On April 10, 2015, Chief ALJ Charles E. Bullock issued the public version of Order No. 78 (dated April 2, 2015) in Certain Footwear Products (Inv. No. 337-TA-936).
By way of background, this investigation is based on an October 14, 2014 complaint filed by Converse Inc. ("Converse") alleging violation of Section 337 in the importation into the U.S. and sale of certain footwear products that infringe U.S. Trademark Registration Nos. 4,398,753; 3,258,103; and 1,588,960. Additionally, Converse alleged violation of Section 337 based upon unfair competition/false designation of origin, common law trademark infringement and unfair competition, and trademark dilution. See our October 15, 2014 and November 14, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
According to the Order, Converse moved to compel Respondent Wal-Mart Stores, Inc. ("Walmart") to (1) identify all shoe models that fall within the scope of the Notice of Investigation and the definition of Accused Products as defined in Converse's discovery requests to Walmart, and produce responsive documents and information related to those shoes; and (2) produce an opinion letter, obtained from its third-party supplier, Elan-Polo, which Walmart withheld as privileged.
On November 18, 2014, Converse served discovery requests on Walmart seeking the identification of all shoes that constitute an "Accused Product" as well as the production of documents related to those shoes. Walmart objected to the definition of "Accused Products" and limited its responses to those shoes specifically identified by Converse. Converse later clarified the definition of "Accused Products" to mean products that "include a toe cap and toe bumper," but Walmart still refused to comply with the discovery requests. Accordingly, Converse filed the instant motion.
Converse argued its motion should be granted because its requests were relevant to the core issues of the Investigation, including dilution, infringement, and injury to Converse's domestic industry. In response, Walmart argued that Converse's requests did not satisfy the "reasonable particularity" requirement of Commission Rule 210.30(b)(1) and asserted that Converse's definition of "Accused Products" was "hard to follow, require[d] subjective judgement, include[d] an irrelevant and confusing test for copyright infringement, involve[d] admitting infringement and assume[d] admission of facts not in evidence about Converse's products going back to 1932." Thus, Walmart requested that Converse provide a more specific definition and use the definition in Converse's trademark registration.
ALJ Bullock found that Converse's discovery requests, as amended, were reasonable and that a request aimed at obtaining all information on shoes that "include a toe cap and toe bumper" was specific enough under the Commission Rules. With respect to Walmart's proposal that Converse use the definition contained in Converse's trademark registration, ALJ Bullock noted that using such a definition could allow Walmart to improperly narrow discovery. Thus, ALJ Bullock ordered Walmart to supplement its responses to certain interrogatories and its document production with respect to interrogatories and requests dealing with the Accused Products.
Converse also sought the production of certain information that Walmart claimed as privileged. Specifically, Converse argued that the document was not protected by the common interest privilege. Converse also argued that it was not protected by the attorney-client or work product doctrine and that, even if it was, the privilege was waived because Walmart disclosed the document to Walmart's in-house counsel. In response, Walmart argued the document was protected by the attorney-client privilege and that the common-interest privilege was irrelevant.
ALJ Bullock noted that courts differ on whether the common-interest privilege is applied when the situation relates to two clients that share an attorney. Despite the terminology used, however, ALJ Bullock noted that it was beyond dispute that when one attorney works for two parties having a common interest and each party communicates with the attorney, the communications are privileged from disclosure. While a large portion of the Order is redacted, it appears that ALJ Bullock found that the elements of common-interest privilege and attorney-client privilege were met and thus denied Converse's motion with respect to certain privileged information.