Safavieh Intl LLC v. Chengdu Junsen Fengrui Technology Co, Ltd.-Tao Shen

Background

Safavieh Intl, LLC said it was a New York designer rug company with copyright registrations for several rug designs. It alleged that Chengdu Junsen Fengrui Technology Co, Ltd.-Tao Shen, described in the opinion as a Chinese rug dealer, sold rugs on Amazon under the “Wonnitar” brand that looked substantially similar to some of Safavieh’s designs. Safavieh sued for copyright infringement and requested an injunction and damages.

Before filing suit, Safavieh sent Amazon a notice under the Digital Millennium Copyright Act seeking removal of allegedly infringing listings. Chengdu then submitted a counter-notice stating that it was located outside the United States, consented to jurisdiction in any judicial district where Amazon could be found, and agreed to accept service of process from Safavieh or Safavieh’s agent. Safavieh later asked the court to authorize service of the complaint by email.

The Service Request

Safavieh relied on several arguments. It argued that service in China under the Hague Service Convention would be extremely difficult and time-consuming, that Chengdu had consented to service by email, and that Federal Rule of Civil Procedure 4(f)(3) allowed the court to authorize another method of serving a defendant in a foreign country.

The court rejected those arguments at this stage. First, it explained that Rule 4(e), which Safavieh invoked, concerns service on an individual within a United States judicial district. Chengdu was a corporation, so Rule 4(h) applied, and service on the foreign corporation had to comply with Rule 4(f). The opinion also noted that New York’s provision for serving individuals was not the applicable state-law provision for serving a corporation.

Second, the court interpreted Chengdu’s counter-notice as consent to accept service from Safavieh, not consent to receive service through a particular method such as email.

Hague Service Convention

The Hague Service Convention governs service in this case because both China and the United States are parties to it and Chengdu’s physical address in China was known. The court stated that compliance with the Convention is mandatory when it applies. It further concluded that a defendant could not consent to a service method that bypassed the Convention’s requirements.

The court followed the reasoning of a recent Southern District of New York decision holding that email service on defendants in China was not permitted under the Convention. That reasoning treated the Convention’s specified service methods as exclusive and concluded that China’s objection to service by postal channels also prevented email service. The court acknowledged that some earlier decisions had reached a different conclusion, but it found the more recent approach correct in light of Supreme Court precedent and the purpose of providing clear and certain methods for serving foreign litigants.

Reasonable Diligence and Possible Renewal

The court explained that alternative service might be considered if a plaintiff had been unable, despite diligent efforts, to serve a defendant under the Convention. It also stated that a defendant’s address may be treated as “not known” if the plaintiff exercised reasonable diligence to find a physical service address but failed.

Safavieh had not shown that it investigated whether the address Chengdu provided in its counter-notice was suitable for service. The record did not show that Safavieh had taken even basic steps such as calling the listed telephone number or otherwise confirming the address.

Ruling

The court denied Safavieh’s motion for alternative service without prejudice. It directed Safavieh to begin attempting service through the Hague Convention. The court stated that Safavieh could renew its request to serve by email if, after making the necessary effort, it could show that reasonable diligence had failed to uncover a legitimate physical address in China for Chengdu. The clerk was directed to terminate the motion at Docket Number 10.