Wenger S.A. v. OLIVET INTERNATIONAL INC.
- Subramanian
- 1:20-cv-01107
- U.S. District Court · Southern District of New York
- 4
In Wenger S.A. v. Olivet International, Inc., Judge Subramanian ordered Wenger to produce a settlement agreement in the ongoing trademark case.
Wenger must produce the settlement agreement with Swisstech, including the amount, to Olivet. Olivet obtains the requested discovery, but the court did not decide whether the settlement amount may later be admitted as evidence.
What happened
In Wenger S.A. v. Olivet International, Inc., Olivet asked the court to require Wenger to produce its settlement agreement with former defendant Swisstech IP Co., LLC. Olivet said the agreement concerned the same products and could affect its defenses, potential liability, and Wenger’s requested reasonable royalty.
The court granted the request. It ruled that the agreement, including its payment amount, was relevant, not legally protected from discovery, and proportionate to the needs of the case. The court did not decide whether the settlement amount could later be used as evidence on the reasonable-royalty issue.
Judge Arun Subramanian ordered production under the federal discovery rules. He noted that if Olivet seeks to use the settlement amount to prove the validity or amount of a disputed claim, the parties must address whether the agreement falls within the evidence rule limiting the use of compromise negotiations.
The detailed version
- Wenger S.A. v. OLIVET INTERNATIONAL INC. · No. 1:20-cv-01107
- Subramanian
- May 6, 2024
Background
Olivet filed a letter motion asking the court to compel Wenger to produce a complete copy of an agreement between Wenger and former defendant Swisstech IP Co., LLC. The agreement resolved Wenger’s dispute with Swisstech and led to dismissal with prejudice of Wenger’s claims against Swisstech. Swisstech agreed to Wenger’s production of the complete agreement, but Wenger opposed producing it.
The motion stated that Swisstech licensed its SWISSTECH and cross-design trademarks to Walmart, that Walmart hired Olivet to manufacture backpacks and luggage bearing those marks, and that Walmart sold the products. Wenger had accused Olivet and Swisstech of trademark infringement based on sales of those products. Olivet remained as the sole defendant after Wenger’s claims against Swisstech were dismissed.
Olivet argued that the agreement was relevant for at least two reasons. First, any payment by Swisstech for the same products could bear on Wenger’s claim for a reasonable royalty and whether that amount should be offset. Second, any release of claims involving Swisstech, and potentially Walmart, could affect Olivet’s liability or defenses. Olivet also argued that Wenger’s earlier discovery responses required it to supplement its production after the agreement was executed.
Court’s Ruling
The court granted Olivet’s request. Under Federal Rule of Civil Procedure 26(b)(1), parties may obtain discovery of nonprivileged information relevant to a claim or defense and proportionate to the needs of the case. The court held that the settlement agreement, including its amount, was relevant and proportionate, and that there was no burden requiring Wenger to produce it. The court also noted that discoverable material need not be admissible at trial.
The court did not decide whether the settlement amount would be admissible to address Wenger’s reasonable-royalty claim. It stated that if Olivet seeks to use the amount to prove the validity or amount of a disputed claim, Olivet should be prepared to show that the payment was not consideration for compromising that claim under Federal Rule of Evidence 408(a)(1). The parties were directed to consider whether Wenger’s claims against all defendants constitute the same claim for purposes of that rule.
Disposition
The request to compel production was GRANTED. The opinion does not state a separate disposition of the underlying trademark claims.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.