Yeti Coolers, LLC v. Magnum Solace LLC
ORDER DENYING Magnum's 17 Motion for Protective Order and Stay of Discovery. Signed by Judge Andrew W. Austin. (klw)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
YETI Coolers, LLC
Magnum Solace, LLC
Before the Court are Defendant’s Opposed Motion for a Protective Order and Stay of
Discovery (Dkt. No. 17), Yeti’s Opposition (Dkt. No. 20), and Magnum’s Reply (Dkt. No. 22). On
October 12, 2016, the District Court referred the above-discovery motion to the undersigned
Magistrate Judge for a determination pursuant to 28 U.S.C. § 636(b)(1)(A), Rule 72, and Rule 1(c)
of Appendix C of the Local Rules.
I. General Background
On June 7, 2016, Plaintiff YETI Coolers, LLC filed this suit against Magnum Solace LLC,
alleging trade dress infringement, unfair competition and false designation of origin, trade dress
dilution, misappropriation, and unjust enrichment pursuant to the Lanham Act, the Texas Business
& Commerce Code, federal common law, and state common law. On August 5, 2016, Magnum filed
a Motion to Dismiss under Rule 12(b)(6), which is currently pending before the district judge. YETI
served written discovery requests on Magnum on September 29, 2016, and Magnum now asks that
discovery be stayed pending a ruling on its 12(b)(6) motion.
Magnum argues that a stay of discovery is appropriate “given Defendant’s Motion to Dismiss
could very well dispose of this case in its entirety.” Dkt. No. 17 at 2. Under Rule 26(c), “[t]he court
may, for good cause, issue an order to protect a party or person from annoyance, embarrassment,
oppression, or undue burden or expense.” FED. R. CIV. P. 26(c)(1). To show “good cause” under
Rule 26, the party seeking a stay of discovery must “show the necessity of its issuance, which
contemplates a particular and specific demonstration of fact as distinguished from stereotyped and
conclusory statements.” In re Terra Int’l, Inc., 134 F.3d 302, 306 (5th Cir. 1998) (quoting United
States v. Garrett, 571 F.2d 1323, 1326 n.3 (5th Cir. 1978)). The Court has broad discretion in
determining whether to grant a motion for a protective order or stay of discovery. Landry v. Air Line
Pilots Ass’n Int’l AFL-CIO, 901 F.2d 404, 436 (5th Cir.), cert. denied, 498 U.S. 895 (1990).
Magnum has rather clearly failed to show “good cause” to stay discovery in this case. Indeed,
all that its motion has accomplished is an increase in the costs to the parties. While, in theory, a
court may find good cause to stay discovery when there is a pending 12(b)(6) motion, in practice
such stays are very rare, and almost never wise. Glazer’s Wholesale Drug Co., Inc. v. Klein Foods,
Inc., 2008 WL 2930482, at * 1 (N.D. Tex. July 23, 2008) (such stays are “the exception rather than
the rule”); Von Drake v. Nat’l Broad. Co., 2004 WL 1144142, at *1 (N.D. Tex. May 20, 2004)
(“While discovery may be stayed pending the outcome of a motion to dismiss, ‘the issuance of stay
is by no means automatic.’”). As one district judge has noted, “[h]ad the Federal Rules contemplated
that a motion to dismiss under Fed. R. Civ. Pro. 12(b)(6) would stay discovery, the Rules would
contain a provision to that effect. In fact, such a notion is directly at odds with the need for
expeditious resolution of litigation.” Gray v. First Winthrop Corp., 133 F.R.D. 39, 40 (N.D. Cal.
There are of course exceptions to these general rules, but they apply to cases in which, for
example, the motion to dismiss raises a serious legal question or factual deficiency that has a
reasonably likelihood of resulting in the dismissal of the case.1 The motion to dismiss here is the
opposite. It seeks the dismissal of a thoroughly-pled, fact-specific lawsuit. A simple PACER search
of cases filed by YETI in this Court would reflect that YETI has filed dozens of cases against similar
allegedly infringing products, in very similar legal and factual detail.2 In the vast majority of those
cases the defendants did not even move to dismiss the complaint under Rule 12(b)(6), and where the
cases have not been settled, the cases remain pending with live pleadings with very similar language
to the complaint Magnum seeks to have dismissed here. Suffice it to say that Magnum’s motion to
dismiss does not have a sufficient likelihood of success to warrant staying discovery while that
motion is pending.
Accordingly, Magnum’s Motion for a Protective Order and Stay of Discovery (Dkt. No. 17)
SIGNED this 19th day of October, 2016.
ANDREW W. AUSTIN
UNITED STATES MAGISTRATE JUDGE
Magnum relies on two such cases in its motion. In one, the motion to stay was unopposed.
Tostado v. Citibank, N.A., 2009 WL 4774771 (W.D. Tex. Dec. 11, 2009). In the other, the motion
to dismiss was based on a qualified immunity argument. Bickford v. Boerne Indep. Sch. Dist., 2016
WL 1430063 (W.D. Tex. April 8, 2016). Neither case presents facts remotely similar to those in this
See, e.g., YETI Coolers, LLC v. Great Amer. Products, No. 1:15-cv-686 RP; YETI Coolers,
LLC v. Kaiser Group, Inc., No. 1:15-cv-725 RP; YETI Coolers, LLC v. US Imprints, LLC, No. 1:15cv-773 RP; YETI Coolers, LLC v. Sic Products LLC, No. 1:16-cv-117 RP. These are just a small
sample of cases; many more similar suits have been filed.
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