Cesari S.R.L. v. Peju Province Winery L.P.

Background

Cesari S.R.L. is an Italian winemaker that sells wine under the registered “LIANO” trademark. It sued Peju Province Winery L.P., Peju Province Corporation, and Peju Family Operating Partnership, L.P. over their use of the name “LIANA.” The opinion states that, in 2004, the Trademark Trial and Appeal Board found that Peju Province Winery L.P.’s proposed LIANA mark was likely to be confused with Cesari’s registered LIANO mark.

The court had previously granted Cesari’s request to prevent Peju Province Winery L.P. from relitigating likelihood of confusion based on the Trademark Trial and Appeal Board ruling. Defendants later identified the remaining issues as whether the other entities controlled Peju Province Winery L.P. in the earlier proceeding, whether Peju Province Winery L.P. controls one or both entities in this case, and what remedies Cesari may receive. Defendants also indicated that they wanted discovery concerning the factual bases for the defenses of laches, waiver, estoppel, and acquiescence. The opinion notes that defendants never filed the statute-of-limitations motion they had discussed.

Deposition Dispute

The order concerned defendants’ proposed Rule 30(b)(6) deposition of Cesari. That rule permits a party to question an organization through a witness about subjects identified in the deposition notice. Defendants proposed 32 topics, including Cesari’s ownership and use of the LIANO mark, the pleadings, discovery responses, and legal advice received from counsel. The court had directed defendants to provide a written justification for each proposed subject, but defendants grouped multiple topics under single rationales instead.

The court limited the examination to one seven-hour deposition of Cesari’s chief executive officer, Gianmaria Cesari. It found that Cesari’s ownership of a valid registered LIANO trademark was an established fact and was not a live issue in the litigation. Defendants could ask basic questions about the witness’s relationship with Cesari and role and duties. They could also ask general questions about Cesari’s use of the mark in the United States, including general information about associated sales, revenues, profits, and advertising. More detailed questions about advertising agencies, social media, particular advertising expenditures, and similar matters were not permitted.

The court also ruled that defendants could not ask about the quality of Cesari’s products or consumer complaints. It found that those subjects were not relevant to the issues presented by the case. Questions about the pleadings were permissible only when directed to factual matters, particularly the factual bases of the defenses of laches, waiver, estoppel, and acquiescence. Permitted subjects included Cesari’s knowledge of defendants and their use of LIANA, communications involving defendants, Cesari’s trademark-enforcement policies, and general factual background about the earlier Trademark Trial and Appeal Board proceeding. Questions about other lawsuits involving Cesari were outside the permitted scope.

Ruling

The court permitted some questions about the factual content of Cesari’s discovery responses, document custodians, document-retention policies, preservation procedures, and the steps Cesari took to respond to discovery. It barred questions seeking legal conclusions, attorney work product, or information about amending privilege logs and discovery responses that was not properly directed to the witness.

The court barred the two proposed topics concerning opinions from Cesari’s attorneys and Cesari’s reliance on legal advice. It concluded that those subjects would primarily involve information protected by the attorney-client privilege, and defendants had not shown that the privilege had been waived.

The court’s topic-by-topic summary limited Topics 1–5, 7, 9, 11, 13, 15–19, and related subjects to the boundaries described in the order; permitted Topics 12 and 20–28 within those boundaries; and did not permit Topics 6, 8, 14, and 29–32. The court stated that its rulings did not waive any objection or discovery privilege Cesari might assert and did not decide whether permitted topics would produce evidence admissible at summary judgment or trial. Judge Naomi Reice Buchwald entered the memorandum and order on December 10, 2020.