Hyundai Motor Company v. Direct Technologies International, Inc.

• Court: District Court, District of Columbia
• Decided: December 23, 2019
• Docket: Misc. No. 2019-0206
• Status: Published

Opinion

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

2 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.