Precedential No. 30: TTAB Grants Motion for Leave to Take Foreign Discovery Depositions by Videoconference

In this consolidated opposition proceeding concerning likelihood of confusion and dilution of the mark INSTAGRAM, the Board granted Instagram's motion for leave to take the discovery depositions of two Australia-based officers of Instagoods by oral examination via videoconference. Instagoods refused to consent to the request, but the Board found that Instagram established "good cause" under Rule 2.120(c)(1). Instagram, LLC v. Instagoods Pty Ltd and Instagoods Pty Ltd v. Instagram, LLC, 2023 USPQ2d 1185 (TTAB 2023) [precedential] (Ashlyn Lembree, Interlocutory Attorney).

Pursuant to Rule 2.120(c)(1), the discovery deposition of a natural person (an officer, director, managing agent, or designee of a party) residing in a foreign country, if taken in a foreign country, must be taken upon written questions "unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate."

In deciding such a motion, the Board weighs the equities, including the advantages of an oral deposition and any financial hardship that the party to be deposed might suffer if the deposition were taken orally in the foreign country.

The Board found good cause for taking the deposition orally. The two witnesses are the sole remaining party witnesses with knowledge regarding issues pertinent to the claims in this proceeding. Moreover, oral depositions "are likely to aid in the furtherance of discovery in this proceeding, particularly where Instagram has had difficulty obtaining information regarding (former Instagoods employee) Ms. Willis’ role with Instagoods and her prior-filed applications through written discovery." Furthermore, "[t]he fact that the oral discovery depositions may be conducted without the need for translations and Instagram’s willingness to coordinate the depositions according to the schedules of the witnesses further supports a finding of good cause."

Turning to Instagram’s request that the discovery depositions be taken via videoconference, the Board found that method appropriate.

Rule 30(b)(4) of the Federal Rules of Civil Procedure provides that depositions may be taken “by telephone or other remote means,” and “[n]othing in the language of Rule 30 requires a showing of necessity, financial inability or other hardship to obtain an order to proceed via [remote means], and leave to take depositions [via remote means] should be liberally granted in appropriate cases.”  

The Board concluded that taking the depositions by videoconference "will promote flexibility and reduce costs to the parties, particularly where the parties may elect to break up the depositions into segments to accommodate the witnesses’ schedules."

The Board pointed out, however, that Instagram is responsible for following appropriate procedures to ensure that the taking of the discovery depositions "complies with (1) any applicable procedural treaty requirements and (2) any limitations the Board may impose upon consideration of international comity in light of any local laws given consideration by the Board."

The Board noted that Instagram may resort to any of the devices available under Federal Rule of Civil Procedure 28(b)(1), including noticing the deposition, seeking issuance by the Board of a letter of request for use under the Hague Convention, seeking issuance by the Board or, if applicable, a U.S. District Court of a letter rogatory for application to the U.S. Department of State for diplomatic processing, or seeking the appointment of an individual or officer within the foreign territory who is commissioned to take the oath of the deponent.

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TTABlogger comment: Instagram argued that oral depositions "will permit immediate follow-up questions, spontaneity, and the ability to evaluate the witness’ demeanor and credibility, and that oral depositions will avoid answers to written questions that are carefully tailored by counsel." The Board did not pick up on that argument - perhaps because the Rule is the Rule - but Instagram hit the nail on the head.

Text Copyright John L. Welch 2023.