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Bright Solutions for Dyslexia Inc. v. Lee

United States District Court, N.D. California

May 11, 2017

MARCUS LEE, et al., Defendants.


          JACQUELINE SCOTT CORLEY United States Magistrate Judge.

         Plaintiffs Bright Solutions for Dyslexia, Inc., (“Bright Solutions”) and Susan Barton (“Barton, ” and together, “Plaintiffs”), filed suit against Doe 1 a.k.a. “Marcus Lee, ” and a number of other individual Doe Defendants and Roe entities (collectively, “Defendants”), alleging trademark counterfeiting, trademark infringement, copyright infringement, and vicarious and contributory copyright infringement. (Dkt. No. 1.) Now pending before the Court is Plaintiffs' motion for service by email and publication. (Dkt. No. 49.) After carefully considering the papers submitted, the Court concludes that oral argument is unnecessary. For the reasons set forth below, the Court GRANTS Plaintiffs' Motion for Service by Email and Publication.


         Barton is the founder and chief executive officer of Bright Solutions, and also author and owner of the copyrighted Barton Reading & Spelling System (“Barton System”), a program and course materials for instructing dyslexic students in literacy. (Dkt. No. 14-2 ¶¶ 1, 3.) Barton owns registered copyrights for a number of course materials used in the Barton System. (Id. ¶ 8 & Ex. 1.) In addition, Bright Solutions owns two trademarks associated with the materials and Barton owns a third. (Id. ¶ 9 & Ex. 2.)

         Plaintiffs allege that in February 2015 Defendant Doe 1, using the eBay username “kingmarco14, ” listed for sale by eBay auction a set of Barton System materials, including text, software, and titles, which were counterfeit copies of Barton's copyrighted materials. (Dkt. No. 14-2 ¶¶ 10-13.) Barton discovered the counterfeit sale when the purchaser, Jacquelyn Lundberg, who had received the materials she purchased from “kingmarco14, ” called Barton to activate her software but was not listed in Plaintiffs' database of authorized sales, and confirmed the counterfeit nature of the products by their distinct binding and packaging. (Id. ¶¶ 10-11.) In conversations with Ms. Lundberg, Barton learned that the eBay seller “kingmarco14” identified himself as “Marcus Lee” and listed his shipping address in Newport, California and his email address “[.]” (Id. ¶ 13.)

         Later in 2015, Plaintiffs discovered five more listings of counterfeit Barton System materials by “kingmarco14” and three completed sales. (Id. ¶ 14; Dkt. No. 14-3 ¶¶ 3-4.) Barton spoke with two other “kingmarco14” customers after they purchased materials from him. (Dkt. No. 14-2 ¶ 14.) Plaintiffs sent “takedown” notices pursuant to the Digital Millennium Copyright Act (“DMCA”) to eBay regarding the counterfeit listings posted by “kingmarco14, ” and eBay confirmed removal. (Dkt. No. 14-3 ¶¶ 4-7 & Exs. 3- 7.)

         Plaintiffs have attempted to locate Defendants but have been unsuccessful. (Dkt. No. 14-2 ¶ 15.) Plaintiffs served subpoenas on several third parties, including eBay, Goggle Inc., and PayPal Inc. regarding the kingmarco14 eBay account. (Dkt. No. 49-2 ¶ 2.) Plaintiffs obtained Defendants' email addresses and third party accounts and traced the Google IP address to Irvine CA. (Id. ¶¶ 3-5.) Plaintiffs' counsel confirmed this Irvine location using various geolocators. (Id. ¶ 5.) Plaintiffs sent process servers to the Newport Beach and Garden Grove addresses associated with the eBay accounts and the Irvine and Santa Ana addresses that Plaintiffs' counsel obtained via geolocators research. (Id. ¶¶ 4-6, 10.) Plaintiffs also hired private investigators to communicate with and track down Marcus Lee. (Id. ¶¶ 7, 11.) Finally, Plaintiffs attempted to find Defendants using Lexis public records name searches and social media accounts, but were unsuccessful. (Id. ¶ 16.)

         Plaintiffs believe Defendants may have returned to China in July 2016. (Dkt. No. 49-5 ¶ 11.) Plaintiffs seek to serve Defendants by email, and request leave to serve Defendants by publication as the last resort.


         A. Service By Email On Foreign Defendants

         Service of a complaint in federal court is governed by Federal Rule of Civil Procedure (“Rule”) 4. Rule 4(f)(3) permits service on individuals in a foreign country as follows: “Unless federal law provides otherwise, an individual ... may be served at a place not within any judicial district of the United States: ... (3) by other means not prohibited by international agreement, as the court orders.” Fed.R.Civ.P. 4(f)(3). It is left “to the sound discretion of the district court the task of determining when the particularities and necessities of a given case require alternate service of process under Rule 4(f)(3).” Rio Properties, Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1016 (9th Cir. 2002). The Ninth Circuit has approved service on foreign defendants by email pursuant to Rule 4(f)(3) where the defendants were either unreachable by other means or had no known physical address. Id. at 1017. To satisfy constitutional norms of due process, the alternative method of service must be “reasonably calculated, under all the circumstances, to apprise the interested parties of the action and afford them an opportunity to present their objections.” Id. at 1016. Thus, to establish that service by email is appropriate, a plaintiff must show: (1) that service by email is “reasonably calculated to provide actual notice” to the defendant; and (2) an international agreement does not prohibit such service. Id. at 1014, 1016.

         1. Service by Email Is “Reasonably Calculated to Provide Actual Notice” to Foreign Defendants.

         Service by email is reasonably calculated to provide actual notice. First, Defendants are involved in commercial internet activities. Defendants registered eBay, PayPal, and Google internet domain names which Plaintiffs allege were used for commercial purposes. (Dkt. No. 49-2 ¶ 2-4.) See Facebook, Inc. v. Banana Ads, LLC, No. C 11 3619 YGR, 2012 WL 1038752, at *2 (N.D. Cal. 2012) (service of process by email proper where plaintiffs had valid email address for defendants and defendants were involved in commercial internet activities). Second, Defendants rely on electronic communications to operate their business. Defendants used the same Google email address to set up eBay and PayPal accounts, sold allegedly counterfeit products on the eBay platform, and received payments via PayPal. (Id. ¶ 2-4, 9, 11.) See D. Light Design, Inc. v. Boxin Solar Co., Ltd., No. C 13 5988 EMC, 2015 WL 526835, at *3 (N.D. Cal. February 6, 2015) (service of process by email proper where plaintiffs relied on electronic communications and payments to operate their businesses). Plaintiffs sent test messages to the Gmail address used to create both the eBay and PayPal accounts. (Id. ¶ 3, 18.) Plaintiffs did not receive any errors from the “marcuslee215” or “shurley757” addresses. (Id. ¶ 18.) See Goes Int'l, AB v. Dodus Ltd., No. 14 CV 5666 LB, 2015 WL 1743393, at *3 (N.D. Cal. April 16, 2015) (service of process by email proper where plaintiff sent test emails to address and did not receive notification they were not delivered). Finally, Plaintiffs demonstrated that attempts to serve Defendants at physical addresses proved unsuitable. (Dkt. No. 49-2 ¶ 6.) Based on the foregoing, service by email appears to be not only reasonably calculated to provide actual notice to Defendants but the method most likely to apprise Defendants of the action.

         2. International Agreement Does Not ...

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