Litigants in the Japanese courts should be aware of a powerful U.S. law that permits them to obtain evidence in the United States for use in their Japanese proceedings. Section 1782 of Title 28 of the United States Code ("Section 1782") authorizes the U.S. federal courts to order persons1 within their jurisdiction to provide evidence—in the form of documents and testimony—for use in non-U.S. proceedings.
Japanese litigants have been using Section 1782 with increasing frequency to obtain critical evidence for use in their Japanese legal proceedings.2 Indeed, Section 1782 can be especially useful for a Japanese litigant because they may not otherwise be able to obtain such evidence. Pre-trial discovery is limited in Japan, and Japan is not a signatory to the Hague Evidence Convention.
Section 1782 Can Be Used to Assist with Various Japanese Proceedings
For a Japanese litigant to use Section 1782, there must be a judicial or quasi-judicial proceeding in Japan. This may be a Japanese civil, administrative, or criminal proceeding. It cannot be an arbitration proceeding.3
The Japanese proceeding does not have to be pending. Section 1782 can also be used when the proceeding is contemplated or "imminent."4 In other words, a Japanese litigant may make a Section 1782 application to a U.S. court before it commences a Japanese proceeding. This feature of Section 1782 is especially useful in Japanese intellectual property cases, which, once commenced, tend to proceed quickly.
An Overview of the Process for Making a Section 1782 Application
The procedure for making a Section 1782 application is relatively simple. There is no need to commence a separate lawsuit in the United States. Instead, a Japanese litigant may make an immediate application to a U.S. federal court. Further, the application may be made ex parte, which means that prior notice does not have to be given to the person from whom the discovery is sought.
Once the application is filed, the U.S. court decides whether to grant, deny or limit the requested discovery based on certain factors, described below. It typically takes one to two months to receive a decision in California and around five months in New York—but this will depend on the judge.
Once the U.S. court grants the application, the Japanese litigant may then proceed to seek the requested discovery—for example, by serving document requests or deposition notices on the person from whom the discovery is sought. This gives the recipient of the request a chance to resist the request, typically by making a motion in the court to quash or limit the requested discovery.
The entire process—from the filing of the 1782 application to the time when the discovery is completed and the evidence is obtained—can take several months or longer, depending on how much discovery is requested and whether the recipient makes a motion to quash. However, there are ways for Section 1782 applicants to make this process go faster, such as limiting the number of document requests or forgoing depositions.
The Legal Requirements for Obtaining U.S. Discovery
To prevail on a Section 1782 application, a non-U.S. litigant must first satisfy the statutory criteria. Section 1782(a) states in relevant part:
"The district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal, including criminal investigations conducted before formal accusation. The order may be made pursuant to a letter rogatory issued, or request made, by a foreign or international tribunal or upon the application of any interested person ... . The order may prescribe the practice and procedure, which may be in whole or part the practice and procedure of the foreign country or the international tribunal, for taking the testimony or statement or producing the document or other thing ... [or may be] the Federal Rules of Civil Procedure."
As this text indicates, Section 1782 authorizes the district court to order the requested discovery when the following three requirements are met:
(1) the application seeks discovery from a person within the jurisdiction of the court, that is, the person must reside or be "found" in that judicial district; in practice, this means that the Section 1782 application has to be filed in the right place;
(2) the discovery is for use in a proceeding before a non-U.S. or international tribunal; and
(3) the applicant is a non-U.S. tribunal, or an "interested person," that is, a litigant before a non-U.S. tribunal, a non-U.S. or international official, or someone who possesses a reasonable interest in obtaining the court's assistance.5
If these three factors are met, the U.S. district court has the authority to order the requested discovery, but it does not have to actually do so. U.S. district courts typically consider four additional factors in deciding whether to grant the requested discovery:6
(1) whether the person from whom the discovery is sought is a participant in the non-U.S. proceeding;
(2) the nature of the non-U.S. tribunal and proceedings, and the receptivity of the non-U.S. tribunal to judicial assistance from the United States;7
(3) whether the application conceals an attempt to circumvent non-U.S. rules or policies that prevent U.S.-style proof-gathering;8 and
(4) whether the discovery sought is unduly intrusive or burdensome.
Recent Examples of Section 1782 Applications in Intellectual Property and Similar Cases
Japanese litigants have filed Section 1782 applications to seek discovery from, among other U.S. entities: (1) a U.S. subsidiary of a Chinese company to support patent litigation against the parent company in China;9 (2) U.S. online platforms such as Google and Twitter to support claims of potential defamation and unlawful business interference under Japanese law;10and (3) U.S. financial institutions to assist in a Tokyo divorce proceeding.11
Recently, Shueisha Inc., a Japanese publisher, used Section 1782 to identify individuals suspected of copyright infringement.12 Shueisha believed that certain websites were selling electronic copies of Shueisha's copyrighted comic books. Before initiating an infringement suit in Japan, Shueisha needed to identify who was profiting from these website sales. Shueisha filed a Section 1782 application in the United States seeking to have PayPal, Mastercard, Google, and Microsoft disclose the names, addresses, telephone numbers, email addresses and IP addresses of the persons receiving the online payments. The U.S. District Court for the Northern District of California found that the statutory requirements were met and that the four discretionary factors weighed in Shueisha's favor: (1) the U.S. entities would not be participants in the contemplated Japanese proceedings; (2) there was nothing to suggest that the Japanese court would reject the evidence obtained through the Section 1782 request; (3) there was no attempt to bypass Japanese law on proof-gathering; and (4) the requests were narrowly tailored and proportional to the needs of the Japanese proceeding and were not unduly burdensome. Thus, the court granted the request with minor amendments.13
Conclusion
Section 1782 is a powerful discovery tool for gathering evidence in the United States for use in Japanese proceedings, and particularly in intellectual property proceedings. Japanese litigants should consider using Section 1782 for this purpose as it may be a way for them to obtain critical evidence that may otherwise be unavailable.
The authors wish to thank Shigeki Obi, Eda Stark, Emma Baratta, and Lynn Russo for their valuable contributions to this client alert.
Footnotes
1. For these purposes, a person may be an individual or a legal entity, such as a company or a business.
2. Japanese litigants are not the only ones using Section 1782. In the last five years, litigants located throughout the world have filed more than one hundred Section 1782 applications in U.S. federal courts and there appears to be a rising trend in these applications.
3. See ZF Automotive US, Inc. v. Luxshare, Ltd., 142 S. Ct. 2078 (2022).
4. Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 259 (2004).
5. See id. §1782(a).
6. Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 264-65 (2004).
7. Japanese courts have been "receptive" to evidence gathered using Section 1782. In re LG Elecs. Deutschland GmbH, No. 12cv1197-LAB (MDD), 2012 WL 1836283, at *2 (S.D. Cal. May 21, 2012). No. 12cv1197-LAB (MDD), 2012 WL 1836283, at *2 (S.D. Cal. May 21, 2012).
8. U.S. courts have relied on "unrebutted expert declarations" to find that Section 1782 requests "do not violate restrictions in Japanese [] law." Shueisha Inc. v. PayPal Holdings, Inc. ("Shueisha v. PayPal"), No. 22-MC-80273-JSC, 2023 WL 2277102, at *6 (N.D. Cal. Feb. 27, 2023).
9. In re Application Pursuant to 28 U.S.C. 1782 of Japan Display Inc., No. 2:21-MC-00374-CAS-MAAX, 2021 WL 4391882 (C.D. Cal. Apr. 5, 2021).
10. Hey, Inc. v. Twitter, Inc., No. 22-mc-80034-DMR, 2022 WL 1157490 (N.D. Cal. Apr. 19, 2022); In re Med. Inc. Ass'n Shokokai, No. 22-MC-80250-BLF, 2022 WL 4591796 (N.D. Cal. Sept. 29, 2022).
11. In re Application of Reiko Aso for an Order Pursuant To 28 U.S.C. § 1782 to Conduct Discovery for Use in Foreign Proceedings, No. 19-MC-190 (JGK) (JLC), 2019 WL 3244151 (S.D.N.Y. July 19, 2019).
12. See e.g., Shueisha v. PayPal, 2023 WL 2277102, at *1; In re Shueisha, Inc., No. 21-MC-80255-VKD, 2021 WL 5279816, at *1 (N.D. Cal. Nov. 12, 2021).
13. We handled the most recent §1782 application granted in a patent case, helping our client obtain evidence from Amazon to support Chinese patent infringement proceedings. In that case, the Western District of Washington court analyzed the factors in the same way as the court in the Shueisha case. See In re Sailed Tech. (Beijing) Co., Ltd., No. 2:22-CV-01396-JHC, 2023 WL 3568151, at *1 (W.D. Wash. May 18, 2023).
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