Hyundai Motor Company v. Direct Technologies International, Inc. ( 2019 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
HYUNDAI MOTOR COMPANY, et al.,
Petitioners,
v. Case No. 1:19-mc-00206 (TNM)
DIRECT TECHNOLOGIES
INTERNATIONAL, et al.,
Respondents.
MEMORANDUM OPINION
Petitioners Hyundai Motor Company and Hyundai Motor America have filed trademark
infringement claims against Direct Technologies International (“DTI”) with the U.S.
International Trade Commission (“USITC”). See Pet’rs’ Mot. 1–2, ECF No. 1. In pursuit of its
claims, Hyundai seeks documents and deposition testimony from two Canadian residents whom
Hyundai believes possess relevant information about the trademark violations. See id. at 2. But
since foreign residents are beyond the U.S. courts’ jurisdictional reach, Hyundai has moved the
Court to issue letters rogatory for assistance from Canada’s judicial authorities. See id. at 1. DTI
opposes the motion. See Resp’ts’ Opp. 1–5, ECF. No. 5.
A letter rogatory is a formal request from a domestic court to a foreign court or judge
“that the testimony of a witness resident within [the foreign country] may be formally taken there
under its direction and transmitted to the first court for use in the pending action.” 8A CHARLES
ALAN WRIGHT, ARTHUR R. MILLER & RICHARD L. MARCUS, FEDERAL PRACTICE AND
PROCEDURE § 2083 (3d ed. 2010); see also 28 U.S.C. § 1781 (authorizing transmittal of letters
rogatory between domestic and foreign courts either directly or through the Department of State).
Federal Rule of Civil Procedure 28(b) sets a permissive standard for issuing letters
rogatory “(A) on appropriate terms after an application and notice of it; and (B) without a
showing that taking the deposition in another manner is impracticable or inconvenient.”
Harmonizing that tone, the D.C. Circuit has held there must be “good reason” to deny a party’s
request. See Zassenhaus v. Evening Star Newspaper Co., 404 F.2d 1361, 1364 (D.C. Cir. 1968).
Here, there is no good reason for denial. See id. Accompanying Hyundai’s motion is a
recommendation from a USITC Administrative Law Judge (“ALJ”) that this Court issue the
letters rogatory so Hyundai can fully investigate its infringement claims against DTI. See Pet’rs’
Mot. Ex. 1, ECF No. 1-2 (“ALJ Opinion”). According to the ALJ Opinion, Mr. Denis
Chegrinets and Ms. Irina Bakumenko both “perform services for DTI and have material
information” about Hyundai’s claims. See id.DTI’s contrary arguments are unconvincing. First, DTI contends that Hyundai’s request
is punitive, designed “to make litigation painful, and now, personal, for DTI’s president . . . by
seeking to depose his mother, Ms. Irina Bakumenko, who is not even a DTI employee.” See
Resp’ts’ Opp. at 1. The Court disagrees. DTI concedes that Ms. Bakumenko plays a limited role
assisting with DTI’s “housekeeping and administrative matters.” See id. at 2. Likewise, DTI
does not contest that Mr. Chegrinets bears some relevance to its business. See id. Both have
enough involvement with DTI’s affairs to overcome DTI’s baseless claims.
DTI’s second challenge—that Hyundai’s requests are untimely—is also unconvincing,
considering that Hyundai needs the Court’s assistance to reach the Canadian residents. See id. at
2–4; Pet’rs’ Mot. at 3. Perhaps the deadline for fact discovery before the USITC has passed, but
the ALJ Opinion offers no suggestion that Hyundai’s request is time-barred. See generally ALJ
Opinion. And even if Hyundai could have pursued one of the three other methods for taking a
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foreign deposition before filing its motion here, see Fed. R. Civ. P. 28(b)(1)(A)–(D), the Rule
also explicitly disclaims any requirement for “a showing that taking the deposition in another
manner is impracticable or inconvenient,” Fed. R. Civ. P. 28(b)(2)(B).
In view of the permissive standard for issuing letters rogatory, the Court will grant
Hyundai’s request. See Zassenhaus, 404 F.2d at 1364; Fed. R. Civ. P. 28(b). A separate Order
will issue.
2019.12.23
17:11:40 -05'00'
Dated: December 23, 2019 TREVOR N. McFADDEN, U.S.D.J.
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