Opinion
1:23-cv-09238 (JLR)
10-24-2023
THE PINKFONG COMPANY, INC., Plaintiff, v. AVENSY STORE, et al., Defendants.
MEMORANDUM OPINION AND ORDER
FILED UNDER SEAL
JENNIFER L. ROCHON, UNITED STATES DISTRICT JUDGE.
On October 20, 2023, Plaintiff The Pinkfong Company, Inc. (“Plaintiff”) initiated this action, under seal, against thirty-three Defendants, alleging that Defendants are infringing Plaintiff's Baby Shark Marks and Baby Shark Works. See ECF No. 2. That same day, Plaintiff also requested, without notice of motion, that the Court grant Plaintiff's omnibus ex parte application for (1) a temporary restraining order, (2) an order restraining merchant storefronts and Defendants' assets with the financial institutions, (3) an order to show cause why a preliminary injunction should not issue, (4) an order authorizing bifurcated and alternative service, and (5) an order authorizing expedited discovery (the “Application”). See id. In its application, Plaintiff offers to promptly provide a supplemental submission on any issue should the Court request it. Br. at 2 n.2. As set forth below, the Court requests a supplemental submission regarding Plaintiff's request for alternative service.
Defendants are: Avensy store, BeGiol TTC, BOLMQHTS, chengmaichao, chenyaoyu糖果 a/k/a chenyaoyu candy, CTNUOBEE, dsfdsfhOO, FangRuJiuHenWangLuoKeJi, hahpee, Hefei Xuedao Trading Co., Ltd, HEZIWEI, HuiHongQi, jichangzhouxiansui, kuijidianzishangwuSHOP, liuzliuzhixiaoixiao, luyubeimeidianpu, Meow-meow-meow, PULI-US-US, Ronghang US, SHARK U.S. DZ-27, sharkalaka, summer story, TANGCHUN, TengYi Direct, XiaoShuWeiXiaoDian, YangPengFei123, yuanhsaoming, Zhangbaodebeimeidianpu, ZhangJinChengAnQingShouKong, Zhenka Shop, Zhouqigongsi, ZUZU BOOM, 盛煊木业有限公司 a/k/a Shengxuan Wood Industry Co., Ltd.
Among other documents, Plaintiff filed under seal its Complaint with accompanying exhibits A, B, C, and D, its memorandum of law in support of its motion for a temporary restraining order and other relief (“Br.”), a Declaration of Gabriela N. Nastasi and accompanying exhibits (“Nastasi Decl.”), a Declaration of Su Jeong Yang (“Yang Decl.”), and a proposed order.
DISCUSSION
Plaintiff requests permission to serve Defendants, whom Plaintiff believes are located in China, by email and online publication pursuant to Federal Rule of Civil Procedure (“Rule”) 4(f)(3). See Br. at 18-35. Rule 4(f) provides three methods of service on a defendant in a foreign country: “(1) by any internationally agreed means of service that is reasonably calculated to give notice, such as those authorized by the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents; (2) if there is no internationally agreed means, or if an international agreement allows but does not specify other means, by a method that is reasonably calculated to give notice . . . [;] or (3) by other means not prohibited by international agreement, as the court orders.” “The decision whether to allow alternative methods of serving process under Rule 4(f)(3) is committed to the sound discretion of the district court.” Vega v. Hastens Beds, Inc., 342 F.R.D. 61, 64 (S.D.N.Y. 2022) (citation omitted).
China is a signatory to the Hague Convention. See Smart Study Co. v. Acuteye-US, 620 F.Supp.3d 1382, 1389 (S.D.N.Y. 2022). Thus, to be permissible under Rule 4(f)(3), Plaintiff's proposed alternative service must not be prohibited by the Hague Convention. See id. Plaintiff principally asserts that its proposed alternative service is permissible because (1) Defendants' addresses are unknown and, therefore, the Hague Convention does not apply; and (2) even if the Hague Convention applies, it does not prohibit Plaintiff's proposed alternative service by email and online publication. See Br. at 18-35. The Court considers these arguments in turn.
“The Hague Convention does not apply ‘where the address of the person to be served with the document is not known.'” Smart Study Co., 620 F.Supp.3d at 1390 (quoting Advanced Access Content Sys. Licensing Adm'r, LLC v. Shen, No. 14-cv-01112 (VSB), 2018 WL 4757939, at *4 (S.D.N.Y. Sept. 30, 2018)). An address is not known if the plaintiff “exercised reasonable diligence in attempting to discover a physical address for service of process and was unsuccessful in doing so.” Advanced Access Content Sys. Licensing Adm'r, LLC, 2018 WL 4757939, at *4. “[P]laintiffs have been found to have exercised reasonable diligence to discover a physical address . . . where the plaintiff ‘researched defendant's websites associated with defendant's domain names, completed multiple Internet-based searche[s], called known phone numbers, and conducted in-person visits,' where the plaintiff performed ‘extensive investigation and issued subpoenas to the relevant domain registrars and email providers,' and where a plaintiff has ‘attempted to obtain the defendant's address in a variety of ways.'” Smart Study Co., 620 F.Supp.3d at 1391 (alterations adopted) (internal citations omitted). Thus, courts have “consistently held that multiple modes of attempted contact typically are required to satisfy the ‘reasonable diligence' standard.” Kyjen Co. v. Individuals, Corps., Ltd. Liab. Cos., P'ships, & Unincorporated Ass'ns Identified on Schedule A to Complaint, No. 23-cv-00612 (JHR), 2023 WL 2330429, at *3 (S.D.N.Y. Mar. 2, 2023); see, e.g., Kelly Toys Holdings, LLC v. Top Dep't Store, No. 22-cv-00558 (PAE), 2022 WL 3701216, at *6 (S.D.N.Y. Aug. 26, 2022) (finding reasonable diligence where the plaintiff dispatched investigator and local counsel to discover and confirm the defendants' physical addresses); Zuru (Sing.) Pte., Ltd. v. Individuals Identified on Schedule A Hereto, No. 22-cv-02483 (LGS), 2022 WL 14872617, at *2 (S.D.N.Y. Oct. 26, 2022) (same where the plaintiffs and local counsel conducted “further online research, sent mail to the addresses, and conducted in-person visits” to determine the accuracy of the defendants' physical addresses).
Here, Plaintiff states that its local counsel in China compiled a list of addresses attributed to Defendants from their online storefronts, searched for information about those addresses on three Chinese search engines, and called a free public service hotline to retrieve phone numbers connected with those addresses. See Br. at 21-22; Natasi Decl. ¶¶ 26-31. From this inquiry, Plaintiff concludes that it was “able to confirm with certainty” that twenty-seven Defendants “do not display true and correct and/or testable physical addresses.” Natasi Decl. ¶ 34; Br. at 22. Plaintiff seeks permission to serve all thirty-three Defendants by alternative means.
The Court requests a supplemental submission before it determines whether, in fact, Defendants' addresses are “not known.” Smart Study Co., 620 F.Supp.3d at 1390 (quoting Advanced Access Content Sys. Licensing Adm'r, LLC, 2018 WL 4757939, at *4). With respect to six Defendants, Plaintiff acknowledges that it possesses complete address and phone information and successfully delivered test documents to their addresses. Br. at 22-23. Plaintiff states that it has complete address and phone information for three other Defendants, for whom test mailings were not successful, although Plaintiff does not state whether it contacted these Defendants by phone or attempted to confirm their addresses in-person or by other means. Id. With respect to the remaining Defendants, Plaintiff summarily asserts that fifteen Defendants“display false addresses,” seven Defendants have addresses that “appear to be accurate” but lack some unspecified information, and two Defendants have addresses for which other companies are registered. Br. at 22 n.17; Natasi Decl. ¶ 34. However, Plaintiff's initial papers do not sufficiently connect these conclusions to evidence specific to each Defendant so as to show reasonable diligence with respect to each Defendant. For example, Plaintiff does not show what information it lacks as to specific Defendants, on what basis it concluded that information is “false” as to specific Defendants, and why it could not reasonably undertake further efforts to discover Defendants' addresses. Without a more fulsome supplemental submission, the Court cannot determine at this time that Defendants' addresses are “not known.” Smart Study Co., 620 F.Supp.3d at 1390 (quoting Advanced Access Content Sys. Licensing Adm'r, LLC, 2018 WL 4757939, at *4).
These Defendants are: Avensy store, BOLMQHTS, CTNUOBEE, TengYi Direct, 盛煊木业有限公司 a/k/a Shengxuan Wood Industry Co., Ltd, and Zhouqigongsi. Br. at 22 n.19.
These Defendants are: HuiHongQi, SHARK U.S. DZ-27 and ZhangJinChengAnQingShouKong. Br. at 22-23.
These Defendants are: chengmaichao, chenyaoyu糖果 a/k/a chenyaoyu candy, dsfdsfhOO, FangRuJiuHenWangLuoKeJi, Hefei Xuedao Trading Co., Ltd, kuijidianzishangwuSHOP, luyubeimeidianpu, PULI-US-US, Ronghang US, summer story, TANGCHUN, XiaoShuWeiXiaoDian, YangPengFei123, Zhangbaodebeimeidianpu and ZUZU BOOM. Br. at 22 n.15.
These Defendants are: BeGiol TTC, hahpee, HEZIWEI, liuzliuzhixiaoixiao, sharkalaka, yuanhsaoming and Zhenka Shop. Br. at 22 n.17.
These Defendants are: jichangzhouxiansui and Meow-meow-meow. Br. at 22 n.16.
The Court has considered Plaintiff's arguments, made in the alternative, that even if Defendants' addresses are known, the Hague Convention does not prohibit service by email and online publication. Some courts have allowed alternate service through email on Defendants in China because, even though China has specifically objected to service by “postal channels,” it has not expressly objected to service by email. See Smart Study Co., 620 F.Supp.3d at 1395-96 (collecting cases). But Judge Woods concluded in Smart Study Co. that China's objection under the Hague Convention to service by “postal channels” is sufficiently analogous to email to be controlling. Id. at 1394-97. The Court is persuaded by the in-depth analysis in Smart Study Co. that, in light of its objections, China “prohibits service by email on defendants located in China,” and exigent circumstances - such as the need for urgent relief - do not create an exception to this rule that is available here. Id. at 1397. Service by email and online publication is therefore “prohibited by international agreement [and] is impermissible under Rule 4(f)(3).” Id. at 1392.
As a result, Plaintiff's request for alternative service turns on whether Plaintiff has undertaken reasonable diligence to discover the physical address for each Defendant under the Hague Convention. For that issue, the Court needs a supplemental submission.
CONCLUSION
For the foregoing reasons, the Court will hold Plaintiff's Application under advisement.
Plaintiff shall, promptly but no later than October 31, 2023, file a supplemental submission on the issue of whether the address of each Defendant to be served is not known and whether Plaintiff has undertaken reasonable diligence to discover the address of each Defendant.
SO ORDERED.