United States District Court, E.D. Pennsylvania
For GRAPHIC STYLES/STYLES INTERNATIONAL LLC, Plaintiff: MICHAEL J. BROOKS, LEAD ATTORNEY, LAW OFFICES OF MICHARL J BROOKS, DOYLESTOWN, PA.
WENDY BEETLESTONE, J.
Plaintiff Graphic Styles/Styles International LLC (" Graphic Styles" ) filed this action seeking damages and injunctive relief for Defendants' alleged infringement of its copyrights. Defendants allegedly are residents of Hong Kong, People's Republic of China. In the present Motion, Graphic Styles seeks leave, pursuant to Fed.R.Civ.P. 4(f)(3), to effect service upon Defendants by e-mail and by " Facebook" posting. Because Graphic Styles has failed to demonstrate a need for the Court's assistance in effecting service by alternative means, the Motion will be denied at this time without prejudice.
Graphic Styles produces stylebooks containing copyrighted drawings and graphic representations of men's and women's fashion clothing styles. It licenses the use of its copyrighted materials for promotional purposes, such as websites, brochures and catalogues for use by tailors and manufacturers in the clothing industry. Defendants are in the business of selling tailored menswear internationally. They advertise their services to customers through a webpage that illustrates styles of clothing available for purchase. They then travel to various cities to meet with customers, who select the design and materials for their garments and receive their garments by delivery from Hong Kong. Graphic Styles alleges that Defendants use its copyrighted illustrations to solicit business on their website, http://www.MensWearTailor.com. That website lists a physical store location in Hong Kong and invites customers to visit them there. The Website also contains the names of both defendants and invites customers to contact either Defendant Men's Wear Tailors or Defendant Richard Kumar through three listed e-mail addresses. It also contains telephone and fax numbers and a post office box listed as its " mailing address." In addition, Plaintiff has presented evidence of a " Facebook" page apparently maintained by Defendants, which advertises " Men's Wear Creations by Richard Kumar (Hong Kong Bespoke Tailors)" and contains recent posts advertising visits to United States cities in December 2014.
Graphic Styles attempted multiple times between July and November, 2014 to serve Defendants by international certified mail at the address listed on their website. On each occasion, the return receipt was not signed, but was stamped with a stamp bearing both Defendants' names and the business address. Defendants have not filed a responsive pleading or otherwise entered an appearance in this case. Graphic Styles now asks, pursuant to Federal Rule of Civil Procedure 4(f)(3), for leave to serve Defendants by means of e-mail and Facebook. Rule 4(f)(3) permits service on a foreign defendant " by other means not prohibited by international agreement, as the court orders."  In addition to not being prohibited by international agreement, to be proper, a form of service must be authorized by the law of the forum; in this case, by the Federal Rules of Civil Procedure. Brockmeyer v. May, 383 F.3d 798, 803-04 (9th Cir. 2004).
II. Service Under The Hague Convention
Service on an international defendant is governed in the first instance in this case by the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, 20 U.S.T. 361, 658 U.N.T.S. 163 (the " Hague Convention" ), reprinted in 28 U.S.C.A. Fed R. Civ. P. 4 note. Graphic Styles contends that its request is permissible under Article 10(a) of the Hague Convention, which states: " Provided the State of destination does not object, the present Convention shall not interfere with-(a) the freedom to send judicial documents, by postal channels, directly to persons abroad." Graphic Styles reads Article 10(a) to allow it to serve process by international certified mail and extrapolates from there that the Hague Convention " allows for service of process through
alternative means not listed, for example 'e-mail' and 'Facebook message,' provided that the destination state does not object to those means." Mot. at 7.
However, Graphic Styles conclusion that service by mail is permissible under Article 10(a) is not a universally accepted proposition: It is the subject of a split of opinion among the federal appellate courts. Courts holding that Article 10(a) permits service by mail have pointed to the " purpose of the Convention to facilitate international service of judicial documents," Brockmeyer v. May, 383 F.3d 798, 802 (9th Cir. 2004), the decisions of courts in other signatory countries, id.; Ackermann v. Levine, 788 F.2d 830, 839 (2nd Cir. 1986), the opinions of commentators, Brockmeyer, 383 F.3d at 802-03; Ackermann, 788 F.2d at 839 and the opinion of the State Department, Brockmeyer, 383 F.3d at 803.
The countervailing viewpoint stems from a close reading of the Hague Convention which shows that there are no words in Article 10(a) which refer to the concept of service but there are fifteen articles of the treaty as well as Articles 10(b) (" to effect service of judicial documents" ) and in Article 10(c) (same) that do. The courts that have held service of process by mail impermissible under the Hague Convention have relied on that difference in language usage as indicative that the drafters meant something other than service. Nuovo Pignone, SpA v. Storman Asia M/V, 310 F.3d 374, 383-84 (5th Cir. 2002); Bankston v. Toyota Motor Corp., 889 F.2d 172, 173-74 (8th Cir. 1989). They have interpreted Article 10(a)'s provision that the treaty did not interfere with the " freedom to send judicial documents, through postal channels" as referring to the ability to send additional judicial documents once service of process had been accomplished by the means established by the treaty. Nuovo Pignone, 310 F.3d at 384; Bankston, 889 F.2d at 174. Contrasted to this analysis is the thought that Article 10(a)'s use of the phrase " the freedom to send judicial documents," ...