Luxottica Group, S.p.A. v. 899 Airport Blvd. Inc.
- William Orrick
- 3:24-cv-07989
- U.S. District Court · Northern District of California
- 3
In Luxottica v. 899 Airport, Judge Orrick denied without prejudice Luxottica’s request for defendants’ financial documents in trademark-infringement discovery.
Luxottica Group, S.p.A.; 899 Airport Blvd. Inc.; and Shiekh Sahib, because the court declined at this stage to require production of Sahib’s personal financial records and the company’s financial documents.
What happened
Luxottica Group, S.p.A. sued 899 Airport Blvd. Inc. and Shiekh Sahib, alleging that they sold sunglasses bearing Luxottica’s Ray-Ban trademark without permission or payment. The case asserts one trademark-infringement claim under the Lanham Act.
The parties asked the court to resolve Luxottica’s request for Sahib’s federal tax returns and the company’s financial records for 2022 through 2024. Luxottica said the records could help determine damages and argued that Sahib could be personally liable. The court found the allegations and evidence insufficient to justify obtaining Sahib’s personal finances and found it unclear why the company’s records were necessary at this stage.
Judge William H. Orrick denied Luxottica’s request for production without prejudice. He said Luxottica may raise the issue again through a motion for the pretrial conference, after the parties’ allegations and other potential damages factors are clearer.
The detailed version
- Luxottica Group, S.p.A. v. 899 Airport Blvd. Inc. · No. 3:24-cv-07989
- William Orrick
- June 27, 2025
Background
Luxottica Group, S.p.A. brought one claim under the Lanham Act, the federal trademark statute, against 899 Airport Blvd. Inc. and its sole owner, Shiekh Sahib. Luxottica alleges that the defendants sold sunglasses bearing Luxottica’s Ray-Ban trademark without permission and without compensating Luxottica.
Discovery Request
The parties submitted a joint discovery letter about Luxottica’s request for financial information. Luxottica sought Sahib’s federal income tax returns, including schedules and attachments, for 2022 through 2024. It also sought 899 Airport Blvd.’s financial statements and federal income tax returns, with related schedules and attachments, for the same period.
Luxottica argued that Sahib could be personally liable because he was the company’s sole owner, shareholder, and officer. The court explained that an individual may be liable for a corporation’s trademark infringement when the individual was responsible for, participated in, directed, controlled, or ratified the infringing acts. But the court found that Luxottica’s allegations described Sahib’s ownership and management responsibilities without sufficiently alleging that he directly, actively, or controllingly participated in the alleged sale of infringing sunglasses. The court therefore found insufficient support for ordering production of Sahib’s personal financial information at that point.
Company Financial Records
Luxottica argued that the company’s financial documents were important for determining statutory damages. The court said that financial information is only one of many possible factors in assessing such damages, including the alleged infringer’s blameworthiness, profits, the trademark owner’s losses, the number of infringing items, and the reasonableness of the parties’ positions. The court wanted more information about those other factors before authorizing invasive financial discovery, even under a protective order.
Ruling
Judge William H. Orrick denied Luxottica’s request that the defendants produce the requested financial documents without prejudice. The court stated that Luxottica may raise the issue again by filing a motion for hearing at the pretrial conference, when the parties’ allegations are more fully developed.
Disposition
The discovery request was denied without prejudice. The order did not resolve the underlying trademark-infringement claim.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.