Mattel, Inc. v. AnimeFun Store

Background

Mattel alleged that Animefun Store, Bingo 1993, Bingoes Hot Toy Factory, Miliy Store, and Q374428329—the defendants grouped together in the opinion as the “Wang Defendants”—used online marketplace accounts to sell alleged counterfeit UNO products to customers in the United States, including New York. Mattel’s complaint asserted trademark, counterfeiting, copyright, and related state and common-law claims. The Wang Defendants were described as China-based businesses.

Mattel served the defendants by email under an October 2018 temporary restraining order that authorized alternative service. The Wang Defendants answered the complaint, asserting lack of personal jurisdiction and improper service as defenses. They later participated in pretrial activity, including submitting a case-management plan, seeking discovery, attending a pretrial conference, requesting extensions, exchanging discovery, scheduling depositions, and engaging in settlement discussions. They filed the motion to dismiss approximately seven months after answering.

Personal Jurisdiction

The Wang Defendants moved under Federal Rule of Civil Procedure 12(b)(2), which permits a defendant to challenge the court’s personal jurisdiction, meaning the court’s authority over that defendant. Judge Preska held that the Wang Defendants forfeited this defense because they delayed in actively contesting jurisdiction while substantially participating in the litigation. The court emphasized that merely listing the defense in an answer did not preserve it indefinitely.

The court also stated that, even if the defense had not been forfeited, personal jurisdiction existed on the merits. It relied on allegations and supporting material indicating that the Wang Defendants offered alleged counterfeit goods for sale in New York and provided shipping to New York. The court said those activities were sufficient under New York’s long-arm statute.

Service of Process

The Wang Defendants also moved under Rule 12(b)(5), which permits a challenge to insufficient service of process. They argued that service by email violated the Hague Convention, New York law, the Federal Rules of Civil Procedure, and constitutional due process.

The court rejected those arguments. It held that Rule 4(f)(3) allows a federal court to order alternative service on defendants in another country when the method is not prohibited by an international agreement and is reasonably calculated to notify the defendants. The court concluded that email service was not prohibited by the Hague Convention or another international agreement. It also found that email was reasonably calculated to provide notice because the defendants conducted online business and communicated with customers by email.

The court further noted that registered receipts showed that the emails and attached documents were sent, delivered, and received by each Wang Defendant. After service, the defendants’ counsel identified the representation, participated in settlement discussions, and took part in discovery. The court therefore concluded that the email service gave the defendants notice of the lawsuit and an opportunity to object.

Disposition

The court denied the Wang Defendants’ motion to dismiss in its entirety. It directed the parties to confer and inform the court by letter how they wished to proceed. The opinion did not decide the underlying trademark, copyright, or counterfeit-product claims.