Luxottica Grp. S.P.A. v. P'ships & Unincorporated Ass'ns Identified On Schedule "A"

391 F. Supp. 3d 816
CourtDistrict Court, E.D. Illinois
DecidedMay 24, 2019
DocketCase No. 18 CV 2188
StatusPublished
Cited by40 cases

This text of 391 F. Supp. 3d 816 (Luxottica Grp. S.P.A. v. P'ships & Unincorporated Ass'ns Identified On Schedule "A") is published on Counsel Stack Legal Research, covering District Court, E.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Luxottica Grp. S.P.A. v. P'ships & Unincorporated Ass'ns Identified On Schedule "A", 391 F. Supp. 3d 816 (illinoised 2019).

Opinion

Joan B. Gottschall, United States District Judge

Plaintiffs own several trademarks related to Ray-Ban- and Oakley-branded sunglasses, clothing, and accessories. Am. Compl. ¶¶ 12, 20, ECF No. 12. They brought this suit under the Lanham Act, 15 U.S.C. § 1051 et seq., and the Illinois Uniform Deceptive Practices Act, 815 ILCS § 510 et seq. , against the owners of domains and the operators of online marketplaces hosted by companies such as eBay and Alibaba for allegedly offering and selling counterfeits of their goods. See id. ¶¶ 28-38. In their amended complaint, plaintiffs name 906 defendants, id. ¶¶ 1-24, described as "individuals and business entities who, upon information and belief, reside in the People's Republic of China or other foreign jurisdictions." Id. ¶ 28. Six defendants, referred to here for simplicity as "defendants," move to dismiss the amended complaint, arguing that plaintiffs did not comply with the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial *820Matters, Nov. 15, 1965 ("Hague Service Convention"), 20 U.S.T. 361, when they served the summons and complaint by email. For the following reasons, the motion is granted.1

I. BACKGROUND

Over the last five years, this court has presided over several similar cases brought against China-based operators of domains and online marketplaces allegedly selling counterfeit goods. In every case but this one, no defendant appeared, and default judgment was eventually entered. As is typical, this litigation began with the filing of a motion to seal and a sealed complaint identifying the defendants by domain name or online marketplace name. ECF Nos. 1, 7; see also Sched. A to Compl., ECF No. 9 (listing defendants). In this case, plaintiffs amended their complaint the next day. ECF No. 12. They also filed a motion for a temporary restraining order ("TRO"), ECF No. 13, and a separate motion under Federal Rule of Civil Procedure 4(f)(3) for authorization to serve the defendants with the complaint and summons by electronic means, ECF No. 21. The court granted both motions ex parte and entered a sealed TRO, ECF No. 30. Among other things, the TRO stated:

Plaintiffs may provide notice of these proceedings to Defendants, including notice of the preliminary injunction hearing and service of process pursuant to Fed. R. Civ. P. 4(f)(3), by electronically publishing a link to the Amended Complaint, this Order and other relevant documents on a website to which the Defendant Domain Names which are transferred to Plaintiffs' control will redirect, or by sending an e-mail to the e-mail addresses identified in Exhibits 5 and 6 to the Declaration of John Stewart and any e-mail addresses provided for Defendants by third parties that includes a link to said website. The Clerk of the Court is directed to issue a single original summons in the name of "Xiong Hua Ping and all other Defendants identified in the Amended Complaint" that shall apply to all Defendants. The combination of providing notice via electronic publication or e-mail, along with any notice that Defendants receive from domain name registrars and payment processors, shall constitute notice reasonably calculated under all circumstances to apprise Defendants of the pendency of the action and afford them the opportunity to present their objections.

TRO ¶ 8.

AliExpress, the company that hosted defendants' online stores, provided email addresses associated with defendants' accounts but no names or street addresses. Decl. of J. Gaudio ¶ 7, Oct. 24, 2018, ECF No. 114. Plaintiffs sent the complaint, summons, and notice of the TRO to the email addresses. Id. ¶¶ 7-9 (citing id. Ex. 4, 5, ECF Nos. 114-4, 114-5). Plaintiffs received reply emails from eight defendants (some of which number among the group of defendants moving to dismiss), and three different attorneys representing one or more defendants also contacted plaintiffs' counsel, often to insist on service of the summons and complaint in accordance with the Hague Service Convention. See Decl. of J. Gaudio ¶¶ 11, 13; Correspondence at 2, ECF No. 114-6 Ex. 6.

*821On plaintiffs' motion, the court extended the TRO for 14 days, ECF No. 37, and, after a hearing at which no defendant appeared (and plaintiffs' counsel represented that he knew of no opposition, ECF No. 42), entered a preliminary injunction carrying forward many of the TRO's provisions. Prelim. Injunction, ECF No. 43. Counsel for the moving defendants appeared approximately five weeks after the entry of the preliminary injunction. See Notices of Appearance, ECF Nos. 53-58 (June 20, 2018). Defendants obtained extensions of the deadline to respond to the complaint and filed the pending motion to dismiss in September 2018. ECF No. 102.

II. LEGAL STANDARD

Every defendant must be served with a copy of the complaint and summons in accordance with Rule 4. Fed. R. Civ. P. 4(b), 4(c)(1). Only proper service vests a district court with personal jurisdiction over a defendant. Cardenas v. City of Chicago , 646 F.3d 1001, 1005 (7th Cir. 2011). Thus, "actual knowledge of the existence of a lawsuit is insufficient to confer personal jurisdiction over a defendant in the absence of valid service of process." Mid-Continent Wood Prods., Inc. v. Harris , 936 F.2d 297, 301 (7th Cir. 1991). For this reason, plaintiffs' evidence that some defendants responded to their email messages regarding this lawsuit does not prove that this court has personal jurisdiction over any defendant.

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Cite This Page — Counsel Stack

Bluebook (online)
391 F. Supp. 3d 816, Counsel Stack Legal Research, https://law.counselstack.com/opinion/luxottica-grp-spa-v-pships-unincorporated-assns-identified-on-illinoised-2019.