1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 FUTURE MOTION, INC., Case No. 21-cv-03022-JSC 7 Plaintiff, 8 ORDER DENYING WITHOUT v. PREJUDICE MOTION TO SERVE 9 FOREIGN DEFENDANT BY EMAIL JOHN DOE, PURSUANT TO RULE 4(F)(3) 10 Defendant. Re: Dkt. No. 8 11
12 13 Plaintiff Future Motion, Inc. (“Future Motion”) brings patent infringement claims against 14 Defendant John Doe, an unknown party doing business as Floatwheel. Because Future Motion 15 does not know John Doe’s true identity, it seeks leave to provide alternative service by electronic 16 mail under Rule 4(f)(3). (Dkt. No. 8.)1 After carefully considering Plaintiff’s submission, the 17 Court concludes that oral argument is unnecessary, see N.D. Cal. Civ. L.R. 7-1(b), and DENIES 18 Plaintiffs’ motion without prejudice to renewal following further investigation. 19 BACKGROUND 20 Future Motion sells self-balancing electronically motorized skateboards under the 21 Onewheel product line and owns the related patents. (Complaint ¶¶ 7-13.) Future Motion alleges 22 that through its e-commerce site floatwheel.com, Defendant sells do-it-yourself (“DIY”) product 23 kits to construct a self-balancing skateboard that infringes on Future Motion’s Onewheel product 24 patents. (Complaint ¶¶ 15-18.) Future Motion also alleges that Defendant encourages patent 25 infringement by publishing instructional videos on its “Floatwheel” YouTube channel to teach 26 purchasers how to assemble the DIY Onewheel kits. (Complaint ¶¶ 19-21.) 27 1 Prior to filing this action, Future Motion attempted to identify the owner of the internet 2 domain floatwheel.com which was offering the allegedly infringing DIY Onewheel kits for sale, 3 as well as authoring the “Floatwheel” YouTube channel 4 www.youtube.com/channel/UC_7p3yqxNR24i-9Qtu1Haxg. (Dkt. No. 8-1 at ¶¶ 2-3.) Future 5 Motion “determined that the domain owner was masking its identity, other than stating it was 6 located in Guangxi, China,” and that the owner of the YouTube channel provided no public 7 identifying information. (Id.) On November 16, 2020, Future Motion’s counsel attempted to 8 contact Defendant through the domain Registrar (GoDaddy), and received an email from 9 425136673@qq.com to submit a cease and desist letter to 425136673@qq.com. (Id. at ¶ 4; Dkt. 10 No. 8-4 at 2.) That same day, Future Motion sent a cease and desist demand letter to 11 425136673@qq.com and received a return email confirming that the letter was received. (Dkt. 12 No. 8-1 at ¶¶ 5-6; Dkt. Nos. 8-5, 8-6.) Future Motion’s investigation revealed that “the email 13 provider qq.com is based in China and operated by the Tencent corporation of China. This can be 14 confirmed, for example, by visiting the website https://en.mail.qq.com/.” (Dkt. No. 8-1 at ¶ 8.) 15 Less than a week after receipt of the cease and desist letter, Defendant removed its 16 products for sale; however, as of March 15, 2021, Defendant is again offering its products for sale. 17 (Dkt. No. 8-1 at ¶ 7.) Upon discovering that Defendant was again offering its products for sale, 18 Future Motion “set[] up an order to confirm that the Defendant would ship its products to the 19 United States.” (Id. at ¶ 9.) In doing so, Future Motion discovered that Defendant’s e-commerce 20 website provides the contact email address diyonewheel@gmail.com for inquires related to 21 Defendant’s terms of service, privacy policy, refund policy, and shipping policy. (Id. at ¶ 9; Dkt. 22 No. 8-7.) 23 “Aside from the confirmed email address 425136673@qq.com and the contact email 24 address diyonewheel@gmail.com” Future Motion is “not aware of any other contact information 25 for Defendant, and do[es] not believe it is possible to obtain further identifying information 26 without a court order.” (Dkt. No. 8-1 at ¶ 10.) 27 Future Motion thus seeks leave to provide service of the summons and complaint by 1 order, (2) Defendant has not stated that it is represented by United States counsel, (3) under Rule 2 4(f)(3) service by electronic mail is not prohibited by international agreement, and (4) service by 3 electronic mail is reasonably calculated to provide notice to Defendant via its confirmed email 4 address and its e-commerce contact email address. (Dkt. No. 8 at 2.) 5 LEGAL STANDARD 6 Federal Rule of Civil Procedure 4(f) provides the applicable authority to serve an 7 individual in a foreign country. Under Rule 4(f)(3), courts can order service through a variety of 8 methods, “including publication, ordinary mail, mail to the defendant’s last known address, 9 delivery to the defendant’s attorney, telex, and most recently, email[,]” so long as the method of 10 service is not prohibited by an international agreement. Rio Props., Inc. v. Rio Intern. Interlink, 11 284 F.3d 1007, 1016 (9th Cir. 2002) (citation omitted). “However, the fact that an alternative 12 method of service is not prohibited by international agreement does not mean that the plaintiff is 13 entitled to use such a method under Rule 4(f)(3).” Keck v. Alibaba.com, Inc., 330 F.R.D. 255, 14 257–58 (N.D. Cal. 2018). It is within a court’s “sound discretion” to determine whether “the 15 particularities and necessities of a given case require alternate service of process under Rule 16 4(f)(3).” Rio Properties, 284 F.3d at 1016. To comport with due process, alternate service of 17 process must be “reasonably calculated to apprise interested parties of the pendency of the action 18 and afford them an opportunity to present their objections.” Id. at 1016–17 (citation omitted). 19 DISCUSSION 20 Future Motion has not shown that service by alternative service by electronic mail to 21 425136673@qq.com and diyonewheel@gmail.com would satisfy Rule 4(f)(3). 22 A. International Agreement Prohibits Service by Electronic Mail 23 Future Motion argues that the available evidence shows that Defendant is located in China 24 or a Chinese speaking country. The evidence is equivocal. For example, Floatwheel’s YouTube 25 channel indicates that Defendant is located in the United States. (Dkt. No. 8-1 at ¶¶ 2-3.) 26 However, other evidence suggests that Defendant is based in China because its GoDaddy 27 registrant address is in Guangxi, China and the email provider @qq.com is operated by a Chinese 1 corporation. (Dkt. No. 8-1 at ¶¶ 2-3, 8.). Given this latter evidence, Future Motion’s theory that 2 Defendant is located in China is persuasive. 3 The United States and China are both parties to the Hague Service Convention, which is a 4 treaty that simplifies, standardizes, and improves the process of serving documents internationally. 5 Facebook, Inc. v. 9 Xiu Network (Shenzhen) Tech. Co., No. 19-CV-01167-JST, 2020 WL 5036085 6 at * 5 (N.D. Cal. Aug. 19, 2020) (citation omitted); Hague Service Convention, Nov. 15, 1956, 7 T.I.A.S. No. 6638 (Feb. 19, 1969). Although compliance with the Hague Service Convention is 8 mandatory, Article 1 of the Hague Service Convention states that it does not apply “where the 9 address of the person to be served with the document is not known.” Volkswagenwerk 10 Aktiengesellschaft v. Schlunk, 486 U.S. 694, 699 (1988); Hague Service Convention art. 1. 11 Here, Future Motion has not yet met its burden to demonstrate that Defendant’s address is 12 “not known.” While Future Motion inquired whether the YouTube channel provided identifying 13 information and checked the domain name registry, it has not otherwise conducted any 14 investigation. Compare with Keck v. Alibaba.com, Inc., No. 17-CV-05672-BLF, 2018 WL 15 3632160, at *4 (N.D. Cal.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 FUTURE MOTION, INC., Case No. 21-cv-03022-JSC 7 Plaintiff, 8 ORDER DENYING WITHOUT v. PREJUDICE MOTION TO SERVE 9 FOREIGN DEFENDANT BY EMAIL JOHN DOE, PURSUANT TO RULE 4(F)(3) 10 Defendant. Re: Dkt. No. 8 11
12 13 Plaintiff Future Motion, Inc. (“Future Motion”) brings patent infringement claims against 14 Defendant John Doe, an unknown party doing business as Floatwheel. Because Future Motion 15 does not know John Doe’s true identity, it seeks leave to provide alternative service by electronic 16 mail under Rule 4(f)(3). (Dkt. No. 8.)1 After carefully considering Plaintiff’s submission, the 17 Court concludes that oral argument is unnecessary, see N.D. Cal. Civ. L.R. 7-1(b), and DENIES 18 Plaintiffs’ motion without prejudice to renewal following further investigation. 19 BACKGROUND 20 Future Motion sells self-balancing electronically motorized skateboards under the 21 Onewheel product line and owns the related patents. (Complaint ¶¶ 7-13.) Future Motion alleges 22 that through its e-commerce site floatwheel.com, Defendant sells do-it-yourself (“DIY”) product 23 kits to construct a self-balancing skateboard that infringes on Future Motion’s Onewheel product 24 patents. (Complaint ¶¶ 15-18.) Future Motion also alleges that Defendant encourages patent 25 infringement by publishing instructional videos on its “Floatwheel” YouTube channel to teach 26 purchasers how to assemble the DIY Onewheel kits. (Complaint ¶¶ 19-21.) 27 1 Prior to filing this action, Future Motion attempted to identify the owner of the internet 2 domain floatwheel.com which was offering the allegedly infringing DIY Onewheel kits for sale, 3 as well as authoring the “Floatwheel” YouTube channel 4 www.youtube.com/channel/UC_7p3yqxNR24i-9Qtu1Haxg. (Dkt. No. 8-1 at ¶¶ 2-3.) Future 5 Motion “determined that the domain owner was masking its identity, other than stating it was 6 located in Guangxi, China,” and that the owner of the YouTube channel provided no public 7 identifying information. (Id.) On November 16, 2020, Future Motion’s counsel attempted to 8 contact Defendant through the domain Registrar (GoDaddy), and received an email from 9 425136673@qq.com to submit a cease and desist letter to 425136673@qq.com. (Id. at ¶ 4; Dkt. 10 No. 8-4 at 2.) That same day, Future Motion sent a cease and desist demand letter to 11 425136673@qq.com and received a return email confirming that the letter was received. (Dkt. 12 No. 8-1 at ¶¶ 5-6; Dkt. Nos. 8-5, 8-6.) Future Motion’s investigation revealed that “the email 13 provider qq.com is based in China and operated by the Tencent corporation of China. This can be 14 confirmed, for example, by visiting the website https://en.mail.qq.com/.” (Dkt. No. 8-1 at ¶ 8.) 15 Less than a week after receipt of the cease and desist letter, Defendant removed its 16 products for sale; however, as of March 15, 2021, Defendant is again offering its products for sale. 17 (Dkt. No. 8-1 at ¶ 7.) Upon discovering that Defendant was again offering its products for sale, 18 Future Motion “set[] up an order to confirm that the Defendant would ship its products to the 19 United States.” (Id. at ¶ 9.) In doing so, Future Motion discovered that Defendant’s e-commerce 20 website provides the contact email address diyonewheel@gmail.com for inquires related to 21 Defendant’s terms of service, privacy policy, refund policy, and shipping policy. (Id. at ¶ 9; Dkt. 22 No. 8-7.) 23 “Aside from the confirmed email address 425136673@qq.com and the contact email 24 address diyonewheel@gmail.com” Future Motion is “not aware of any other contact information 25 for Defendant, and do[es] not believe it is possible to obtain further identifying information 26 without a court order.” (Dkt. No. 8-1 at ¶ 10.) 27 Future Motion thus seeks leave to provide service of the summons and complaint by 1 order, (2) Defendant has not stated that it is represented by United States counsel, (3) under Rule 2 4(f)(3) service by electronic mail is not prohibited by international agreement, and (4) service by 3 electronic mail is reasonably calculated to provide notice to Defendant via its confirmed email 4 address and its e-commerce contact email address. (Dkt. No. 8 at 2.) 5 LEGAL STANDARD 6 Federal Rule of Civil Procedure 4(f) provides the applicable authority to serve an 7 individual in a foreign country. Under Rule 4(f)(3), courts can order service through a variety of 8 methods, “including publication, ordinary mail, mail to the defendant’s last known address, 9 delivery to the defendant’s attorney, telex, and most recently, email[,]” so long as the method of 10 service is not prohibited by an international agreement. Rio Props., Inc. v. Rio Intern. Interlink, 11 284 F.3d 1007, 1016 (9th Cir. 2002) (citation omitted). “However, the fact that an alternative 12 method of service is not prohibited by international agreement does not mean that the plaintiff is 13 entitled to use such a method under Rule 4(f)(3).” Keck v. Alibaba.com, Inc., 330 F.R.D. 255, 14 257–58 (N.D. Cal. 2018). It is within a court’s “sound discretion” to determine whether “the 15 particularities and necessities of a given case require alternate service of process under Rule 16 4(f)(3).” Rio Properties, 284 F.3d at 1016. To comport with due process, alternate service of 17 process must be “reasonably calculated to apprise interested parties of the pendency of the action 18 and afford them an opportunity to present their objections.” Id. at 1016–17 (citation omitted). 19 DISCUSSION 20 Future Motion has not shown that service by alternative service by electronic mail to 21 425136673@qq.com and diyonewheel@gmail.com would satisfy Rule 4(f)(3). 22 A. International Agreement Prohibits Service by Electronic Mail 23 Future Motion argues that the available evidence shows that Defendant is located in China 24 or a Chinese speaking country. The evidence is equivocal. For example, Floatwheel’s YouTube 25 channel indicates that Defendant is located in the United States. (Dkt. No. 8-1 at ¶¶ 2-3.) 26 However, other evidence suggests that Defendant is based in China because its GoDaddy 27 registrant address is in Guangxi, China and the email provider @qq.com is operated by a Chinese 1 corporation. (Dkt. No. 8-1 at ¶¶ 2-3, 8.). Given this latter evidence, Future Motion’s theory that 2 Defendant is located in China is persuasive. 3 The United States and China are both parties to the Hague Service Convention, which is a 4 treaty that simplifies, standardizes, and improves the process of serving documents internationally. 5 Facebook, Inc. v. 9 Xiu Network (Shenzhen) Tech. Co., No. 19-CV-01167-JST, 2020 WL 5036085 6 at * 5 (N.D. Cal. Aug. 19, 2020) (citation omitted); Hague Service Convention, Nov. 15, 1956, 7 T.I.A.S. No. 6638 (Feb. 19, 1969). Although compliance with the Hague Service Convention is 8 mandatory, Article 1 of the Hague Service Convention states that it does not apply “where the 9 address of the person to be served with the document is not known.” Volkswagenwerk 10 Aktiengesellschaft v. Schlunk, 486 U.S. 694, 699 (1988); Hague Service Convention art. 1. 11 Here, Future Motion has not yet met its burden to demonstrate that Defendant’s address is 12 “not known.” While Future Motion inquired whether the YouTube channel provided identifying 13 information and checked the domain name registry, it has not otherwise conducted any 14 investigation. Compare with Keck v. Alibaba.com, Inc., No. 17-CV-05672-BLF, 2018 WL 15 3632160, at *4 (N.D. Cal. July 31, 2018) (granting motion to serve by electronic means after 16 neither a private investigator nor an online search of Chinese databases could locate the 17 defendant’s physical address). For example, it has not attempted to contact Defendant through its 18 e-commerce contact email address diyonewheel@gmail.com, nor investigated whether address 19 information is available through that email address. In sum, Future Motion has not yet shown that 20 it has engaged in diligent, yet unsuccessful, efforts to locate Defendant’s physical address for 21 service. See D.Light Design, Inc. v. Boxin Solar Co., No. C-13-5988 EMC, 2015 WL 526835, at 22 *3 (N.D. Cal. Feb. 6, 2015). 23 As Defendant has not sufficiently shown that Defendant’s address is unknown, an 24 international agreement prohibits service by electronic mail to China. Thus, service under Rule 25 4(f)(3) is not yet appropriate. See Rio Props., 284 F.3d at 1016. 26 CONCLUSION 27 For the reasons stated above, the Court DENIES Plaintiffs’ motion to serve the Defendant 1 This Order disposes of Docket No. 8. 2 IT IS SO ORDERED. 3 Dated: June 10, 2021 4 5 ne ACQWELINE SCOTT CORLEY( 6 United States Magistrate Judge 7 8 9 10 11 12
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