Toyota Motor Sales, U.S.A., Inc. v. Allen Interchange LLC

Background

Toyota brought Lanham Act claims against Allen Interchange LLC concerning Allen’s importation and sale of Toyota-branded parts originally sold outside the United States. Allen asserted antitrust and related counterclaims. The court addressed four discovery motions: Allen’s motion for a protective order, Allen’s motion to compel, Toyota’s motion to compel, and Toyota’s request for letters rogatory, which are formal requests for evidence from persons or entities outside the United States.

The court applied the rules requiring discovery to be relevant and proportional to the needs of the case. It also explained that a party seeking a protective order must show good cause, and that a party seeking an order compelling discovery must first show that the requested information is relevant.

Allen’s Protective-Order Motion and Toyota’s Request for Letters Rogatory

The court granted Allen’s motion for a protective order. Toyota sought information from Allen’s domestic and foreign suppliers about their relationships with Allen, parts handling, supply chains, and warranties. The court found that information from suppliers was not relevant to Toyota’s claimed damages, warranty differences, or alleged differences based only on supply-chain and quality-control processes. The court stated that material differences under the Lanham Act must be observable in the products or in something such as warranty language, rather than based solely on how parts were made, supplied, or checked.

The court also held that its earlier order limited supplier discovery to the suppliers’ identities unless Toyota made an adequate additional showing of necessity. It found that Toyota had not made that showing. Because the requested supplier discovery was unavailable, the court denied Toyota’s request for letters rogatory.

Toyota’s Motion to Compel

The court granted in part and denied in part Toyota’s motion to compel.

For the parts inspection, the court ordered inspection of 147 Toyota parts in Allen’s possession. The inspection could occur at a location chosen by Allen. It would be recorded from beginning to end by a neutral videographer jointly selected by the parties. Each party would receive a copy, and the videographer would retain the original unedited recording until the case ended. Toyota would reimburse Allen at reasonable market value for any part damaged during the inspection. Toyota also had to provide Allen the requested specifications and photographs no later than completion of the inspection.

The court denied Toyota’s request to inspect Allen’s facilities because supply-chain, quality-control, handling, labeling, and packaging processes were not themselves relevant unless they produced observable differences in the parts. The court also denied Toyota’s request to change Allen’s customer-list designation from “Attorneys Eyes Only” to “Confidential,” finding the customer list highly sensitive and appropriately restricted from Toyota’s corporate representatives.

The court denied Toyota’s request for documents concerning counterfeit parts under Requests for Production 63 and 64. Counterfeit parts were not the subject of a claim or defense in this case, and the court found that evidence Allen had once received counterfeit headlamps did not establish sufficient relevance. For Requests for Production 25 through 27, the court ordered Allen to produce the first 200 photographs of unique packaged parts and the first 50 photographs of unique unpackaged parts taken each year from 2016 through the present.

Allen’s Motion to Compel

The court granted in part and denied in part Allen’s motion to compel.

For dealer contact reports, the court ordered Allen to provide a list of 250 dealerships and required Toyota to produce responsive reports from those dealerships. Toyota did not have to produce reports from before 2016. The court found that the reports could contain important information for Allen’s antitrust and Lanham Act claims, despite the burden of searching Toyota’s records.

For sales and profit information, the court granted in part and denied in part Allen’s request. Toyota had to provide itemized monthly financial information for the parts listed on Allen’s Toyota parts list, including sales volume, costs, sales price, margins, and profits for Toyota Motor Sales, U.S.A., Inc. and Toyota Motor North America, Inc. Toyota did not have to provide the requested information for the larger list of parts identified as having gray-market competition, and it did not have to respond separately to Request for Production 80 because the interrogatory would provide the information needed to calculate damages.

The court denied as moot Allen’s request for Toyota’s shipping-damage information under Interrogatory 20. It granted Allen’s request under Interrogatory 21 for Toyota’s total parts-sales revenue. It also granted Allen’s request under Interrogatory 22 concerning Toyota’s views of the terms “genuine,” “Manufacturer Warranty,” and “Toyota Quality Assured,” but allowed Toyota to answer that contention interrogatory at the end of fact discovery.

The court denied Allen’s request under Request for Production 81 for photographs concerning parts-damage claims because Allen had not shown relevance to its claims. It denied without prejudice Allen’s request under Request for Production 82 for additional Deloitte pricing-analysis documents because Toyota represented that it was still gathering responsive documents; the court noted that Allen’s relevance and proportionality arguments had merit.

The court denied as moot Allen’s motion concerning Requests for Admission 1 and 2 because Toyota’s responses provided the information Allen needed. The court granted Allen’s motion concerning Request for Admission 9 and ordered Toyota to provide a responsive answer about whether its Limited Parts Warranty covered parts sold by Vintage Parts to dealers in the United States. Finally, the court ordered Toyota to provide either a signed copy of Allen’s proposed stipulation concerning the value of Toyota dealerships and dealer compliance with dealer agreements or all documents responsive to Allen’s earlier Request for Production 37 by January 31, 2025.

Disposition

The court entered these overall rulings: Allen’s motion for a protective order was granted; Toyota’s request for letters rogatory was denied; Toyota’s motion to compel was granted in part and denied in part; and Allen’s motion to compel was granted in part and denied in part. Judge John F. Docherty’s order addressed discovery only and did not decide the ultimate Lanham Act, antitrust, or other claims.