Toyota Motor Sales, U.S.A., Inc. v. Allen Interchange LLC
- Katherine Menendez
- 0:22-cv-01681
- U.S. District Court · District of Minnesota
- 31
In Toyota Motor Sales v. Allen Interchange, Judge Docherty granted and denied discovery motions in part, ordered disclosures, and required TMNA to pay deposition costs.
Toyota Motor Sales, U.S.A., Inc., Toyota Motor North America, Inc., Allen Interchange LLC, and the other defendants are affected by the discovery requirements, limitations, confidentiality safeguards, and deposition ruling.
What was alleged
The complaint alleges that the defendants imported and sold automotive parts bearing Toyota trademarks that were manufactured for sale outside the United States and were not authorized for sale in the United States — what the complaint calls 'gray market goods.' The complaint claims these parts have material differences from genuine Toyota parts sold domestically, including differences in warranty coverage and packaging standards. The complaint seeks disgorgement of profits and injunctive relief — a court order to stop the alleged conduct — for claimed violations of the federal Lanham Act (covering trademarks and false advertising) and related state and common-law claims. The complaint also alleges that, despite prior cease-and-desist demands, the defendants continued to import and sell these parts.
What happened
Toyota Motor Sales, U.S.A., Inc. v. Allen Interchange LLC concerns competing sellers of Toyota parts and the parties’ requests for information in a lawsuit involving trademark, antitrust, and related claims. The court considered several motions to compel discovery and requests for protective orders.
The court ordered Toyota’s companies to respond to discovery served on Toyota Motor Sales as if it also had been served on Toyota Motor North America in certain circumstances. It required some additional discovery about brand-protection work, distributor agreements, supplier identities, and communications with other parts manufacturers, but rejected or limited many broader requests. It also removed an attorneys’-eyes-only restriction from a document listing Allen Interchange’s Toyota-parts sales, while requiring safeguards for that information.
Judge John F. Docherty granted in part and denied in part Allen Interchange’s motions to compel, granted in part and denied in part Toyota’s motion to compel, granted Toyota’s motion to remove the confidentiality restriction, granted Allen Interchange’s motion concerning TMNA’s missed deposition, denied Toyota’s protective-order motion as moot, and granted in part and denied in part another Allen Interchange motion. TMNA must produce a corporate representative and pay costs connected with the missed deposition.
The detailed version
- Toyota Motor Sales, U.S.A., Inc. v. Allen Interchange LLC · No. 0:22-cv-01681
- Katherine Menendez
- Aug. 1, 2024
Background
Toyota Motor Sales, U.S.A., Inc. sued Allen Interchange LLC and other named and unnamed defendants under the Lanham Act over Allen Interchange’s importation and sale of Toyota-branded parts originally sold outside the United States. Allen Interchange asserted eight counterclaims against Toyota Motor Sales and Toyota Motor North America, Inc., including antitrust and related claims. The parties are competitors in selling genuine Toyota parts to Toyota dealers in the United States.
The order addressed discovery motions under the federal rules governing relevant and proportional discovery, motions to compel responses, protective orders, confidentiality designations, and corporate-representative depositions. It did not decide the parties’ underlying trademark or antitrust claims.
Allen Interchange’s First Motion to Compel: Docket No. 116
The court ordered the Toyota parties to treat discovery requests served on Toyota Motor Sales before Toyota Motor North America joined the case as served on both companies. The court found no dispute that Toyota Motor Sales had control over information in Toyota Motor North America’s possession, custody, or control.
The court denied the motion as to Toyota’s profits and sales information because Allen Interchange had not identified the specific Toyota parts at issue and had not shown why its proposed limits were connected to those parts. The court also found that the requested part-level information for a large portion of Toyota’s parts would be disproportionate.
The court denied the motion as to documents reflecting prices of Toyota dealerships that changed ownership since 2019 because the request was overly broad and disproportionate. For contact reports concerning Toyota’s interactions with dealers about Toyota parts, the court ordered the parties to meet and confer about 10 dealers and denied without prejudice the remainder of the motion concerning that discovery. Allen Interchange may renew that portion based on the documents produced. The court denied the motion as to dealer files involving suspected purchases of gray-market parts.
Allen Interchange’s Second Motion to Compel: Docket No. 189
The court denied the request for complete dealer agreements for more than 1,500 dealers but allowed Allen Interchange to serve one additional interrogatory asking Toyota to identify the version of the standard dealer agreement under which each Toyota dealer in the United States operated since 2017. The court denied the request for Toyota’s complete parts catalog and part-level cost and pricing data as disproportionate, although it recognized that captive parts were relevant to Allen Interchange’s antitrust claims.
The court granted the motion as to Toyota’s brand-protection work relating to gray-market parts since 2014. The court denied requests for communications between Toyota USA and Toyota Japan about gray-market parts, communications concerning outdated or superseded inventory, communications with Amazon, warranty-reimbursement policies and volumes, organizational charts, documents about dealer purchases or sales of counterfeit goods, and complete Toyota USA–Toyota Japan trademark-rights agreements.
The court granted in part the requests for agreements and communications with Toyota distributors and sub-distributors, limiting production to a random set of agreements for no more than 10 distributors located in Minnesota. The court denied as moot the request concerning surveys and other data identifying captive and non-captive parts because Toyota had agreed to conduct a reasonable and proportional search.
Toyota’s Motion to Compel: Docket No. 123
The court granted the motion as to documents identifying Allen Interchange’s suppliers of Toyota parts, but denied it as to related interrogatories and document requests seeking additional transactional information. The court denied the requests for documents about Allen Interchange’s distribution channels but allowed Toyota to serve one additional interrogatory limited to identifying who, what, and how Allen Interchange’s distribution channels operate.
The court granted the motion as to communications between Allen Interchange and original equipment manufacturers of motor-vehicle parts or accessories, because those communications could be relevant to Allen Interchange’s knowledge or mental state. The court denied Toyota’s requests for information about non-Toyota parts and denied the request concerning how Allen Interchange distinguishes warranty from non-warranty repairs because the court found that Allen Interchange had adequately answered it.
Confidentiality Motion: Docket No. 141
The court granted Toyota’s motion to remove the attorneys’-eyes-only designation from document AIC_0000245, which lists the price, cost, and quantity of Toyota parts sold by Allen Interchange since 2017. The court found that the document’s importance to Toyota’s claims and Allen Interchange’s counterclaims outweighed the risk of misuse from limited disclosure.
The court ordered Toyota to keep a list of everyone who reviews the document, provide that list to Allen Interchange upon request, and destroy the document at the end of the litigation.
Corporate-Representative Deposition: Docket No. 164
The court granted Allen Interchange’s motion to compel Toyota Motor North America to comply with a notice for a corporate-representative deposition. TMNA had not produced a witness and had not filed a motion for a protective order before the scheduled deposition. The court ruled that the failure to appear was not excused merely because TMNA objected to the discovery.
Allen Interchange may take TMNA’s corporate-representative deposition at Allen Interchange’s counsel’s offices in Minneapolis, Minnesota. TMNA must pay the costs connected with the attempted and future deposition, including court-reporter, videographer, and witness-travel expenses.
Protective-Order Motion: Docket No. 175
The court denied as moot Toyota Motor North America’s motion for a protective order limiting the time period covered by deposition topics because the parties resolved the issues after further discussions.
Disposition
The order states that: (1) Allen Interchange’s Motion to Compel, Docket No. 116, is granted in part and denied in part; (2) Toyota Motor Sales and Toyota Motor North America’s Motion to Compel, Docket No. 123, is granted in part and denied in part; (3) Toyota’s Motion for De-Designation, Docket No. 141, is granted; (4) Allen Interchange’s Motion to Compel, Docket No. 164, is granted; (5) Toyota Motor North America’s Motion for Protective Order, Docket No. 175, is denied as moot; and (6) Allen Interchange’s Motion to Compel, Docket No. 189, is granted in part and denied in part.
Read the full 31-page opinion on CourtListener, the free public archive maintained by the Free Law Project.