Republic Technologies (NA), LLC v. BBK Tobacco & Foods, LLP
1:16-cv-03401
N.D. Ill.Sep 27, 2017Background
- Republic Technologies (U.S. parent) sued HBI; HBI counterclaimed for trade dress and trademark/copyright rights in RAW packaging; discovery dispute over documents held by Republic’s French subsidiary (Republic Technologies International) concerning design and packaging of OCB Organic Hemp products.
- Republic refused to produce French documents, asserting no possession/custody/control and that French blocking statute (Penal Code No. 80‑538) prohibits disclosure.
- HBI moved to compel production; matter referred to magistrate for discovery supervision.
- Republic’s general counsel testified that the U.S. Republic owns 100% of the French subsidiary (directly or indirectly), the French entity created the packaging at issue, and Republic controls licensing of the OCB mark.
- Court analyzed: (1) whether Republic has control (legal right to obtain) over documents in France under Federal Rule 34; (2) whether French law/comity bars production; (3) scope/specificity of documents sought.
Issues
| Issue | Plaintiff's Argument (HBI) | Defendant's Argument (Republic) | Held |
|---|---|---|---|
| Whether foreign‑located documents are within Republic’s control under Fed. R. Civ. P. 34 | HBI: U.S. parent owns 100% (direct/indirect) and can obtain documents from French subsidiary; Republic controls licensing and influenced design. | Republic: Ownership alone insufficient; must show interlocking management, control of officers, or ordinary‑course maintenance of documents. | Held: Republic has legal right/control to obtain documents from its wholly owned French subsidiary and must produce them. |
| Whether French blocking statute forbids production and thus prevents U.S. court order | HBI: Hague Convention optional; U.S. court may order production despite foreign statute; comity considered but not dispositive. | Republic: French Penal Code bars disclosure; French law precludes production. | Held: Blocking statute acknowledged but does not deprive U.S. court of power; comity factors weigh for production—U.S. interests predominate. |
| Comity analysis: whether U.S. interests vs. France’s justify ordering production | HBI: Documents essential to infringement/defense; no adequate alternative source; U.S. interest in adjudication and protecting parties. | Republic: France’s interest in blocking discovery favors nonproduction; enforcement concern. | Held: Under Restatement §442 factors, U.S. interests outweigh France’s; France’s blocking statute not strongly enforced and was aimed at protecting corporations, not state secrets. |
| Scope/specificity: breadth of documents HBI seeks from French affiliate | HBI: Seeks emails, prototypes, drawings, presentations used in or revealing the design process for European and U.S. OCB Organic Hemp products. | Republic: Request overbroad and disproportionate — seeks every email and unused designs, including European‑only materials not relevant to U.S. packaging. | Held: Production limited to documents that were used in or reveal the design process for the version of OCB Organic Hemp sold in the United States; European‑only or unused designs beyond scope. |
Key Cases Cited
- Société Nationale Industrielle Aérospatiale v. United States District Court, 482 U.S. 522 (U.S. 1987) (foreign blocking statutes do not eliminate U.S. court power to order discovery; comity factors govern).
- Dexia Credit Local v. Rogan, 231 F.R.D. 538 (N.D. Ill. 2004) (party asserting foreign‑law defense must provide particularized evidence; control test explained).
- Thermal Design, Inc. v. American Society of Heating, Refrigerating & Air‑Conditioning Engineers, Inc., 755 F.3d 832 (7th Cir. 2014) (control test for documents not in actual possession).
- Chaveriat v. Williams Pipe Line Co., 11 F.3d 1420 (7th Cir. 1993) (party must have legal right to obtain documents; mere ability if it tried hard is insufficient).
- Reinsurance Co. of America v. Administratia Asigurarilor de Stat, 902 F.2d 1275 (7th Cir. 1990) (French blocking statute aimed at protecting corporations; U.S. interest in adjudication weighs heavily).
- In re Aircrash Disaster Near Roselawn, Ind., 172 F.R.D. 295 (N.D. Ill. 1997) (French blocking statute historically not strictly enforced; comity analysis).