The case of the day is Republic Technologies (NA), LLC v. BBK Tobacco & Foods, LLP (N.D. Ill. 2020). The case was “a trademark battle over the packaging and advertising for organic hemp cigarette rolling papers.” It’s pretty common in intellectual property cases to have parallel proceedings pending in the United States and elsewhere, and that was so here: there was a parallel case in Germany. The defendant, HBI, brought a § 1782 application as a motion in the US case rather than as a stand-alone application. It sought discovery of material that had already been produced in the US discovery but that was subject to a protective order and could not, therefore, be used in the German case.

It seems obviously correct to say that a § 1782 application should be filed as a separate proceeding rather than as a motion in an arguably related case that is already pending in a US court. But I am not aware of cases that make this explicit. So the judge’s discussion in today’s case is useful. The judge identified a few reasons for his conclusion that HBI had done the wrong thing. First, bringing the application as a motion in the pending case might make the decision on the § 1782 application non-appealable (because, in general, only final judgments can be appealed as of right), but we know that § 1782 decisions are meant to be immediately appealable. Second, the discovery sought via § 1782 was not really relevant or related to the US case. There is an interesting twist on the question of relatedness. Suppose HBI had proceeded by way of a separate proceeding. Would the case have been assigned to the judge presiding over the US case on the grounds that the two cases were related? Many courts have local rules regarding the assignment of related cases. In my experience the answer to that question is “yes,” but the judge in today’s case doubts that that is correct.

Finally, the judge had a discussion of the legislative history of § 1782, which in his view shows that HBI’s view is wrong. This is the weakest part of the discussion. I do not think the legislative history really bears on the question of the correct procedure one way or the other. In the discussion, the judge did make an interesting point, though: “HBI’s application,” he wrote,

is not a request for new discovery by a person involved in a foreign litigation, but rather a request by a party involved in U.S. litigation to circumvent an American protective order, so that it can share old discovery with its European affiliate. HBI’s application aims to bypass an American confidentiality order, not facilitate our country’s cooperation with foreign adjudicative bodies. HBI’s Section 1782 application therefore does not match the purpose of Section 1782 and is really a mislabeled motion to modify the Court’s protective order.

The judge was right to suggest that if HBI wanted to proceed in the US case rather than by bringing a new proceeding, the correct procedure would be to seek a modification of the US discovery order. This is a well-established alternative to seeking discovery via § 1782, though how successful it will be likely depends on what kinds of representations the party seeking discovery made to the court at the time the court entered the protective order. For example, a party who made very strong assurances that documents obtained in discovery would only ever be used for purposes of the foreign case probably ought to proceed via § 1782 to avoid an unfavorable judicial reaction.