Gucci America, Inc. v. Weixing Li

135 F. Supp. 3d 87, 2015 U.S. Dist. LEXIS 131567, 2015 WL 5707135
CourtDistrict Court, S.D. New York
DecidedSeptember 29, 2015
DocketNo. 10 Civ. 4974(RJS)
StatusPublished
Cited by33 cases

This text of 135 F. Supp. 3d 87 (Gucci America, Inc. v. Weixing Li) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Gucci America, Inc. v. Weixing Li, 135 F. Supp. 3d 87, 2015 U.S. Dist. LEXIS 131567, 2015 WL 5707135 (S.D.N.Y. 2015).

Opinion

OPINION AND ORDER

RICHARD J. SULLIVAN, District Judge:

On June 25, 2010, Plaintiffs Gucci America, Inc., and certain of its affiliates (“Gucci”) commenced'this trademark infringement action against the owners and operators of a Chinese website dedicated to the sale of imitation handbags and other counterfeit items bearing Gucci’s trademarks. (Doc. No. 1.) Now before the Court is Gucci’s -motion to compel nonparty Bank of China (“BOC”) to comply with subpoenas requesting the production of account documents relating to all Defen[91]*91dants. (Doc. No. 135.) For the reasons set forth below, the motion is granted.

I. Background

The Court presumes the parties’ familiarity with the facts underlying this case, which were thoroughly discussed in the Court’s August 23, 2011 Memorandum and Order (Doc. No. 75 (“August 23 Order”)) and May 18,2012 Memorandum and Order (Doc. No. 98 (“May 18 Order”)); However, to provide context, the Court briefly recites. the facts and procedural history below.

Gucci is a distributor .of luxury handbags, clothing, jewelry, fragrances, and home products. In or around June 2010, Gucci discovered that Defendants and. their affiliates were offering for sale on the internet counterfeit versions of Gucci’s products. On June 25, 2010, Gucci initiated this action against certain Defendants pursuant to the Lanham Act, 15' U.S.C. § 1051 et seq., and related state-law causes of action. Gucci amended its complaint to add additional Defendants on October 4, 2010 (Doc. No. 18) and on 'March 10, 2011 (Doc. No. 55).

On July 12, 2010, the Court issued a preliminary injunction (the “Injunction”), which froze Defendants’ assets and enjoined Defendants from manufacturing, distributing, marketing, or selling counterfeit goods. (Doc. No. 12.) Because Gucci had obtained evidence that certain Defendants had wired the proceeds of the counterfeit sales to accounts at the Chinese headquarters of BOC (the “Head Office”), the Injunction also provided that “any banks ... who receive actual notice of this order ... are, without prior approval of the Court, restrained and enjoined from transferring, disposing of, or secreting any money, stocks, bonds, real or personal property, or other assets of Defendants.” (Id. at 6.) The Injunction also provided that “any third party receiving a subpoena pursuant to this Order shall produce documents responsive to such requests within ten (10) days of service of such subpoena.” (Id. at 9.)

Pursuant to the Injunction, Gucci served a subpoena on BOC on July 16, 2010 (the “2010 Subpoena”) in accordance with Rule 45 of the Federal Rules of Civil Procedure, requesting documents pertaining to any BOC accounts maintained by Defendants and defining “ACCOUNTS” to include “all ■... accounts at [BOC] held by Defendants; including, but not limited to” two specifically named BOC accounts. (Doc. No. 28-5 at 4.) The 2010 Subpoena also requested “documents associated with any open'or closed checking, Savings, money market accounts, and certificates of deposit held 'in the name of any of the Defendants, including but not limited to” the two named BOC accounts. (Id. at 6.) Shortly before filing the Second Amended Complaint, Gucci served BOC with a second subpoena on February 23, 2011 (the “2011 Subpoena”), making some new requests for information but largely repeating the same requests contained in the 2010 Subpoena. (Doc. No. 109-4.) Although again seeking documents pertaining to- “any” BOC accounts maintained by any of the Defendants, the 2011 Subpoena specifically identified the same two accounts identified' in the 2010 Subpoena, along with six additional accounts. (Id.) In a supplemental submission, Gucci identified one other account, bringing the total number of BOC accounts connected to Defendants to nine. (Doc. No. 58-9.)

On August 23, 2011, the Court granted Gucci’s motion to compel BOC to comply with the- 2010 Subpoena and the asset freeze provisions of the Injunction, and denied BOC’s cross-motion to.modify the Injunction so as to exclude assets held by BOC in any of its locations in China. (August 23 -Order at 1.) On September 12, [92]*922011, the Court denied BOC’s motion for leave to appeal, as well as BOC’s request for an additional twenty-one-days to comply with the August 23 Order. (Doc. No.' 79.) In response to the Court’s September 12 Order, BOC produced documents relating to only the two accounts identified in the 2010 Subpoena, and refused to produce information regarding other accounts held, by Defendants. (Doc. No. 116 at 3.) According to Gucci, BOC’s production was also incomplete as to even .those two accounts, since it did not include “documents reflecting deposits, and., withdrawals into the account[s], such as monthly, account statements], even though these, were among the.documents [that] Gucci.specifically requested.” (Doc. No. Ill at 9.)

On. November 30, 2011, BOC filed a motion for reconsideration of the Court’s August 23 Order, based principally on a November 3, 2011 letter that BOC received from the People’s Bank of China (“PBOC”) and the China Banking Regulatory Commission (“CBRC”). In the letter, PBOC and CBRC set forth their views as to the application of Chinese bank secrecy laws to disclosures' of customer'information outside of China, China’s commitment to using Hague Convention procedures for document requests, and the likelihood of sanctions being imposed on BOC in China as a result of its compliance with the August 23 Order. (Doc. No. 91-9.) On May 18, 2012, the Court issued its -Memorandum and Order denying the motion for reconsideration. (May 18 Order at 1.) BOC thereafter appealed the Court’s August 23 and May 18 Orders to the Second Circuit. (Doc. Nos. 80 & 99.) . .

On September 17, 2014, the-Second Circuit affirmed the Court’s Injunction but vacated its August-23 and-May-T8 Orders in light of the Supreme Court’s opinion on general personal jurisdiction in Daimler AG v. Bauman, — U.S. —-, 134 S.Ct. 746, 187 L.Ed.2d 624 (2014), which postdated the Court’s August 23 and May 18 Orders. Gucci Am., Inc. v. Weixing Li, 768 F.3d 122 (2d Cir.2014) (“Gucci II”). The Second Circuit remanded the case to this Court to consider in the first instance whether the Court has specific personal jurisdiction over BOC, and, if so, whether exercising such jurisdiction is consistent with principles of comity in light of recent Chinese court decisions. Id. at 145.

On December 1, 2014, Gucci filed its motion to compel BOC’s compliance with the'2010 and 2011 Subpoenas (Doc. No. 135) and ah accompanying memorandum of law' (Doc. No. 136 (“Mem.”)). BOC filed its memorandum of law'in opposition to the motion to compel on January 23, 2015 (Doc. No. 141 (“Opp.”)), and Gucci filed its reply memorandum of law on February 6, 2015 (Doc. No. 146 (“Rep.”)), After the matter was fully submitted, the parties submitted additional letters relating to recent cases they argue .are relevant to the motion before the Court. , (Doc. Nos. 152, 154,155,156 & 157.) The matter was thus fully briefed as of September 10, 2015.

II. Discussion

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135 F. Supp. 3d 87, 2015 U.S. Dist. LEXIS 131567, 2015 WL 5707135, Counsel Stack Legal Research, https://law.counselstack.com/opinion/gucci-america-inc-v-weixing-li-nysd-2015.