United States District Court, N.D. California
ORDER GRANTING PLAINTIFFS' MOTION FOR SERVICE BY
EMAIL AND PUBLICATION RE: DKT. NO. 49
JACQUELINE SCOTT CORLEY United States Magistrate Judge.
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.
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.)
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
“email@example.com[.]” (Id. ¶
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.
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.)
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.
Service By Email On Foreign Defendants
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
Service by Email Is “Reasonably Calculated to Provide
Actual Notice” to Foreign Defendants.
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.
International Agreement Does Not ...