Tradebay, LLC v. eBay, Inc.
2011 U.S. Dist. LEXIS 143686
| D. Nev. | 2011Background
- This matter concerns a Motion to Stay Discovery pending a Motion to Dismiss filed by defendant (Dkt. #21).
- Plaintiff Tradebay seeks declaratory relief against eBay’s alleged infringement and dilution claims regarding the TRADEBAY mark.
- Tradebay’s amended complaint asserts ownership of the TRADEBAY mark, its USPTO publication, and anticipated use of online services under the mark.
- eBay asserts ownership of numerous marks and argues plaintiff’s mark is confusingly similar, prompting threats and an administrative proceeding that does not resolve infringement claims.
- The district court must determine whether discovery should be stayed pending resolution of a potentially dispositive motion to dismiss, especially given jurisdictional and Rule 12(b)(6) considerations.
- The court grants the stay, finding the motion to dismiss potentially dispositive and that discovery should be deferred to expedite a decision on jurisdictional issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether discovery should be stayed pending the motion to dismiss | Tradebay opposes stay, arguing live controversy and lack of prejudice from proceeding | eBay seeks stay as motion to dismiss may dispose of the case and no discovery is needed | Stay granted pending disposition of the motion to dismiss |
Key Cases Cited
- Windsurfing Int’l, Inc. v. AMF, Inc., 828 F.2d 1390 (Fed. Cir. 1987) (two-prong test for declaratory judgments in trademark cases (abandoned as sole test))
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S. 2007) (totality-of-the-circumstances test for Article III jurisdiction in declaratory actions)
- Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 556 F.3d 1294 (Fed. Cir. 2009) (all circumstances must be considered for declaratory relief)
- Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed. Cir. 2010) (totality analysis for declaratory judgments)
- Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (illustrates jurisdictional analysis in declaratory actions)
- Chesebrough-Pond’s, Inc. v. Faberge, Inc., 666 F.2d 393 (9th Cir. 1982) (real and reasonable apprehension of suit as jurisdictional factor)