Mary Kay Inc v. Beyou-Cosmetics Storefront on www.ebay.com

Filing 7

MEMORANDUM OPINION AND ORDER granting Plaintiff Mary Kay's Motion For Leave to Serve Limited Third Party Discovery Prior to Rule 26(f) Conference to Identify John Doe Defendants [Dkt. No. #3 ]. (Ordered by Magistrate Judge David L. Horan on 6/7/2021) (mcrd)

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
MARY KAY INC.,
Plaintiff,
V.
BEYOU-COSMETICS STOREFRONT
ON WWW.EBAY.COM, and JOHN
DOES 1-10, individually or as
corporations/business entities,
Defendants.

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No. 3:21-cv-1074-B

MEMORANDUM OPINION AND ORDER
Plaintiff Mary Kay Inc. filed a Motion For Leave to Serve Limited Third Party
Discovery Prior to Rule 26(f) Conference to Identify John Doe Defendants, see Dkt.
No. 3, which United States District Judge Jane J. Boyle has referred to the
undersigned magistrate judge for determination under 28 U.S.C. § 636(b), see Dkt.
No. 6. For the reasons explained below, the Court GRANTS Mary Kay’s Motion.
Background
“Mary Kay is a global manufacturer and wholesale distributor of cosmetics,
skin care products, toiletries, and related products that it sells under numerous
trademarks it has registered with the United States Patent and Trademark Office.”
Dkt. No. 3 at 2 (citing Dkt. No. 1 ¶¶ 9, 12-16). Mary Kay alleges that the John Doe
Defendants sold and continue to sell unauthorized Mary Kay products through the
Beyou-Cosmetics storefront on eBay.com. See id.

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Mary Kay filed this action on May 12, 2021, bringing claims under federal and
state law against Defendant Beyou-Cosmetics storefront on eBay.com and John Doe
Defendants for trademark infringement and unfair competition, trademark dilution,
and tortious interference with existing contracts and business relationships. See
generally Dkt. No. 1.
Along with its complaint, Mary Kay also filed the present motion requesting
expeditated discovery. See Dkt. No. 3. Mary Kay asserts that it has been unable to
identify the operators of the Beyou-Cosmetics storefront because their contact
information is not listed online and the return address on the products sold through
Beyou-Cosmetics is false. See id. 4-5. Mary Kay “requests that this Court authorize
Mary Kay to serve limited discovery on eBay and PayPal so that Mary Kay can obtain
information allowing it to identify Defendants, amend its complaint, and properly
name Defendants in this action.” Id. at 2.
Legal Standards and Analysis
“Under Federal Rule of Civil Procedure 26(d)(1), a party ‘may not seek
discovery from any source before the parties have conferred as required by Rule 26(f),
except ... [when authorized by these rules, by stipulation, or] by court order.’”
Fiduciary Network, LLC v. Buehler, No. 3:15-cv-808-M, 2015 WL 11120985, at *1
(N.D. Tex. Mar. 23, 2015) (quoting FED. R. CIV. P. 26(d)(1)). A majority of district
courts within the Fifth Circuit – including this one, see Talon Transaction Techs., Inc.
v. Stoneeagle Servs., Inc., No. 3:13-cv-902-P, 2013 WL 12172925, at *2 (N.D. Tex. May
14, 2013) – have adopted a “good cause” standard to determine whether to authorize

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expedited discovery. See ELargo Holdings, LLC v. Doe-68.105.146.38, 318 F.R.D. 58,
61 (M.D. La. 2016).
“In a ‘good cause’ analysis, a court must examine the discovery request ‘on the
entirety of the record to date and the reasonableness of the request in light of all the
surrounding circumstances.’” St. Louis Grp., Inc. v. Metals & Additives Corp., 275
F.R.D. 236, 239 (S.D. Tex. 2011) (quoting Ayyash v. Bank Al–Madina, 233 F.R.D. 325,
327 (S.D.N.Y. 2005)) (emphasis omitted). Depending on the facts of the case, courts
have identified several relevant factors, including “the breadth of the discovery
requests, the purpose for requesting expedited discovery, [and] the burden on the
defendants to comply with the requests,” ELargo, 318 F.R.D. at 63, as well as whether
the moving party is able to identify “the missing party with sufficient specificity,” “the
previous steps taken to locate the elusive defendant,” and whether plaintiff’s claims
could “withstand a motion to dismiss.” Combat Zone Corp. v. Does, No. 4:12-cv-2750,
2012 WL 12898022, at *1-*2 (S.D. Tex. Sept. 17, 2012). “The burden of showing good
cause is on the party seeking the expedited discovery, and the subject matter related
to requests for expedited discovery should be narrowly tailored in scope.” Accruent,
LLC v. Short, No. 1:17-cv-858-RP, 2017 WL 8811606, at *1 (W.D. Tex. Nov. 8, 2017).
The Court finds that Mary Kay has shown good cause to serve limited discovery
on PayPal and eBay for the purpose of uncovering the identity of the John Doe
Defendants. First, the scope of the request is narrow. Mary Kay seeks documents and
information that may only be used to identify the John Doe Defendants, who are the
individuals or entities that operate the Beyou-Cosmetics storefront. See Dkt. No. 3 at

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4-5. Mary Kay made substantial attempts to identify the John Doe Defendants
without expedited discovery yet failed despite its best efforts. See id. at 4-5, 8-9. It
seems, therefore, that the limited discovery request is the only way to obtain this
information.
And the burden on eBay, PayPal, and Defendants is small compared to the
necessity of the information requested. Mary Kay’s request is limited to information
concerning only one eBay and PayPal storefront, see id. Exs. A & B, and the operators
of Beyou-Cosmetics have a minimal expectation of privacy when selling infringing
products, see Malibu Media, LLC v. Doe, No. SA-19-cv-00624-DAE, 2019 WL 3884160,
at *2 (W.D. Tex. Aug. 16, 2019) (noting “an ISP subscriber has ‘a minimal expectation
of privacy in the sharing of copyrighted material’”). On the other hand, Mary Kay
cannot litigate its claims and obtain relief without knowing John Doe Defendants’
identities. See Dkt. No. 3 at 15. Further, requesting the information from both eBay
and PayPal is reasonable because account holders often give different contact
information to each company. See id. at 14 n.4.
Finally, Mary Kay has shown that its claims would likely survive a motion to
dismiss. Mary Kay has pled plausible claims for trademark infringement and unfair
competition under the Lanham Act and Texas common law, see id. at 9-11, trademark
dilution under the Lanham Act and the Texas Business and Commercial Code, see id.
at 12-13, and a state law claim for tortious interference with existing contracts and
business relationships, see id. at 13-14. And there are no identifiable jurisdictional
defects.

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Based on these factors, Mary Kay has shown good cause for expedited discovery
to obtain the Beyou-Cosmetics storefront operators identifying information.
Conclusion
Accordingly, the Court GRANTS Plaintiff Mary Kay’s Motion For Leave to
Serve Limited Third Party Discovery Prior to Rule 26(f) Conference to Identify John
Doe Defendants [Dkt. No. 3].
Mary Kay may immediately serve the Federal Rule of Civil Procedure 45
subpoenas attached to its motion as Exhibits A and B on eBay and PayPal. Mary Kay
must attach a copy of this Order to each subpoena.
Any information ultimately disclosed to Mary Kay in response to the
subpoenas may be used by Mary Kay only for the purpose of protecting its rights as
asserted in its complaint. The information disclosed is limited to use by Mary Kay in
this litigation and may not be disclosed other than to counsel for the parties.
SO ORDERED.
DATED: June 7, 2021

______________________________________________________________________________________________________________________

DAVID L. HORAN
UNITED STATES MAGISTRATE JUDGE

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