In re Application of Armcon Limited

Filing 8

ORDER granting 1 Petition (Written Opinion). Signed by Magistrate Judge Tony N. Leung on 7/18/2018. (GFK)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA

In re Application of
Armcon Limited,

Case No. 18-mc-51 (JRT/TNL)
ORDER
Petitioner.

Hugh D. Brown and Leon P. Wells, IV, Fabyanske, Westra, Hart & Thomson, P.A.,
333 South Seventh Street, Suite 2600, Minneapolis MN 55402 (for Petitioner).

This matter is before the Court, United States Magistrate Judge Tony N. Leung, on
Armcon Limited’s Expedited Ex Parte Application for Discovery Order Pursuant to 28
U.S.C. § 1782(2) in Aid of Foreign Proceeding. (ECF No. 1). For the reasons set forth
below, the petition is granted.
I.

BACKGROUND
Petitioner Armcon Limited (“Armcon”) is a company based in the United Kingdom

and operates in the concrete industry. (Decl. of Robert Armstrong ¶ 1, ECF No. 3). In July
2005, Armcon registered the “CEMEN TECH” trademark with the European Union.
(Armstrong Decl. ¶ 2).
In June 2006, Armcon entered into a distributor agreement with an Indianola, Iowabased company named “Cemen Tech, Inc.” (Armstrong Decl. ¶ 3). Cemen Tech
manufactures and sells various concrete dispensing machines and related equipment.
(Armstrong Decl. ¶ 3). The agreement between Armcon and Cemen Tech was signed on
behalf of Cemen Tech by its then-President, Thomas Palme. (Armstrong Decl. ¶ 4). During
discussions related to the agreement, Armcon and Cemen Tech, through Palme, discussed

the “CEMEN TECH” trademark registration in the European Union. (Armstrong Decl.
¶ 5).
In June 2015, Cemen Tech also registered the “CEMEN TECH” trademark with the
European Union. (Armstrong Decl. ¶ 7). Armcon has since filed an application with the
European Union Intellectual Property Office (“EUIPO”) to declare Cemen Tech’s
registration of the “CEMEN TECH” trademark invalid. (Armstrong Decl. ¶ 8; Decl. of
Michael Shaw ¶ 2, ECF No. 4). In response, Cemen Tech filed an application with EUIPO
to declare Armcon’s “CEMEN TECH” trademark invalid. (Armstrong Decl. ¶ 8; Shaw
Decl. ¶ 2). The EUIPO proceedings remain pending, with evidentiary submissions due July
28 and August 14, 2018. (Armstrong Decl. ¶ 9; Shaw Decl. ¶¶ 2, 4). 1 Armcon seeks to
depose Palme regarding his knowledge of Armcon’s “CEMEN TECH” trademark at the
time he was employed by Cemen Tech. (Armstrong Decl. ¶ 10; Shaw Decl. ¶ 5).
Palme is a resident of Mankato, Minnesota, located in Blue Earth County.
(Armstrong Decl. ¶ 11; Shaw Decl. ¶ 6; ECF No. 7). Palme is no longer employed by
Cemen Tech. (Armstrong Decl. ¶¶ 4, 6)
II.

ANALYSIS
Under 28 U.S.C. § 1782,
[t]he district court of the district in which a person resides or is found may
order him to give his testimony or statement or to produce a document or
other thing for use in a proceeding in a foreign or international tribunal,
including criminal investigations conducted before formal accusation. The
order may be made . . . upon the application of any interested person . . . .

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The Court notes Armcon filed its Petition on July 10, 2018, a mere 18 days prior to the first deadline for
its discovery submissions in the EUIPO proceeding.

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28 U.S.C. § 1782(a); see also In re Hallmark Capital Corp., 534 F. Supp. 2d 951, 953–54
(D. Minn. 2007) (an order is “appropriate where the Applicant establishes that (1) the
discovery is sought from a person found in this district, (2) the discovery is for use in a
proceeding before a foreign tribunal, and (3) the applicant is an ‘interested person’ before
such foreign tribunal.”).
Here, based on the record before the Court, Palme resides in Mankato, Minnesota,
which is within the District of Minnesota. The petitioner, Armcon, seeks to use the
discovery sought for proceedings before the European Union’s Intellectual Property
Office. Armcon qualifies as an “interested person” given it is a participant in the EUIPO
proceedings by reason of its affirmative and defensive claims related to the “CEMEN
TECH” trademark registrations. Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S.
241, 256 (2004) (“No doubt litigants are included among, and may be the most common
example of, the ‘interested persons’ who may invoke § 1782.”). Accordingly, Armcon has
satisfied the requirements set forth in § 1782(a).
“[A] district court is not required to grant a § 1782(a) discovery application simply
because it has the authority to do so.” Intel Corp., 542 U.S. at 264. The Supreme Court has
enumerated four “factors that bear consideration in ruling on a § 1782(a) request.” Id.
These factors are: (1) whether the person from whom discovery sought is a participant in
the foreign proceeding; (2) the nature of the foreign tribunal, the character of the foreign
proceedings, and the receptivity of the foreign tribunal to federal judicial assistance;
(3) whether the request conceals an attempt to circumvent foreign proof-gathering
restrictions or other policies; and (4) whether the request is unduly intrusive or
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burdensome. Id. at 264–65; accord In re Hallmark Capital Corp., 534 F. Supp. 2d at 954
(once the statutory requirements are met, “a court has the discretion to grant an application
under Section 1782 if doing so would (1) provide an efficient means of assistance to
participants in international litigation, and (2) encourage foreign countries to provide
reciprocal means of assistance to United States courts and litigants.”) (citing In re
Application of Euromepa, 51 F.3d 1095, 1097, 1101 (2d Cir. 1995)).
Based on the factors outlined in Intel Corp., the Court concludes that the petition
should be granted. Palme is not a participant to the foreign proceedings. Rather, he is an
individual who, by reason of his former position with Cemen Tech, may have evidence
related to Cemen Tech’s prior knowledge of Armcon’s “CEMEN TECH” trademark in the
European Union. There is no indication that the EUIPO would reject evidence obtained by
Armcon in the United States. Nor is there any indication that Armcon is attempting to
circumvent foreign proof-gathering procedures. And finally, the discovery sought is
narrowly tailored to Palme’s knowledge concerning the “CEMEN TECH” trademarks at
dispute in the EUIPO proceedings. Accordingly, the Court finds that the factors espoused
in Intel Corp. all weigh in favor of granting the petition.
III.

CONCLUSION
Based on the foregoing, and all the files, records, and proceedings herein, IT IS

HEREBY ORDERED that
1.

Armcon Limited’s Expedited Ex Parte Application for Discovery Order

Pursuant to 28 U.S.C. § 1782(2) in Aid of Foreign Proceeding, (ECF No. 1), is
GRANTED.
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2.

Petitioner Armcon Limited, through counsel, is authorized to issue, sign, and

serve a subpoena upon Thomas Palme, in substantially the same form as attached to the
Petition. (See ECF No. 7 (proposed subpoena)).
3.

In accordance with 28 U.S.C. § 1782(a), the discovery conducted pursuant

to this Order, as well as any related motion practice, shall comply with the Federal
Rules of Civil Procedure and the Local Rules of this Court.
4.

Failure to comply with any provision of this Order or any other prior

consistent order shall subject the non-complying party, non-complying counsel and/or
the party such counsel represents to any and all appropriate remedies, sanctions and the
like, including without limitation: assessment of costs, fines and attorneys’ fees and
disbursements; waiver of rights to object; exclusion or limitation of witnesses,
testimony, exhibits, and other evidence; and/or any other relief that this Court may from
time to time deem appropriate.

Date: July 18, 2018

s/ Tony N. Leung
Tony N. Leung
United States Magistrate Judge
District of Minnesota
In re Application of Armcon Limited
Case No. 18-mc-51 (JRT/TNL)

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