Cesari S.R.L. v. Peju Province Winery L.P. et al

Filing 255

MEMORANDUM AND ORDER: The deposition of the CEO of plaintiff, Gianmaria Cesari, is scheduled for December 14, 2020. As the Court observed, in the context of this case, the distinction between the two is largely academic because Mr. Cesari's tes timony would be binding on plaintiff regardless of how the deposition is noticed. The specific subject of this Order is the appropriateness of the 32 topics for examination proposed in defendants' Rule 30(b)(6) deposition notice. (ECF No. 248.) Before addressing the subjects approved for examination at the upcoming deposition, some background is required. The table below summarizes the Court's rulings for each topic in defendants' proposed Rule 30(b)(6) notice (ECF No. 248-1)(a s further set forth in this Order.) None of the rulings are to be construed as waiving any applicable objection or discovery privilege that plaintiff might assert. Moreover, while the Court has permitted some leeway in the questioning even when it wa s not entirely clear how the topic related to an open issue, this accommodation should not be understood as a ruling that the topic would constitute admissible evidence at summary judgment or at trial. (Signed by Judge Naomi Reice Buchwald on 12/10/2020) (cf)

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 1 of 13

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------X
CESARI S.R.L.,
Plaintiff,

MEMORANDUM AND ORDER

- against -

17 Civ. 873 (NRB)

PEJU PROVINCE WINERY L.P., PEJU
PROVINCE CORPORATION, and PEJU
FAMILY OPERATING PARTNERSHIP, L.P.,
Defendants.
-------------------------------------X
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE

The

deposition

of

the

CEO

of

plaintiff,

Cesari, is scheduled for December 14, 2020.

Gianmaria

It is to start

at 8:00 a.m. EST to accommodate the deponent, who is in Italy,
and it is to last for no more than seven hours.

Defendants’

noticing of the deposition under both Rule 30(b)(1) and Rule
30(b)(6) of the Federal Rules of Civil Procedure resulted in
considerable back-and-forth between counsel.

As the Court

observed, in the context of this case, the distinction between
the two is largely academic because Mr. Cesari’s testimony
would be binding on plaintiff regardless of how the deposition
is noticed.

The specific subject of this Order is the

appropriateness of the 32 topics for examination proposed in
defendants’ Rule 30(b)(6) deposition notice.

(ECF No. 248.)

Before addressing the subjects approved for examination
at the upcoming deposition, some background is required.

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 2 of 13

BACKGROUND
This

is

a

straightforward

case.

Plaintiff,

Cesari

S.r.L. (“Cesari”), is an Italian winemaker selling wine using
the registered “LIANO” trademark who sued three American
entities affiliated with the Peju family for selling wine
associated with the name “LIANA.”

In 2004, the Trademark

Trial and Appeal Board (“TTAB”) of the U.S. Patent and
Trademark Office issued a summary judgment decision rejecting
defendant Peju Province Winery L.P.’s trademark application
for LIANA after finding that it was likely to cause confusion
with Cesari’s valid registered LIANO trademark.

Nonetheless,

one or more the affiliated defendants continued to use the
LIANA mark.
Early in the case, plaintiff moved for partial summary
judgment to preclude defendants from relitigating the issue
of likelihood of confusion in light of the TTAB ruling.

The

Court granted that motion in December 2017 insofar as it
applied to Peju Province Winery L.P., the defendant named in
the TTAB proceeding.

Cesari S.r.L. v. Peju Province Winery

L.P., No. 17 Civ. 873, 2017 WL 6509004 (S.D.N.Y. Dec. 11,
2017).

Following that ruling, defendants represented to this

Court in a discovery status update that “the only issues
remaining in this case are whether Peju Province Corporation
and/or Peju Family Operating Partnership, L.P. controlled
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Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 3 of 13

Peju Province Winery L.P. in the previous TTAB litigation,
whether Peju Province Winery L.P. controls one or both of
these

entities

in

the

instant

litigation,

and

whether

Plaintiff is entitled to any remedies, and, if so, the nature
of those remedies.” (ECF No. 55 (emphasis added).) According
to defendants, the scope of discovery should be limited
because “only information regarding these specific issues is
relevant or proportional to the needs of this case.”

(Id.)

In April of this year, the Court revisited the scope of
discovery in a case management conference.

During that

conference, counsel for defendants Joel MacMull represented
to the Court that if defendants’ contemplated motion to
dismiss on statute of limitations grounds were to be denied,1
then defendants “would want to engage in some discovery on
the equitable claim of laches, acquiescence, and waiver” and
“would want to depose the plaintiffs on what they knew, when
they knew it, and why they subsequently didn’t take any action
for more than a decade.”

(ECF No. 210 at 24.)

The Court

then asked Mr. MacMull whether, besides taking a deposition
of plaintiff “on the affirmative defenses of laches and
estoppel, what else, if anything, does Peju need to do to
bring the discovery portion of this case to an end?”

1

Defendants
limitations defense.

never

filed

–

a

3 –

motion

raising

a

(Id. at

statute

of

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 4 of 13

28.)

In response, Mr. MacMull stated that “[w]ith respect to

fact discovery, I think that’s it” and that “there is nothing
that

leaps

out

discovery.”

at

me

as

being

an

obvious

tributary

of

(Id.)

The parties initially set November 18 as the date for
plaintiff’s deposition.
several

discovery

(See ECF No. 233 at 2.)

disputes

were

brought

to

the

After
Court’s

attention in late October (ECF Nos. 233-236), the Court held
a status conference on October 30 at which those issues were
resolved.

Thereafter, defendants raised additional disputes

on November 9 (ECF No. 237), and the Court provided written
guidance on those issues on November 12 so that the deposition
could go forward as scheduled (ECF No. 240).

Following the

written guidance, plaintiff produced additional documents.
(See ECF No. 253 at 1 n.1.)

After receiving the materials,

defendants cancelled the deposition on the Friday before the
scheduled Wednesday deposition.

(ECF No. 241 at 1 n.1, 2

n.2.; see ECF No. 253 at 1 n.1.)
On

November

18,

defendants

served

a

Rule

30(b)(1)

deposition notice for Mr. Cesari and a Rule 30(b)(6) notice
for plaintiff listing 31 topics for examination.
241, 241-1, 241-2, 241-3.)

(ECF Nos.

Defendants noticed the deposition

for November 24, less than four business days from the date
of

service.

(Id.)

This
–

prompted
4 –

plaintiff

to

seek

a

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 5 of 13

protective order from the Court on November 19.
241.)

Instead

of

responding

to

plaintiff’s

(ECF No.
motion

and

attempting to justify their deposition notices, defendants
again cancelled the deposition on the evening of November 20,
the Friday before the scheduled Tuesday deposition.

(ECF

Nos. 242, 242-1.)
On November 23, the Court issued an Order governing how
the deposition(s) would proceed.
defendants

would

be

limited

That Order clarified that
to

single

seven-hour

(ECF No. 243.)

examination of plaintiff’s CEO.

a

It further

directed that if defendants wished to notice a Rule 30(b)(6)
deposition,

then

“[i]n

light

of

the

overbroad

and

objectionable scope of defendants’ original Rule 30(b)(6)
deposition notice,” defendants must submit a proposed list of
examination

topics

for

the

Court’s

consideration

with

“justif[ications] . . . in the form of a written explanation
following

each

and

every

subject

they

propose.”

(Id.)

Finally, the Court warned counsel that while it “has refrained
from issuing sanctions in this case up to now[, c]ounsel
should not assume that the Court’s reluctance will continue,”
or that the “sanction would not be directed to [counsel]
personally” if they “engage[d] in sanctionable conduct.”
(Id.)

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5 –

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On December 2, defendants filed their submission in the
form of a letter from Mr. MacMull.

(ECF No. 248.)

In that

submission, Mr. MacMull proposed a Rule 30(b)(6) deposition
covering the exact same 31 topics from the initial notice and
adding one more topic.

(ECF No. 248-1.)

Mr. MacMull did not

provide a written justification following each and every
subject, as the Court had specifically ordered.

Instead, he

opted for a blunderbuss approach that lumped up to 11 topics
together under a single rationale.
also contained a

Defendants’ submission

Rule 30(b)(1) notice for Mr. Cesari.

(ECF

No. 248-2.)
The Court will work with Mr. MacMull’s noncompliant
submission

to

fulfill

its

responsibility

to

assist

the

parties in completing discovery.
DISCUSSION
I.

Questions About Ownership and Use of the Mark (Topics 18, 11, 29-30)
Based on Mr. MacMull’s letter, it appears that the

justification defendants offer for 11 topics rest on two
faulty premises, the fallacies of which inform the Court’s
decisions on the appropriateness of those topics.
First, Mr. MacMull’s letter proceeds as if there is a
genuine issue about plaintiff’s ownership and validity of the
mark.

There is no such issue.

–

As discussed above, the TTAB

6 –

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 7 of 13

previously held in its summary judgment ruling that “[t]here
is no genuine issue of fact [that] . . . the registration [of
the LIANO mark] is subsisting and is owned by [Cesari],” a
conclusion that necessarily involved a finding that the mark
was used by Cesari in commerce.

Cesari S.R.L. v. Peju

Province, Opp. No. 91158374, 2004 WL 1703103, at *2 (T.T.A.B.
July 20, 2004).

Thus, regardless of the preclusive effect of

the TTAB’s judgment as to specific defendants, that Cesari
owns a valid registered trademark in LIANO is an established
fact, which the Court observes has never previously been
challenged in this litigation.
Mr. MacMull’s letter, however, contends that plaintiff’s
use of the mark as it relates to the ownership and validity
of the mark is a live dispute.

Notably, defendants have not

raised abandonment as an affirmative defense in their answer
to plaintiff’s amended complaint.

Nor, for that matter, have

defendants meaningfully raised the subject of plaintiff’s use
of the mark in outlining the outstanding issues in this
litigation and the topics remaining for discovery, instead
identifying equitable defenses such as laches as grounds to
contest plaintiff’s ability to enforce it trademark rights.
It is obvious that if plaintiff’s non-use of the trademark
were truly a defense in this nearly four-year-old case, it
would have been raised and pursued years ago.
–

7 –

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 8 of 13

Nevertheless, the Court has no objection to the witness
answering questions typically asked at the outset of any
deposition concerning his relationship with plaintiff and his
role and duties.

Defendants may also explore, at a basic

level, background information to establish whether plaintiff
used

the

mark

in

the

United

States,

including

general

information about sales, revenues, and profits associated
with that use and whether plaintiff advertised the mark.
Given that this topic has not been brought to the Court’s
attention

until

just

before

the

end

of

discovery,

proportionality dictates that defendants have not justified
delving

into

more

granular

inquiries,

such

as

specific

details on hiring advertising agencies, using social media,
the amount spent on advertising in any given period, and other
topics of that nature.

Defendants’ examination of these

topics is instead limited to a basic level of generality to
establish that plaintiff did, in fact, use the mark in the
United

States.

Anything

further

is

burdensome

and

impermissible.
Second, Mr. MacMull’s letter references expectations
that trademark holders have about consumer confidence in the
quality of their products associated with the mark.

While

trademark law is no doubt intended to protect these interests
of both consumers and trademark holders, those are issues to
–

8 –

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 9 of 13

be raised by the owner of the infringed trademark, not the
allegedly infringing party. Accordingly, questions regarding
the quality of plaintiff’s products and consumer complaints
are not relevant and may not be asked at the deposition.
II.

Questions About the Pleadings (Topics 9-10, 12-15, 2025)
The

next

pleadings.

tranche

of

proposed

topics

concerns

the

While the pleadings broadly set the parameters of

discovery and relevance in any case, proposing topics such as
“[t]he

allegations

in

the

First

Amended

Complaint,”

and

“[t]he affirmative defenses set forth in the Answers” are
simply too vague to comply with Rule 30(b)(6)’s requirement
that the subject matter for examination be “described with
reasonable particularity.”
However, based on Mr. MacMull’s statements during the
April 30 status conference of the subject matter that he
wished to explore at the upcoming deposition, the Court would
expect

questions

affirmative

related

defenses

of

to

the

laches,

factual

bases

of

the

waiver,

estoppel,

and

acquiescence raised in defendants’ answer.

(See ECF No. 210

at 22-24, 28.)
Likewise, as they relate to defendants’ affirmative
defenses

discussed

above,

questions

about

plaintiff’s

knowledge of defendants and their use of the LIANA mark,

–

9 –

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 10 of 13

internal communications regarding defendants, communications
with defendants, policies regarding plaintiff’s enforcement
of

its

trademark

questions

about

rights,
the

and

prior

parties are appropriate.

general

TTAB

factual

proceeding

background

involving

the

Questions about other lawsuits

involving plaintiff are irrelevant and beyond the scope of
the defenses raised.
Despite the obvious overbreadth of the proposed topics
discussed above, the Court will give defendants some leeway
to ask factual questions regarding the pleadings, though care
must be taken to limit the questions of the witness to matters
of fact, not law, and be consistent with the other parameters
set out in this Order.
III. Questions About Plaintiff’s Discovery Responses (Topics
16–19, 26-28)
Defendants propose to explore several topics related to
plaintiff’s discovery responses.

Defendants may not ask

questions about legal conclusions or a lawyer’s work product
in preparing those responses.

Additionally, questions about

amending

privilege

discovery

properly

directed

logs
to

and

this

witness.

responses
If

are

defendants

not
have

specific factual questions about the substantive content of
discovery responses, they may ask the witness to address those
topics as long as it does not violate the scope of permissible

–

10 –

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 11 of 13

topics

for

the

deposition

as

set

out

in

this

Order.

Defendants may also ask questions about plaintiff’s document
custodians,
protocols,

document
and

the

retention

steps

policies,

plaintiff

took

preservation

to

respond

to

defendants’ discovery responses, which are typical topics for
depositions.
IV.

Questions About Legal Advice Plaintiff Received (Topics
31-32)
The final two topics defendants propose are:

form

of

any

opinions

received

from

Plaintiff’s

(1) “The
counsel,

concerning the Mark, LIANA, this Lawsuit, or any of the
Defendants or their wineries”; and (2) “The reliance, or not,
on advice received from Plaintiff’s counsel, concerning the
Mark, LIANA, this Lawsuit, or any of the Defendants or their
wineries.”

Not much more needs to be said about these topics

besides the obvious: even a cursory review of the proposed
subject

areas

reveals

that

they

will

almost

exclusively

concern matters protected by the attorney-client privilege.
The Court is unaware of any basis to conclude that the usual
rules of privilege have been waived in this case.

And, in

any event, defendants failed to offer any explanation as to
why

they

would

be

privileged material.

entitled

to

explore

presumptively

These subjects are, accordingly, not

permitted.

–

11 –

Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 12 of 13

V.

Summary of Rulings
The table below summarizes the Court’s rulings for each

topic in defendants’ proposed Rule 30(b)(6) notice (ECF No.
248-1):

(1) Limited only
to basic
background
questions about
plaintiff and
the witness’s
relationship
with plaintiff.

(2) Limited to
general
background
questions to
establish the
context of
plaintiff’s
ownership and
use of the mark
in the United
States.

(3) Same as 2.

(4) Same as 2.

(5) Same as 2.

(6) Not
permitted.

(7) Same as 2.

(8) Not
permitted.

(9) Same as 2.

(10) Limited, as
discussed above.

(11) Same as 2.

(12) Permitted.

(13) Permitted,
as it pertains
to LIANO in the
United States.

(14) Not
permitted.

(15) Limited, as
discussed above.

(16) Limited,
as discussed
above.

(17) Limited, as
discussed above.

(18) Limited, as
discussed above.

(19) Limited, as
discussed above.

(20) Permitted.

(21) Permitted.

(22) Permitted.

(23) Permitted.

(24) Permitted.

(25) Permitted.

(26) Permitted.

(27) Permitted.

(28) Permitted.

(29) Not
permitted.

(30) Not
permitted.

(31) Not
permitted.

(32) Not
permitted.

None of the rulings are to be construed as waiving any
applicable objection or discovery privilege that plaintiff
might assert.

Moreover, while the Court has permitted some

leeway in the questioning even when it was not entirely clear
how the topic related to an open issue, this accommodation
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Case 1:17-cv-00873-NRB Document 255 Filed 12/10/20 Page 13 of 13

should not be understood as a ruling that the topic would
constitute admissible evidence at summary judgment or at
trial.2

SO ORDERED.
Dated:

New York, New York
December 10, 2020
____________________________
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE

2
Mr. MacMull is advised that the Court came within a hair’s
breadth of issuing a sanctions order for his flagrant disregard of the
Court’s Order of November 23 and for the failure to withdraw or narrow
his Rule 30(b)(6) deposition notice despite his total inability to justify
two-thirds of the 32 proposed topics.
Praemonitus Praemunitus (Latin
proverb, “Forewarned is Forearmed”).

–

13 –