Service by Email — Not Prohibited by International Agreement
Photo by Subhash Nusetti
Foreign infringement and counterfeiting. We’ve all seen it. We know it’s out there. And we know it’s a growing problem. Many brand owners may simply dismiss cheap foreign knockoffs and try to compete on quality alone—after all, they may hope that a consumer will identify that a $10 product offered by a brand is not the same as that identical product offered by a strangely-named or clearly foreign online seller for $2 or $3. Rather than relying on that hope, there is another, more assertive way, to address this issue — bring it to court.
The Basics of Service
When filing a federal infringement lawsuit in the United States, the plaintiff must ensure the defendant is given fair notice of the suit and an opportunity to be heard in accordance with the Due Process Clause, which often includes service of the complaint and the summons on the defendant pursuant to the Federal Rules of Civil Procedure and/or laws of the forum state. This may require in-person service on the individual or business, but there are additional means of reaching evasive defendants and defendants residing in foreign jurisdictions. Federal Rule of Civil Procedure 4(f) provides the means by which a plaintiff must serve foreign defendants, which generally includes by (1) “any internationally agreed means of service that is reasonably calculated to give notice” (like those authorized by the Hague Service Convention); (2) as prescribed by the foreign country’s law or as directed by the foreign authority; or (3) by alternative means “not prohibited by international agreement,” as the court orders in its discretion. Each of these methods have been found by courts to be co-equal, with no method being a prerequisite to another method.
Service Under the Hague Service Convention
The Hague Service Convention is an international treaty entered into as of 1965, and its intended purpose was to give the signatory member countries a means by which litigants can reliably and efficiently serve process on parties living, operating, or based in another country—usually through the receiving country’s “central authority” established to accept and distribute incoming requests for service. Article 10 of the Hague Service Convention further preserves the ability of parties to effect service through, specifically, postal channels and judicial officers, as long as the recipient-nation has not objected to these means of service. Thus, if a recipient-nation expressly rejects service through the means enumerated in Article 10, then plaintiffs will be unable to serve defendants in that country through postal channels or through judicial officers. Some signatory members of the Hague Service Convention include the United States, China, Japan, Germany, Russia, and Ukraine.
The stage is now set—this is where it gets interesting. Because so much widespread infringement of United States citizens’ intellectual property occurs in foreign jurisdictions, plaintiffs are left with the burden of deciding whether or not it would be economically or practically viable to bring a lawsuit against such malfeasance. After all, serving defendants in foreign jurisdictions through the recipient-nation’s central authority is often very expensive, can hold lawsuits dormant at the service of process stage for many months (sometimes years), and can still result in the central authority either not being able to find the defendant, or refusing to serve the defendant altogether. This is a problem. Some courts are hesitant to exercise their authority under Rule 4(f)(3) to allow plaintiffs to serve foreign defendants by alternative means, however, as they believe the service mechanisms of the Hague Service Convention must be adhered to when the defendant resides, operates, or is based in a signatory member country.
An Alternative to Hague Service
A large percentage of foreign infringement occurs when a defendant sells counterfeit items on online storefronts via e-commerce sites like Amazon, eBay, Alibaba, and Wish, often using pseudonyms and fake physical addresses to avoid service by traditional means. However, these defendants must first provide the hosting e-commerce site with a valid email address, which is verified by the e-commerce site, and which is used to sign in, operate the store, communicate with customers, and send and receive money. When sued in the United States, these defendants can often easily transfer all illegally-obtained funds, close up shop, and disappear from existence—leaving plaintiffs without a means of recovery. When these defendants operate from a signatory member country of the Hague Convention, are plaintiffs supposed to simply decide whether they will try and serve the defendants at great expense and risk of fruitless recovery, or whether they will simply ignore that their rights are being intentionally violated?
There is a better way. As stated above, foreign counterfeiting defendants often must have a valid, operational email address to sign in, operate the infringing webstore, communicate with customers, send and receive money, and even commit the infringing acts in the first place. Thus, even though these sorts of defendants often have no physical address to speak of and operate their infringing storefronts under false or fictitious names, plaintiffs are still able to reach defendants via these email addresses. If the whole point of service is to apprise defendants that they are being sued and to afford them their day in court in accordance with the Due Process Clause, service via these means is the best—and in most circumstances the only—way to reach these individuals. Plaintiffs can therefore petition a district court’s discretion under Rule 4(f)(3) to try and effectuate alternative means of service on foreign defendants, as long as such alternative means are not “prohibited by international agreement.”
The core question then becomes: is email service prohibited by international agreement? No — and here’s why: the Hague Service Convention does not explicitly speak to, or prohibit, service via email. Although Article 10 of the Hague Service Convention preserves the ability of parties to effect service through, specifically, postal channels and judicial officers, no further means of service are enumerated. Thus, even if a signatory member country does object to Article 10, that country will only be objecting to service on its citizens via, specifically, postal channels and judicial officers. Even though the drafters of the Hague Service Convention could have written Article 10 to include, for example, “any means by which a plaintiff seeks to effect service on an individual citizen of the signatory member country, whether in-person or through other delivery or transmission,” the drafters instead narrowly drafted the language to include only service via postal channels and via judicial officers. In short, an objection to Article 10 is not an objection to service via email. Service via email is therefore not prohibited by international agreement, so district courts have full discretion to order alternative service by these means under Rule 4(f)(3). Again, Rule 4(f)(3) is co-equal with Rules 4(f)(1) and (2), so an attempt to serve a foreign defendant in compliance with Hague Service Convention procedures is not required before petitioning a district court to exercise its discretion under Rule 4(f)(3).
Conclusion
It must be stressed that the above is still a developing area of the law, as courts are somewhat resistant to issuing rulings that may be remanded on appeal if a defendant does eventually show up and try to argue that the district court’s ruling was in contravention of an international treaty. (One that I recently argued before the 5th Circuit in Viahart v. Gangpeng.) By the plain language of the Federal Rules of Civil Procedure and the Hague Service Convention, however, email service is not prohibited. Not only does this assist plaintiffs in expeditiously and meaningfully enforcing their rights against foreign infringers, but it will in turn properly notice these infringers that they are being sued and will give them their day in court. As the Ninth Circuit aptly observed in Rio Properties, Inc. v. Rio Int'l Interlink: “To be sure, the Constitution does not require any particular means of service of process, only that the method selected be reasonably calculated to provide notice and an opportunity to respond . . . [i]n proper circumstances, this broad constitutional principle unshackles the federal courts from anachronistic methods of service and permits them entry into the technological renaissance.” Rio Properties, Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1017 (9th Cir. 2002). Hark, plaintiffs, and rejoice—take heed of the benefits bestowed by the technological renaissance, and revel in the fact that you can meaningfully enforce your rights against foreign infringers.
For more information on this article and this topic, contact Charles Wallace.