A Meaningful Opportunity to Comply

In the fight against trademark infringement, brand owners have in recent years adopted a new tactic: bringing suit against the individuals responsible for the manufacture and sale of counterfeit goods. Because defendants in these lawsuits sometimes fail to appear in court, plaintiffs instead seek the profits made by these counterfeiters as a remedy. In several recent cases, luxury brands Tiffany and Gucci have done just this. As part of discovery, Tiffany and Gucci requested several defendants’ bank records from Chinese-owned banks to determine the profits made by the defendants. The banks challenged these discovery requests, forcing the courts to address whether the Hague Convention on Taking Evidence Abroad in Civil or Commercial Matters (Hague Evidence Convention) or the Federal Rules of Civil Procedure (Federal Rules) should be used to order evidence disclosure from non-party Chinese banks. The seminal Supreme Court case on the issue of discovery abroad is Societe Nationale Industrielle Aerospatiale v. United States District