Leader Technologies, Inc., v. Facebook, Inc.

Filing 32

MOTION to Seal Exhibits 1,2,3 and 4 to the declaration of Sean Boyle in support of Leader Technologies, Inc.'s Motion for De Novo review, and Objections to Magistrate's Order filed by Leader Technologies, Inc.,. Motion Hearing set for 4/12/2010 09:00 AM in Courtroom 8, 4th Floor, San Jose. (Kobialka, Lisa) (Filed on 3/16/2010) Modified on 4/28/2010 (cv, COURT STAFF).

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J. Andrew Coombs (SBN 123881) [e-mail] Annie S. Wang (SBN 243027) [e-mail] J. Andrew Coombs, A P. C. 517 East Wilson Avenue, Suite 202 Glendale, California 91206 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff Louis Vuitton Malletier, S.A. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA (SAN JOSE DIVISION) Louis Vuitton Malletier, S.A., Plaintiff, v. Akanoc Solutions, Inc., et al. Defendants. ) ) ) ) ) ) ) ) ) ) ) ) Case No.: C 07 3952 JW Hon. Magistrate Judge Howard R. Lloyd OPPOSITION TO DEFENDANTS' MOTION TO COMPEL THE DEPOSITION OF PLAINTIFF LOUIS VUITTON MALLETIER, S.A. Date: April 22, 2008 Time: 10:00 a.m. Dept: Courtroom 2, 5th Floor

INTRODUCTION Defendants have failed to meet their burden to overcome the presumption that corporations should be deposed at their principal place of business. Though the presumption should apply, Plaintiff has offered several reasonable options to resolve this dispute, all of which have been summarily rejected by the Defendants. Defendants are insured litigants who have demonstrated an ability to travel out of state for deposition, and who should take the corporate deposition of Plaintiff Louis Vuitton Malletier, S.A. ("Plaintiff" or "Louis Vuitton") telephonically, or, if in person, 1) in France, Plaintiff's principal place of business, 2) in New York, a place of business for the corporate Defendants, or 3) in California, at Defendants' expense. 1
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Lead counsel were in Dallas on Tuesday, the 1st, the date this Opposition was due but the deposition ran the full seven hours, until after business hours local time, and counsel agreed that Opposition and Reply could, subject to the Court's agreement, be extended for an additional day. Declaration of J. Andrew Coombs ("Coombs Decl.") at ¶¶ 7-8.
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Louis Vuitton v. Akanoc, et al.: Opposition to Motion to Compel

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STATEMENT OF THE FACTS Defendants Akanoc Solutions, Inc., Managed Solutions Group, Inc., and Steven Chen (collectively "Defendants") operate a successful business owning, operating and allegedly renting approximately 1,500 servers in several locations including Freemont, California and New York, which host and continued to host a number of infringing websites selling counterfeit Louis Vuitton merchandise despite repeated notice. Declaration of J. Andrew Coombs ("Coombs Decl.") at ¶ 4. Defendants indicated that insurance coverage is available. Coombs Decl., Ex. A. Plaintiff's headquarters is in France. Id. at ¶ 3. Though Plaintiff has a manufacturing facility in San Dimas, California, it does not oversee any internet related intellectual property enforcement efforts from that location, nor does it have any corporate offices dedicated to the issues involved in this litigation in California and, most important, it has no designee pursuant to Fed.R.Civ.P. 30(b)(6) at that location. Id. Plaintiff does have personnel in New York who handle intellectual property enforcement issues. Id. United States counsel responsible for intellectual property who is expected to attend the deposition is based in New York. There would be far less travel time, expense and disruption involved for any deponent traveling from France to New York, than anywhere in California. Id. Plaintiff identified its corporate witness in its Initial Disclosures which were served on Defendants' counsel on or about November 28, 2007. Declaration of Brian Edwards in Support of Motion to Compel at ¶ 2. The Parties have met and conferred on the depositions for both parties and have exchanged several letters, some of which discussed Plaintiff's alternatives to resolve the present dispute. Coombs Decl. at ¶ 5. The Parties were able to resolve most of the deposition disputes, and in two of its objections dated March 13, 2008, Defendants cited Thomas v. International Business Machines, 48 F.3d 478, 483 (10th Cir. 1995) which restates the presumption that the location of the deposition of a corporation should be its principal place of business. Id. at ¶ 6. On or about April 1, 2008, the deposition of Robert Holmes took place in Dallas, Texas, where one attorney for Defendants appeared and was connected by active Internet link to his office, where the transcript could be reviewed in real time by personnel in defense
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counsel's office and, possibly, one or more of the Defendants. Id. at ¶ 7. Defendants take the position that they must depose Plaintiff in California. Plaintiff has offered and continues to offer that the deposition take place telephonically, in New York, or at Defendants' counsel's office but, if so, with out of pocket expenses reimbursed by Defendants. ARGUMENT I. Defendants Fail to Rebut the Admitted Presumption that Plaintiff's Deposition is Properly Taken at the Plaintiff's Principal Place of Business: Paris, France. Defendants do not dispute the applicable presumption: the deposition of Plaintiff is to be taken at its principal place of business, in Paris, France. Courts have found exceptions to this presumption and Defendants have cited non-binding authority to evaluate when departure from the presumption is warranted. 2 Those exceptions are not applicable here. Though many of the arguments advanced by Defendants' have become moot since the filing of their motion or are misleading, given the relative inconvenience to Defendants and most importantly in light of the multiple alternatives proposed by Plaintiff, the deposition of Plaintiff's corporate designee should take place either telephonically, as the most cost effective choice for all involved, in France, applying the presumption, or as alternatives, in New York, where all Parties conduct business, or at Defendants' counsel's office at Defendants' expense. a. Some of Defendants' Assertions are Unsupported, Moot or Misleading. Defendants make the following assumptions and adduce no evidence in support of the following assertions in their moving papers which should be accorded no weight: 1. Plaintiff's deponent travels frequently to California: Counsel is not aware of any recent visits by Plaintiff's designee to California. Coombs Decl. at ¶ 3. 2. Traveling to California for deposition is one of the expected costs of doing business The Cadent case is distinguishable because the resisting party provided "absolutely no rationale" for its position, including a failure to identify the corporate designee, let alone the designee's residency or travel schedules, among other things. Cadent Ltd. v. 3M Unitek Corporation, et al., 232 F.R.D. 625, 629-30 (C.D. Cal. 2005). In addition to the rationale set forth herein, Plaintiff identified its designee in its initial disclosures in November of 2007.
Louis Vuitton v. Akanoc, et al.: Opposition to Motion to Compel 2

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for Louis Vuitton: Plaintiff's designee is responsible for Louis Vuitton's global Internet enforcement efforts and, to the contrary, the scope of Internet activity is such that no such assumption is warranted or supported here. 3. It is more convenient for all Parties that the deposition of Plaintiff take place in California: As set forth in greater detail below, there are several reasons why Paris and even New York are substantially more convenient for Louis Vuitton and Defendants have already demonstrated the effective absence of any inconvenience in deposing a witness out of state, especially where they might otherwise be obliged to travel in any event to Northern California. 4. A manufacturing facility has anything to do with corporate intellectual property enforcement: the San Dimas operation has no relevant responsibilities and the corporate designee is not domiciled there. This argument is tantamount to suggesting that the deposition can be compelled in any judicial district where a retail outlet is located. 5. Disputes are likely to arise during the deposition of Plaintiff's corporate witness and will be more easily addressed if the deposition takes place in California: one deposition has been concluded without any disputes and applicable rules provide for resolution by telephone conference which can be conducted from any location. 6. The Robert Holmes deposition was concluded without "incident" on April 1, 2008 and any argument predicated upon presumed disputes arising due to that deposition are moot. Coombs Decl. at ¶ 7. Aside from the unsupported assumptions above, the following statements also fail to support Defendants' efforts to rebut the admitted presumption that Paris is the appropriate venue for Plaintiff's deposition: a) Louis Vuitton brought the lawsuit in California and should appear in California for deposition. Louis Vuitton brought the lawsuit in the Northern District of California as it was the place of all Defendants' domicile. Louis Vuitton should not have to bear the additional costs of already litigating in a foreign forum which was chosen in large part due to Defendants' presence
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and the infringing conduct. 3 The global nature of the Internet is well documented. The corresponding scope of the counterfeiting challenge which a famous brand such as Louis Vuitton must combat is similarly well documented. To require Louis Vuitton to appear in connection with each piece of litigation in each jurisdiction where it is required to travel to enforce its famous rights only magnifies the harm caused by the rampant online infringement of its copyrights and trademarks. The choice of forum has benefited Defendants and Plaintiff should not have to bear additional deposition costs in light of the presumption that its deposition should take place at its principal place of business. There is enough burden imposed upon Louis Vuitton to litigate in a foreign district, including appearances required for other Court mandated proceedings including (and up to) trial that to require it to bear the full burden for appearance for deposition on these facts is inappropriate. b) Counsel for both Parties are located in California and Louis Vuitton is producing one witness from France as opposed to many. At the deposition of Robert Holmes which took place on April 1, 2008, Defendants sent just one attorney who was aided by an active Internet link which communicated the deponent's testimony in real time to defense counsel's office in Irvine. Defendants can clearly employ such technology to take the Plaintiff's deposition. Thus, the relative inconvenience to Plaintiff's deponent, who must travel from France to California, as suggested by Defendants, compared to the inconvenience of Defendants' one attorney whose travel time would only be increased by a few hours from Northern California to New York is unreasonable. It would be inconvenient for Plaintiff's witness to be deposed anywhere other than in France. Despite the location of all counsel in Southern California, Plaintiff's inconvenience in traveling from France is key and the alternatives proposed by Plaintiff addresses these concerns and those of cost raised by Defendants. A Northern District ruling required the corporate Plaintiff in an insurance dispute to be deposed in the forum as Plaintiff had issued the policies in the forum which were directly related to the case and such appearance was foreseeable based upon the issuance of the policies. Lexington Insurance Co., et al. v. Commonwealth Insurance Co. et al., 1999 U.S. Dist. LEXIS 23428, *30 (N.D. Cal. September 17, 1999). In this case, the litigation involves illegal conduct over which Louis Vuitton had no control over, thus the reasoning in Lexington, is distinguishable.
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c) Louis Vuitton is better able to afford the expense of the trip and forcing a small corporate defendant such as MSG to pay attorneys to fly to France or New York would be an enormous cost burden. There are two corporate defendants and one individual involved in this case. Defendants have made no assertions that their businesses are not successful and discovery completed to date would contradict that claim. Further, insurance is in play and Defendants will likely be looking to the insurance to assist in the costs associated with this litigation. Moreover, the deposition of Plaintiff's representative will likely cover issues common to all Defendants and Defendants will most likely send just one attorney to represent all of their interests. Defendants will already be sharing the benefits of taking Plaintiff's deposition and should be able to share in the costs as well. Defendants have already demonstrated an ability to travel for deposition as they conducted the deposition of Robert Holmes in Dallas, Texas. Further, the cost and time differential for Defendants between Northern California and New York is marginal when compared to the great inconvenience of forcing Plaintiff's deposition to occur anywhere in California in light of the presumption. II. The Alternatives Proposed By Plaintiff During the Meet and Confer Process Adequately Address the Factors which Might Otherwise Overcome the Presumption for Taking the Deposition in France. i. Telephonic Deposition. This alternative is the most cost effective choice and would allow all Parties to participate in locations most convenient to them. The timing of the deposition could also be set as to best accommodate Defendants' counsel and any possible disputes that may arise which would require Court intervention. ii. New York. If Defendants are willing to send their attorney to Northern California from Southern California to take Plaintiff's deposition, they could just as easily send their attorney to New York
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with only a marginal cost and time difference. Some United States enforcement efforts are administered from New York and United States counsel is based in New York, both of which make a New York venue substantially more convenient for the Plaintiff and, clearly, more convenient for Defendants than Paris. Given the presumption mandating that the deposition take place in France, New York, a location where Defendants' operate servers and where Plaintiff has corporate offices, appears to be a fair compromise. iii. At Defendants' Counsel's Office at Defendants' Expense. Courts have found cause for the party requesting departure from the presumption to pay for some or all of the expenses of the deposition. Cadent Ltd. v. 3M Unitek Corporation, et al., 232 F.R.D. 625, 630 (C.D. Cal. 2005); Custom Form Manufacturing, Inc. v. Omron Corp., et al., 196 F.R.D. 333 (N.D. Ind. 2000) (defendant required to bear a portion of plaintiff's costs associated with bringing plaintiff's officer to forum for deposition). Though the determination is largely factual, this was presented as merely another option to assuage Defendants given that Plaintiff's witness will still have to take additional time for travel to California and will have additional inconveniences associated with time difference and relative location of other corporate offices. CONCLUSION For the foregoing reasons, Plaintiff respectfully requests that the corporate deposition of Plaintiff be conducted telephonically, or, if in person, 1) in France, Plaintiff's principal place of business, 2) in New York, an additional place of business for the corporate Defendants, or 3) in California, at Defendants' expense. DATED: April 2, 2008 J. Andrew Coombs, A Professional Corp. By: ___/s/ J. Andrew Coombs______________ J. Andrew Coombs Annie S. Wang Attorneys for Plaintiff Louis Vuitton Malletier, S.A.

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DECLARATION OF J. ANDREW COOMBS I, J. ANDREW COOMBS, declare as follows: 1. I am an attorney at law, duly admitted to practice before the Courts of the State of

California and the United States District Court for the Northern District of California. I am an attorney for Plaintiff Louis Vuitton Malletier, S.A. ("Plaintiff" or "Louis Vuitton") in an action styled Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., et al. I make this Declaration in support of Plaintiff's Opposition to Defendants' Motion to Compel the Deposition of Plaintiff Louis Vuitton Malletier, S.A. Except as otherwise expressly stated to the contrary, I have personal knowledge of the following facts and, if called as a witness, I could and would competently testify as follows: 2. Defendants have indicated that insurance coverage is available in their Initial

Disclosures dated December 3, 2007, a copy of which is attached hereto as Exhibit A. 3. I am informed and believe that, although Louis Vuitton merchandise is

manufactured in San Dimas, California, no corporate functions, specifically including intellectual property enforcement and, more specifically internet related intellectual property enforcement efforts are managed from that location. Instead, the Plaintiff's corporate head office is located in France. The Plaintiff's designee pursuant to Fed.R.Civ.P. 30(b)(6) on issues identified by the Defendants is located at that office. Offices located in New York also handle intellectual property enforcement issues though not in the Internet area. United States intellectual property enforcement counsel is based at the New York office and I believe that he will be involved in the deposition of Plaintiff's designee and I expect him to attend the deposition of Plaintiff's designee in this case. There would be far less travel time, expense and disruption involved for any deponent traveling from France to New York, than anywhere in California. Plaintiff's designee was identified in Plaintiff's voluntary Rule 26 disclosures and is a resident of France. His office is in France and he is responsible for global Internet enforcement efforts for the Plaintiff. I have known Plaintiff's designee for several years and I am unaware that he has visited California during that time.
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4.

Attached hereto as Exhibit B are true and correct copies of printouts which appear

to indicate that servers owned by at least two of the Defendants in this case are located in New York. To date Defendants have not asserted that means are an issue in taking the deposition outside of California and, to the contrary, there is nothing in documents produced in the action to date which implies that this might be an issue. 5. On or about January 28, 2008, and continuing through March of 2008, the Parties

discussed the issue of time and place of the depositions for several individuals and/or corporate representatives in this matter and were able to resolve most of these issues among them. In the meet and confer process, many letters were exchanged, some of which discussed the time and location of the deposition of Plaintiff's Rule 30(b)(6) deposition. In that correspondence, Plaintiff made several offers other than proceeding in Paris, France, including proceeding telephonically, proceeding in New York, or proceeding in Orange County with Defendants' reimbursing Plaintiff's actual out-of-pocket expense (intended to expressly exclude any overhead or other costs Plaintiff will also incur), to resolve the dispute on where the deposition of the Plaintiff should take place. 6. In objecting to Plaintiff's Notices of Deposition of Defendants, Defendants cited to

Thomas v. International Business Machines, 48 F.3d 478, 483 (10th Cir. 1995) on or about March 13, 2008, for the presumption that the location of the deposition of a corporation should be its principal place of business, which they now claim is inapposite to this matter in their moving papers. (This pertains to Plaintiff's notice of Defendants' depositions in the Central District of California ­ where both plaintiff's counsel and defendants' counsel are located and where at least some of the Defendants appear to maintain some business operations.) Attached hereto as Exhibit C are true and correct copies of these objections made by Defendants citing Plaintiff's authority on the proper location of a corporation's deposition. 7. On or about April 1, 2008, the deposition of Robert Holmes took place in Dallas,

Texas for the full seven hours. This deposition did not finish until after business hours, local time. James Lowe, counsel for Defendants conducted the deposition. Through software and an
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active Internet connection, Mr. Lowe's office was able to review the transcript as it was transcribed and to comment on the deponent's testimony. No disputes arose during the deposition which required intervention by the Court. 8. On or about April 1, 2008, the Parties agreed that Plaintiff's Opposition would be

timely if filed and served on or before April 2, 2008. The Parties agreed that the Defendants should also have one additional day to submit their Reply. I declare under penalty of perjury that the foregoing is true and correct under the laws of the United States of America. Executed this 2nd day of April, 2008, at Dallas, Texas. _____/s/ J. Andrew Coombs_______________ J. ANDREW COOMBS

Louis Vuitton v. Akanoc, et al.: Opposition to Motion to Compel

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EXHIBIT A

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EXHIBIT B

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EXHIBIT C

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