The case of the day is Republic Technologies (NA), LLC v. BBK Tobacco & Foods (N.D. Ill. 2017). Republic sued HBI International for a declaration that HBI had no rights in the RAW trademark or the trade dress for the packaging of its RAW rolling paper, and that Republic’s “Organic Hemp” OCB brand rolling paper did not infringe HBI’s trademarks or copyrights. HBI moved to compel Republic to produce documents held by a Republic subsidiary in France (the precise relationship was unclear, but Republic, directly or indirectly, owned 100% of the French affiliate) relating to Republic’s design and packaging of the OCB products. Republic refused to produce the documents, citing the French blocking statute.
The analysis was pretty standard, and unsurprisingly, the court ordered production. This seems like an easy call in light of the precedents, given the clear connection between the claim and the documents sought. The case is worth noting, though, for another reason. Apparently in the process of horse trading that typically occurs between counsel in cases involving a lot of discovery, Republic’s lawyers offered to “endeavor to obtain documents” from France if HBI would seek to obtain documents from other foreign entities. Republic argued this was not a representation that it could in fact obtain the documents, but the judge found it “implausible that Republic would repeatedly propose this quid pro quo over a two-month period without being assured that it could obtain the documents irrespective of what the French subsidiary may wish.” Republic’s offers weighed against it, since Republic had no right to condition its production of relevant material on the other side’s productions.
What is the lesson? I don’t think the lesson is to stop horse-trading. Rather, counsel can reach agreements that they will not disclose statements they make in these contexts to the judge. Agreements of counsel are probably sufficient, but if you’re really paranoid, you can engage a mediator to help resolve a procedural dispute such as this one, and then (if all goes to plan) bring the lawyer’s offers and counter-offers within the scope of the relevant mediation privacy statute.