United States District Court, W.D. Texas, Austin Division
PITMAN UNITED STATES DISTRICT JUDGE.
the Court in the above-entitled matter are Defendant Home
Depot U.S.A., Inc.'s Motion to Stay, (Dkt. 27), its brief
in support (Dkt. 28), and the responsive filings. Having
considered those filings, the relevant law, and the case
file, the Court enters the following order.
YETI Coolers, LLC (“YETI”) filed suit against
Home Depot U.S.A., Inc. (“Home Depot”) and Takeya
USA Corporation (“Takeya”) (collectively,
“Defendants”), alleging trade dress infringement,
unfair competition, false designation of origin, trade dress
dilution, and unjust enrichment. (Compl., Dkt. 1, ¶ 4).
Takeya subsequently filed a Motion to Dismiss, (Dkt. 11),
which remains pending. Home Depot then filed the instant
Motion to Stay, which asks the Court to stay the instant
proceedings with respect to Home Depot until the Court has
adjudicated YETI's claims against Takeya and other
“manufacturing defendants.” (Brief, Dkt. 28, at
5). YETI objects. (Resp., Dkt. 42).
stay of a pending matter is ordinarily within the trial
court's wide discretion to control the course of
litigation, which includes authority to control the scope and
pace of discovery.” In re Ramu Corp., 903 F.2d
312, 318 (5th Cir. 1990) (citations omitted); see also
Clinton v. Jones, 520 U.S. 681, 706 (1997). “The
proponent of a stay bears the burden of establishing its
need.” Clinton, 520 U.S. at 708. In
determining whether a stay is proper, a district court should
consider, among other factors, (1) the potential prejudice to
the non-moving party; (2) the hardship and inequity to the
moving party if the action is not stayed; and (3) judicial
resources. See, e.g., Sparling v. Doyle,
No. EP-13-CV-323-DCG, 2014 WL 12489985, at *2 (W.D. Tex.
March 3, 2014).
Depot first argues that a stay is warranted because the
company is “simply a downstream retailer” of
products produced by Takeya and other manufacturers sued by
YETI.“As a retailer of the accused
products, ” Home Depot explains, its “liability
to YETI, if any, is tied entirely to this Court's
determination of whether YETI can succeed on its claims
against the Manufacturing Defendants.” (Brief, Dkt. 28,
at 5). YETI disputes this assertion, arguing that its claims
against Home Depot's suppliers will not resolve its
claims against Home Depot itself. (Resp., Dkt. 42, at 5).
According to YETI, this is true because “trade dress
infringement is a defendant-specific determination, even if
the underlying accused products are the same as to multiple
defendants.” (Resp., Dkt. 42, at 7).
Depot also argues that the Court should stay the case against
Home Depot “under the same general principles that
govern the customer-suit exception.” (Brief, Dkt. 28,
at 7). While that principle is generally used in patent
infringement cases, some courts have applied it in the
context of trademark actions. See, e.g., Sillage
LLC v. Kenrose Perfumes, Inc., No. 8:14-CV-02043, 2015
WL 3649605, *6 (CD. Cal. June 9, 2015) (“Although the
customer suit exception does not directly apply, the Court
concludes that staying the severed actions against the retail
defendants would be the most efficient and fair course of
action.”). However, the cases Home Depot points to in
support of its argument are inapposite; Sillage, for
example, involved a motion to stay and sever. Id. at
*1. Moreover, Home Depot does not identify any cases within
the Fifth Circuit that suggest applying the customer-suit
exception would be appropriate in the instant case.
light of the above, this Court concludes that neither the
facts of this case nor relevant case law support granting
Home Depot's Motion to Stay. Home Depot has represented
that it is “willing to be bound by the Court's
liability rulings” as to the manufacturing defendants
and to “engage in limited discovery.” (Brief,
Dkt. 28, at 6). But given the disagreement between the
parties as to whether the manufacturers' liability is
determinative of Home Depot's liability, it appears
likely that granting the instant motion would both (1) work
prejudice against YETI; and (2) compromise judicial economy.
Home Depot, in contrast, has not demonstrated that it would
suffer hardship were its motion denied. (See
generally Brief, Dkt. 28; Reply, Dkt. 43).
these reasons, IT IS ORDERED that Defendant
Home Depot U.S.A., Inc.'s Motion to Stay, (Dkt. 27), is