ZURU Inc. v. Individuals
ZURU Inc. v. The Individuals, Partnerships, and Unincorporated Associations Identified on Schedule "A"
- Edgardo Ramos
- 1:23-cv-01852
- U.S. District Court · Southern District of New York
- 6
In ZURU Inc. v. the Individuals, Judge Ramos granted ZURU’s request to serve foreign defendants by email and website posting.
ZURU Inc. and the individuals, partnerships, and unincorporated associations identified on Schedule “A,” particularly the foreign defendants whom ZURU seeks to serve in the trademark case.
What happened
In ZURU Inc. v. The Individuals, Partnerships and Unincorporated Associations Identified on Schedule “A,” ZURU alleged that defendants sold or advertised goods on Amazon, Walmart, and Etsy bearing counterfeit or infringing versions of ZURU’s trademarks. ZURU asked to notify the defendants by email and by posting documents on a website.
The court found that these methods were allowed under the federal service rules and were not prohibited by an international agreement. It also found that email and website posting were reasonably likely to notify the defendants because they operated online businesses, had known electronic contact information, and could receive the website address through their seller accounts and contact forms.
Judge Edgardo Ramos granted the motion. ZURU may serve each defendant with the summons, complaint, and other filings and discovery by sending the designated website’s address through the defendant’s available email accounts or seller-store contact forms and by posting copies of the documents at www.sriplaw.com/notice.
The detailed version
- ZURU Inc. v. Individuals · No. 1:23-cv-01852
- Edgardo Ramos
- Mar. 9, 2023
Background
ZURU Inc. brought a federal trademark counterfeiting and infringement case. ZURU alleged that defendants, through individual seller stores on Amazon.com, Walmart.com, and Etsy.com, advertised, promoted, offered for sale, or sold goods bearing or using marks that ZURU had determined were counterfeits, infringements, reproductions, or colorable imitations of ZURU’s registered trademarks.
ZURU filed an ex parte motion for permission to use alternative service of process under Federal Rule of Civil Procedure 4(f)(3). The motion sought permission to serve defendants by email and website posting. The opinion states that the defendants reside in or operate from China or other foreign countries and conduct Internet-based businesses using electronic means of communication.
Legal Standard
Rule 4(f)(3) permits a federal district court to order an alternative method for serving foreign defendants when the method is not prohibited by an international agreement and is reasonably calculated to give notice. A foreign business entity may be served through a method permitted under Rule 4(f), and a foreign partnership or other unincorporated association may likewise be served under Rule 4(f)(3).
Due process requires a method of service reasonably calculated, under the circumstances, to inform interested parties about the case and give them an opportunity to object. A party seeking alternative service does not first have to attempt service through diplomatic channels or other methods listed in Rule 4(f)(1) and Rule 4(f)(2). The decision whether to authorize alternative service is within the district court’s discretion.
Court’s Analysis
The court found that email and Internet publication were not prohibited by the Hague Service Convention, an international agreement governing service of legal documents abroad. Although China objected to certain methods listed in the Convention, including service through postal channels, the court stated that China had not expressly objected to service by email or Internet publication.
The court also found that the proposed methods satisfied due process. Defendants had at least one known and valid form of electronic contact, and ZURU had created a website specifically to provide notice of the action. ZURU would provide the website address through defendants’ known email accounts and through contact forms embedded in their Amazon, Walmart, and Etsy seller stores. Because defendants operated online businesses and relied on electronic communications, the court found email likely to reach them.
Disposition
Judge Edgardo Ramos granted ZURU’s motion. ZURU was permitted to serve each defendant with the summons, complaint, and all other filings and discovery by providing the address of ZURU’s designated website through the email accounts associated with each defendant’s seller store, including customer-service email addresses, onsite contact forms, or Amazon email, and by publicly posting copies of the summons, complaint, and all filings at www.sriplaw.com/notice. The opinion addresses the method of service and does not decide the alleged trademark-counterfeiting or infringement claims.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.