Astral IP Enterprise Ltd. v. HorizonMatrix

Background

Astral IP Enterprise Ltd. brought claims against HorizonMatrix for copyright infringement and violation of California’s unfair competition law. Astral alleged that HorizonMatrix took copyrighted fitness images from Astral’s mobile application on the Google Play store and used them in competing mobile applications.

The motion addressed only how Astral could serve the lawsuit, not whether the alleged infringement occurred. Astral had submitted a takedown notice under the Digital Millennium Copyright Act, and HorizonMatrix responded with a counter-notice that included a name, physical address, and e-mail address. The information indicated that HorizonMatrix was a mobile application developer based in Tokyo, Japan.

Astral tried to serve HorizonMatrix at the supplied name and physical address through Japan’s Central Authority under the Hague Convention on service abroad. Japan’s Central Authority returned the documents, and the attempt failed.

Legal standard

Federal Rule of Civil Procedure 4(f)(3) permits a court to direct service on an individual outside the United States by a method not prohibited by an international agreement. The court explained that the method must also satisfy due process, meaning it must be reasonably calculated under the circumstances to notify interested parties about the lawsuit and give them an opportunity to respond. The court also stated that a plaintiff does not have to try every traditional method of service before requesting alternative service.

Court’s reasoning

The court found that alternative service was warranted because Astral had made substantial efforts to serve HorizonMatrix through the Hague Convention, but that effort had failed. The failure suggested that the name and physical address in HorizonMatrix’s counter-notice were inaccurate or outdated, leaving the e-mail address as Astral’s only other known contact.

The court was not aware of an international agreement barring e-mail service on a defendant in Japan. It also reasoned that HorizonMatrix was required to provide an active e-mail address in its counter-notice and, as an online mobile application developer, likely relied on electronic communications. The court concluded that e-mail was the method most likely under the circumstances to notify HorizonMatrix of the lawsuit and therefore satisfied due process.

Ruling

The court granted Astral’s motion for electronic service of process by e-mail. It directed Astral to serve HorizonMatrix at the e-mail address provided in HorizonMatrix’s counter-notice and ordered Astral to submit a report on the status of the service attempt no later than 21 days after sending the service e-mail. The opinion does not decide Astral’s copyright or unfair-competition claims.