Discord, Inc. v. Discord Sound
- Haywood Gilliam
- 4:19-cv-05824
- U.S. District Court · Northern District of California
- 5
In Discord, Inc. v. Discord Sound, Judge Gilliam allowed service by email and Facebook after traditional service proved unsuccessful.
Discord, Inc. and defendants Discord Sound and Chun Hin Chan; the order determines how Discord, Inc. may serve the lawsuit’s papers on the defendants.
What happened
In Discord, Inc. v. Discord Sound, Discord, Inc. sued over alleged trademark infringement involving the website discordsound.com, which sells wireless earbuds. The company could not find a physical address for Discord Sound or Chun Hin Chan, although the defendants communicated by email and Facebook and appeared aware of the lawsuit.
The court found that serving the summons and complaint through two email addresses and Discord Sound’s Facebook account was reasonably likely to give the defendants actual notice. The court also found that Discord, Inc. had diligently tried to locate the defendants and that there was good cause to extend the service deadline.
Judge Haywood Gilliam granted the motion for alternative service. He ordered Discord, Inc. to serve the defendants within 10 days by email and through Discord Sound’s Facebook account, then file proof of service or seek more time by February 14, 2020.
The detailed version
- Discord, Inc. v. Discord Sound · No. 4:19-cv-05824
- Haywood Gilliam
- Feb. 4, 2020
Background
Discord, Inc. filed a trademark action alleging that Discord Sound and Chun Hin Chan infringed Discord, Inc.’s Discord mark through the website discordsound.com, which sells wireless earbuds. Discord, Inc. identified examples of customers asking whether it made the earbuds.
Before filing the action, Discord, Inc. hired a private investigator to find a physical address for the defendants. The investigator could not find a specific address. He obtained the email addresses marketing@discordsound.com and chan@discordsound.com, but further searches did not reveal additional identifying information. Discord, Inc.’s counsel exchanged emails with the defendants before and after the complaint was filed, and counsel discussed the action by phone with Chan and a Discord Sound representative. The defendants refused to accept service through traditional methods. The opinion states that the defendants appeared to know about the lawsuit and had legal counsel.
Legal standard
Federal Rule of Civil Procedure 4 governs service of a summons and complaint. California law allows a court to authorize another method when it is reasonably calculated to give the person being served actual notice. The court explained that electronic service has limitations, including the difficulty of confirming receipt, but that district courts may weigh those limitations against the benefits in each case.
Court’s reasoning
The court found that Discord, Inc. had conducted a diligent and reasonable investigation to locate a physical address, making electronic service a last resort. It also found that service by email and through Discord Sound’s Facebook account was reasonably calculated to provide actual notice because the defendants conducted internet-based commercial activities, appeared to use email to communicate with customers, and had repeatedly responded to messages about the lawsuit through email and Facebook.
The court further found good cause to extend the deadline for service. It cited Discord, Inc.’s diligence, the absence of prejudice to defendants who appeared to have actual notice, and the court’s authority to extend the time for service.
Disposition
Judge Haywood S. Gilliam, Jr. granted Discord, Inc.’s motion for alternative service. The court ordered Discord, Inc. to serve the defendants within 10 days with the summons, complaint, and order at marketing@discordsound.com and chan@discordsound.com and through a message to Discord Sound’s Facebook account. Discord, Inc. was ordered to file proof of service by February 14, 2020, including the date, time, and manner of service, or to file a motion for an extension of time.
Read the full 5-page opinion on CourtListener, the free public archive maintained by the Free Law Project.