The case of the day is AFL Telecommunications, LLC v. SurplusEQ.com Inc. (D. Ariz. 2012). According to the complaint, AFL alleged that SurplusEQ was selling counterfeit products bearing the FUJIKURA mark (AFL claimed to be the exclusive US licensee of rights in the mark, which was owned by AFL’s parent company, Fujikura Ltd.), and containing software that infringed Fujikura’s copyright (again, AFL claimed to be the exclusive US licensee of the right to distribute the copyrighted software). The other defendants were Tech Sales LLCV and Daniel Parsons.

The defendants sought a commission to take the depositions of three Fujikura officers in Japan, as AFL was not prepared to produce them voluntarily in the United States. In particular, the defendants sought a commission to an American consul or vice consul in Tokyo under FRCP 28(b)(1)(d). The rule provides:

A deposition may be taken in a foreign country … before a person commissioned by the court to administer any necessary oath and take testimony.

The judge denied the motion for a commission without prejudice. He noted that the proposed commission referenced the US-Japan Consular Convention, but that the defendants had proceeded under FRCP 28(b)(1)(D) rather than 28(b)(1)(A), which permits depositions “under an applicable treaty or convention.”¹ He also noted that the commission did not specify that the consular officer was to administer oaths and did not refer to the officer’s duties at the deposition. It’s not clear to me why the notice needs to contain such details, since the consular role in taking depositions is spelled out in the State Department regulations and the Foreign Affairs Manual. The judge also pointed out that the commission did not specify whether translator would be required and cited a case for the proposition that the translators themselves must be commissioned by the court, though I don’t think the case cited, Horvath v. Deutsche Lufthansa, 2004 WL 241671 (E.D. La. 2004), stands for that proposition. Last and maybe foremost in the judge’s mind, the proposed dates for the deposition were past the date set for discovery cut-off. There is no general exception to discovery deadlines for foreign discovery.

1. Article 17(1)(e)(ii) of the Consular Convention provides: “A consular officer may within his consular district … take depositions, on behalf of the courts or other judicial tribunals or authorities of the sending state, voluntarily given.”