Republic Techs. (NA), LLC v. BBK Tobacco & Foods LLP d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Jan. 14, 2020) (Harjani, Mag. J.)

Magistrate Judge Harjani denied defendant HBI’s 28 U.S.C. § 1782 motion for an order to take discovery for use in a foreign proceeding in this trademark proceeding involving the parties’ packaging for cigarette rolling papers.

Certain documents produced in this US action were allegedly relevant to a German proceeding involving plaintiffs (collectively “Republic Tobacco”) and an affiliate of HBI.

The Court held that § 1782 contemplates a party seeking US discovery for a foreign matter filing a new district court action seeking letters rogatory approving limited discovery for use in the foreign proceeding. In this case, HBI used an existing suit between parties related to the German suit as a vehicle to file a motion. This posture transforms the proceeding from one of a new party seeking foreign discovery to an existing US litigant seeking to circumvent the Court’s Protective Order by allowing it to produce documents to its foreign affiliate, beyond the bounds of the Protective Order.

The Court reasoned that the needed for a separate action was illuminated by the fact that a decision on HBI’s discovery motion would not be final and, therefore, not appealable. Whereas, courts have held that a decision in a standalone § 1782 action was final and immediately appealable. Furthermore, despite HBI’s claim to the contrary, it was not clear that a separate action filed in the Northern District would be assigned or automatically transferred to the same judge. First, the Northern District randomly assigns all cases initially. Second, a motion for a reassignment pursuant to Local Rule 40.4(b) would likely fail. It was unclear that the present Court would require less time to be educated about the German action. The issues in the instant case and those in the § 1782 proceeding were not susceptible to resolution in a single proceeding. And the parties, the law and the underlying events leading to the two litigations were all different.