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Gucci Am., Inc. v. Weixing Li

United States District Court for the Southern District of New York

August 23, 2011, Decided; August 23, 2011, Filed

No. 10 Civ. 4974 (RJS)

Opinion

MEMORANDUM AND ORDER

Richard J. Sullivan, District Judge:

Plaintiffs Gucci America, Inc. and certain of its affiliates bring this trademark infringement action against the owners and operators of a Chinese website dedicated to the sale of imitation handbags and other items. On July 12, 2010, the Court entered a preliminary injunction that, among other things, froze funds in Defendants' accounts at the Chinese headquarters of non-party Bank of China ("Bank of China" or the "Bank"). Since the Court's issuance of the preliminary injunction, Plaintiffs have sought from the Bank, pursuant to Rule 45 of the Federal Rules of Civil Procedure, documents and information relating to Defendants' accounts that Plaintiffs assert are critical  [*2] to their investigation of Defendants' alleged counterfeiting operations. The Bank has refused to produce the requested documents to the extent that they are located in the Bank's offices in China, arguing that Chinese bank secrecy laws prevent it from doing so.

Before the Court is Plaintiffs' motion to compel Bank of China to comply with the Rule 45 subpoena as well as the asset freeze provision of the preliminary injunction. Also before the Court is the Bank's cross-motion to modify the preliminary injunction so as to terminate the provisions that freeze Defendants' assets that are held by the Bank in any of its locations in China. For the reasons that follow, Plaintiffs' motion is granted and Bank of China's motion is denied.

I. Background

A. Facts 1

Plaintiffs are distributors of luxury handbags, clothing, jewelry, fragrances, and home products. 2 (SAC ¶¶ 6-9.) In or around June 2010, Plaintiffs discovered that Defendants and their affiliates were offering for sale on the internet counterfeit versions  [*3] of Plaintiffs' products. Defendants allegedly advertised these products as authentic, thereby "deceiv[ing] and mislead[ing] consumers into believing that Defendants' products or activities are authorized or sponsored by the Plaintiffs." (Id. ¶ 47.)

On June 25, 2010, Plaintiffs initiated this action against Weixing Li, Lijun Xu, and certain "John Does," doing business as, inter alia, Redtagparty, Designer Handbags, Myluxurybags.com, Xpressdesigners.com, and Xpressdesigner.net, pursuant to the Lanham Act, 15 U.S.C. § 1051, et seq., and related state-law causes of action. 3 Plaintiffs subsequently entered into a settlement agreement with Defendant Lijun Xu. (Doc. No. 21.) No other Defendant has appeared in this action.

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2011 U.S. Dist. LEXIS 97814 *

GUCCI AMERICA, INC., et al., Plaintiffs, versus WEIXING LI, et al., Defendants.

Subsequent History: Reconsideration denied by Gucci Am., Inc. v. Weixing Li, 2012 U.S. Dist. LEXIS 72650 (S.D.N.Y., May 18, 2012)

Related proceeding at Tiffany (NJ) LLC v. Forbse, 2012 U.S. Dist. LEXIS 72148 (S.D.N.Y., May 23, 2012)

Motion denied by, As moot, Stay granted by, Motion granted by Gucci Am., Inc. v. Bank of China, 2013 U.S. App. LEXIS 26319 (2d Cir., Jan. 16, 2013)

Affirmed in part and vacated in part by, Remanded by, Motion denied by, As moot Gucci Am. v. Bank of China, 768 F.3d 122, 2014 U.S. App. LEXIS 17948 (2d Cir., 2014)

CORE TERMS

documents, Subpoena, Plaintiffs', requests, weighs, freeze, courts, counterfeiting, Injunction, bank secrecy, Lanham Act, compliance, preliminary injunction, discovery, equitable, Orders, cases, infringement, disclosure, profits, customer, authorities, consuming, website, abroad, funds, put forward, provisions, trademark, damages

Trademark Law, Remedies, Equitable Relief, General Overview, Damages, Types of Damages, Profits, Civil Procedure, Injunctions, Preliminary & Temporary Injunctions, Contracts Law, Injunctions, Preliminary Considerations, Equity, Relief, Equitable Accountings, Equitable Accountings, Preliminary Injunctions, In Rem & Personal Jurisdiction, In Personam Actions, International Law, Dispute Resolution, Authority to Regulate, Business & Corporate Compliance, Federal Unfair Competition Law, Lanham Act, Extraterritorial Jurisdiction, Infringement Actions, Jurisdiction, Banking Law, Types of Banks & Financial Institutions, Provisional Remedies, Attachment, Commercial Banks, Branch Banking, State Laws, Pretrial Judgments, Default & Default Judgments, Default Judgments, Discovery, Misconduct During Discovery, Motions to Compel, Evidence, Methods of Discovery, Foreign Discovery, Hague Convention on Taking Evidence Abroad, Comity Doctrine, International Banking, Areas of Law, Discovery & Disclosure, Misconduct During Discovery, Disclosure, Sanctions