The opinion of the court was delivered by: EDELSTEIN
EDELSTEIN, DISTRICT JUDGE
This is an action for Trademark infringement arising under the Lanham Act, 15 U.S.C. § 1051 et seq., and § 368 of New York's General Business Law. Plaintiff also alleges common law causes of action. Defendant Marshalls, Inc. ("Marshalls") has moved pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for an order dismissing the first five causes of action. See infra. Alternatively, Marshalls has moved, pursuant to the Arbitration Act, 9 U.S.C. § 3, and the inherent power of this Court to control the disposition of the cases on its docket, for a stay of all proceedings against Marshalls pending the conclusion of an arbitration between Hikers Industries, Inc. ("Hikers") and defendant William Stuart Industries (Far East) Ltd. ("WSI").
The motion is granted insofar as it seeks to stay this action pending the arbitration between Hikers and WSI. This stay will be vacated, however, if the arbitration proceedings are not completed by December 16, 1986. The court reserves judgment on the motion to dismiss causes of action one through five until either the arbitrators render a decision or until the stay is lifted after December 16, 1986, whichever is earlier.
Plaintiff Hikers imports and sells fine menswear to retail merchants throughout the United States for resale to the general public. Defendant WSI manufactures, designs, and sells menswear to retail merchants throughout the United States for resale to the general public. Defendant Marshalls, through its stores, sells menswear to the public throughout the United States.
Defendant WSI is a licensee of the "Givenchy Monsieur" trademark (the "Trademark")
Plaintiff alleges that WSI, by contract dated October 15, 1984 (the "License Agreement") gave an exclusive sub-license of the Trademark to plaintiff for plaintiff's use in connection with the manufacture and sale of men's big and tall sized clothing. Thereafter WSI allegedly sold men's big and tall sized clothing bearing the Trademark to Marshalls for resale in an area for which plaintiff had the exclusive sub-license. Plaintiff alleges that Marshalls purchased these goods from WSI with full knowledge of plaintiff's exclusive rights with respect to the Trademark. Accordingly, Hikers instituted this action against both WSI and Marshalls. The causes of action relevant to this dispute are:
Claim Nature of Claim Defendant
First Trademark infringement Marshalls
pursuant to 15 U.S.C. § 1114
Second False designation Marshalls
pursuant to 15 U.S.C. § 1125 and WSI
Third Common law unfair competition Marshalls
Fourth Trademark infringement Marshalls
pursuant to N.Y. Gen.
Bus. L. § 368-b
Fifth Dilution of trademark Marshalls
rights pursuant to
N.Y. Gen. Bus. L. § 368-d
Paragraph 12 of the License Agreement entered into between Hikers and WSI contains an arbitration clause which provides:
(a) Any and all disputes, controversies and claims arising out of or relating to this Agreement, or with respect to the interpretation of this Agreement . . . shall be settled and determined by arbitration in New York City, New York, pursuant to the then existing rules of the American Arbitration Association for commercial arbitration . . . . The arbitration award shall be final and binding upon the parties and judgment thereon may be entered in the courts of the State of New York and the United States federal courts in said State, and the parties hereby consent to the jurisdiction of such courts for such purposes.
Plaintiff and WSI executed a stipulation providing that on or prior to December 29, 1985, WSI would submit plaintiff's claims against WSI to binding arbitration and that, during the pendency of the arbitration proceeding, all of the plaintiff's claims against WSI in this action shall be stayed. Affidavit of James H. Neale, attorney for WSI, sworn to December 16, 1985. The arbitration was originally scheduled for May 20, 1986. Letter of Marshall H. Fishman, attorney for Hikers, dated June 27, 1986. By letter dated May 15, 1986, WSI's counsel requested the American Arbitration Association to adjourn the arbitration. The Arbitration Association granted WSI's request and has rescheduled the arbitration for September 16, 1986. Id.
Marshalls now moves to dismiss the Lanham Act, unfair competition, and state law trademark claims asserted by Hikers against it. Alternatively, Marshalls seeks to stay this action pending the arbitration between WSI and Hikers.
Marshalls is not a party to the arbitration between WSI and Hikers. Although a stay of this action vis-a-vis Marshalls cannot be sustained under 9 U.S.C. § 3 because of the non-identity of the parties in the two proceedings, Lawson Fabrics, Inc. v. Akzona, Inc., 355 F. Supp. 1146, 1151 (S.D.N.Y.), aff'd memo, 486 F.2d 1394 (2d Cir. 1973), "the power to stay proceedings is incidental to the power inherent in every court to control the disposition of the cases on its docket, with economy of time and effort for itself, for counsel, and for litigants." Landis v. North American Co., 299 U.S. 248, 254-55, 81 L. Ed. 153, 57 S. Ct. 163 (1936); accord Lawson Fabrics, 355 F. Supp. at 1151. Because plaintiff's claims against Marshalls and WSI involve common issues of fact and law, and because plaintiff's claims against Marshalls are based upon claimed rights which are to be determined in plaintiff's pending arbitration with WSI, the action should be stayed as to both WSI and Marshalls, Lawson Fabrics, 355 F. Supp. at 1151; see, e.g., Rhone Mediterranee Compagnia Francese v. Lauro, 555 F. Supp. 481, 486 (D.V.I. 1982), aff'd, 712 F.2d 50 (3d Cir. 1983); Dale Metals Corp. v. Kiwa Chemical Industry Co., 442 F. Supp. 78, 81-82 (S.D.N.Y. 1977).
Those claims against Marshalls which Marshalls seeks to have dismissed involve issues that will be addressed and presumably resolved in the arbitration proceeding between plaintiff and WSI. Plaintiff's claims against Marshalls are derivative of plaintiff's claims against WSI. At the heart of the claims against WSI are issues concerning the nature and extent of the rights, if any, that plaintiff acquired in the Trademark under its License Agreement with WSI, and whether such rights, if any, were violated by WSI's sales of trademarked items to Marshalls for resale to the general public. The decision of the arbitrators will be helpful in deciding the issues in this case. Thus, if the arbitrators find that plaintiff's rights were not violated by WSI in its sales to Marshalls, then plaintiff's rights were not violated by Marshalls with respect to the first five claims brought against it.
On the other hand, if the arbitrators find that WSI infringed plaintiff's rights in the trademark, then the issue regarding Marshalls would be greatly simplified. The issue would then become whether Marshalls had knowledge that Hikers possessed the exclusive rights to sell the products bearing the Trademark when Marshalls sold the products.
The basis of plaintiff's opposition to a stay of its claims against Marshalls is that those claims may involve two issues that "will not necessarily be addressed" in the arbitration between plaintiff and WSI. These issues are whether Marshalls purchased any "infringing goods" from sources other than WSI
, and whether the damages, if any, ...