A federal court in Ft. Lauderdale, Florida has allowed Tiffany & Co. to use email to effect service of process on Chinese entities it is suing for allegedly selling knockoffs of its products online. So says Courthouse News in this article sent to me by a client for whom we are in the (overly long) process of trying to secure Hague Service of Process on a Chinese defendant in an IP infringement lawsuit.
In the Florida lawsuit, Tiffany sued “Gu Jianfang dba AAA909.com and over five dozen other websites for trademark infringement, false designation of origin, cybersquatting and common law unfair competition.” But when it tried to serve the defendants, “Tiffany allegedly obtained WHOIS registration data and found invalid addresses for the first 58 domain names. The remaining six defendants operate anonymously through the Internet and do not provide physical addresses for their online auction stores.” Tiffany explained to the court how it was unable to find physical addresses to which it could provide service of process but it had “reason to believe the infringers are residents of China or other foreign countries.”
According to the article, AAA and the other sites have responded to online inquiries and communicated via chat. Tiffany told the court that it “believes the defendants are operating solely through the Internet and that their email addresses are the most reliable way to communicate with them and provide a notice of action.”
The Court held that Tiffany had shown good cause to “allow service of summons, complaints and all subsequent filings via email to all defendants” and “via publication by posting a copy of the complaint and summonses on the Internet website appearing at the URL http://servingnotice.com/tiffpp5/index.html.”
In other words, Tiffany would not be required to go through the long drawn out process of having to serve these Chinese defendants with live physical service pursuant to the Hague Service Convention, which it sounds like would have been impossible in this case in any event.
Last week, co-blogger Steve Dickinson and I talked about various trends we are seeing that impact foreign companies doing business in China. One of the things Steve talked about was how though both Chinese intellectual property laws and court enforcement of those laws is improving, rampant copying by Chinese companies is still extremely difficult to copy. No matter how good the laws and no matter how good the enforcement, how do you stop 300 phantoms from selling your product online around the world? Companies like Tiffany’s try by securing US court judgments and then using those judgments to get websites to pull the offending items. This can also often be done simply by proving that you hold the trademark.
The legal term for this is whack-a-mole.