Schluter Systems, L.P. v. Sanven Corporation, 8:22-cv-00155

Background

Schluter Systems, L.P. (plaintiff) owns a federally registered "Orange Mark" and alleges foreign defendants in China sold infringing/counterfeit products online (including Amazon/eBay/Vevor).
Plaintiff moved for alternative service under Fed. R. Civ. P. 4(f)(3): email to support@vevor.com, five email addresses used with the U.S. Trademark Office, and personal service on three U.S.-based attorneys who had represented the foreign defendants before the Trademark Office.
Plaintiff had not attempted Hague Convention service; it argued Hague service on Chinese defendants is slow/unreliable (COVID-related delays and previous experience) and that defendants already know of the suit.
Sanven Corporation is the only defendant who has appeared and does not oppose alternative service; other foreign defendants have not been served.
The Court denied the motion without prejudice and with leave to renew because plaintiff failed to show reasonable diligence in locating the defendants’ physical addresses (necessary to determine Hague applicability) and because the Court adopts the view that China’s Hague objection to postal channels precludes email service.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Does the Hague Service Convention apply (i.e., did plaintiff exercise reasonable diligence to find defendants' physical addresses)?	Hague is impractical and likely ineffective; plaintiff need not use it first given delays.	Not directly argued by defendants in the record; court required proof of plaintiff's diligence.	Plaintiff failed to show reasonable diligence to locate physical addresses; therefore the Hague Convention inquiry applies and plaintiff did not satisfy the prerequisite to avoid it.
Is service by email permissible under international agreement/Hague Convention?	Email service is not prohibited by the Hague Convention and is reasonably calculated to give notice.	N/A (Court considered international practice).	Court follows Smart Study: China’s Article 10(a) objection to postal channels is interpreted to bar email service; email service is prohibited by international agreement and thus unavailable under Rule 4(f)(3).
Is service on U.S.-based attorneys who previously represented foreign defendants an adequate alternative?	Serving U.S. counsel who have appeared before the Trademark Office will provide notice.	N/A; court requires more facts about counsel-client relationship and whether counsel will accept service.	Court declined to authorize this method without more information showing those attorneys would likely represent the foreign defendants here and that such service meets due-process standards.
Should alternative service be granted now?	Needed for efficiency and to avoid lengthy Hague delays; defendants already aware of claims.	Sanven does not oppose, but court requires procedural compliance.	Motion denied without prejudice; plaintiff may renew after showing diligent efforts to locate physical addresses and clarifying proposed U.S.-counsel recipients' likely role and notice adequacy.

Key Cases Cited

Sulzer Mixpac AG v. Medenstar Indus. Co. Ltd., 312 F.R.D. 329 (S.D.N.Y.) (discusses permissibility of email service under Rule 4(f)(3))
In re GLG Life Tech Corp. Sec. Litig., 287 F.R.D. 262 (S.D.N.Y.) (addressing when service on U.S. counsel can satisfy due process)
Halvorssen v. Simpson, 328 F.R.D. 30 (E.D.N.Y.) (service on foreign defendants must also satisfy constitutional due-process requirements)
Rio Props., Inc. v. Rio Int'l Interlink, 284 F.3d 1007 (9th Cir. 2002) (due-process analysis for foreign service)
Water Splash, Inc. v. Menon, 581 U.S. 271 (2017) (Hague Convention Articles permit service by alternative methods only where contracting states agree)