motion to Compel
production from Koko's in the underlying suit. ECF Nos.
110, 116-17, and 125 in S.D.N.Y. No. 16-cv-05954. In support
of the Motion to Quash here, the Petitioners core contentions
are that the subpoenas are (1) overly burdensome, since
“Topps already has or could have sought most, if not
all of, the requested information from [Koko's], ”
Mot. Quash 11, and (2) inappropriate, since they seek
information subject to attorney client privilege.
Id. at 14-15. Topps answers that “Koko's
has withheld documents, ” Opp. 4, making
“non-party subpoena practice a necessary tool.”
Id. at 5. The two motions-this Motion to Quash, and
Topps' Motion to Compel-put largely the same information
at issue.
In the
underlying case, Topps claims that Koko's should produce
the following materials, as summarized in Topps' Motion
to Compel:
(1) a complete set of purchase orders and related
correspondence with prospective distributors and purchasers
of the accused products, (2) a complete set of physical
samples of the accused products, as Koko's already
previously provided to the [Southern District of New York]
Court, and (3) communications with Paul Lapeyrouse and his
businesses, i.e., the developer, manufacturer, and
supplier of the accused products.
Mem. Of
Law in Support of Mot. Compel 1 (Mot. Compel), ECF No. 110-1
in S.D.N.Y. No. 16-cv-05954. Here, the subpoenas as narrowed
ask the Petitioners to produce:
(1) All communications and agreements to which both
Lapeyrouse and Koko's are a party that refer or pertain
to any or all of (a) the Squeezy Squirt product or prototypes
thereof, (b) Topps, (c) the Juicy Drop product, (d) the
‘316 Patent, (e) the present lawsuit, (f) any efforts
to redesign Squeezy Squirt or introduce a new product in
response to Topps' allegations in this lawsuit, and (g)
patent or trade dress applications relating to candy products
that either dispense liquid ...