MEMORANDUM OPINION
Denying Prolacto’s Motion for a Protective Order; Granting Prolacto’s Motion to Seal; Overruling as Moot PLM’s Objections to Evidence
Re Document Nos.: 70, 72, 75
I. INTRODUCTION
The parties in this matter claim the exclusive right to use various trademarks in connection with the sale of their food products, including ice cream and fruit popsicles, in the United States. The defendant and counter-claimant now seeks a protective order requiring that the deposition of its corporate designees take place in or near Mexico City, Mexico. Alternatively, the defendant and counter-claimant seeks an order requiring that the plaintiffs and counter-defendants pay for the corporate designees’ travel, lodging, and per diem expenses if the deposition goes forward in the United States. Because the defendant and counter-claimant has not shown that deposition of its corporate desig-nees in the United States will be unduly burdensome, the Court will deny its motion.
II. FACTUAL BACKGROUND
The plaintiffs and counter-defendants, Pal-eteria La Michoacana, Inc. and Paleteria La Michoacana, LLC (collectively, “PLM”), are closely related companies that produce and distribute ice cream bars known as “paletas.” The defendant and counter-claimant, Produc-tos Lácteos Toeumbo S.A. de C.V. (“Prolac-to”), is a Mexican company that operates in the same industry. This trademark dispute began in 2007, when Prolacto initiated a proceeding in the United States Patent and Trademark Office (“USPTO”) seeking cancellation of certain trademarks registered by PLM. See 2d Am. Compl. (Dkt. No. 40) ¶ 29. In 2011, the Trademark Trial and Appeal Board (“TTAB”) granted Prolacto’s petition and denied PLM’s later request for reconsideration of the cancellation. See id. Exs. AB (Dkt. Nos. 40-1 to 40-2).
In September 2011, PLM filed a civil action in this Court seeking judicial review of the TTAB’s cancellation and asserting several other causes of action. See Compl. (Dkt. No. 1). Despite its success before the USP-TO, Prolacto’s operative pleading in this case includes a cross-appeal of certain TTAB findings adverse to Prolacto. See Answer 2d Am. Compl. & Countercls. (Dkt. No. 41) at 16-29. Prolacto also asserts seven affirmative counterclaims against PLM under both federal and D.C. law. See id. at 29-43.
Discovery in this case has been underway since June 2012. On February 28, 2013, PLM noticed the deposition of Prolacto pursuant to Federal Rule of Civil Procedure 30(b)(6). See Mot. Prot. Order Ex. A (Dkt. No. 70-2). PLM’s notice sets Washington, D.C. as the location of the deposition, but the notice included a cover letter indicating that PLM is “amenable to working with [Prolacto] if there is a different location in the United States that is more convenient.” See Liou
III. PROLACTO’S MOTION FOR A PROTECTIVE ORDER
A. Legal Standard
A party served with a notice of deposition may move for a protective order pursuant to Federal Rule of Civil Procedure 26(c):
A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending—or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action. The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense____
Fed.R.Civ.P. 26(c)(1). Rule 26(e) empowers the Court to “specify[ ] terns, including time and place, for the disclosure or discovery” at issue upon a showing of good cause. Id. at 26(c)(1)(B). The burden of showing good cause falls upon the party moving for the protective order. See United States v. Kellogg Brown & Root Servs., Inc.,
When determining whether it is appropriate' to override this general presumption, courts consider the following factors: “location of counsel for both parties; size of defendant corporation and regularity of executive travel; resolution of discovery disputes by the forum court; and the nature of the claim and the relationship of the parties.” Nat’l Cmty. Reinv. Coal. v. NovaStar Fin., Inc.,
B. Analysis
It is uncontested that all lead counsel in this matter are located in California. But Prolacto argues that the burden of having each party send one attorney to Mexico City is outweighed by the burden of requiring that multiple witnesses travel to the United States. Prolacto’s argument ignores the possibility that PLM may wish to apportion the questioning by deposition topic between two or more of its attorneys. Prolacto provides
The next factor is the deponent’s size and frequency of executive travel. PLM argues that, because Prolacto is large enough to have expanded into the United States and sends its officers to the United States at least occasionally, Prolacto can and should bring its designees here for deposition. Prolaeto counters that it is considerably smaller than PLM. Prolacto frames this issue in terms of which party is in a better position to bear the costs, but the proper inquiry is whether Prolacto is unduly burdened by appearing for deposition in the United States. Prolacto has submitted an approximation of its gross revenues for 2012. See Malfavon Deel. (Dkt. No. 74-1) ¶ 15. But even if the Court were to consider this information, offered for the first time on reply, it provides an insufficient financial picture to determine the burden a United States deposition would impose on Prolacto. The record contains no information regarding Prolacto’s net worth or the operating costs that offset its gross revenues. Prolacto argues that it runs a small operation, but its insistence that it may need to designate up to seven witnesses to cover the noticed deposition topics belies that argument. Moreover, PLM has presented evidence that Prolacto has taken steps to expand its direct operations into the United States and sends its officers to visit its United States licensees at least a few times per year. See Liou Deck Ex. B (Dkt. No. 71-3) at 19; id. Ex. M (Dkt. No. 71-14) at 21; id. Ex. N (Dkt. No. 71-15) at 6-7. Prolacto’s business is expanding into, and its officers visit, the United States when it suits Prolacto. So, this factor favors Prolacto’s appearance in the United States.
The Court next considers its ability to oversee the deposition. Prolacto argues that the Court’s ability to supervise the deposition and resolve discovery disputes will not be hindered if the deposition occurs in Mexico City. PLM disagrees and says that the Court’s jurisdiction will be weakened if Prolaeto’s agents are deposed in Mexico. Because Prolacto is willing to offer its witnesses voluntarily and hold the deposition under the Federal Rules of Civil Procedure—rather than under Mexican law pursuant to the Hague Convention—the Court does not find that this factor favors overriding the general presumption that corporate defendants be deposed at their principal place of business. Regarding the Court’s ability to supervise the deposition as a logistical matter, Prolacto is correct (and PLM does not appear to dispute) that the Court would be able to resolve any discovery dispute telephonieally regardless of the one-hour time difference between Mexico City and Washington, D.C. See also Nat’l Cmty. Reinv. Coal.,
The parties are in strong disagreement over the nature of this action and the parties’ relationship. PLM argues that Prolaeto originally initiated the cancellation proceeding in the USPTO and should be viewed as the true “plaintiff’ to this action. In support of its proposition that it is the “defendant” here, Prolacto points out that PLM filed the complaint in this Court. But in order to preserve its right of judicial review, PLM was required to file the instant lawsuit before this Court within sixty days of the TTAB ruling. See 15 U.S.C. § 1071(b).
Because Prolacto is a foreign entity, the Court also considers factors relating to the role of foreign and international law. PLM argues that, should the deposition be required to go forward in Mexico City, this case will be delayed by legal impediments under the Hague Convention and Mexican law, including the procedure for obtaining authorization to hold a deposition abroad, the need to translate ease documents and submit them to a Mexican court, and the possibility that a Mexican court may dismiss deposition questions it finds objectionable or direct its own questions to the witness. See Mem. Opp’n Mot. Prot. Order (Dkt. No. 71) at 13; Navarro Deck (Dkt. No. 71-16) ¶¶ 3-5. This argument is erroneous, as the Hague Convention is a permissive, not exclusive, discovery took See Société Nationale Industrielle Aérospatiale v. U.S. District Court,
Although the factors do not lean universally in favor of one party, the Court finds that, on balance, they favor holding the deposition in the United States. This litigation started with Prolacto’s petition in the USPTO, counsel for all parties are located in California, and Prolacto has taken advantage of the United States market and its laws. However, due to the location of counsel and the distance from Mexico City, the Court finds that Southern California—not Washington, D.C.—may be the most sensible location for the deposition. But the Court leaves it to the parties, hopefully acting reasonably, to agree to the appropriate location within the United States.
Prolacto alternatively seeks an order requiring that PLM pay for the all of its designees’ transportation, lodging, and per diem expenses associated with their deposi
IV. PROLACTO’S MOTION TO SEAL
Prolaeto moves to seal portions of its memorandum in reply, portions of the Declaration of Guillermo Andrade Malfavon, and Exhibit A to the Declaration of Stephen Anderson, on the basis that these documents include the parties’ sensitive financial data. See Mot. Seal (Dkt. No. 72). Such information is commonly sealed in federal civil litigation. See, e.g., King v. E.F. Hutton & Co.,
V. PLM’S OBJECTIONS TO EVIDENCE OFFERED IN REPLY
PLM objects to the additional financial data Prolaeto submits in reply and requests, in the alternative, leave to file a sur-reply. See Obj. Evid. Reply (Dkt. No. 75). Prolae-to responds that it did not have access to PLM’s figures when it filed its motion, but does not even address its failure to provide Prolacto’s own financial data in support of its opening brief. As the party seeking a protective order on the basis that PLM’s deposition notice presents an undue financial burden, Prolaeto should have included this evidence with its opening brief. See, e.g., Holiday CVS, L.L.C. v. Holder,
VI. CONCLUSION
For the foregoing reasons, the Court denies Prolacto’s motion for a protective order (Dkt. No. 70), grants Prolacto’s motion to seal (Dkt. No. 72), and overrules as moot PLM’s objections to evidence (Dkt. No. 75). An order consistent with this Memorandum Opinion is separately and contemporaneously issued this first day of May, 2013.
In addition, before bringing a discovery dispute to the Court’s attention, the parties shall confer in good faith in an attempt to resolve the dispute informally. Going forward, if the parties are unable to resolve the dispute, they must contact chambers to arrange for a telephonic conference with the Court. The parties must obtain leave of the Court before filing any motion relating to a discovery dispute. Any discovery motions that are filed prior to obtaining such leave may be summarily denied.
Notes
. While Prolacto's reply raises the issue—absent from its opening brief—that not all of its desig-nees are eligible for United States visas, Prolacto does not contend that it will be unable to produce at least one witness in the United States on every noticed topic for deposition.
. While 15 U.S.C. § 1071(b)(4) required that civil action be brought in the District of Columbia when the instant lawsuit was filed, it has since been amended to require that complaints be filed in the Eastern District of Virginia.
. For some unknown reason, Prolaeto has refused to identify the witnesses it intends to designate pursuant to Rule 30(b)(6). Whether or not the Rules require such advance designation, the Court expects parties to cooperate in order to avoid unnecessary re-deposition of the same individuals as fact witnesses. See generally Fed. R.Civ.P. 1 (the Rules "should be construed and administered to secure the just, speedy, and inexpensive determination of every action and proceeding"). Accordingly, within two weeks of this opinion, Prolaeto must identify the individuals it has designated to testify pursuant to Rule 30(b)(6) and the topics on which each witness has been designated.