Elan Microelectronics Corporation v. Apple, Inc.

Filing 306

Declaration of Derek C. Walter in Support of Apple's Reply to Elan's Opposition to Motion to Compel filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K)(Mehta, Sonal) (Filed on 6/21/2011)

Exhibit D

Page 1

LOUIS VUITTON MALLETIER, Plaintiff, -against- DOONEY & BOURKE, INC.,
Defendant.
04 Civ. 5316 (RMB) (MHD)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
NEW YORK
2006 U.S. Dist. LEXIS 87096

November 29, 2006, Decided
November 30, 2006, Filed
SUBSEQUENT HISTORY: Sanctions disallowed by
Malletier v. Dooney & Bourke, Inc., 2006 U.S. Dist.
LEXIS 96796 (S.D.N.Y., Dec. 22, 2006)

STATES MAGISTRATE JUDGE.

PRIOR HISTORY: Louis Vuitton Malletier v. Dooney
& Bourke, Inc., 2006 U.S. Dist. LEXIS 71091 (S.D.N.Y.,
Sept. 28, 2006)

OPINION

OPINION BY: MICHAEL H. DOLINGER

MEMORANDUM & ORDER
COUNSEL: [*1] For Louis Vuitton Malletier, Plaintiff:
Alison Jaye Besunder, Steven Kimelman, LEAD
ATTORNEYS, Arent Fox PLLC, New York, NY; Kevin
N. Ainsworth, Theodore Conrad Max, LEAD
ATTORNEYS, Mintz Levin Cohn Ferris Glovsky &
Popeo, P.C., New York, NY; Michael A. Grow, LEAD
ATTORNEY, Arent Fox PLLC, Washington, DC.
For Dooney & Bourke, Inc., Defendant: Douglas D
Broadwater, LEAD ATTORNEY, Cravath, Swaine &
Moore LLP, New York, NY.
For Louis Vuitton Malletier, Counter Defendant: Steven
Kimelman, LEAD ATTORNEY, Arent Fox PLLC, New
York, NY.
For Louis Vuitton Malletier, Counter Claimant: Steven
Kimelman, LEAD ATTORNEY, Alison Jaye Besunder,
Arent Fox BLLC, New York, NY.
JUDGES: MICHAEL H. DOLINGER, UNITED

MICHAEL H. DOLINGER
UNITED STATES MAGISTRATE JUDGE:
The parties are once again locked in a series of
disputes about the propriety of their discovery requests
and the adequacy of their discovery responses. We now
address these disputes in roughly the order in which they
have been presented to us.
I. Defendant's Motion for Preclusion of Secondary
Meaning Evidence
Defendant Dooney & Bourke, Inc. ("DB") [*2] has
moved for an order precluding plaintiff Louis Vuitton
Malletier ("LV") from offering any evidence of
secondary meaning. It bases this application on plaintiff's
asserted failure to provide a responsive answer to an
interrogatory (# 15) posed by defendant in December
2005. According to defendant, plaintiff's refusal to
comply with its discovery obligations in this respect
persisted in the face of two court orders and finally

Page 2
2006 U.S. Dist. LEXIS 87096, *2

necessitated the current motion.
The interrogatory in question instructed plaintiff to:
Identify each person involved in
preparing or supervising any survey, focus
group, or other consumer/market testing
conducted by or for LV concerning any
trademark or element thereof identified in
Interrogatory No. 1 [LV's infringed
trademarks], any product identified in
Interrogatory No. 3 [LV's S-lock
products], or any product identified in
Interrogatory No. 7 [Dooney & Burke's
infringing products].
(Declaration of Brian D. O'Reilly, Esq., executed Sept.
11, 2006, at Ex. B). In plaintiff's initial response, on
February 14, 2006, it listed a series of boilerplate
objections, and then offered the following as its complete
response:
subject to [*3] and without waiving the
foregoing objections . . . no survey is
necessary or relevant concerning the
S-Lock Trademark because the PTO
Examiner determined that the S-Lock
Trademark has acquired secondary
meaning and Plaintiff owns an
incontestable registration of said mark.
(Id., Ex. C).
The unresponsiveness of this answer, as well as
numerous other disputes between the parties, triggered a
series of letter motions by both sides, starting in April
2006. While these many controversies were being
briefed, plaintiff served amended responses to defendant's
interrogatories and document requests on May 11, 2006.
In the revised version of its answer to interrogatory 15,
LV included its assertion of irrelevance in its objections
as well as in its substantive answer. The substantive
answer reiterated plaintiff's prior answer and then added
one sentence:
Subject to and without waiving the
foregoing . . . objections, Plaintiff states
that no survey is necessary or relevant
concerning the S-Lock trademark because
the PTO determined that the S-Lock
Trademark has acquired secondary

meaning and Plaintiff owns an
incontestable registration of said mark. To
date, Plaintiff has not conducted [*4] any
survey,
focus
group,
or
other
consumer/marketing specifically for the
S-Lock Trademark concerning DBI's
infringing products.
(Declaration of Alison Arden Besunder, Esq., executed
Sept. 22, 2006, Ex. A). As is apparent from the text of the
answer, it did not address at least two of the three items
requested in the interrogatory, that is, surveys or other
studies pertaining to LV's S-lock products (as
distinguished from the S-lock trademark) and surveys or
other studies concerning defendant's assertedly infringing
products.
After further briefing on this interrogatory and the
other discovery imbroglios, the court entered an order on
July 20, 2006 disposing of all outstanding issues. With
respect to interrogatory 15, it simply directed that LV was
"to provide [a] complete textual answer" by August 3,
2006. Louis Vuitton Malletier v. Dooney & Bourke, Inc.,
2006 U.S. Dist. LEXIS 52077, 2006 WL 2109472, at *7
(S.D.N.Y. July 20, 2006).
Plaintiff's attempted compliance with the July 20
order came in the form of a letter to defendant's counsel
dated August 3, 2006. (O'Reilly Decl., Ex. F). With
regard to interrogatory 15, plaintiff's counsel stated that
"LV has already provided a complete [*5] textual
response [apparently referring to the May 11 version of
its answer and objections] and reiterates its response to
that Interrogatory. LV cannot identify any individuals
involved in a consumer survey because, as stated in its
existing response to Interrogatory No. 15, no survey has
been conducted to date." (Id., Ex. F at 4).
The court conducted a hearing on remaining
discovery disputes on August 7, 2006. At that time
defendant raised, among other matters, the asserted
inadequacy of plaintiff's response to interrogatory 15. In
the course of the colloquy the court requested a copy of
the interrogatory answer at issue, and plaintiff supplied -albeit inadvertently -- a copy of its original (February)
response, which the court unsurprisingly noted was
entirely unresponsive. The court then directed that
plaintiff supply a revised and more forthcoming answer.
(Tr. 33).
On August 14, 2006 plaintiff served a modified

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2006 U.S. Dist. LEXIS 87096, *5

response. After reciting various objections, it stated:
To date, Plaintiff has not conducted any
"survey,
focus
group,
or
other
consumer/market testing" concerning "any
trademark or element thereof identified in
Interrogatory No. 1" or "any product
identified [*6] in Interrogatory NO. 7".
Accordingly, Plaintiff cannot identify any
"person involved in preparing any survey,
focus group, or other consumer/marketing
testing" because none has been conducted
to date.
Plaintiff is continuing to investigate
whether any "survey, focus group, or other
consumer/market testing" has been
conducted concerning or otherwise related
to any of the more than 300 products
bearing the S-Lock Trademark which are
identified in documents already produced
to Dooney & Bourke, Inc. in response to
Interrogatory No. 3 and will supplement
this response with additional information
if, as and when it becomes necessary.
(O'Reilly Decl., Ex. G). Finally, on September 15, 2006
plaintiff supplemented its response. In that
supplementation, it added that it had not "yet" undertaken
"any 'survey, focus group, or other consumer/market
testing' concerning . . . any product identified in
Interrogatory No. 3." It also included a somewhat cryptic
caveat:
Plaintiff further states that although the
survey conducted in the action captioned
Louis Vuitton Malletier v. Dooney &
Bourke, Inc., 340 F. Supp. 2d 415, by
Jacob Jacoby PhD involved one
photograph that depicted LV "multicolor"
[*7] product bearing an S-Lock lock, the
survey did not "concern" any S-Lock
product or ask any question about the
S-Lock design itself.
(Besunder Decl., Ex. D).
Shortly before the service of the latest version of
plaintiff's response, defendant filed the current motion,
seeking to preclude plaintiff from offering any evidence
that the trademarks at issue had acquired secondary

meaning. Its application is based on the assertion that LV
has repeatedly failed to provide a full and truthful
response to interrogatory 15, and that its conduct violated
both its discovery obligations and two court orders.
Plaintiff of course opposes the motion.
There is no question that LV's original answer to the
interrogatory was entirely unresponsive, since all that
plaintiff said, in substance, was that the inquiry about
surveys, focus groups and the like concerning (a) the
trademark, (b) the LV products that carried the lock and
(c) the assertedly infringing products of Dooney &
Bourke called for information that was irrelevant,
supposedly because of LV's registration of the trademark.
1 By its July 20 order and the directive it announced at
the August 7 hearing, the court rejected that assertion
[*8] and directed a responsive answer. See Louis Vuitton
Malletier, 2006 U.S. Dist. LEXIS 52077, 2006 WL
2109472, at *7; Aug. 7, 2006 Tr. 33).
1 Apart from being unresponsive, this answer
ignored the fact that defendant was seeking, by a
counterclaim, a declaration that the trademark
registration was invalid, hence posing the
possibility that secondary meaning would be
highly relevant in the litigation.
By its second amended response, on August 14, and
its supplementation of that response on September 15,
2006, plaintiff appears to have supplied a fully responsive
answer, although its reference to the "multicolor" study
leaves one ambiguity. In substance, plaintiff has said that
it had not -- as of at least September 15 -- undertaken any
of the studies or tests that would be responsive to the
defendant's inquiries. If that accurately characterizes
plaintiff's intended meaning, then it has finally met its
obligation with regard to the interrogatory in question.
In opposing that conclusion, defendant suggests that
the truthfulness [*9] of the response is in question, not
only because of the stated reservation with regard to the
"multicolor" survey, but also because the lack of any such
studies is entirely implausible, and would seem to put the
lie to representations made by LV to the Patent and
Trademark Office ("PTO") when seeking trademark
registration. (DB Reply Mem. at 4-5, 6-7). Neither
argument justifies preclusive sanctions.
To remedy the ambiguity resulting from the recently
stated caveat about the "multicolor" survey, we direct that
LV supply an affidavit to defendant by a knowledgeable

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2006 U.S. Dist. LEXIS 87096, *9

LV employee stating whether its denial of any such tests
or studies concerning S-lock products in its September 15
response encompasses all of its products that have an S
lock. As for defendant's qualms about the truthfulness of
the interrogatory answer, Dooney & Bourke will be
permitted -- if it so elects -- to depose a knowledgeable
witness concerning the factual basis for the interrogatory
answer. This is to be completed within the next ten days.
Insofar as defendant contends that the absence of such
studies or testing is arguably inconsistent with any
representations that LV made to the PTO, DB is of course
free to use [*10] such asserted inconsistencies to support
its argument, either at trial or on summary judgment, that
the trademark should be invalidated.
In view of these conclusions, defendant's demand for
preclusion or equivalent sanctions cannot be justified.
The record reflects slow and grudging responses by
plaintiff, but not the sort of prejudicial misconduct that
would justify case or issue-preclusive sanctions. 2 In
short, this aspect of defendant's motion is denied. 3
2 Although we note plaintiff's resistance to full
disclosure over a period of months, we do not
agree with defendant's assertion that LV's
September 15 supplementation was untimely or
otherwise in violation of a court directive.
Although we did direct that LV supplement its
response within one week -- that is, by August 14
-- we also agreed to plaintiff's request that, to the
extent that knowledgeable LV personnel were not
available because of the August holiday period,
responses could be delayed to September 15.
(Aug. 7, 2006 Tr. 29-30). Plaintiff represents,
without meaningful contradiction, that the
individuals who could respond to interrogatory 15
with respect to the 300 or more S-lock products
were unavailable in mid-August. (Declaration of
Alison Arden Besunder, Esq., executed Sept. 22,
2006, at P 9; LV Mem. in Opp'n at 5).
[*11]
3
Under these circumstances, we need not
address the question of whether the scope of the
preclusion sought by defendant would be
defensible if some form of preclusive sanction
were justified.
II. Defendants' Motion to Compel Production or Listing
of Registration-Related Documents
Defendant has filed a motion that seeks full

enforcement of its request for all documents concerning
the design of the S-lock trademarks or the prosecution of
those trademarks and any renewals, extensions and
declarations designed to make the trademarks
incontestable. (DB Mem. Supp. at 1, 7). The relief that
DB seeks is an order requiring that LV either produce
those documents or list them in a privilege log if it deems
them privileged. (Id. at 7). Because plaintiff represents
that it has produced all responsive non-privileged
documents in its own possession (LV Mem. Opp'n at
6-7), in substance the defendant's motion targets those
documents related to the trademark that are held by
outside counsel to LV. 4 According to DB, such
attorney-held documents are within the custody or control
of plaintiff, since [*12] the client has a right of access to
the documents held by his attorney that were created in
representing him. (DB Mem. at 5-6).
4 The parties spend much time and ink debating
whether defendant asked for these documents in
its first document request and whether the court
ordered their production in its July 20 order. This
dispute appears entirely irrelevant to the relief that
defendant seeks. There is no question that DB
sought these documents in its second request, and
since plaintiff has plainly declined to search for or
produce documents held by its outside attorneys,
the issue for resolution does not turn on whether
there was an order prior to August 7, 2006 that
dealt with these documents.
Plaintiff has filed a cross-motion for a protective
order and opposes DB's motion, albeit rather
half-heartedly. It says that it has produced all of its
non-privileged documents, including some documents
that were transmitted between counsel and the company,
but it concedes the possibility (which DB characterizes as
a [*13] virtual certainty) that its outside attorneys are in
possession of documents that have not been produced or
placed on a privilege log. As to those documents, plaintiff
says that DB should proceed by subpoenaing the law firm
or firms in question rather than pressing its Rule 34
demand. It defends this suggestion by speculating that
some of the withheld documents may constitute work
product, and by noting that in such a case the attorneys
would have a protectible interest in the confidentiality of
the documents. (LV Mem. Opp'n at 1 n.1, 6 & n.8).
The short answer to LV's argument is that plaintiff
has a right of access to documents held by its outside

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2006 U.S. Dist. LEXIS 87096, *13

counsel that pertain to work performed for it by those
attorneys, see, e.g., Martin v. Valley Nat'l Bank, 140
F.R.D. 291, 320-21 (S.D.N.Y. 1991) (citing cases), and
hence it has at least constructive control over those
documents for purposes of Rule 34. See, e.g., MTB Bank
v. Federal Armored Exp., Inc., 1998 U.S. Dist. LEXIS
922, 1998 WL 43125, at *4 (S.D.N.Y. Feb. 2, 1998);
Variable-Parameter Fix. Dev. Corp. v. Morpheus Lights,
Inc., 1994 U.S. Dist. LEXIS 11185, 1994 WL 419830, at
*6 (S.D.N.Y. Aug. 10, 1994). See generally M.L.C., Inc.
v. North Am. Philips Corp., 109 F.R.D. 134, 136
(S.D.N.Y. 1986). [*14] Moreover, plaintiff's argument in
favor of the subpoena process proves too much. First,
even if the attorneys have an interest in their own work
product, so too does the client. See, e.g., Polin v.
Wisehart & Koch, 2002 U.S. Dist. LEXIS 9123, 2002
WL 1033807, at *2 (S.D.N.Y. May 22, 2002); Martin,
140 F.R.D. at 320 (attorney may not withhold work
product from client) (citing cases). 5 Second, it is still
more likely that some of the documents held by the
attorneys are protected by the attorney-client privilege,
and that privilege belongs to the client. See, e.g., United
States v. Doe, 429 F.3d 450, 452-53 (3d Cir. 2005);
United States v. Amodeo, 71 F.3d 1044, 1052 (2d Cir.
1995). Given that fact, LV's reasoning -- that the demand
should be made to the party with a legal interest in
confidentiality -- actually supports the relief demanded
by DB. Third, LV's reference to a possible work-product
claim is entirely speculative on the current record, 6 and
in any event plaintiff and its outside lawyers can be
expected to work cooperatively together to identify those
documents that belong on a privilege list, whether as
attorney-client privileged or as work [*15] product.
5 Indeed, as the court noted in Martin, in the
event of a conflict between the client and the
attorney, the client's interest in the work product
is paramount, and the attorney cannot maintain its
confidentiality in the face of the client's contrary
posture. Id. at 321.
6 We note that work-product immunity does not
ordinarily apply to the ex parte prosecution of a
patent or trademark application. See Amicus
Communications, L.P. v. Hewlett-Packard Co.,
1999 U.S. Dist. LEXIS 20901, 1999 WL
33117227, at *2 (D.D.C. Dec. 3, 1999); In re
Application of Minebea Co., 143 F.R.D. 494, 499
(S.D.N.Y. 1992). We address this issue more
specifically in connection with still another
motion by DB. See pp. 47-48, infra.

In short, there is no reason to require defendant to
proceed by way of subpoena in this instance. Plaintiff is
therefore directed to produce to DB, or list as privileged,
the documents held by its outside counsel that pertain to
the design of the trademarks or their registration. [*16]
This is to be done within seven days. 7
7 Plaintiff states in passing that the obligation to
search for documents cannot extend to attorneys'
offices that are overseas. (LV Mem. at 6n.7). It
offers no basis for this limitation, and we see
none. The documents are within the control of an
entity that has chosen to litigate here and that
consequently has an obligation to produce
responsive documents in its custody or control
irrespective of where on the globe they are
located. See, e.g., Societe Nationale Industrielle
Aerospatiale v. United States Dist. Court, 482
U.S. 522, 539-40, 107 S. Ct. 2542, 96 L. Ed. 2d
461 (1987).
III. Plaintiff's "Cross-Motion" to Determine the Scope of
its Future Privilege Waiver
In response to DB's motion to compel, LV filed what
it labels as a cross-motion. In that application, plaintiff
invites the court to opine on the scope of the
attorney-client privilege waiver that would be occasioned
if LV agreed to produce to defendant otherwise
privileged documents that pertain to the communications
that [*17] DB contends constituted a fraud by LV on the
PTO. (LV Mem. Opp'n at 7-11).
As characterized by plaintiff, defendant challenges
the validity of the S-lock trademark registrations by
asserting that two sets of documents submitted by LV to
the PTO -- an Amendment to Allege Use signed by
Audrey Sylvain-Richer in connection with one
registration and the Section 8 and 15 Declaration signed
by Yves Carcelle in connection with a second registration
-- constituted a fraud on the PTO. According to plaintiff,
it offered to produce to defendant "documents on the
privilege log related to these topics if DB[]'s counsel
would agree that such production would not effectuate a
broader waiver of the privilege beyond those topics 'at
issue.'" (LV Mem. Opp'n at 7) (emphasis in original).
Invoking Fed. R. Civ. P. 26(c), plaintiff asks the
court to rule in advance that if it waived its
attorney-client privilege for the limited purpose of
producing documents in the described categories -- which

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2006 U.S. Dist. LEXIS 87096, *17

plaintiff views as responsive to those "subject matters
that are placed 'at issue' by DB[]'s counterclaims alleging
fraud" (id.) -- the waiver will not be deemed [*18] to
extend beyond those subject matters. The particular
concern expressed by LV is that the waiver not be
deemed to extend to registrations other than for the
specified trademarks, that is, "registrations entirely
unrelated to this lawsuit." (See id. at 8).
Defendant has not specifically taken issue with this
application, and we see no problem with responding to
plaintiff's request, albeit at an appropriate level of
generality, consistent both with the generality of
plaintiff's description of the extent of its intended
production and with the fact that plaintiff, having not
clearly committed to any production, is seeking at least in
part what seems to consist of an advisory opinion. The
standards for determining the scope of a privilege waiver
have been the subject of much judicial authorship in
many contexts, and able counsel can read the cases as
precisely as we can.
The plaintiff's description of the standards governing
the scope of a waiver triggered by the voluntary
production of documents in civil litigation -- that is, that
the waiver is generally limited to the subject matter of the
documents for which privilege has been surrendered and
that the discovering party would [*19] have to justify
any broader waiver (id. at 9) -- appears accurate, although
we are obviously not in a position to provide LV with
advance immunization from arguments that may be
asserted by DB on the basis of facts unknown at the
present, particularly those arising from the substance of
the documents to be produced. Furthermore, if defendant
has other theories of waiver -- that is, based on matters
other than plaintiff's proposed voluntary production of
privileged documents -- we cannot exclude them or reject
them in the context of this motion. 8
8 We note that in a later motion, which we
address below, DB in fact advances a number of
alternative waiver theories. See p. 43, infra.
In sum, plaintiff's motion on this topic is granted to
the extent noted. If plaintiff intends to produce
documents currently on its privilege log on a voluntary
basis, it is to do so within seven days. 9
9 We note that, in addressing DB's later motion
to compel production of privileged documents, we
reject certain categories of privilege claims by

LV. See pp. 45-48, infra. We assume that those
overlap in part or in whole with the log entries at
issue on LV's current motion.
[*20] IV. Defendant's Motion to Preclude Regarding
Customer Communications
In December 2005 defendant served its first Rule 34
request, which sought from LV, among other items, "[a]ll
documents concerning any customer communications
regarding any LV product and/or any return of an LV
product . . . ." (Declaration of Brian D. O'Reilly, Esq.,
executed Sept. 28, 2006, Ex. J at P 14). At plaintiff's
request, the due date for responding to the entirety of the
request was adjourned from January 9 to 14, then to
February 9 and finally to February 14, 2006. No such
documents were produced during this period. (DB Mem.
Supp. at 6-7).
At a meet-and-confer on March 1, 2006, the subject
of item 14 was discussed, and DB agreed to a request by
LV to limit this item to customer communications about
S-lock products, rather than all LV products, while LV
agreed to supplement its production on other items.
(O'Reilly Decl. at P 15). On March 10 LV provided
additional documents but none reflecting customer
communications. (Id.). After DB pointed out this
omission, plaintiff's counsel represented that "LV is
continuing to search for relevant documents reasonably
responsive to Request No. 14." ( [*21] Id., Ex. L at 3).
At an April 6 status conference with the court, LV's
attorney represented that the delay was attributable to "a
bit of a logistical problem" but that the documents would
be produced by April 14. (April 6, 2006 Tr. at 43, 62).
Despite the court's directive that it comply with this
deadline (id. at 63-64), LV produced no customer
communications when it produced other documents on
that date. (DB Mem. Supp. at 7).
One week later DB initiated a motion to compel
production of many categories of documents, including
customer communications. As characterized by DB on its
motion, document request 14 "seeks documents
concerning customer communications regarding any LV
product and/or return of any LV product." (O'Reilly
Decl., Ex. N at 11). In responding to the motion, LV
asserted: "DB seeks 'customer communications'
concerning S-Lock (as well as all LV) products . . . . LV
has made a good faith effort to search for any documents
responsive to this request and has determined that LV

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2006 U.S. Dist. LEXIS 87096, *21

does not have any e-mail or call center communications
to LV related to the S-Lock design or S-Lock products.
Accordingly, there is nothing to compel and DB[]'s
motion should be denied [*22] on this point." (Id., Ex. O
at 15).
In ruling on the parties' various applications by
Memorandum and Order dated July 20, 2006, the court
relied on LV's representation about customer
communications. Thus, it stated that "LV represents that
it has no communications from customers about its S lock
products. If DB questions this representation, it is free to
pursue the matter by deposition." Louis Vuitton Malletier,
2006 U.S. Dist. LEXIS 52077, 2006 WL 2109472, at *6.
The court also set a deadline of August 3, 2006 for LV to
provide additional documents on a host of topics. 2006
U.S. Dist. LEXIS 52077, [WL] at *7.
Plaintiff did provide additional documents in
compliance with the July 20 order. In its August 3 cover
letter to DB, however, it referred to customer
communications and stated that it was not producing any
because "LV has no communications from customers
about its S-Lock trademark." (O'Reilly Decl., Ex. P at 2).
This statement, of course, was at odds with both parties'
prior understanding that the request concerned
communications about the S-lock products as well as the
S-lock trademark, and it at least implicitly contradicted
LV's prior representation to the court about having no
communications responsive [*23] to that broader
understanding of the request.
The court conducted another conference on August
7, at which the subject of customer communications
again arose. At that time LV's counsel confirmed for the
first time that his client was interpreting its obligation
under request 14 to be limited to customer
communications about the S-lock trademarks, and not
S-lock products, and that plaintiff assumed that the court,
in its July 20 order, had meant the same thing.
So I don't think, with all due respect, that
you
were
suggesting
customer
communications about the product itself,
but about the S-Lock that is in question in
this lawsuit.
No customer came and said anything
about the S-lock, and we have represented
that. We have stated it time and time
again. We are prepared to state it now. It

seems to me that is the intent of the
question and the intent of the ruling.
(Aug. 7, 2006 Tr. 27).
In response, the court disabused counsel of that
notion: "I used the word product, not trademark. I think
there was ample reason for that. In any event, that is what
I said and that is what I meant. You are expected to
comply with it." (Id.). The court did grant plaintiff's
request [*24] to delay the deadline for final compliance
with court-ordered discovery obligations to September
15, 2006. (Id. at 29-30).
On September 15, LV failed to provide customer
communications and advised DB's counsel that the
company, "despite best efforts," had been unable to
extract the pertinent e-mails from its "call center."
(O'Reilly Decl. at P 23 & Ex. R). In the wake of
follow-up correspondence in the following days, LV
represented that "there are technical and other issues
related to the recovery and collection of available data on
this issue." (Id. at P 26 & Ex. U). It did not explain these
issues, however, or specify a date for production. On
September 26, 2006, LV produced 17 pages of call center
reports, which summarized call center communications,
some of which referred explicitly to the S-lock. (Id. at Ex.
V). It also produced 278 pages of e-mails, but these were
all documents that LV had produced to DB in 2004 in the
parallel Multicolor case in the face of threatened
preclusion by the court in that case. (Id.). This production
did not purport to include any e-mails addressed to
non-Multicolor products or to the trademark at issue here.
In the wake of [*25] LV's continuing failure to
produce customer communications, DB filed the current
motion. Noting that LV had refused to produce key
documents pertaining to such communications, that it had
misrepresented the scope of both the request and the
court's order, and that it had done the same in the
Multicolor case until faced with a threat of preclusion,
DB seeks what it describes as targeted preclusion.
Specifically, defendant would prevent plaintiff from
offering any evidence to demonstrate qualitative
differences between plaintiff's and defendant's products,
consumer confusion or dilution of plaintiff's trademarks.
(DB Mem. Supp. at 14-18).
In LV's response, it relies principally on an affidavit
by Sven Dubois, an employee in the information
technology department of LV, as well as a briefer

Page 8
2006 U.S. Dist. LEXIS 87096, *25

declaration of counsel. (Declaration of Sven Dubois,
executed Oct. 5, 2006; Declaration of Alison Arden
Besunder, Esq., executed Oct. 5, 2006). According to Mr.
Dubois -- who, in the course of his declaration, never
identifies the timing of LV's efforts to search for the
communications requested last December -- LV has
encountered "technical difficulties" in attempting to
retrieve
e-mails
concerning
[*26]
customer
communications from its database. (Dubois Decl. at P 1).
His explanation starts with the assertion that the database
in question, known as Kana Oracle, is not designed for
random searching or "specialized e-mail management in
the ordinary course of its operations." (Id. at PP 2-4). The
principal problem, according to Dubois, is "that it is
difficult to write an 'Oracle-SQL' request to search by
keyword the e-mails stored in the database . . . ." (Id. at P
4). 10
10 The reason for this difficulty is that "the
e-mails are stored in a raw format which includes
both HTML-formatted e-mails as well as e-mails
with foreign-language encoding." (Id.).
According to Mr. Dubois, despite his long-held
belief that it would be necessary to undertake a series of
complex steps to extract the e-mails from the Kana
Oracle system -- requiring the hiring of both a Kana
specialist and a Lotus Notes specialist -- LV chose not to
do so, purportedly because of cost. (Id. at P 5). 11 Instead,
LV at some point [*27] used three in-house people who
eventually developed a means of extracting some data
from the database, although much of what has been
obtained is "interspersed with technical coding that does
not appear to have been part of the body of the original
communication." (Id. at PP 7-10). What has been
obtained does not lend itself to printing and hence was
reproduced in electronic format. (Id. at P 11; Besunder
Decl. at P 3).
11 The cost estimate by Dubois appears to be
less than $ 15,000.00 for such a process. He does
not explain why this expense was viewed as
unduly burdensome for LV, which describes itself
as enormous and highly profitable. See, e.g., LV
Reply Memo in Support of Motion for Protective
Order Preventing Depositions at 5-6 (emphasizing
that LV "is a multi-billion dollar corporation with
responsibility for more than 10,000 worldwide
employees.") (emphasis by LV).
The fruits of these efforts were apparently turned

over to defendant on October 5, 2006. (Id. at P 3). It
appears that [*28] the production was incomplete -- LV
is silent on this point 12 -- and at least part of it was not
usable. (DB Reply Mem. at 8-11).
12 At one point Dubois says, "We have extracted
the data in the only manner in which it can be
performed," but at another he refers to having, "to
date," "extracted 'rows' of data evidencing certain
communications with customers." (See Dubois
Decl. at PP 12, 10).
Defendant seeks broad preclusion of any evidence
relating to public confusion, comparative product quality
and dilution. (DB Mem. at 1). Preclusion is one of the
weapons in the court's armory for ensuring that the
parties comply with their discovery obligations and that
the discovering party is not prejudiced by virtue of an
adversary's failure to meet these obligations. See, e.g.,
Fed. R. Civ. P. 37(b)(2)(B) (sanctions for violation of
court order). Among the considerations that the court
must take into account in assessing a request for
preclusion are (1) whether the discovered [*29] party has
failed to comply with the discovery rules and with a court
order, (2) whether that failure was attributable to
"willfulness or bad faith, or is otherwise culpable," Daval
Steel Prods. v. M/V Fakredine, 951 F.2d 1357, 1367 (2d
Cir. 1991), (3) whether the discovering party has been
prejudiced by the other side's failures and, if so, the
degree of such prejudice and whether it is otherwise
remediable, and (4) the prejudice that would be
occasioned to the discovered party's case by the proposed
preclusion. See generally Softel, Inc. v. Dragon Med. &
Scientific Communications, Inc., 118 F.3d 955, 961 (2d
Cir. 1997); Outley v. City of New York, 837 F.2d 587,
590-91 (2d Cir. 1988). We address each factor seriatim.
There is no question that LV has failed to comply
with its discovery obligations, misled its adversary and
the court, and flouted a court order. The defendant's
original request, from December 2005; was for customer
communications for all LV products. Although this
formulation was unquestionably overbroad, DB agreed in
a March 1 meet-and-confer to narrow the demand to
communications concerning LV's S-lock products, [*30]
and LV in its turn gave no indication that it would resist
that request; indeed, it welcomed the modification and
indicated that it was searching for the documents. (See
O'Reilly Decl., Ex. L at 3). LV nonetheless failed to
produce the requested documents and did not offer DB

Page 9
2006 U.S. Dist. LEXIS 87096, *30

any reason for not doing so, much less suggest that it had
attempted to retrieve them from its database and had been
stymied in that effort. Indeed, it actually indicated at first
that, despite some technical complications, it would
produce the documents by mid-April 2006. Ultimately,
LV simply ignored the request, thus prompting one
element of DB's April 2006 motion to compel.
That application triggered a representation by LV
that it had undertaken an appropriate search for customer
communications about S-lock products and had no such
communications. It is evident that this representation was
false, and in the absence of any explanation by LV for
this misstatement, we have no reason to infer that it was
other than knowingly false.
Following entry of our July 20 order, which relied on
this false representation, LV disclosed in an indirect and
misleading fashion -- by its August 3 cover letter -- that it
[*31] was withholding responsive documents. It did so
by changing its stated definition of the scope of the
request, limiting it to communications regarding the
S-lock trademarks rather than including communications
about the S-lock products, despite the fact that the request
as amended by DB in March, plaintiff's response to that
amendment and to DB's motion, and the court's July 20
order all made crystal clear that the request at issue
covered the products as well as the trademark.
The inconsistency of LV's approach was apparent at
the August 7 hearing, when its counsel sought to
persuade the court that the dispute, and the court's prior
ruling, had concerned only communications about the
trademark. This prompted our August 7 order that all the
communications (including those concerning the S-lock
products) be produced, and our directive giving LV -- as
it had requested -- until September 15 to comply. Plaintiff
again failed to comply. Indeed, LV waited until
September 26 to provide any documents, and the only
production that it made turned out to consist almost
entirely of the same documents as it had produced to DB
in the parallel Multicolor litigation more than two years
before.
[*32] As for LV's purported effort to comply with
the court's August 7 order, even by LV's vague and
ambiguous description it appears that plaintiff chose to
eschew the most direct means of attempting to extract
e-mails from its database -- by turning to outside
specialists in the Kana Oracle system -- and instead it
relied on its in-house personnel, who report that they

have been unable to produce a usable and complete set of
documents, regardless of format, for defendant.
Moreover, we note that plaintiff carefully avoids a proffer
of any evidence as to when it undertook these efforts -efforts that were required to begin upon receipt of
defendant's request in December 2005, or at the very
latest after the March 1 meet-and-confer. In short, we
cannot credit plaintiff's implicit argument that it has done
all that was possible to comply with its discovery
obligations and with the court's order.
As for whether the plaintiff engaged in culpable
conduct, the unavoidable conclusion is evident from the
preceding summary. But there is more that supports this
finding.
First, in the Multicolor litigation DB sought the same
type of documents from LV, and in that case LV engaged
in the same [*33] sort of behavior, triggering a warning
from Magistrate Judge Peck that the customer
communications in question had to be provided within
one week or preclusion would follow. (See Declaration of
Roger G. Brooks, Esq., executed Sept. 28, 2006, at PP
4-9 & Ex. 6; O'Reilly Decl. at Exs. C-G). That warning
triggered immediate compliance, although LV apparently
failed to provide translations for all documents, as
ordered by the court. (Brooks Decl. at P 10). This
experience not only provides helpful context in assessing
LV's behavior in this case, but also raises the very serious
question -- never answered by LV -- as to why, if it was
able to retrieve customer communications in the
Multicolor case, it was unable to do so here. Also left
unanswered is the question of why LV was not alerted at
the outset here to any technical problems with retrieving
such communications from its Kana database.
Second, LV carefully avoids any indication as to
when it turned its attention to the specific procedures
necessary to determine whether it had responsive e-mails.
Avoidance of that detail strongly suggests that it made no
effort to do so until the proverbial eleventh hour, after it
had made [*34] false representations to the court about
the non-existence of responsive documents (the
explanation of which it also never provides) and
sometime after the August 7 order.
Third, LV's current motion papers reflect a continued
reluctance to address the facts accurately when seeking to
justify its behavior. Thus it contends that its delay in
producing the e-mails requested by DB was due in
substantial part to the court having ordered production of

Page 10
2006 U.S. Dist. LEXIS 87096, *34

a broader array of documents than DB had ever
requested. (LV Mem. Opp'n at 4-6). This argument is so
transparently false as to raise questions about every other
representation in LV's papers. As noted, DB originally
sought customer communications about all of LV's
products and then narrowed the request to the S-lock
products and trademarks, a scope that LV itself
acknowledged in writing. Moreover, in briefing DB's
motion LV again recognized the scope of DB's amended
request as encompassing communications about the
S-lock products, and it made the representation that it had
no such documents. (O'Reilly Decl., Ex. O at 15) (no
documents "related to the S-Lock design or S-Lock
products"). In the July 20 order the court simply
reiterated the scope [*35] of the dispute as both parties
had acknowledged it and relied upon LV's specific
representation that it had no responsive documents.
Again, in our August 7 order we simply reiterated the
obligation in the same terms.
In sum, there is no question on the current record that
LV has acted with fault. Notwithstanding this conclusion,
however, in assessing DB's demand for broad preclusion
we must confront questions concerning prejudice and the
availability of means to alleviate such prejudice.
In seeking to demonstrate irremediable prejudice,
DB points out that in the Multicolor case the District
Court relied on customer communications in concluding
that LV had failed to demonstrate that defendant's
allegedly infringing product was inferior, that the public
had actually been confused and that LV's trademark had
been diluted. (DB Mem. at 5-6) (citing Louis Vuitton
Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415,
441-42 (S.D.N.Y. 2004), rev'd on other gds., 454 F.3d
108 (2d Cir. 2006)). Defendant implies therefore that LV
has deliberately sought to withhold such potentially
damaging communications in this case and that its doing
so has deprived [*36] DB of potentially valuable
evidence.
There is less to this contention than meets the eye, at
least as a justification for the broad issue preclusion that
defendant seeks. The ruling in the Multicolor case that
defendant cites denied a preliminary injunction based on
the court's conclusion that LV had not shown a likelihood
of success on its trademark-infringement and dilution
claims. See Louis Vuitton Malletier, 340 F. Supp. 2d at
447-48, 452-53. In discounting these claims, the court
relied in part on its finding that the record -- including the

customer communications with LV -- did not reflect
evidence of consumer confusion or differences in quality
in the competing products or any indication of blurring or
tarnishment. Id. at 441-42, 446, 449, 452-53.
By providing only partial production of customer
communications in this case, LV has arguably
handicapped DB in making an equivalent set of
arguments here. That difficulty, however, may be readily
surmounted by deeming as true the contentions that none
of LV's customer communications evidenced any
confusion as to origin and that none involved a complaint
about the quality of a product distributed [*37] by
defendant or evidenced any form of dilution. Such a
remedy is specifically authorized by Rule 37(b)(2)(A)
("designated facts shall be taken to be established"), and
it appropriately rights the balance that has been distorted
by LV's failure to produce the requested communications.
At the same time it avoids broad preclusion on key
issues, the assessment of which can fairly be made in
light of all the discovery and the more limited preclusion
that we have outlined.
Finally, in view of the evident baselessness of the
position taken by LV on this motion and its inexcusable
non-performance in connection with the production of
customer communications, we conclude that DB is
entitled to the expenses of this motion, including an
award of reasonable fees. Fed. R. Civ. P. 37(b)(2). Unless
the parties agree on an appropriate figure, defendant is to
serve and file its expense application, including
contemporaneous time records, by December 4, 2006.
Responding papers will be due by December 7, 2006.
V. LV's Motion to Preclude Depositions of Messrs.
Carcelle and Stalla-Bourdillon
Plaintiff has moved for a protective order to avoid
having to produce [*38] for deposition the Chairman and
CEO of LV, Mr. Yves Carcelle, and LV's former general
manager, Mr. Bertrand Stalla-Bourdillon. Proffering
declarations from both men, plaintiff asserts that neither
has any personal knowledge of pertinent facts or any
non-personal knowledge beyond what has already been
testified to by LV's Intellectual Property Director, Ms.
Nathalie Moulle-Berteaux. (See LV Mem. Supp. at 1-7;
Declaration of Yves Carcelle, executed Oct. 10, 2006;
Declaration of Bertrand Stalla-Bourdillon, executed Oct.
10, 2006; Reply Declaration of Yves Carcelle, executed
Oct. 23, 2006). Defendant opposes the motion,
contending that each of the proposed witnesses has

Page 11
2006 U.S. Dist. LEXIS 87096, *38

knowledge of pertinent evidence that was not known by
Ms. Moulle-Berteaux. (DB Mem. Opp'n at 6-17). 13

DB's alleged infringement on LV's business. (DB Mem.
Opp'n at 10-12).

13 We note that our brief characterization of this
motion does not do justice to the overheated, and
generally irrelevant, rhetoric that each side
chooses to use to accuse its adversary of
wrongdoing in their assertion of claims and
counterclaims and their conduct during the
litigation. For sheer bizarreness, we especially
recommend footnote 1 of LV's reply
memorandum, which somehow finds a basis for
comparing defendant's approach to that of North
Korea when it invaded the South in 1950.

To the extent that these questions may have any
relevance, DB fails to justify a deposition of Mr.
Stalla-Bourdillon. There is no suggestion that he actually
participated in any of the events at issue in this case, nor
has DB presented a basis for suspecting that his
necessarily generalized knowledge of the business of LV
14 is either unique or directly relevant to the issues in this
case. Moreover, DB fails to show that Ms.
Moulle-Berteaux was unable to answer questions that DB
proposes to ask Mr. Stalla-Bourdillon. (E.g., DB [*41]
Mem. at 10-11 & n.3). Finally, the fact that he
participated in settlement talks with a principal of DB
concerning this case (Stalla-Bourdillon Decl. at P 7)
offers no justification for deposing him. Such talks are
not a proper subject of discovery, and there is no
indication that his knowledge of the case, presumably
acquired for purposes of that discussion, is anything but
second-hand. Accordingly, plaintiff is granted a
protective order with respect to this deposition.

[*39] As a general matter, senior corporate and
governmental executives are subject to being deposed in
litigation, just as any other employee may be. The
limitation on that principle finds its source in the concern
that litigants may be tempted to use such depositions -and the disruption that they may occasion -- as a form of
leverage or harassment by forcing senior officials to
spend time in preparing for and attending a deposition
when they have little or no pertinent testimony to offer.
Accordingly, the courts have agreed that if a party seeks
to depose a very senior official of an adversary entity, the
adversary may obtain an order vacating the deposition
notice if it can demonstrate that the proposed deponent
has no personal knowledge of the relevant facts and no
unique knowledge of those facts. See, e.g., In re Ski Train
Fire, 2006 U.S. Dist. LEXIS 29987 , 2006 WL 1328259,
at *10 (S.D.N.Y. May 16, 2006); Treppel v. Biovail
Corp., 2006 U.S. Dist. LEXIS 7836, 2006 WL 468314, at
*2-3 (S.D.N.Y. Feb. 28, 2006); Consolidated Rail Corp.
v. Primary Indus. Corp., 1993 U.S. Dist. LEXIS 12600,
1993 WL 364971, at *1 (S.D.N.Y. Sept. 10, 1993).
In this case DB seeks to depose both the former
general manager of LV and its current [*40] CEO and
Chairman. We address each separately.
Mr. Stalla-Bourdillon is no longer serving in LV
itself, but has responsibility for two businesses, at least
one of which is related to LV. (Stalla-Bourdillon Decl. at
P 2 (CEO of Berluti and of Marc Jacobs)). Defendant's
rationale for deposing him appears to be that he had
overall responsibility for numerous departments at LV,
including sales and intellectual-property enforcement.
Hence, according to DB, he is likely to have knowledge
of why LV pursued enforcement against DB and not
against other infringers, and of the impact (if any) of

14 Given the breadth of his responsibilities at
LV, his representation of ignorance as to the
specifics of this case (Stalla-Bourdillon Decl. at P
8) is entirely credible.
The situation with regard to Mr. Carcelle is
somewhat different. There is no question that he signed a
declaration that LV submitted to the PTO, and that it
forms one basis for defendant's counterclaim to declare
LV's trademark registration invalid as a fraud on the
PTO. In pressing for a deposition, DB emphasizes that
Ms. Moulle-Berteaux could not testify about Mr.
Carcelle's [*42] knowledge of what was said in the
declaration or even as to whether he had read it before
signing it. (See DB Mem. at 6-7). In response LV offers
two declarations by Mr. Carcelle, averring that he has no
memory of signing the document or of what it contained
or of whether he knew anything at the time about the
facts pertinent to the accuracy of the statements that it
contained. (Carcelle Decl. at P 6-8; Carcelle Reply Decl.
at PP 2-4). 15
15 LV also argues that DB's claim of fraud on
the PTO is meritless, an assertion that is at best
premature and certainly not a basis for precluding
discovery directed to that claim.
From the declarations proffered by Mr. Carcelle, it

Page 12
2006 U.S. Dist. LEXIS 87096, *42

appears that a deposition may produce little in the way of
useful information. Nonetheless, that is not a proper basis
for refusing to allow a party to question a witness who
has participated in events directly pertinent to at least one
of the claims in the case. There is simply no basis for
compelling DB to take at face value an assertion [*43] of
lack of memory made in an affidavit by a witness. This
scenario is simply not equivalent to those encountered in
cases in which a senior executive has not participated in
any activity relevant to the issues in the case. See, e.g.,
Treppel, 2006 U.S. Dist. LEXIS 7836, 2006 WL 468314,
at *2; Six West Retail Acquisition, Inc. v. Sony Theatre
Mgt. Corp., 203 F.R.D. 98, 104 (S.D.N.Y. 2001). Mr.
Carcelle has concededly participated directly in a
pertinent event, and hence he is appropriately subject to
questioning about his participation.
That said, it is equally appropriate to place
significant limitations on such a deposition. See, e.g.,
Holman v. ICN Pharms., Inc., 1999 U.S. Dist. LEXIS
20017, 1999 WL 1267459, at *1-2 (S.D.N.Y. Dec. 29,
1999). Those limitations follow from both Mr. Carcelle's
senior position in, and responsibility for business affairs
at, LV and the narrowness of the inquiries that may be
appropriately directed to him. Accordingly, the
deposition is to be limited to no more than three hours
and is to be conducted at Mr. Carcelle's place of business
unless DB chooses to take the deposition by telephone. 16
16 In setting this time limit, we do not impose
any subject-matter restriction on DB's questioning
of the witness.
[*44] VI. LV's Motion to Compel The Deposition Of DB
Italia by Maurizio Nottoli
Plaintiff has moved to compel DB to produce in New
York for deposition a resident of Italy named Maurizio
Nottoli. According to plaintiff, Mr. Nottoli is
knowledgeable about the procurement of bags for DB,
the disposition at the outset of this litigation of the bags
that allegedly infringed LV's S-lock trademark and the
design of bags for DB, possibly including the bags at
issue here. (LV Mem. Supp. at 3-4). Plaintiff contends
that it may use a Rule 30(b)(1) deposition notice to
compel Nottoli's appearance here either because he is a
managing agent of DB or because he is within the
custody or control of DB. (Id. at 6-12). Defendant
opposes the motion, contending that Nottoli is not a party
to the litigation nor a managing agent of DB and that he
may therefore be deposed only pursuant to the provisions

of the Hague Convention. (DB Mem. Opp'n at 7-15).
Nottoli's formal link to DB is through an entity
known as DB Italia, which is based in Florence, Italy.
Although the record is not pristine on the exact
relationship between DB and DB Italia, a Dun &
Bradstreet report reflects that DB owns 98 percent [*45]
of the shares of DB Italia and Nottoli apparently owns the
balance. (See Declaration of Alison Arden Besunder,
Esq., executed Sept. 29, 2006, Ex. M). 17 DB Italia has
only one employee other than Nottoli (id.), and there is
no indication that she plays any non-ministerial role in
the affairs of the company. The directors of DB Italia
consist of Peter Dooney and Mr. Nottoli. (Id., Ex. M).
17 An alternative version of the relationship -offered by DB -- is that the 98-percent share of
DB Italia is held by two other entities apparently
controlled by DB (Declaration of Jessica Selb,
Esq., executed Oct. 10, 2006,, Ex. 2), but there is
no public record of the existence of these entities.
(Reply Declaration of Alison Arden Besunder,
Esq., executed Oct. 16, 2006, Ex. W). Moreover,
DB's own attorneys have several times
characterized DB Italia as a subsidiary of DB, and
Peter Dooney has described it as DB's Italian
office. (Besunder Decl., Ex N at 38 & Ex. P at 13;
Selb Decl., Ex. 1; Reply Declaration of Alison
Arden Besunder, Esq., executed Oct. 16, 2006,
Ex. CC).
[*46] There is no indication that DB Italia
undertakes any significant business other than to serve as
a vehicle for the design and acquisition of product for
DB. Indeed, DB provides the accounting and payroll
services for DB Italia and supplies its funding. (Id., Ex. O
at 53-54). Thus, although DB Italia pays Nottoli, it
appears to be with funds supplied for that purpose by DB.
Similarly, Nottoli performs essential services directly
for DB. Thus Nottoli and Dooney are described as
working collaboratively in determining the design of DB
bags, and Nottoli appears to be responsible for
outsourcing the manufacture of those bags on behalf of
DB. (Besunder Decl., Ex. P at 55-56, 105-07178-79).
Similarly, when DB pulled the allegedly infringing bags
from the market early in this lawsuit and arranged for
them to be retrofitted with new locks, it appears that
Nottoli handled these transactions. (Id., Ex. R). Dooney
speaks almost daily with Nottoli and travels to Italy to
meet him every few months. (Id., Ex. P at 58). Nottoli

Page 13
2006 U.S. Dist. LEXIS 87096, *46

himself travels periodically to the United States -- most
recently several weeks ago (Oct. 31, 2006 letter to the
Court from Michael A. Grow, Esq.; Nov. 8, 2006 letter
[*47] to the Court from Steven Kimelman, Esq.) -where he spends much of his time with Mr. Dooney.
(Besunder Decl., Ex. P at 57; id., Ex. Q at 26-27).
With this record in mind, we turn to LV's arguments.
We conclude that Nottoli is to be made available by DB
for deposition at his place of business in Italy.
We first reject LV's argument that Nottoli may be
subjected to a deposition by notice because he is within
the "custody or control" of DB. (LV Mem. at 10-12).
That term is found in Rule 34, and refers to the
production of documents held by, or available to, a
litigant. The appropriateness of deposing a non-party
witness pursuant to notice is governed by a separate rule,
which uses different language, and is properly interpreted
by somewhat different standards. Specifically, Rule
30(b)(1) refers to depositions of a corporation by its
officers, directors or managing agents.
On the current motion, the central question concerns
Nottoli's asserted status as a managing agent of DB. The
party seeking the deposition bears the burden -- whether
of production or persuasion is uncertain -- but that burden
is "modest," since the movant need only demonstrate
"'that there is at least a close [*48] question' as to
whether the witness is a managing agent." Boss Mfg. Co.
v. Hugo Boss AG, 1999 U.S. Dist. LEXIS 133, 1999 WL
20828, at *4 (S.D.N.Y. Jan. 13, 1999) (citing United
States v. Afram Lines (USA), Ltd., 159 F.R.D. 408, 413
(S.D.N.Y. 1994)). Accord Dubai Islamic Bank v.
Citibank, N.A., 2002 U.S. Dist. LEXIS 9794, 2002 WL
1159699, at *3-4 (S.D.N.Y. May 31, 2002). Moreover,
for purposes of this analysis all doubts should be resolved
in favor of the discovering party. See 2002 U.S. Dist.
LEXIS 9794, [WL] at *4; Afram Lines, 159 F.R.D. at
413. In this manner, discovery may proceed on the basis
of a provisional determination of managing-agent status,
with the final resolution of that question left for
post-discovery proceedings, when the trial court or
fact-finder determines whether the testimony of the
witness is binding on the party. See, e.g., Dubai Islamic
Bank, 2002 U.S. Dist. LEXIS 9794, 2002 WL 1159699,
at *4; Boss Mfg., 1999 U.S. Dist. LEXIS 133, 1999 WL
20828, at *4; Afram Lines, 159 F.R.D. at 413-14; Hughes
Bros., Inc. v. Callanan Road Improvement Co., 41 F.R.D.
450, 454 (S.D.N.Y. 1967).

In assessing whether a proposed deponent is
potentially a managing agent, we look [*49] to a variety
of factors, none of which is necessarily controlling. See,
e.g., Boss Mfg., 1999 U.S. Dist. LEXIS 133, 1999 WL
20828, at *3. As typically articulated, the individual
"should possess general powers to exercise judgment and
discretion in corporate matters, . . . [,] should be a person
who can be relied upon to give testimony, at the
employer's request, in response to the demand of the
examining party, . . . [and] should be a person who can be
expected to identify with the interests of the corporation."
1999 U.S. Dist. LEXIS 133, [WL] at *3 (quoting 7 J.
Moore, Moore's Federal Practice § 30.03[2] at 30-20 (3d
ed. 1998)). Other factors recognized by some courts focus
on "whether there are other persons 'in positions of higher
authority than the individual designated in the area for
which information is sought by the deposition' and 'the
general responsibilities of the individual respecting the
matters involved in the litigation.'" 1999 U.S. Dist.
LEXIS 133, [WL] at *3 (citing Moore & cases).
In this case the record on the pertinent facts is sparse,
consisting principally of snippets of testimony proffered
by LV from depositions that it has taken in this litigation
and in the Multicolor [*50] case. 18 Obviously LV
cannot be expected to provide testimony from Nottoli as
to the nature of his duties and the degree of judgment that
he exercises in carrying them out. As for DB, it has not
proffered any affidavits from either Dooney or Nottoli.
18 DB protests that LV should be precluded
from using evidence obtained in the Multicolor
case because a protective order there provides that
confidential information supplied in that case may
be used only for that litigation. (DB Mem. Opp'n
at 4-7). Since, however, both parties have
represented that they agree that the discovery
obtained in each case should be utilized in both
cases, there is no occasion to address this matter
(other than to note that DB itself freely uses
helpful information from the Multicolor case on
this motion).
The limited record reflects that Mr. Nottoli performs
functions for DB that seem to involve some degree of
discretion, as we infer that he uses judgment not only in
the design of bags for DB but also in the acquisition of
[*51] products from other companies. He also appears to
have played a central role in the return of the S-lock bags
for retrofitting, and we infer that some degree of

Page 14
2006 U.S. Dist. LEXIS 87096, *51

discretion was afforded him in handling this matter. The
record also supports the inference that Mr. Nottoli would
comply with a request or direction by DB to appear for a
deposition; indeed, DB's counsel has implied as much,
suggesting that defendant would arrange for a deposition
of him in Italy in exchange for LV submitting Messrs.
Carcelle and Stalla-Bourdillon to deposition in New
York. (Besunder Decl., Ex. F). The record is equally clear
that Mr. Nottoli, who is employed by DB's subsidiary and
paid, in effect, by DB, and who works hand-in-glove with
Mr. Dooney, can be expected to identify with the
interests of DB.
As for the remaining factors, DB makes the point
that Peter Dooney has a position of superior authority in
the pertinent areas (DB Mem. Opp'n at 11), an
observation that we infer is correct, although not
dispositive. Finally, there is no question that Nottoli's
responsibilities are relevant to issues posed by this case.
These include the procurement and possibly the design of
the DB bags that are in issue here, [*52] and the
retrofitting process for the unsold bags that were removed
from the market by DB.
The record on a number of the key managing-agent
considerations is admittedly sketchy. That is largely
attributable to the decision of DB not to proffer any
meaningful evidence pertinent to the relevant
considerations, and it underscores the wisdom of leaving
the definitive determination of managing-agent status to
the post-discovery stage of the case. LV has certainly
demonstrated that the question of Mr. Nottoli's status is at
least a close question, and hence we conclude that DB is
obligated to make him available for deposition based on
LV's notice of deposition.
There remains the question of the location of the
deposition. LV notes that Nottoli periodically comes to
the New York area, and indeed he did so while this
motion was pending. Nonetheless, since he apparently
travels here only once or twice a year, it is highly
unlikely that he will be back in the next few weeks, when
all other discovery may be expected to be completed.
The ordinary rule is that the deposition of corporate
employees is to be conducted where they work,
particularly when the corporation is a defendant. See, e.
[*53] g., Boss Mfg., 1999 U.S. Dist. LEXIS 133, 1999
WL 20828, at *1. In this case we see no compelling
reason to alter that presumption, and accordingly we
direct that any deposition of Mr. Nottoli be taken in Italy.

VII. DB's Second Motion on Privilege Issues
DB has moved for an order compelling LV to
produce certain documents listed on its privilege log. DB
focuses on claims of privilege invoked by LV for
communications with its in-house attorneys Nathalie
Moulle-Berteaux and Emmanuel Barbault, 19 and its
work-product claim for documents prepared in
anticipation of registration proceedings before the PTO. It
also argues that LV has waived any privilege by virtue of
deposition testimony by Ms. Moulle-Berteaux and that
any privilege or work-product immunity should be
invaded based on the crime-fraud exception. 20 LV
opposes the motion while stating -- in what amounts to an
elaboration of its prior motion for a protective order -that it is willing to produce most of the previously
withheld documents and that this intention moots DB's
current motion to compel. (LV Mem. Opp'n at 2-5). We
understand LV to be saying that it would produce most,
though not all, of the documents in the prosecution [*54]
files for registrations of its S-lock trademarks, and that it
would withhold a small number of documents as work
product, provided that the court rules in plaintiff's favor
on its hypothesis as to the scope of the waiver that such a
production would entail. 21
19 Prompted by a comment in LV's responding
memorandum, DB mentions documents involving
Benjamin Dubuis, also an in-house attorney, for
the first time in its reply memorandum. (DB
Reply Mem. at 6). This is inadequate to present
the issue of Mr. Dubuis's status on this motion,
and we therefore do not address that question. In
any event, for reasons to be noted, the question
appears to be a moot one.
20 DB also suggests that several items listed on
plaintiff's privilege log are not described with
sufficient particularity to justify invocation of the
privilege or work-product immunity.
21
LV refers to its intention to revise its
privilege log to limit it to a few
work-product-protected documents, but it does
not specify which, other than indicating that they
all date from 2004 or later. (LV Mem. Opp'n at 8).
LV has never indicated that it has actually
prepared a new version of its log.
[*55] LV states that it is prepared to waive any
attorney-client privilege for documents in the prosecution
files for its three S-lock trademarks and one pending

Page 15
2006 U.S. Dist. LEXIS 87096, *55

application. (Id. at 3-5). If correct, that would moot any
argument about the validity of the privilege claim
asserted for these documents. Nonetheless, LV then
proceeds to brief the applicability of the privilege -whether as a matter of caution or because there are other,
unlogged documents that LV is withholding is unclear. In
perhaps an excess of caution, we do likewise, and then
turn to the work-product issue.
As we understand it, LV has asserted an
attorney-client privilege for documents representing
communications between its in-house counsel (Ms.
Moulle-Berteaux, who is based in France, and Mr.
Barbault, who practices in the United States) and other
LV personnel concerning applications for registration of
trademarks by the PTO. Both sides agree that American,
rather than French, law governs the privilege. (See LV
Mem. Opp'n at 12; DB Mem. Supp. at 3). Were it
otherwise, the answer would be straightforward, since it
is conceded that under French law these communications
are not protected by any privilege. (See [*56] id. at 3
(quoting J. Copeman & K. Hurford, "Practical
Considerations in Maintaining Privilege," J. Int'l Banking
L. & Reg. 360, 364 (2005)).
The most obvious difficulty for LV's privilege claim
is that neither Ms. Moulle-Berteaux nor Mr. Barbault are
members of any bar (French or American), and they
apparently have never been. (Declaration of Brian D.
O'Reilly, Esq., executed Oct. 25, 2006, Ex. D at 56-57;
id., Ex. E). American courts have, with some consistency,
held that the attorney-client privilege does not apply to
communications with a law school graduate unless he or
she is admitted to practice at the bar of a state or federal
court (or possibly a foreign court), see, e.g., In re
Rivastigmine Patent Litig., 237 F.R.D. 69, 74 (S.D.N.Y.
2006); A.I.A. Holdings, S.A. v. Lehman Bros., Inc., 2002
U.S. Dist. LEXIS 20107, 2002 WL 31385824, at *4
(S.D.N.Y. Oct. 21, 2002) (citing cases), thus leaving in
serious question the availability of a privilege in this case.
To overcome this obstacle, LV notes that both Ms.
Moulle-Berteaux and Mr. Barbault have full -- and
indeed advanced -- legal training, and carry out the
responsibilities of an in-house attorney that are the
equivalent [*57] of what American in-house lawyers do.
Arguing this functional equivalence as a basis for
recognizing the privilege, they cite the decision in
Renfield Corp. V. E. Remy Martin & Co., 98 F.R.D. 442
(D. Del. 1982), which adopted the conclusion that they

press here. (LV Mem. Opp'n at 10-13).
As defendant properly points out, Renfield has not
been followed elsewhere; indeed, a coordinate court in
the Third Circuit explicitly disagreed with it and noted
that Third Circuit law was inconsistent with its analysis.
See Honeywell, Inc. v. Minolta Camera Co., 1990 U.S.
Dist. LEXIS 5954, 1990 WL 66182, at *2-3 (D.N.J. May
15, 1990). Plaintiff offers no compelling reason for
deviating from the consistent line of authority that holds
to the contrary. Moreover, it would seem that there is
particularly little reason to do so here when the law under
which Ms. Moulle-Berteaux and Mr. Barbault were
practicing -- French and American, respectively -- did not
protect their communications with their client.
It also bears noting that one key premise for assertion
of the privilege is that the participants in the assertedly
protected communication expect it to be treated as
confidential. See, e. [*58] g., United States v.
Construction Prods. Research, Inc., 73 F.3d 464, 473 (2d
Cir. 1996) (communication must have been intended to
be confidential). Given the fact that communications of
Ms. Moulle-Berteaux that are at issue apparently took
place in France and the absence of any indication in the
record that the participants in the communications
nonetheless expected that they would be protected, the
justification for an equivalence analysis is far less
compelling since there is no reason to believe that there
was any expectation by the participants that
confidentiality could be maintained in the face of French
law. As for Mr. Barbault, he was practicing in the United
States, and hence was directly subject to American law,
which gives no protection to the communications of an
unlicensed attorney.
The difficulty with LV's equivalence argument
surfaces in plaintiff's own analysis. Thus LV asserts that
the protection it seeks should be afforded in deference to
the fact that the French legal system operates in a
somewhat different manner from the American, an
apparent reference to the fact that in-house counsel in
France may not belong to the Bar. (See LV Mem. Opp'n
[*59] at 11 (referring to "the differences between the
French and American legal systems")). This type of
comity argument -- at least with regard to Ms.
Moulle-Berteaux -- might well have some force if the
communications in question were protected under French
law. Since they are not, however, the proposed analysis
amounts to cherry-picking segments of French law in

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2006 U.S. Dist. LEXIS 87096, *59

support of a legal protection afforded by neither French
nor American law.
In sum, we conclude that LV cannot assert an
attorney-client privilege for communications between its
in-house counsel and the client. On that basis we need not
address the impact of DB's argument for waiver by
disclosure on the attorney-client privilege and its brief
assertion of the crime-fraud exception to the privilege. 22
22
We do note in passing, however, that in
asserting its crime-fraud argument DB fails to
offer any evidence going to the fraudulent intent
that it must show to establish that there is
probable cause to believe that LV was seeking to
mislead the PTO. Simple reliance on its own
pleadings is simply not sufficient for this purpose.
[*60] As for the work-product question, although
LV initially asserted this form of immunity for all of its
logged documents (O'Reilly Decl., Ex A), it now
concedes that such immunity does not extend to
documents prepared solely for the ex parte proceeding
before the PTO. (LV Mem. Opp'n at 7). It does assert -correctly, we believe -- that documents prepared with a
view to specific anticipated or ongoing litigation or
substantially altered by the expectation or pendency of
such litigation may be covered by work-product
protection, subject to a showing of need by the other side.
(Id. at 8).
LV indicates that it seeks to protect only a handful of
documents on this basis, all of which were drafted in the
context of either this lawsuit or the contested trademark
cancellation proceeding pending before the PTO. (Id. at
8-9). Given this representation, LV is required to produce
to DB all other documents listed on its privilege log and
all documents (if any) not listed on a log but withheld as
privileged within seven days. For any remaining asserted
work product, LV is to submit the documents for in
camera review within seven days, with a appropriate
accompanying
evidentiary
submission
[*61]
demonstrating the factual basis for the work-product
claim for each document.

depositions.
For reasons specified in part at a telephone
conference on November 21, 2006, no sanctions are
warranted. The disputes are in part based on scheduling
disputes occasioned by orders entered in the Multicolor
litigation and in part are premised on disagreements as to
whether plaintiff has been afforded sufficient time to
depose two senior DB officers, Peter Dooney and Philip
Kinsley.
The depositions of two of the witnesses, Ms.
Armenise and Ms. Kopp, were finally scheduled by the
parties for November 30 and 27, 2006, respectively. In
our telephone conference, we ordered that they be
conducted on those dates. As for Mr. Kinsley, although
LV has had two deposition sessions with him, at the same
telephone conference we authorized plaintiff to continue
the deposition for no longer than two hours. This addition
was justified only by the fact that defendant produced a
quantity of invoices and related [*62] documents the day
before the witness's last deposition session and has since
produced a few e-mails that involve or concern him.
As for Mr. Dooney, who was named as a Rule
30(b)(6) witness and separately noticed for deposition in
his personal capacity, LV has had one session with him
that totaled somewhat more than six hours. Although DB
complains that LV spent a large amount of time at the
first session on marginal or irrelevant matters, the breadth
of his involvement in DB's affairs and the events at issue
here amply justify requiring him to return for one more
deposition session, not to exceed seven hours.
CONCLUSION
For the reasons noted, the discovery and sanctions
motions of the parties are granted in part and denied in
part, to the extent indicated. To facilitate the completion
of outstanding discovery proceedings, we extend the
deadline for fact discovery to December 31, 2006.
Dated: New York, New York
November 29, 2006

VIII. LV's Deposition Motions

MICHAEL H. DOLINGER

Plaintiff has filed two motions seeking sanctions for
asserted misconduct by DB in connection with four
depositions. Alternatively it seeks the scheduling of those

UNITED STATES MAGISTRATE JUDGE