Moonbug Entertainment Limited v. Autumn Sell

Background

Moonbug Entertainment Limited and Treasure Studio Inc. sued merchants accused of selling counterfeit products featuring marks related to CoComelon, a YouTube program. The complaint asserted claims under the Lanham Act, the Copyright Act, and New York law. Because little information was publicly available about the merchants, the plaintiffs relied on information associated with their Amazon accounts and storefronts.

The court had previously allowed alternative service by email and ordered discovery from Amazon and the defendants to obtain identifying and contact information. The plaintiffs served the defendants by email using addresses provided by Amazon. Email delivery receipts showed that the messages were delivered, and the moving defendants later provided expedited discovery, including email addresses, physical addresses, and sales information.

Dawei and Wellchoy appeared and moved to dismiss the claims against them. The court referred to them as “Dawei” and “Wellchoy” because that is how their motion identified them. Their motion argued that email service was not allowed under Chinese law or the Hague Convention, that the summons used the names of Amazon storefronts rather than the defendants’ correct legal names, and that the court lacked personal jurisdiction because the defendants were based in China and had no offices in the United States.

Service of process

The court treated the service challenge as a motion under Federal Rule of Civil Procedure 12(b)(5), which concerns insufficient service of process. Because the defendants’ addresses were not reliably known, the court considered whether the plaintiffs had exercised reasonable diligence in trying to find accurate physical addresses. The court found that they had done so by seeking address information from Amazon, investigating the addresses displayed on the storefronts, using counsel’s Beijing office to investigate those addresses, and comparing the information with addresses later produced by the moving defendants.

The court concluded that the Hague Convention did not apply when the address of the person to be served was not known after reasonable efforts to locate it. The court had already authorized alternative service by email under Rule 4(f)(3). It found that the email addresses used for service matched the addresses identified in the defendants’ own discovery and that email service was reasonably calculated to provide notice. The court therefore rejected the challenge to service.

Names on the summons

The defendants also argued that the summons was defective because it named “Dawei Party” and “Wellchoy,” the names appearing on the Amazon storefronts, rather than the correct legal entities. The court treated this as a challenge under Rule 12(b)(4), which concerns insufficient process, and alternatively as a service challenge under Rule 12(b)(5).

The court explained that an incorrect name on a summons is not jurisdictionally defective when the defendant received actual notice, was not prejudiced, and the plaintiff had a justifiable reason for using the name. The moving defendants did not deny responsibility for the storefronts or identify what names should have been used. Their own production did not identify the legal entity associated with the account, and the “Dawei Party” storefront had later changed its name. Because the defendants had actual notice and the plaintiffs had no reliable way to identify the proper entity, the court rejected this argument.

Personal jurisdiction

The court held that it could exercise specific personal jurisdiction, meaning authority over claims connected to the defendants’ forum-related conduct, even if it did not have general jurisdiction over them. Because the claims arose under federal statutes without their own jurisdiction provisions, the court applied New York’s long-arm statute and then considered federal due-process requirements.

Under New York Civil Practice Law and Rules § 302(a)(1), specific jurisdiction may exist when a defendant transacts business in New York and the claim has a substantial relationship to that business. The defendants’ discovery showed that Dawei had sold 170 products to New York consumers and that Wellchoy had sold 255 products to New York consumers. The plaintiffs also made a test purchase of an allegedly counterfeit product through Dawei’s storefront for delivery to their attorneys’ New York office. The court found these sales sufficient under the New York long-arm statute and directly related to the trademark and copyright claims.

The court also found that exercising jurisdiction satisfied due process. The defendants purposefully sold goods to New York consumers through Amazon, creating sufficient contacts with the state. The defendants did not present a compelling reason why exercising jurisdiction would be unreasonable. The court therefore denied the motion to dismiss for lack of personal jurisdiction.

Disposition

The court denied the moving defendants’ motion in its entirety and directed the clerk to close the pending motion. The order resolved threshold issues concerning service, the summons, and personal jurisdiction; it did not decide the underlying trademark or copyright claims.