Eastman Kodak Company v. The Goldman Sachs Group, Inc. et al

Filing 150

OPINION AND ORDER: Accordingly, the Court denies, without prejudice to Kodak's right to make a tailored application or applications under § 1782, Kodak's motion for wholesale export of the discoveryrecord in this case via modificati on of the Protective Order or an order pursuant to § 1782. Kodak is at leave to file proper § 1782 application(s), attaching proposed subpoenas, that make tailored requests for discovery from specified defendants who reside or are found in the district of filing.6 Any such applications must be made in a manner that allows for particularized and thorough analyses of the statutory and discretionary § 1782 factors, which the omnibus and overbroad request made here does not permi t. To the extent that Kodak prevails in any such § 1782 application as to designated documents or categories of documents, the Court would expect to order that Kodak can use its existing discovery database, for those categories of documents o nly, for the sole purpose of prosecuting the U.K. action. Finally, the Court further directs Kodak and Defendants to meet and confer to narrow the scope of contested categories of documents prior to Kodak's filing of any such § 1782 petit ions, and, in any event, no later than February 7, 2020. The Clerk of Court is respectfully directed to close the motion pending at Docket 1212. (As further set forth in this Order.) (Signed by Judge Paul A. Engelmayer on 1/31/2020) Filed In Associated Cases: 1:13-md-02481-PAE, 1:14-cv-06849-PAE(cf)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

IN RE ALUMINUM WAREHOUSING
ANTITRUST LITIGATION

13-md-2481 (PAE)
14-cv-6849 (PAE)
OPINION & ORDER

PAUL A. ENGELMAYER, District Judge:
Since August 2014, Eastman Kodak Company (“Kodak”) has been an individual plaintiff
in this multi-district litigation, No. 13 MD 2481 (PAE). See Dkt. 551. 1 During the course of this
MDL, Defendants have produced to Kodak and other plaintiffs “millions of pages of
documents,” and have appeared for “dozens of depositions.” Dkt. 1214 (“Def. Ltr.”). 2 Counsel
for Kodak have expended “an enormous [amount of] time and expense” to “analyze[] and
code[]” this voluminous discovery record. Dkt. 1212 (“Pl. Ltr.”) at 2.
The production and use of discovery in this MDL has been, and continues to be,
governed by the Protective Order filed on May 22, 2014. Dkt. 381. Paragraph 2 of the
Protective Order provides that all discovery “produced or disclosed in connection with this
action shall be used solely for the prosecution or the defense of this action (including any appeal
therefrom) and for no other purpose.” Id. ¶ 2.

1

Unless otherwise noted, references to docket entries in this Order refer to the docket of the
Aluminum Warehousing MDL, No. 13 MD 2481 (PAE).
2

As used in this Order, “Defendants” refers to all remaining MDL defendants, see Dkt. 1216 at 1
(listing defendants), as opposed to only the defendants in Kodak’s operative complaint.

On November 7, 2018, Kodak and its affiliates filed a parallel claim in the English High
Court against Defendants and their affiliates. Kodak’s U.K. action is “analogous” to, and largely
overlaps with, the present litigation. Pl. Ltr. at 1. Although the U.K. action was stayed at an
early stage, it is now proceeding, and Kodak’s deadline to file its detailed “Particulars of Claim”
expires at the end of February 2020. As things stand, Kodak cannot use the discovery it obtained
in the MDL to prosecute its parallel foreign action—even though its U.S. counsel are in physical
possession of the discovery record—due to the Protective Order.
Kodak now moves for “an order permitting Kodak to use the discovery materials
produced by Defendants in this action to prosecute its parallel action against Defendants in the
United Kingdom.” Id. Kodak asserts that such relief could be granted by “an order of
production under [28 U.S.C.] § 1782 and/or modification of the Protective Order to allow it to
use the [discovery] materials in the U.K. action.” Id.
Modification of the Protective Order would clearly afford Kodak the relief it seeks—i.e.,
wholesale permission to use the entire MDL discovery record, which its counsel already
possesses, for its U.K. action. However, in its letter motion, Pl. Ltr., and supplemental letter,
Dkt. 1216 (“Pl. Supp. Ltr.”), Kodak did not address the standards for modification of a protective
order or how they would apply here. 3 Kodak’s apparent decision not to pursue modification
through traditional means is perhaps unsurprising, given the stringent standard for such relief in
this Circuit: “Where there has been reasonable reliance by a party or deponent, a District Court
should not modify a protective order granted under Rule 26(c) absent a showing of improvidence
in the grant of [the] order or some extraordinary circumstance or compelling need.” SEC v.

3

Subsequent to the parties’ initial letters, the Court requested supplemental briefing regarding
several issues relating to Court’s jurisdiction over the § 1782 motion, Dkt. 1215 (“January 21,
2020 Order”), which the parties provided, see Pl. Supp. Ltr.; Dkt. 1219 (“Def. Supp. Ltr.”).
2

TheStreet.Com, 273 F.3d 222, 229 (2d Cir. 2001) (internal quotation marks and citation omitted).
Defendants have unquestionably relied on the Protective Order in producing certain documents
and making deponents available in this litigation. And Kodak has not addressed—much less met
its burden of showing—any improvidence in the grant of the Protective Order, extraordinary
circumstance, or compelling need.
Kodak instead relies entirely on § 1782. Section 1782 “provide[s] federal-court
assistance in gathering evidence for use in foreign tribunals.” Intel Corp. v. Advanced Micro
Devices, Inc., 542 U.S. 241, 247 (2004). A district court possesses jurisdiction to grant a § 1782
petition if:
(1) . . . the person from whom discovery is sought reside[s] (or [is] found) in the
district of the district court to which the application is made, (2) . . . the discovery
[is] for use in a proceeding before a foreign tribunal, and (3) . . . the application [is]
made by a foreign or international tribunal or any interested person.
Kiobel v. Cravath, Swaine & Moore LLP, 895 F.3d 238, 243 (2d Cir. 2018).
Once a district court determines it has jurisdiction to grant a § 1782 application, it must
then use its discretion in balancing a number of factors. “To guide district courts in the decision
to grant a Section 1782 petition, the Supreme Court in Intel discussed non-exclusive factors (the
‘Intel factors’).” Id. at 244. “The Intel factors are not to be applied mechanically,” and “[a]
district court should also take into account any other pertinent issues arising from the facts of the
particular dispute.” Id. at 245. Those factors are: (1) whether “the person from whom discovery
is sought is a participant in the foreign proceeding,” in which event “the need for § 1782(a) aid
generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant in
the matter arising abroad”; (2) “the nature of the foreign tribunal, the character of the
proceedings underway abroad, and the receptivity of the foreign government or the court or
agency abroad to U.S. federal-court assistance”; (3) “whether the § 1782(a) request conceals an
3

attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country
or the United States”; and (4) whether the request is “unduly intrusive or burdensome.” Intel,
542 U.S. at 264–65. If these statutory and discretionary factors are met, § 1782 provides that
“[t]he district court . . . may order [the § 1782 respondent] 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.” 28 U.S.C. § 1782(a).
By its terms, § 1782 addresses the production of documents or the provision of testimony.
In seeking to use § 1782 to obtain wholesale permission to transfer an entire MDL discovery
record to a foreign action—despite a Protective Order prohibiting such action—Kodak attempts
to fit a square peg into a round hole. As Defendants note, “Kodak does not cite a single case in
which Section 1782(a) has been applied as a basis to order defendants in pending U.S.
litigation”—much less in a pending MDL—“to make the entire U.S. discovery record available
for use in a foreign proceeding to which the defendants are also parties.” Def. Ltr. at 3.
Indeed, the few courts to address attempts to export an entire MDL discovery record
through a § 1782 petition appear universally to have denied such relief.
For example, in In re Volkswagen “Clean Diesel” Marketing, Sales Practices &
Products Liability Litigation, No. 15 MD 2672 (CRB) (N.D. Cal.) (“VW MDL”), several
interested persons, represented by counsel who also represented VW MDL plaintiffs, applied for
discovery pursuant to § 1782 for use in pending and contemplated foreign actions against the
same defendants and their affiliates. See VW MDL, Dkts. 1415, 1577, 1600, 1768, 2147. This
led to litigation in at least three judicial districts, in which the various defendants resided or were
found: The § 1782 application for discovery from Volkswagen Group of America, Inc.
(“VWGoA”), was resolved in the District of New Jersey; the § 1782 application for discovery

4

from Robert Bosch LLC (alleged inventor of the devices used by VWGoA) was resolved in the
Eastern District of Michigan; and the VW MDL court, sitting in the Northern District of
California, resolved the § 1782 applications for discovery from defendants purportedly residing
or found in that district. See financialright GmbH v. Robert Bosch LLC, 294 F. Supp. 3d 721,
724 (E.D. Mich. 2018); In re Application of Cal. State Teachers’ Ret. Sys., No. 16. Civ. 4251
(SRC) (CLW), 2016 WL 7477753, at *4 (D.N.J. Dec. 28, 2016) (“In re CalSTRS”), aff’d sub
nom., In re Cal. State Teachers’ Ret. Sys., 2017 WL 1246349 (D.N.J. Apr. 3, 2017); VW MDL,
Dkt. 2877.
In the New Jersey application, applicants sought an order authorizing a subpoena
directing VWGoA to produce documents for use in a foreign proceeding against VWGoA’s
parent, Volkswagen AG. The proposed subpoena contained 27 requests, 26 of which were
“tailored requests that target specific issues and seek particular documents.” In re CalSTRS,
2016 WL 7477753, at *4. However, request number 27 sought “all documents [VWGoA and
each of its members, parents, and subsidiaries] produced in the [VW MDL].” Id. at *1. The
court granted the § 1782 application as to the first 26 requests, but directed the applicant to strike
the 27th as part of its analysis of the Intel factors. Id. at *4.
In the Michigan application, applicants sought assistance obtaining discovery from
Robert Bosch LLC and its affiliates for use in foreign litigation against several MDL defendants,
including Robert Bosch LLC and/or its affiliates. The proposed subpoena contained 25 requests,
the last of which sought “[a]ll Documents and Communications that [Bosch] produced to the
plaintiffs [in the VW MDL].” Robert Bosch LLC, 294 F. Supp. 3d at 724. The court held that,
with this request, “the Applicants make no effort to tailor their requests in any meaningful way to
their purported claims . . . and instead seek to recapitulate discovery conducted in the VW MDL

5

litigation.” Id. at 739. Accordingly, “[t]he scope of the request [was] unreasonable.” Id.
Notably, the court found it irrelevant that the VW MDL documents “would already have been
reviewed for privilege and organized and could be reduced to a single thumb drive.” Id. 4
Similarly, the court overseeing the multi-district litigation in In re Cathode Ray Tube
(CRT) Antitrust Litigation, MDL No. 1917 (SC) (N.D. Cal.) (“CRT MDL”) also denied
wholesale requests to make available the entire CRT MDL discovery record for use in foreign
litigation. There, the § 1782 petitioner had dropped out of the CRT MDL to pursue a similar
antitrust case in South Korea against several of the CRT MDL defendants. See In re Cathode
Ray Tube (CRT) Antitrust Litig., 2012 WL 6878989, at *2 (N.D. Cal. Oct. 22, 2012), aff’d 2013
WL 183944 (N.D. Cal. Jan. 17, 2013). Petitioner sought the entire CRT MDL discovery record
from counsel for the direct purchaser plaintiffs in the U.S. litigation. Id. Citing policy concerns
and the Intel factors, the Court denied the application, noting that the petitioner “could frame a
more limited § 1782 request to the particular defendants from whom it seeks discovery here.” Id.
at *4.
These multi-district litigation decisions all accord with the Second Circuit’s decision in
Kiobel, 895 F.3d at 247. In that case, the district court had granted a § 1782 application to obtain
the full discovery record, which was governed by a protective order, held by a defendant’s
counsel for use in foreign litigation against the defendant. The Circuit reversed, holding that the
district court had abused its discretion and expressing concern that, among other issues, “the
district court’s ruling would undermine confidence in protective orders.” Id.

4

The VW MDL Court in the Northern District of California also denied similar § 1782
applications on grounds less relevant here. See VW MDL, Dkt. 2877.
6

These cases counsel strongly against granting Kodak’s motion in its current form. The
Court will not grant a blanket motion, purportedly pursuant to § 1782, seeking all documents
produced by Defendants in this MDL, filed without regard for what those documents consist of,
who those Defendants are, and where they “reside” or are “found” for purposes of the statute, see
In re del Valle Ruiz, 939 F.3d 520, 528 (2d Cir. 2019). 5
However, the Court is mindful of § 1782’s broad applicability and its “twin goals” of
providing “equitable and efficacious discovery procedures in United States courts for the benefit
of tribunals and litigants involved in litigation with international aspects” and encouraging
“foreign countries by example to provide similar means of assistance to our courts.” Id. (citation
omitted). A tightly tailored request for specific discovery pursuant to § 1782 has clear potential
to be granted, so as to permit discovery of discrete materials for use in Kodak’s U.K. action.
And—provided a finding has been made that § 1782 authorizes the provision of designated
materials in discovery—the Court would have no intention of forcing counsel for Kodak to
repeat hundreds of hours of work, at great expense, to re-analyze and re-code the documents to

5

Notably, even with the benefit of supplemental briefing directed at the question of the Court’s
jurisdiction, the Court lacks sufficient information confidently to determine jurisdiction over
several of the parties from whom discovery is sought, and the Court has no information that
would connect specific documents or categories of documents to specific defendants. Put
differently, Kodak’s assertion that the presence of at least one defendant and the discovery
record in this District “should end the inquiry” is incorrect, and again highlights the mismatch
between Kodak’s focus on its use of documents and § 1782’s statutory focus on the location of
persons.
Further, despite authority construing 28 U.S.C. § 1407(b) broadly to allow a district court
presiding over an MDL to exercise the powers of a district judge in any district for the purpose of
supervising all pretrial proceedings, it would be a bridge too far to bootstrap that provision onto
collateral proceedings brought pursuant to § 1782. Such a ruling would set a dangerous
precedent that any multi-district litigation would have nationwide jurisdiction over § 1782
applications directed at any defendants. Accordingly, the Court believes the method used in the
VW MDL—filing § 1782 applications in districts where each defendant actually resides or is
found—provides the proper procedural path here.
7

which it would be independently entitled in a standalone § 1782 application. Relief from the
Protective Order would then be justified to avoid such wasteful efforts with respect to the
pertinent subset of discovery whose production had been approved under § 1782.
Accordingly, the Court denies, without prejudice to Kodak’s right to make a tailored
application or applications under § 1782, Kodak’s motion for wholesale export of the discovery
record in this case via modification of the Protective Order or an order pursuant to § 1782.
Kodak is at leave to file proper § 1782 application(s), attaching proposed subpoenas, that make
tailored requests for discovery from specified defendants who reside or are found in the district
of filing. 6 Any such applications must be made in a manner that allows for particularized and
thorough analyses of the statutory and discretionary § 1782 factors, which the omnibus and
overbroad request made here does not permit. To the extent that Kodak prevails in any such
§ 1782 application as to designated documents or categories of documents, the Court would
expect to order that Kodak can use its existing discovery database, for those categories of
documents only, for the sole purpose of prosecuting the U.K. action.
Finally, the Court further directs Kodak and Defendants to meet and confer to narrow the
scope of contested categories of documents prior to Kodak’s filing of any such § 1782 petitions,
and, in any event, no later than February 7, 2020.
The Clerk of Court is respectfully directed to close the motion pending at Docket 1212.

6

To the extent that some such petitions are properly filed as miscellaneous actions in the
Southern District of New York, the Court would be receptive to treating them as related to the
above-captioned litigation.
8