Court Orders Discovery Request Valid in Counterfeiting Case

Court Orders Discovery Request Valid in Counterfeiting Case

In 2009, Gucci brought suit against Curveal Fashion for “trademark infringement…trademark counterfeiting, trademark dilution…and deceptive trade practices.” This order describes the resulting discovery dispute in which Gucci America, Inc. claims that United Overseas Bank “transferred approximately $900,000 received from the sale of counterfeit goods over the past 12 months to an account in the name of Defendant Curveal Fashion.” Gucci subpoenaed United Overseas Bank for documents containing information about Curveal’s bank accounts after Judge Sullivan stated that any “third party receiving a subpoena pursuant to this Order shall produce documents responsive to such requests.” UOB refused to produce the documents, claiming that “doing so would violate banking secrecy laws in Malaysia.” Thus, the court needed to “[determine] whether to order discovery of documents and information ‘in the fact of objections by foreign states.’” Pursuant to the Restatement (Third) of Foreign Relations Law of the United States § 442, the court followed a five-factor test in balancing the United States interest in the foreign production of documents. These included:

-The importance of the documents or information requested to the litigation

-The degree of specificity of the request

-Whether the information originated in the United States

-The availability of alternative means of retrieving the information

-The extent to which noncompliance with the request would undermine important interests of the United States

In addition to these points, the court also considered “the hardship compliance on the party or witness from whom discovery is sought [and] the good faith of the party resisting discovery.” However, after considering the factors, the court concluded that that “the United States interest in fully and fairly adjudicating matters before its courts…outweighs Malaysia’s interest in protecting the confidentiality of its banking customers’ records.”

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