Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA238147
`ESTTA Tracking number:
`09/22/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91176330
`Defendant
`ID Interactive LLC
`ROGER A. GILCREST
`SCHOTTENSTEIN, ZOX & DUNN CO., L.P.A.
`PO BOX 165020
`COLUMBUS, OH 43216-5020
`UNITED STATES
`rgilcrest@szd.com
`Other Motions/Papers
`Roger A. Gilcrest
`rgilcrest@szd.com
`/Roger Gilcrest/
`09/22/2008
`Motion for Reconsideration (H1334357).PDF ( 25 pages )(1058738 bytes )
`Exhibit A to Motion for Reconsideration (H1333901).PDF ( 3 pages )(139293
`bytes )
`Exhibit B to Motion for Reconsideration (H1333935).PDF ( 3 pages )(136485
`bytes )
`Exhibit C to Motion for Reconsideration (H1333762).PDF ( 18 pages )(507084
`bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MAKE A WISH FOUNDATION OF
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`Al\/IERICA,
`
`Opposer,
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`Opposition No. 91176330
`
`V.
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`ID INTERACTIVE, LLC,
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`Applicant.
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`Serial No. 78/858,770
`Mark: MAKE A WI$H
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`APPLICANT’S MOTION UNDER 37 CFR 2.127 FOR RECONSIDERATION
`
`OF DECISION ON MOTION ORDERING 30§B[§6) DEPOSITION
`AND FOR PROTECTIVE ORDER BARRING FURTHER DEPOSITIONS
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`Applicant, ID Interactive, LLC (“Applicant”) hereby requests reconsideration of the
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`Board’s Order of August 22, 2008, ordering either:
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`(1) Argentinean citizens to come to the
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`United States to sit for a deposition; or (2) that a telephonic deposition of Argentinean citizens be
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`taken as though it were a telephonic deposition in and under the jurisdiction of the United States.
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`1.
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`Statement of Facts
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`The relevant facts and related pleadings and documents are already of record. Applicant
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`recapitulates them here.
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`The essential facts are that Opposer waited until the waning days for the discovery period
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`to serve a notice for a Rule 30(b)(6).
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`After first serving a Rule 30(b)(6) notice outside the rules (See Board Order of October
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`10, 2007), it eventually served another Rule 30(b)(6) notice for October 26, 2007.
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`Applicant’s counsel repeatedly advised Opposer’s counsel that the witnesses Applicant
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`would designate, in response to a re-served Rule 30(b)(6) deposition notice, resided in Buenos
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`{H13338251 }
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`1
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`€€€€€€€€€€
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`Aires, Argentina. Applicant specifically identified Mr. Jorge Heymann and/or Mr. Matias
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`Montero as to all categories in the Notice of Deposition. Applicant also advised that Mr. Jorge
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`Heymann or Mr. Matias Montero reside in Buenos Aires, Argentina, do not travel to the United
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`States, and that they would not be in the United States on October 26, 2007, during the remainder
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`of the discovery period, or the foreseeable future.
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`Applicant advised Opposer that such a
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`deposition would have to be taken upon written questions.
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`Applicant’s
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`repeated communication and clear
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`reference to the rules governing
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`depositions of natural persons residing in foreign countries have not dissuaded Opposer from
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`making repeated demands to produce witnesses in the United States.
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`Even knowing the designated witnesses were foreign nationals, and at the invitation of
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`Interlocutory Attorney Lykos, on November 13, 2007, Opposer filed a Motion for Leave to Take
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`Applicant’s Rule 30(b)(6) Deposition by Telephone or Other Electronic Means in Florida.
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`Upon Opposer’s Motion, and against every procedural
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`rule and treaty governing
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`depositions by natural persons residing in foreign countries, the Board, through its Interlocutory
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`Attorney Lykos, has now issued an order (the “Order”) that Applicant must either (1) produce a
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`qualified witness(es) (i.e., only Mr. Heymann and/or Mr. Montero of Buenos Aires, Argentina
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`are so qualified) for a Rule 30(b)(6) deposition in the United States (relief not even requested by
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`Opposer in its motion), or (2) allow the depositions of such qualified witness(es) (i.e., Mr.
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`Heymann and/or Mr. Montero) to be taken via telephone or other electronic means within thirty
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`days of the mailing date of the Board’s Order.
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`Interlocutory Attorney Lykos’ Order is illegal in that it involves ordering a natural person
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`to come into the United States for a deposition, and otherwise violates, or would requires the
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`{H13338251 }
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`2
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`violation of, the Federal Rules of Civil Procedure, Argentinean law and The Hague Convention
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`under principles of comity.
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`II.
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`Law and Argument
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`A.
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`The Board’s Order is Improper to the Extent it Seeks to Compel Witnesses
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`that Reside Outside the United States to Attend a Deposition in the United States
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`The rules governing the attendance of foreign-resident witnesses are unequivocal.
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`The Trademark Trial and Appeal Board Manual of Procedure (TBl\/[P) provides in relevant part:
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`404.03(b) Person Residing in a Foreign Country — Party
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`37 CFR § 2. l20(c) Discovery deposition in foreign countries.
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`(1) The discovery deposition of a natural person residing in a foreign countgg who is a
`party or who, at the time set [or the taking of the deposition, is an oflicer, director, or
`managing agent ofa party, or a person designated under Rule 30(l_))(6) or Rule 31 (a) of
`the Federal Rules of Civil Procedure, shall, if taken in a foreign countgg, be taken in
`the manner prescribed by §2.124 unless the Trademark Trial and Appeal Board upon
`motionfor good cause, orders or the parties stipulate, that the deposition be taken by
`oral examination.
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`The discovery deposition of a natural person who resides in aforeign country, and who is
`a party, or who, at the time setfor the taking of the deposition, is an oflicer, director, or
`managing agent ofa party, or a person designated under Fed R. Civ. P. 3 0(b) (6) or
`31 (a) (3) to testifiz on behalf of a party may be taken on notice alone.
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`However, if the discovery deposition of such a person is taken in a foreign country, i_t
`must be taken on written questions, in the manner described in 37 CFR § 2.124, unless
`the Board, on motion for good cause, orders, or the parties stipulate, that the deposition
`be taken by oral examination.
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`For information concerning the procedure for taking discovery depositions on written
`questions, see TBl\/[P § 404.07. For information on a motion to take a foreign deposition
`orally, see TBl\/[P § 520.
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`The Board will not order a natural person residing in a foreign countfl to come to
`the United States for the taking of his or her discoveg deposition.
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`{H13338251 }
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`3
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`Notwithstanding the clear rule that the Board will Q order a natural person residing in a
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`foreign country to come to the United States for the taking of his or her discovery deposition,
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`Interlocutory Attorney Lykos simply ignores this rule and states in her order that:
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`However, since counsel for applicant has stated that the only persons qualified to testify
`on behalf of applicant as Rule 30(b)(6) witnesses reside and work in Argentina and do
`not travel to the United States, Opposer should not be deprived of the opportunity to
`depose these persons. (emphasis added)
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`As has been made clear throughout this case, Applicant’s designated witnesses have been
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`and remain Messrs. Heymann and/or Mr. Montero of Buenos Aires, Argentina. This designation
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`has been made in good faith and these facts have not changed. No other witnesses competent to
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`testify under the Rule 30(b)(6) deposition notice are in the United States. This is not the fault or
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`responsibility of Applicant.
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`Applicant respectfully submits that the fact that the only persons qualified to testify on
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`behalf of Applicant as Rule 30(b)(6) witnesses reside and work in Argentina does not change the
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`applicable rules governing depositions of natural persons residing in foreign countries or their
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`proper application.
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`Attorney Lykos simply ignores those same rules that indeed actually provide for an
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`opportunity for Opposer to depose the identified witnesses, that being by written questions in
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`accordance with the clear mandate of 37 CFR § 2.l20(c) which states that such depositions must
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`be taken upon written questions unless good cause be shown. Attorney Lykos’ ruling turns the
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`rule upon its head, conveniently skipping over that mandate for written questions and ordering an
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`oral deposition without the merest showing of good cause other than that Opposer’s request is
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`simply not to be denied. This reverses the burden of proof in this circumstance.
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`{H13338251 }
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`4
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`In addition, the premise of Attorney Lykos’ Order (“.
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`. since counsel for applicant has
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`stated that the only persons qualified to testify on behalf of applicant as Rule 30(b)(6) witnesses
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`reside and work in Argentina and do not travel to the United States .
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`.
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`) seems to place
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`responsibility for the foreign residence of its Rule 30(b)(6) witnesses on Applicant, as if
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`Applicant is responsible for the situation, and the burden were upon Applicant to prove Opposer
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`is not entitled to the relief it seeks. A reading of 37 CFR § 2. l20(c) does not bear this out.
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`Whether or not such a deposition might be taken by telephonic means does not in itself
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`satisfy the need for a showing of good cause.
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`If that were the case, depositions upon written
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`questions would never be taken because,
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`the logic would go,
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`telephonic are always more
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`efficient or less bothersome. The rules do not comport with this logic as they mandate first
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`deposition upon written questions, and require a showing of good cause to have an oral
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`deposition ordered. The rules clearly mandate and favor depositions upon written questions.
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`Attorney Lykos also concludes, without citation, that:
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`Pursuant to a Federal Rule 30(b)(6) deposition, it is the corporate entity or juristic person
`that is the witness. In light of the fact that applicant is a limited liability company
`organized under the state laws of Florida, at a minimum, opposer is entitled to take the
`Federal Rule 30(b)(6) deposition of applicant’s designated witness(es) in the United
`States. Counsel for applicant has stated that the only persons qualified as Rule 30(b)(6)
`witnesses are Mr. Heymann and Mr. Montero. Applicant therefore must either produce a
`qualified witness(es) for a Rule 30(b)(6) deposition in the United States (for example,
`Mr. Heymann and/or Mr. Montero) or allow the depositions of such qualified witness(es)
`(for example, Mr. Heymann and/or Mr. Montero) to be taken via telephone or other
`electronic means within THIRTY days of the mailing date of this order. In the event
`applicant fails to comply with this order, opposer may file a motion for sanctions
`including judgment pursuant to Trademark Rule 2. l20(g).
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`Nothing in Rule 30(b)(6) supports the view that it is “the corporate entity or juristic
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`person that is the witness,” quite the contrary. FRCP 30(b)(6) states that, while a corporate
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`{H13338251 }
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`5
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`entity may be the deponent,
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`it
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`is a designated human being that is the witness. The Rule
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`provides:
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`(6) Notice or Subpoena Directed to an Organization.
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`In its notice or subpoena, a party may name as the deponent a public or private
`corporation, a partnership, an association, a governmental agency, or other
`entity and must describe with reasonable particularity the matters for
`examination. The named organization must then designate one or more oflicers,
`directors, or managing agents, or designate other persons who consent to testify
`on its behalf; and it may set out the matters on which each person designated will
`testify. A subpoena must advise a nonparty organization of its duty to make this
`designation. The persons designated must testify about information known or
`reasonably available to the organization. This paragraph (6) does not preclude a
`deposition by any other procedure allowed by these rules.
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`Rule 30(b)(6), Fed. R. Civ. P. (emphasis added).
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`It should be noted that the fact that Applicant is a Florida limited liability company for
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`which the person has been identified is absolutely irrelevant to the application of 37 CFR §
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`2. l20(c) which states in relevant part that the “discovery deposition of a natural person residing
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`in a foreign country .
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`.
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`. who, at the time set for the taking of the deposition, is
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`.
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`.
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`. a person
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`designated under Rule 30(b)(6[ or Rule 3l(a) of the Federal Rules of Civil Procedure, shall, if
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`taken in a foreign country, be taken in the manner prescribed by §2. 124.”
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`Clearly, the rules anticipate that the natural person might be a person designated under
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`Rule 30(b)(6), yet still be a witness residing in a foreign country. Accordingly, it matters not
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`under Rule 30(b)(6) that the deponent is considered to be a juristic person. That which controls is
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`the location of the human witness (i.e., the natural person) that will testify on its behalf
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`In addition, Attorney Lykos statement, without citation, that “In light of the fact that
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`applicant is a limited liability company organized under the state laws of Florida, at a minimum,
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`opposer is entitled to take the Federal Rule 30(b)(6) deposition of applicant’s designated
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`{H13338251 }
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`6
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`witness(es) in the United States. Counsel for applicant has stated that the only persons qualified
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`as Rule 30(b)(6) witnesses are Mr. Heymann and Mr. Montero” is also false to the extent that it
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`suggests that Rule 30(b)(6) requires witnesses to brought into the United States from around the
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`globe just because Applicant is a limited liability company organized under the state laws of
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`Florida. Attorney Lykos strains attempts to find some implication in the Federal Rules of Civil
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`Procedure that in some way changes the very specific and clear affect of 37 C.F.R. 2.120(c) and
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`2.124. None exists as is clear from TTAB precedent. See Jain v. Ramparts Inc., 49 USPQ2d
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`1429 (TTAB 1998) (general rule in Federal district court that a plaintiff is required to make itself
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`available for examination in district where suit is brought does not apply in Board proceedings) )
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`The rule is clear that a foreign witness, whether an officer, director, or managing agent
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`of a party, or a person designated under Rule 30(b)(6), shall be taken by written questions in that
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`foreign country in the manner described in 37 CFR § 2.124. The only excegtion is where, upon a
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`showing of good cause, the deposition may be taken orally in thatforeign country.
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`TBMP 404.03(b) makes clear that the Board will not order a natural person residing in a
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`foreign country to come to the United States for the taking of his or her discovery deposition.
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`This rule does not distinguish between natural persons that are themselves a party, are officers,
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`directors, or managing agents of a party, or are persons designated under Fed. R. Civ. P. 30(b)(6)
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`or 31(a)(3). No natural person can be compelled to attend a deposition in the United States. See
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`Jain at 1431 (TTAB 1998).
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`There has been absolutely no good cause shown in this case, other than the fact that
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`Opposer does not like the fact that the witnesses designated in good faith reside in Argentina and
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`Opposer simply does not want otherwise to follow the mandate of 37 CFR § 2.120(c) requiring
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`deposition upon written questions. That does not constitute good cause and Attorney Lykos’
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`{H13338251 }
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`7
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`Order fails to point to any facts adduced by Opposer that constitute good cause. Opposer
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`delayed taking any discovery until the last month of discovery.
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`It took no steps to discover the
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`identity and residence of any witnesses for well over 5 months.
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`It did not avail
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`itself of
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`discovery devices that would have allowed it to serve written discovery requests in accordance
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`with the rules, and it is now too late to timely take depositions upon written questions as these
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`must be served and answered within the discovery period (and which Opposer has never
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`requested leave to file). See TBMP 404.07(b). Opposer has not followed the proper procedure
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`described in 37 CFR § 2.124 for the taking of a discovery deposition upon written questions.
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`See 37 CFR § 2. l24(b)(2), (c), (d), (f) and (g).
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`Notwithstanding all of Opposer’s dilatory behavior and steadfast failure to follow the
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`rules, Attorney Lykos still finds that Opposer simply “should not be deprived an opportunity” to
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`take an oral deposition, as if Applicant had the burden to show that Opposer is not entitled to an
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`oral deposition. Applicant does not have that burden under the rules. Apparently, Opposer’s
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`motion has been granted for no other reason than Attorney Lykos desires that Opposer be
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`granted the extraordinary remedy of an oral deposition without good cause.
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`Even if the grant of the taking of an oral deposition were justified by good cause,
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`Attorney Lykos’ order clearly fails to anticipate the cost to Applicant. The identified witnesses,
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`Mr. Jorge Heymann or Mr. Matias Montero, designated as to all categories in the subject Notice
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`of Deposition, reside in Buenos Aires, Argentina, do not travel to the United States, and will not
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`be in the United States in the foreseeable future if at all. Apparently determined to have the
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`subject deposition be taken in the United States, Ms. Lykos has in effect ordered that Applicant
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`bring two Argentinean witnesses to the United States. This would be a great and unwarranted
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`expense upon Applicant as the current cost of a round trip airfare between Miami, Florida and
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`{H13338251 }
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`8
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`Buenos Aires, Argentina for two passengers would cost approximately $2000.00 (US) to
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`$4000.00 (US) per person. See Exhibit A.
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`Such an order is prejudicial to Applicant as it places the burden of costs on Applicant,
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`and is directly contrary to the provisions of the last paragraph of TB1\/[P 404.03(b) and 37 C.F.R.
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`2.120(c).
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`In essence, Ms. Lykos has taken an unextraordinary situation, wherein Opposer has been
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`dilatory and simply does not like the fact that the rules require it to take a deposition by written
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`questions, and converted it to a situation where Opposer dare not be denied a deposition even
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`without a showing of good cause.
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`For these reasons, this portion of the subject Order that Applicant bring its designated
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`Rule 30(b)(6) witnesses to the United States should be reconsidered and VACA TED and
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`DENIED in its entirety.
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`B.
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`The Board’s Order is Also Improper to the Extent it Compels a Telephonic
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`Deposition of Witnesses that Reside Outside the United States as Such a Deposition is a
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`Deposition of a Witness in a Foreign Country under the Federal Rules of Civil Procedure
`
`and The Hague Convention
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`Further determined to grant Opposer a deposition outside the Rules, Attorney Lykos has
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`ordered in the alternative that the deposition be taken of witnesses in Argentina by telephonic
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`means. Attorney Lykos cites Fed. R. Civ. P. 30(b)(7) and Hewlett-Packard Co. v. Healthcare
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`Personnel Inc., 21 USPQ2d 1552 (TTAB 1991) in support of her ruling. Attorney Lykos
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`specifically cites the following passage in the Hewlett-Packard case:
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`Currently federal practice favors the use of technological benefits in order to promote
`flexibility, simplification of procedure and reduction of cost to parties. See Julia M.
`Bywaters v. Lloyd K. Bywaters, 123 FRD 175 (EDPA 1988). As the courts have pointed
`out, when Fed. R. Civ. P. 30(b)(7) was amended in 1980 to permit the taking of telephone
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`{H13338251 }
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`9
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`depositions, the purpose was to encourage courts to be more amenable to employing non-
`traditional methods for conducting depositions. Nothing in the language of Rule 30
`requires a showing of necessity, financial inability or other hardship to obtain an order to
`proceed via telephone, and leave to take telephonic depositions should be liberally
`granted in appropriate cases. See Jahr V. IU International Corp., 4 FR Serv3d 943
`(MDNC 1986).
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`While cited for its extolling of the virtues of depositions by telephonic means, beyond
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`that, the Hewlett-Packard case has nothing to do with the ordering of a telephonic deposition of a
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`witness sitting in a foreign country. The Hewlett-Packard case involved a Board order that an
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`applicant’s counsel, being resident in Naples, Florida, be permitted to attend the trial deposition
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`of an opposer ’s witness in Los Angeles, California. The Hewlett-Packard case has nothing to do
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`with the ordering of a telephonic deposition taken in a foreign country. It did not involve a
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`telephonic deposition in a foreign country nor a deposition where the witness would be remote
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`from both counsel as has been ordered here. Rather, in Hewlett-Packard, the moving party’s
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`attorney (i.e., the attorney for the party not requesting the deposition) was willing to accept the
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`procedural disadvantage by not being physically present at the deposition simply to spare cost.
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`See Hewlett-Packard attached as Exhibit B.
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`In this same regard, it should also be noted that the Board in Hewlett-Packard was asked
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`to rule upon a request for a trial testimony deposition under 37 CFR 2.123 relating to testimonial
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`depositions. The rule likewise contains the same mandate with respect to the taking of testimony
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`upon written questions. See 37 CFR 2.l23(a)(l) and (a)(2) which in turn references 37 CFR
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`2.124 as follows:
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`§2. l23 Trial testimony in inter partes cases.
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`(a)(l) The testimony of witnesses in inter partes cases may be taken by depositions upon
`oral examination as provided by this section or by depositions upon written questions as
`provided by § 2.124. If a party serves notice of the taking of a testimonial deposition
`upon written questions of a witness who is, or will be at the time of the deposition,
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`{Hl333825.l }
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`present within the United States or any territory which is under the control and
`jurisdiction of the United States, any adverse party may, within fifteen days from the date
`of service of the notice, file a motion with the Trademark Trial and Appeal Board, for
`good cause, for an order that the deposition be taken by oral examination.
`(a)(l) A testimonial deposition taken in a foreign country shall be taken by deposition
`upon written questions as provided by § 2.124, unless the Board, upon motion for good
`cause, orders that the deposition be taken by oral examination, or the parties so stipulate.
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`It is clear that both 37 CFR 2.123 and 37 CFR 2.120(c) require written questions unless
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`good cause is demonstrated.
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`Attorney Lykos’ resort to broad-brushed citations of general rules relating to depositions
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`(which rules are directly counter to the specific provisions of 37 CFR 2.120(c)(1) and
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`mischaracterizations of Rule 30(b)(6)’s identification of witnesses is clearly based upon a
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`misapprehension of the basic principles, laws and civil procedure pertaining to depositions in
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`foreign countries.
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`Applicant respectfiilly submits that Attorney Lykos has also failed to anticipate the
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`procedural and practical effects of her ruling.
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`A De osition Even Tele honic is a De osition Where the Witness is to Answer
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`uestions
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`One of the basic principles governing depositions is that an oral deposition, even a
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`telephonic deposition, is considered to be taking place where the witness is answering questions.
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`Rule 30(b)(7) providedlz
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`(7) The parties may stipulate in writing or the court may upon motion order that a
`deposition be taken by telephone or other remote electronic means. For the purposes of
`this rule and Rules 28(a), 37(a)(l), and 37(b)(l), a deposition taken by such means in the
`district and at the place where the deponent is to answer questions.
`
`Rule 30(b)(7), Fed. R. Civ. P. (2007) (emphasis added).
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`1 Rule 30(b)(7) was removed by amendment effective December 1, 2007.
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`{H13338251 }
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`1 1
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`

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`Although now removed from the Rules, this rule is instructive in that it provides that, for
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`the purposes of depositions under Rule fig) (relating to domestic depositions) and Q Q
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`fi(b) (relating to depositions in foreign countries), such domestic depositions are considered to
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`be depositions taken in the district and at the place where the deponent is to answer questions.
`
`It
`
`is clear by implication that a foreign deposition taken under Rule 28(b) is not
`
`considered to be taken in a judicial district where the juristic person resides, as Attorney Lykos’
`
`ruling suggests. Rather, a deposition in a foreign country taken telephonically is a deposition in
`
`ct foreign country; specifically the foreign country where the witness is to answer questions.
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`Accordingly,
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`the ordered telephonic deposition is a deposition ordered to take place in
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`Argentina.
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`There are Several Procedural Problems and Practical Inconveniences Occasioned by the
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`Subject Order
`
`By ordering a deposition to take place in Argentina, Attorney Lykos will require:
`
`(1) that Applicant’s counsel produce witnesses through a telephone connection that he
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`does not know, whom he cannot see, and whose identity he cannot assure;
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`(2) that Applicant’s counsel and the witnesses be able to handle documents and things to
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`which their testimony relates without being able to inspect those documents and things together;
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`(3) that Applicant’s counsel defend the deposition of witnesses he cannot see and with
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`whom he cannot confidentially communicate or that Applicant’s counsel travel to Argentina at
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`Applicant’s expense (an inconvenience and expense telephonic depositions are alleged to
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`eliminate);
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`{H13338251 }
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`12
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`(4) that in order not to vitiate attorney-client privilege, Applicant will have to hire a
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`separate translator in order to converse with and instruct the witnesses in confidence; and
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`(5) fiirther that according to Attorney Lykos’ logic, the deposition would have to take
`
`place in Florida where the “deponent” resides, which apparently would require both counsel
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`(Applicant’s counsel from Columbus, Ohio and Opposer’s counsel from Seattle, Washington;
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`again, highly inefficient) to travel to Florida to initiate a telephone conference with Argentina.
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`Neither counsel could see the witness; nor would there be any way to handle and authenticate
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`physical exhibits out of the view of counsel.
`
`Applicant respectfully submit that this is why telephonic depositions are only favored
`
`where not prejudicial to either side, or, as in Hewlett-Packard, the side not physically present
`
`was willing to forego the advantage of physical presence.
`
`Rule 28gb) of the Federal Rules of Civil Procedure Governs the Taking of Testimony
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`Depositions in a Foreign Count;v_
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`Rule 28, Fed. R. Civ. P., describes “Persons Before Whom Depositions May Be Taken,”
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`and states:
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`(b) In a Foreign Country.
`(1) In General. A deposition may be taken in a foreign country:
`(A) under an applicable treaty or convention;
`(B) under a letter of request, whether or not captioned a “letter rogatory”;
`(C) on notice, before a person authorized to administer oaths either by
`federal law or by the law in the place of examination; or
`(D) before a person commissioned by the court to administer any
`necessary oath and take testimony.
`Issuing a Letter of Request or a Commission. A letter of request, a
`commission, or both may be issued:
`(A) on appropriate terms after an application and notice of it; and
`(B) without a showing that taking the deposition in another manner is
`impracticable or inconvenient.
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`(2)
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`{H13338251 }
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`Rules 28(b)(l)-(2), Fed. R. Civ. P. (2008)
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`The subject Order fails to set forth under which of the four bases the proposed foreign
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`deposition would take place. There is no showing by Opposer that the deposition is directly
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`pursuant to any applicable treaty or convention, or that it is under a letter of request (whether or
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`not captioned a “letter rogatory”); and it appears clear that it is not before a person commissioned
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`by the court to administer any necessary oath and take testimony.
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`Accordingly, it appears that the proposed deposition would be one on notice, before a
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`person authorized to administer oaths either by federal law or by the law in the place of
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`examination.
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`A Deposition upon Notice would violate Argentinean Law
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`To the extent it orders that a telephonic deposition be taken of a witness in Argentina, the
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`Order cannot be carried out as it would violate Argentinean Law.
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`Proceeding on the assumption that the ordered deposition would be upon notice, a
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`decision just handed down just three days ago in Swapalease, Inc. v. Sublease Exchange. Com,
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`Inc., Case No.: 1:07 CV 045 (September 19, 2008, S.D. Ohio) (hereinafter the “Swapalease
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`Court Order”) is most instructive, and is attached as Exhibit C.
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`In that case, the court denied the
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`defendant’s request under Rule 28(b)(2) (for the purposes of taking a deposition in accordance
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`with Rule 28(b)(l)(D)) to appoint a commissioner for the purpose of having that commissioner
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`travel to Argentina to administer an oath and take the testimony a witness in Argentina who was
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`to be deposed by telephone.
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`{Hl333825.l }
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`The court found that the proposed appointment would violate Argentinean law because, it
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`found, only an Argentinean Judge can administer an enforceable oath to the witnesses testifying
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`in Argentina.
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`For the same reason, even a proposed deposition under Rule 28(b)(l)(C) (upon notice
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`before a person authorized to administer oaths either by federal law or by the law in the place of
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`examination) would likewise violate Argentinean law on the same basis. Such a deposition
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`would require that an Argentinean judge administer an enforceable oath to the witnesses, as a
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`U.S. court reporter has no authority to administer an enforceable oath.
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`The Court discussed the Advisory Committee Notes to Rule 28, which cautions:
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`Some foreign countries are hostile to allowing a
`deposition to be taken in their country, especially by
`notice or commission, or to lending assistance in the
`taking of a deposition. Thus compliance with the terms
`of amended subdivision (b) may not in all cases ensure
`completion of a deposition abroad. Examination of the
`law andpolicy of the particularforeign country in
`advance ofattempting a deposition is therefore
`advisable.
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`Fed. R. Civ. P. 28, Advisory Committee Notes to 1963 Amendments (emphasis
`added).
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`Thus, even an order to take a deposition in Argentina by notice under Rule 28(b)(l)(C) also
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`requires the cautious examination clearly not given by Attorney Lykos in issuing the Order.
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`The Court also cited Wright & Miller, which states:
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`The United States has conventions on the subject with
`some countries and the simple procedure of taking the
`deposition by notice may be available in many
`instances. Other countries, however, completely
`prohibit the taking of testimony within their
`boundaries that will be used in a foreign court. In
`such a situation even amended Rule 28(b) may be of no
`help. Finally there are a large number of countries
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`{Hl333825.l }
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`15
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`where the nature of a deposition is misunderstood, or
`where the taking of a deposition by a United States
`officer, in accordance with United States procedure, is
`thought offensive to notions of sovereignty, but the
`countries are nonetheless willing to assist American
`litigation if the proper procedures are followed. In
`these jurisdictions the 1963 and 1993 amendments to
`Rule 28(b) may be helpful, in that they provide
`procedures that may be thought less offensive by the
`foreign country. It is well, however, to realize that
`compliance with Rule 28(b), even as amended, will not
`insure completion of a deposition abroad. Examination
`of the law and policy of the particular foreign country
`involved, and consultation with the Department of
`State, is advisable.
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`8 Wright, et al., Federal Practice & Procedure § 2083 (2008).
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`The Court concluded that “Rule 28 does not establish carte blanche authority for district
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`courts to dispatch commissioned persons into foreign countries to give oaths and take
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`depositions.” The court held that “a notary commissioned by this Court to administer the
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`oath to [the witness in Argentina] would violate Argentinean law because .
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`.
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`. in
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`Argentina “the only official who can administer an oath for live testimony is a judge,”’
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`and concluded that “[the] procedure proposed by [the party seeking the telephonic
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`deposition] violates Argentinean law.” See the Swapalease Court Order, page 4.
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`In the present instance, the Attorney Lykos’ Order in effect would be, directly or
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`indirectly, either (1) dispatching a U.S. court reporter who would be incompetent to
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`administer an oath in Argentina or (2) ordering an Argentinean judge, a foreign national,
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`to administer an oath to the witnesses. The former would be ineffective and the latter is
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`believed to be outside the authority of the Board as it has no authority outside the United
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`States, especially to order foreign nationals to appear and perform acts.
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`{Hl333825.l }
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`The Proposed Deposition is not Permitted under the Hague Convention
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`The Court in Swapalease also discussed the application