Cawthon v. Zhousunyijie

Background

Scott Cawthon sued Zhousunyijie for allegedly selling through Amazon toys that copied, embodied, or constituted derivative works of characters from Cawthon’s Five Nights at Freddy’s video games and novels. The complaint sought injunctive relief, actual or statutory damages, destruction of allegedly infringing articles, and attorneys’ fees and costs.

Zhousunyijie submitted a counter-notification to Amazon under Section 512(g) of the Digital Millennium Copyright Act. The counter-notification identified Zhousunyijie’s name, email address, mailing address, and telephone number; consented to the jurisdiction of any federal district court where Amazon could be found; and stated that Zhousunyijie would accept service of process from Cawthon or Cawthon’s agent.

Cawthon sent the complaint and other documents to the email address in the counter-notification. He then moved for an order allowing alternative service by email under Federal Rule of Civil Procedure 4(f)(3), which permits court-ordered service on a person in a foreign country through methods not prohibited by an international agreement. The court had previously denied a similar motion without prejudice and allowed renewal if Cawthon could show that the Hague Convention did not apply.

Court’s Analysis

The court held that the DMCA counter-notification did not waive the Hague Convention’s service procedures. China and the United States are parties to that Convention, and the court had previously concluded that China’s objection to service by postal mail barred email service under the Convention in this context.

The court focused on the statutory phrase “accept service of process.” It explained that “service of process” is a legal term referring to the formal delivery of documents in a way that legally notifies a defendant of a lawsuit. The court distinguished “accept” from “waive”: a waiver would involve giving up the right to formal service, while acceptance meant that Zhousunyijie would receive properly completed service of process.

Reading the DMCA as a whole, the court concluded that the counter-notification requirement was intended to let a copyright claimant pursue a United States court order concerning allegedly infringing material and to prevent the subscriber from disputing its identity or the court’s authority after proper service. It was not an all-purpose waiver of formal service or consent to service by email.

The court also rejected the argument that allegedly false information in the counter-notification justified email service. It stated that false information, without more, did not affect the Hague Convention’s applicability. If the listed address proved fictitious and Cawthon could not locate a physical address through reasonable diligence, the Convention might not apply. But Cawthon had not shown that he attempted service through China’s designated authority or that such service would be futile rather than merely slower.

Disposition

Judge Lewis J. Liman again denied Cawthon’s motion for alternative service. The order addressed the method of serving Zhousunyijie and did not decide whether Zhousunyijie infringed Cawthon’s copyrights or whether Cawthon was entitled to the requested relief.