Yeti Coolers, LLC v. Home Depot U.S.A., Inc. et al
ORDER DENYING Defendant Home Depot's 27 Motion to Stay. Signed by Judge Robert Pitman. (klw)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
YETI COOLERS, LLC,
HOME DEPOT U.S.A., INC. et al.,
Before 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.
Plaintiff 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.,
II. LEGAL STANDARD
“The 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-CV323-DCG, 2014 WL 12489985, at *2 (W.D. Tex. March 3, 2014). 1
Home 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. 2 “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 defendantspecific determination, even if the underlying accused products are the same as to multiple
defendants.” (Resp., Dkt. 42, at 7).
Home 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
Home Depot, citing exclusively to patent infringement cases from another district, identifies a different standard.
(Brief, Dkt. 28, at 12). In keeping with other courts within the Western District of Texas, the undersigned declines to
adopt that standard here. See, e.g., B&D Produce Sales, LLC v. Packman1, Inc., No. SA-16-CV-99-XR, 2016 WL 4435275, at
*1 (W.D. Tex. Aug. 19, 2016) (applying the same standard outlined in Sparling, see supra); Hopple v. Prospect Mortgage, LLC,
No. EP-13-CV-137-DCG, 2013 WL 5493004, at *2 (W.D. Tex. Oct. 2, 2013) (same).
Home Depot identifies Gourmet Home Products (“Gourmet Home”); Cathy’s Concepts, Inc. (“Cathy’s Concepts”);
Godinger Silver Art Ltd. (“Godinger); and Viatek Consumer Products Group, Inc. (“Viatek”) as the relevant
“manufacturing defendants.” (Mot. Stay, Dkt. 28, at 5). Actions against Gourmet Home, Cathy’s Concepts, Godinger,
and Viatek are pending in this Court. See 1:17-CV-467; 1:17-CV-533. However, while YETI alleges that the defendants
in those actions sold the relevant products through Home Depot, Home Depot is not named as a party to those suits. Id.
WL 3649605, *6 (C.D. 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.
In 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).
For these reasons, IT IS ORDERED that Defendant Home Depot U.S.A., Inc.’s Motion
to Stay, (Dkt. 27), is DENIED.
SIGNED January 8, 2018.
UNITED STATES DISTRICT JUDGE
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