An increasing problem for copyright and trademark owners are infringers in foreign countries who use Amazon and other services to sell infringing products online in the United States. Although a complaint under the service’s intellectual property policy may cause the service to temporarily suspend the offending account, Amazon will not typically terminate an account until after the conclusion of a civil action for the infringement. This requires service of process on a foreign defendant. In some jurisdictions, you may be able to serve them via email or social media websites
A growing number of federal courts have held that a plaintiff can serve a foreign defendant via email or social networking websites upon making the requisite showing. See Rio Properties, Inc. v. Rio International Interlink, 284 F.3d 1007 (9th Cir. 2002); FTC v. PCCare247 Inc., 2013 U.S. Dist. LEXIS 31969 (S.D.N.Y., Mar. 7, 2013). There are some districts and circuits that do not permit electronic service, so it is worth checking prior to bringing a civil action in a particular jurisdiction to see if this is available as it can be an extremely useful tool to serve an otherwise hard to reach infringer.
In considering a motion to serve a foreign defendant electronically pursuant to FRCP 4(f)(3), district courts will typically consider:
1) whether electronic service is prohibited by international agreement, and
2) whether the method of service satisfies due process.
The Hague Service Convention and the Inter-American Convention on Letters Rogatory are the principal international agreements the United States has signed regarding service of process. These should be reviewed to determine if the infringer’s country has signed on, and which provisions in the agreements have been accepted. There is a split among courts as to whether countries that object to service under Article 10 of the Hague Convention (service through postal channels and judicial officers) have effectively blocked electronic service. Some courts have determined that a country that has objected to Article 10 can be served via email, while others have determined they cannot.
In considering due process requirements for international service by email or social networking sites, courts look to whether the means of service is reasonably calculated, under the circumstances, to provide the defendant notice of the suit. In order to convince a court that a defendant will likely receive notice, it is critical to demonstrate the defendant’s use of an email account or social networking website prior to suit. The best way to show use is prior communications by the defendant through email or social networking website use.
In a dispute involving Amazon or similar service, an infringer will have had to provide a name, address (which are often fictitious) and working email from which they sent a Counter Notice opposing an IP Complaint. You can use the infringer’s communications with Amazon to establish use, or any direct communications you may have received from the infringer to establish that they will likely receive notice if permitted to serve by email.
If you are attempting to serve via a social networking site, you must similarly demonstrate that the defendant actively uses their account and thus will likely get the notice in a timely fashion. Simply maintaining a LinkedIn or Facebook account will not satisfy this requirement, you must also show that the infringer actively uses the service.