Malicious counterfeiters often hide their identities, making it impossible to serve them through traditional means. How do you serve a defendant when you do not have an accurate name, address or telephone number? When faced with this scenario recently, my colleagues obtained an order allowing service of process by email.
The case Core Distribution, Inc. v. John Does 1-12 is pending in the District of Minnesota. Core manufactures a popular patented telescoping ladder called the Xtend+Climb®. The John Doe defendants are counterfeiters selling infringing products on Amazon. Core obtained contact information for the 12 defendants through a subpoena to Amazon in a prior lawsuit. Core then commenced the present lawsuit and attempted to serve process. Core took several steps in an effort to serve through traditional means, including emails, telephone calls and mail. Core was able to serve some defendants, but others provided false information to Amazon. One address was a UPS store. Other addresses did not exist.
Core moved for permission to serve by email and succeeded. A two-part test must be met to serve a foreign defendant by alternative means. First, service by alternative means must not contravene an international agreement. Second, service by alternative means must satisfy the Constitutional due process requirement that service be reasonably calculated to provide notice of the action.
Core met the test for foreign counterfeiters located in China. The first element was satisfied because service by email on defendants located in China is consistent with the Hague Convention. The Hague Convention does not apply “where the address of the person to be served with the document is not known.” The second element was met because service by email was reasonably calculated to provide notice of the lawsuit. The Court found that online sellers “presumably rely at least partially, if not entirely, on electronic communication through their email address and Amazon’s messaging system in order to conduct business.”
Email service is a powerful weapon in the fight against counterfeiters. As the Core case shows, counterfeiters hiding behind false identities can be forced to defend a lawsuit in the United States even when traditional methods of service are not available.
To see the Order in the Core case, click here.