5th Circuit Win Shifts the Needle on Preventing Foreign Intellectual Property Infringement
On February 14, 2022, the United States Court of Appeals for the Fifth Circuit issued an order in the case of Viahart v. He Gangpeng, ruling in favor of the Plaintiff-Appellee, Viahart—a copy of the decision can be found here.
This is a big win for Creedon PLLC, for this decision suggests a trend toward courts allowing United States-based plaintiffs to serve foreign defendants via email—this helps plaintiffs actually enforce their intellectual property against foreign defendants who peddle counterfeit merchandise via online platforms such as Amazon and eBay. As discussed in a December 10, 2021 Creedon PLLC post, attorney Charles Wallace argued issues such as joinder, efficiency of the courts, and abuse of the judicial process, but the core of Wallace’s argument focused on the balance between Federal Rule of Civil Procedure 4(f) and the Hague Service Convention. Specifically, the core of Wallace’s argument was that there is no hierarchy among the service options available to the courts under Federal Rule of Civil Procedure 4(f), that the Hague Service Convention is not a mandatory form of service, and that email service is both necessary and proper in cases such as these. The Fifth Circuit agreed.
Although the Fifth Circuit’s decision is non-precedential (it is technically not binding on the court for other cases), this decision can still be cited in future legal arguments, and it certainly demonstrates where the Fifth Circuit is trending on the growing issue of widespread foreign infringement of United States intellectual property. Importantly, beyond affirming the district court’s decision regarding a finding of infringement, monetary relief, and injunctive relief, the Fifth Circuit found the following:
a court can order alternative service via email under the Texas Rules of Civil Procedure without a showing that the plaintiff made multiple attempts at service—one unsuccessful attempt is sufficient;
all of the defendants were properly joined in the lawsuit under the facts of the case;
the Hague Service Convention does not prohibit email service for foreign defendants; and
plaintiffs are not required to serve foreign defendants under the Hague Service Convention at all—if the district court believes email service is sufficient, there is no need to first go through Hague procedures.
This decision clarifies the direction the Fifth Circuit is trending regarding service of foreign defendants—if a plaintiff gets the defendants’ email addresses from the e-commerce platforms and is able to show that the email addresses are effective means of noticing the defendants of the lawsuit, then email service can be proper, and no other approach is required before requesting such alternative means of service. This decision will surely assist plaintiffs in enforcing their valuable and hard-earned intellectual property rights against foreign infringers in the future, for email service is, in many cases, the only way to properly serve foreign defendants who adopt false online identities and use fake postal mail addresses to avoid service and delay enforcement proceedings.