ABC v. DEF

Filing 40

MEMORANDUM OPINION AND ORDER For the reasons stated above, this action is stayed. The Clerk of Court is respectfully directed to mark this case as STAYED and terminate any open motions and adjourn all courtappearances. Plaintiff shall, within seve n calendar days of the Second Circuit's decision in Smart Study Co. LTD v. Acuteye-US, No. 22-1810 (2d Cir. Aug. 18, 2022), file a letter providing a status update on this case, including whether the stay should be lifted, whether Plaintiff intends to continue prosecuting this case, and proposed next steps. SO ORDERED. (Signed by Judge Jennifer L. Rochon on 1/17/2023) (jca)

Case 1:21-cv-09613-JLR Document 40 Filed 01/17/23 Page 1 of 4

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
OFF-WHITE LLC,
Plaintiff,

1:21-cv-09613 (JLR)

-against-

MEMORANDUM OPINION
AND ORDER

AEUNZN, et al.,
Defendants.

JENNIFER L. ROCHON, United States District Judge:
On November 19, 2021, Plaintiff commenced this action alleging that Defendants have
sold counterfeit products on Amazon.com, thereby infringing on Plaintiff’s Off-White
trademarks without permission. See ECF No. 7 (“Compl.”) ¶¶ 1, 8, 31-44. Plaintiff filed a
motion for default judgment, and supporting documents, on March 31, 2022. See ECF Nos. 2932. The Court scheduled a show cause hearing for February 14, 2023 on Plaintiff’s motion for
default judgment. See ECF No. 37. Because legal issues potentially dispositive of Plaintiff’s
motion are currently pending before the Second Circuit in Smart Study Co. LTD v. Acuteye-US,
No. 22-1810 (2d Cir. Aug. 18, 2022), as set forth below, the February 14, 2023 hearing is hereby
adjourned and this matter is STAYED.
DISCUSSION
“The power to stay proceedings is incidental to the power inherent in every court to
control the disposition of the causes on its docket with economy of time and effort for itself, for
counsel, and for litigants.” Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83, 96 (2d Cir.
2012) (internal quotation marks omitted). In determining whether to enter a stay, “courts in this
district consider five factors: (1) the private interests of the plaintiffs in proceeding expeditiously
with the civil litigation as balanced against the prejudice to the plaintiffs if delayed; (2) the

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private interests of and burden on the defendants; (3) the interests of the courts; (4) the interests
of persons not parties to the civil litigation; and (5) the public interest.” Loftus v. Signpost Inc.,
464 F. Supp. 3d 524, 526 (S.D.N.Y. 2020). A court may “properly exercise its staying power
when a higher court is close to settling an important issue of law bearing on the action.” Id. at
527 (quoting Sikhs for Justice v. Nath, 893 F. Supp. 2d 598, 622 (S.D.N.Y. 2012)). “The power
to stay proceedings can be exercised sua sponte.” Cracco v. Vance, No. 14-cv-08235 (PAC),
2018 U.S. Dist. LEXIS 34546, at *4 (S.D.N.Y. Mar. 2, 2018); Plaintiffs #1-21 v. Cty. of Suffolk,
138 F. Supp. 3d 264, 279 (E.D.N.Y. 2015) (same).
Here, the balance of interests in this case favors a stay because the Second Circuit is
considering resolution of an important issue of law bearing on this action. In Smart Study Co. v.
Acuteye-Us, the District Court for the Southern District of New York denied the plaintiff’s
motion for default judgment because, although the court had earlier permitted alternative service
by email for purposes of the plaintiff’s motion for a temporary restraining order, it determined
that “service by email on individuals or entities located in China is not permitted under the
[Hague Convention] or the Federal Rules of Civil Procedure . . . .” No. 21-cv-05860 (GHW),
2022 WL 2872297, at *1 (S.D.N.Y. July 21, 2022). Because the parties had not been properly
served, the court lacked personal jurisdiction over the foreign defendants; therefore, the court
denied the plaintiff’s motion for default judgment. Id. at *14-15. The plaintiff appealed that
decision to the Second Circuit and that appeal is currently pending. See Smart Study Co. LTD v.
Acuteye-US, No. 22-1810, (2d Cir. Aug. 18, 2022).
The outcome of the appeal in Smart Study Co. will likely impact Plaintiff’s motion in this
case. As in Smart Study Co., Plaintiff here – represented by the same counsel as the plaintiff in
Smart Study Co. – sought and obtained on December 13, 2021 a temporary restraining order that
authorized service on individuals or entities located in China by electronic means. See ECF
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No. 16. On March 31, 2022, Plaintiff moved for default judgment here. See ECF No. 29. The
district court issued its decision in Smart Study Co. on July 21, 2022. See 2022 WL 2872297, at
*1. Counsel for Plaintiff has recognized the relevance of Smart Study Co. in cases like this, and
that Smart Study Co. is on appeal. See Rovio Ent. Corp. v. Ace Air Art Inflatable Decorations
Store et. al., No. 22-cv-04139 (JLR), ECF No. 31 at 5 n.6.
This Court agrees with the reasoning of the district court in several similar cases brought
by Plaintiff’s counsel in which the court recently entered a stay pending Smart Study Co. See,
e.g., FoxMind Canada Enterprises Ltd. v. Badouyu Intelligent Iot Tech. (Suzhou) Co., No. 22-cv0885 (VSB), 2022 WL 17812661, at *2 (S.D.N.Y. Dec. 7, 2022) (sua sponte staying
proceedings); Spin Master Ltd. v. Chakaruna4169, No. 22-cv-00553 (JPC), 2022 U.S. Dist.
LEXIS 230755, at *3 (S.D.N.Y. Dec. 22, 2022); Allstar Mktg. Grp., LLC v. akrondh, No. 21-cv03621 (JPO), 2022 WL 17324939, at *2 (S.D.N.Y. Nov. 29, 2022); Rovio Ent. Corp. v. Ace Air
Art Inflatable Decorations Store et. al., No. 22-cv-04139 (JLR), ECF No. 40.
The Court finds that, “[t]hough Smart Study Co. and this case are not related matters, a
stay is appropriate.” Allstar Mktg. Grp., LLC, 2022 WL 17324939, at *1. “It is in Defendants’
interests that default not be entered before the Second Circuit clarifies Defendants’ rights under
the Hague Convention and Federal Rules of Civil Procedure.” FoxMind Canada Enterprises
Ltd., 2022 WL 17812661, at *2. It is in the Court’s interest “to receive clarity on whether
alternative service via email was sufficient” to establish personal jurisdiction over the defendants
located in China. Id. (internal citation omitted). It is in the interests of non-parties and the
public that the Second Circuit clarify the treaty obligations of the United States and the People’s
Republic of China for purposes of service under the Hague Convention. See id. And it is in
Plaintiff’s interest that this action be stayed because, “although Plaintiff in this case has not
sought a stay . . . clarification from the Second Circuit will offer guidance to Plaintiff on how
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and whether it may serve the motion for default judgment.” Id. (internal brackets and citation
omitted).
Accordingly, the Court finds that entering a stay is warranted. See, e.g., Louis Vuitton
Malletier S.A., 676 F.3d at 96.
CONCLUSION
For the reasons stated above, this action is stayed. The Clerk of Court is respectfully
directed to mark this case as STAYED and terminate any open motions and adjourn all court
appearances. Plaintiff shall, within seven calendar days of the Second Circuit’s decision in
Smart Study Co. LTD v. Acuteye-US, No. 22-1810 (2d Cir. Aug. 18, 2022), file a letter providing
a status update on this case, including whether the stay should be lifted, whether Plaintiff intends
to continue prosecuting this case, and proposed next steps.
Dated: January 17, 2023
New York, New York
SO ORDERED.

JENNIFER L. ROCHON
United States District Judge

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