Elsevier, Inc. et al v. Does 1-20

Filing 45

OPINION AND ORDER: re: 39 MOTION for Alternate Service on Defendants Siew Yee Chew, Lynette K. Chew, Kok Kit Lau, Akitrade Global SDN. BHD., Shein Wei Choo, Yumi Wee Keng Yee, Lew Moy, Lim Sei Haw, Liao Wei Hao, Jiao Leng, Zheng Xiaohong, Lin Zhe n Wei, and Luo Zhihong filed by Cengage Learning, Inc., McGraw-Hill Global Education Holdings, LLC, Elsevier, Inc., Pearson Education, Inc. For the foregoing reasons, the motion for alternate service on defendants (Docket # 39) is granted. Plai ntiffs are authorized to serve the following defendants by email: Siew Yee Chew, Lynette K. Chew, Kok Kit Lau, Akitrade Global Sdn. Bhd., Shein Wei Choo, Yumi Wee Keng Yee, Lew Moy, Lim Sei Haw, Liao Wei Hao, Jiao Leng, Zheng Xiaohong, Lin Zhen Wei, and Luo Zhihong. To allow maximum information regarding the effectiveness of service in case it is needed at a later date, plaintiffs should use an email tracking service. SO ORDERED. (Signed by Magistrate Judge Gabriel W. Gorenstein on 3/12/2018) (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------------X
:
ELSEVIER, INC., et al.,
:
Plaintiffs,
:
-v.:
SIEW YEE CHEW, et al.,
:

OPINION AND ORDER
17 Civ. 6225 (JGK) (GWG)

Defendants.
:
---------------------------------------------------------------X
GABRIEL W. GORENSTEIN, United States Magistrate Judge
Plaintiffs Cengage Learning, Inc., Elsevier, Inc., McGraw-Hill Global Education
Holdings, LLC, and Pearson Education, Inc. move this Court for an order under Federal Rule of
Civil Procedure 4(f)(3) authorizing alternative service on defendants Siew Yee Chew, Lynette K.
Chew, Kok Kit Lau, Akitrade Global Sdn. Bhd. (“Akitrade”), Shein Wei Choo, Yumi Wee Keng
Yee, Lew Moy, Lim Sei Haw, Liao Wei Hao, Jiao Leng, Zheng Xiaohong, Lin Zhen Wei, and
Luo Zhihong (collectively, the “foreign defendants”).1 For the following reasons, plaintiffs’
motion for alternate service is granted.
I. BACKGROUND
This suit has been brought by educational publishers against online retailers who sell
counterfeit textbooks in the United States in violation of the publishers’ copyright and trademark
rights. See First Amended Complaint, filed Jan. 29, 2018 (Docket # 28) (“FAC”), ¶¶ 1-5. The

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Notice of Plaintiffs’ Motion for Alternate Service on Defendants, filed Feb. 2, 2018
(Docket # 39) (“Pls. Not.”); Memorandum of Law in Support of Plaintiffs’ Application for an
Order Authorizing Alternative Service by Electronic Means, filed Feb. 2, 2018 (Docket # 40)
(“Pls. Mem.”); Declaration of Kerry M. Mustico, filed Feb. 2, 2018 (Docket # 41) (“Mustico
Decl.”).

plaintiffs sell textbooks and multimedia materials throughout the world. Id. ¶¶ 31-32. Their
textbooks and educational materials are also sold through various retail and online bookstores
and marketplaces, including through the online auction site and marketplace, eBay. Id. ¶ 31.
According to the FAC, the foreign defendants operate storefronts on eBay through which
they sell counterfeit copies of the plaintiffs’ textbooks “to the same purchasers seeking out
legitimate copies of Plaintiffs’ textbooks.” Id. ¶¶ 4, 45. The FAC contains a list of the
storefronts known to be operated by the foreign defendants on eBay. See id. ¶ 46. The foreign
defendants “identify the textbooks using the legitimate textbooks’ names and authors, images of
the covers of the textbooks that include [p]laintiffs’ marks, and the International Standard Book
Numbers (‘ISBN’) that identify the textbooks.” Id. ¶ 4.
When the defendants make a sale on eBay, eBay transmits the sale proceeds to them by
means of eBay affiliate PayPal, or through a seller’s alternative account processing system. Id.
¶ 44. Although many of the foreign defendants provide fictitious names or addresses, or both, to
eBay to conceal their identities, see id. ¶ 50; Mustico Decl. ¶ 8, “they provided eBay and PayPal
with working email addresses in order to create accounts through which they could sell the
Counterfeit Textbooks,” Pls. Mem. at 3-4 (citing FAC ¶ 50). The plaintiffs obtained email
addresses associated with the foreign defendants’ eBay storefronts through pre-complaint
purchases of counterfeit textbooks. See Mustico Decl. ¶ 4.
The plaintiffs filed a complaint against twenty unknown defendants on August 17, 2017.
See Complaint, filed Aug. 17, 2017 (Docket # 1). At the same time, they obtained an ex parte
temporary restraining order, an expedited discovery order, and an order to show cause seeking a
preliminary injunction. See Order to Show Cause, filed Aug. 18, 2017 (Docket # 6). The Court
eventually issued a preliminary injunction in favor of the plaintiffs, see Preliminary Injunction,
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filed Sept. 12, 2017 (Docket # 21). Pursuant to the Court’s ex parte order and the preliminary
injunction, the plaintiffs served their complaint and ex parte application, and the Court’s ex parte
Order and preliminary injunction on the foreign defendants through the email addresses
associated with foreign defendants’ online storefronts. See Certificate of Service, filed Aug. 28,
2017 (Docket # 16); Certificate of Service, filed Sept. 18, 2017 (Docket # 22). None of the
foreign defendants responded. Mustico Decl. ¶ 5.
Plaintiffs have since subpoenaed PayPal and eBay for the account information associated
with the foreign defendants’ storefronts. Id. ¶ 3. PayPal and eBay responded in December 2017
with the requested information. Id. ¶¶ 6-7. The information provided identified the foreign
defendants as the operators of the storefronts first identified in the original complaint. Id. ¶ 6a-l.
Additionally, the information showed that the foreign defendants used “multiple and everchanging physical addresses in their account information,” and “[s]ome of the address
information [] appears to be incomplete.” Id. ¶ 8. Despite these limitations, plaintiffs were able
to determine that the following individuals or entities from the following locations were
committing the acts alleged in the complaint: Siew Yee Chew, Shein Wei Choo, Yumi Wee
Keng Yee, Lew Moy, Lim Sei Haw, Lynette K. Chew, Kok Kit Lau, and Akitrade are based out
of Malaysia (the “Malaysia-based defendants”), while Liao Wei Hao, Jiao Leng, Zheng
Xiaohong, Lin Zhen Wei, and Luo Zhihong are based out of China (the “China-based
defendants”). FAC ¶¶ 14-26. Because of the incomplete and changing physical address
information associated with the foreign defendants’ storefronts, plaintiffs state that “it is
impossible for [them] to determine the . . . [d]efendants’ true locations.” Mustico Decl. ¶ 8.
Having obtained production of the account information associated with the foreign
defendants’ eBay and PayPal accounts, plaintiffs filed an amended complaint on January 29,
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2018, that provided the names of the unknown defendants who had been listed on the original
complaint. See FAC at 1. On February 2, 2018, plaintiffs made the instant motion for an order
authorizing alternative service of the FAC on the foreign defendants. See Pls. Not. Plaintiffs
propose serving the foreign defendants through “email to all the email addresses identified by
Ebay and PayPal as associated with or utilized by the [defendants] to conduct the business of the
[defendants’] [s]torefronts.” Pls. Mem. at 5. They also propose “using an email tracking service
such as ReadNotify® to confirm that the emails were delivered successfully.” Id.
II. DISCUSSION
Rule 4(f) of the Federal Rules of Civil Procedure permits service of process on
individuals in foreign countries through three means: (1) “by any internationally agreed means of
service that is reasonably calculated to give notice, such as those authorized by the Hague
Convention on the Service Abroad of Judicial and Extrajudicial Documents”; (2) where there is
no agreement as to means or where an agreement allows unspecified other means, “by a method
that is reasonably calculated to give notice” including “as the foreign authority directs in
response to a letter rogatory or letter of request”; or (3) “by other means not prohibited by
international agreement, as the court orders.” Fed. R. Civ. P. 4(f). Rule 4(h) provides that
service may be effected on foreign corporations “in any manner prescribed by Rule 4(f) for
serving an individual,” except personal service. Fed. R. Civ. P. 4(h)(2). Rule 4(h) applies here
because Akitrade is “a corporate entity with a principal place of business in Malaysia.” FAC
¶ 17.
Plaintiffs request that the Court order alternative service of process under Rule 4(f)(3).
See Pls. Mem. at 5.

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“[S]ervice of process under Rule 4(f)(3) is neither a last resort nor extraordinary relief. It
is merely one means among several which enables service of process on an international
defendant.” Rio Props., Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1015 (9th Cir. 2002)
(alterations and citation omitted). Thus, the rule does not require a party to serve process by the
means specified in subsections 4(f)(1) and (f)(2) before a court permits alternative service by
“other means” under Rule 4(f)(3). See Advanced Aerofoil Techs., AG v. Todaro, 2012 WL
299959, at *1 (S.D.N.Y. Jan. 31, 2012) (“there is no hierarchy among the subsections in Rule
4(f)”); Sec. & Exch. Comm’n v. Anticevic, 2009 WL 361739, at *3 (S.D.N.Y. Feb. 13, 2009)
(“A plaintiff is not required to attempt service through the other provisions of Rule 4(f) before
the Court may order service pursuant to Rule 4(f)(3)”) (emphasis in original); accord Rio Props.,
284 F.3d at 1014-15 (Rule 4(f)(3) “stands independently, on equal footing” with subsections
(f)(1) or (f)(2)). But any court-ordered method of service under Rule 4(f)(3), in addition to
complying with pertinent international agreements, must also satisfy constitutional due process.
See Sulzer Mixpac AG v. Medenstar Indus. Co. Ltd., 312 F.R.D. 329, 330 (S.D.N.Y. 2015). To
meet this requirement, the means of service must be “reasonably calculated, under all
circumstances, to apprise interested parties of the pendency of the action and afford them an
opportunity to present their objections.” Mullane v. Cent. Hanover Bank & Tr. Co., 339 U.S.
306, 314 (1950). “The decision of whether to order service of process under Rule 4(f)(3) is
‘committed to the sound discretion of the district court.’” United States v. Lebanese Canadian
Bank SAL, 285 F.R.D. 262, 266 (S.D.N.Y. 2012) (quoting Madu, Edozie & Madu, P.C. v.
SocketWorks Ltd. Nigeria, 265 F.R.D. 106, 115 (S.D.N.Y. 2010)); accord Jian Zhang v.
Baidu.com Inc., 293 F.R.D. 508, 512 (S.D.N.Y. 2013); FTC v. PCCare247 Inc., 2013 WL
841037, at *3 (S.D.N.Y. Mar. 7, 2013).
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In exercising this discretion, some courts have required parties seeking alternative service
to show “(1) . . . that the plaintiff has reasonably attempted to effectuate service on the
defendant, and (2) . . . that the circumstances are such that the court’s intervention is necessary.”
Devi v. Rajapaska, 2012 WL 309605, at *1 (S.D.N.Y. Jan. 31, 2012) (citations omitted); accord
Sulzer Mixpac AG, 312 F.R.D. at 331; Altos Hornos de Mex., S.A.B. de C.V. v. Rock Res. Ltd.,
2015 WL 6437384, at *2 (S.D.N.Y. Oct. 19, 2015); In re GLG Life Tech Corp. Sec. Litig., 287
F.R.D. 262, 265-66 (S.D.N.Y. 2012). Imposing these judicially-created requirements “has been
viewed as necessary in order to prevent parties from whimsically seeking alternate means of
service and thereby increasing the workload of the courts.” In re GLG Life Tech Corp. Sec.
Litig., 287 F.R.D. at 266 (internal quotation marks and citation omitted). “[I]n cases involving
service on a person residing in a country that is a signatory to the Hague Convention, courts have
often imposed a requirement that litigants first attempt service by means of the Hague
Convention before seeking court-ordered alternative service under section 4(f)(3).” Id. (citing
Devi, 2012 WL 309605, at *2). Nonetheless, “nothing in Rule 4(f) itself or controlling case law
suggests that a court must always require a litigant to first exhaust the potential for service under
the Hague Convention before granting an order permitting alternative service under Rule
4(f)(3).” Id. (citation omitted).
Because Malaysia is not a signatory to the Hague Convention, see Status Table,
Convention of 15 November 1965 on the Service Abroad of Judicial and Extrajudicial
Documents in Civil or Commercial Matters, Hague Conference on Private International Law
(Nov. 9, 2017), https://www.hcch.net/en/instruments/conventions/status-table/?cid=17, service
on the Malaysia-based defendants under Rule 4(f)(1) is not possible. No other international
agreement bars service by email upon the Malaysia-based defendants. Accordingly, we do not
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consider the availability of the Hague Convention for purposes of considering the method of
service that will be permitted on the Malaysia-based defendants.
Both China and the United States, however, are signatories to the Hague Convention.
See id. Nevertheless, we do not believe the circumstances in this case warrant imposing a
requirement that plaintiffs first attempt to serve the China-based defendants through the Hague
Convention process. Most obviously, service under the Hague Convention is not available for
the defendants in this case because service under the Hague Convention in China requires
providing a defendant’s address to the Chinese Ministry of Justice. See Jian Zhang, 293 F.R.D.
at 510; Stream SICAV v. Wang, 989 F. Supp. 2d 264, 280 (S.D.N.Y. 2013). Here, defendants
have operated in such a way as to stymie any effort to determine their true addresses. Mustico
Decl. ¶ 8. Moreover, the lack of an address by itself suggests that the Hague Convention does
not even apply inasmuch as Article 1 of the Hague Convention specifies that it “shall not apply
where the address of the person to be served with the document is not known.” Hague
Convention on the Service Abroad of Judicial and Extrajudicial Documents art. 1, November 15,
1965, 20 U.S.T. 361; accord Microsoft Corp. v. Does, 2012 WL 5497946, at *2 (E.D.N.Y. Nov.
13, 2012); Prediction Co. LLC v. Rajgarhia, 2010 WL 1050307, at *2 (S.D.N.Y. Mar. 22, 2010).
Accordingly, we find it inappropriate to require that the plaintiffs attempt service through the
Hague Convention.2

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We note that the plaintiffs’ requested alternative means of service does not violate the
Hague Convention. See Pls. Mem. at 7-8. While China has objected to service by postal
channels under Article 10, see Declarations, Hague Conference on Private International Law,
https://www.hcch.net/en/instruments/conventions/status-table/notifications/?csid=393&disp=res
dn (last visited Mar. 9, 2018), courts have routinely recognized that such objections do not
extend to service by email, see, e.g., Sulzer Mixpac AG, 312 F.R.D. at 331-32 (examining case
law and concluding that “China’s objection to service by postal mail does not cover service by
email”) (citing cases); accord Jackson Lab. v. Nanjing Univ., 2018 WL 615667, at *4 (D. Me.
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The only remaining issue in this case is whether the proposed means of service on the
foreign defendants — by email to the email addresses associated with the defendants eBay and
PayPal accounts along with email tracking, see Pls. Mem. at 5 — satisfies constitutional
standards of due process. See, e.g., In re GLG Life Tech Corp. Sec. Litig., 287 F.R.D. at 267.
That standard requires that the proposed means of service be “reasonably calculated, under all
circumstances, to apprise interested parties of the pendency of the action and afford them an
opportunity to present their objections.” Mullane, 339 U.S. at 314. It is well-settled that service
by email on foreign defendants meets this standard in an appropriate case. See, e.g., Rio Props.,
284 F.3d at 1016-17; FKA Distrib. Co., LLC, 2017 WL 4129538, at *1; Sulzer Mixpac AG, 312
F.R.D. at 332; Dama S.p.A. v. Does, 2015 WL 10846737, at *2 (S.D.N.Y. June 15, 2015);
Microsoft Corp., 2012 WL 5497946, at *2-3; see also PCCare247 Inc., 2013 WL 841037, at *4-5
(ordering service by email and Facebook). Service through email is particularly appropriate here
because, as the record reflects, see Mustico Decl. ¶¶ 4, 5, 7, 8, the defendants engage in online
business and regularly communicate with customers through functional email addresses, see
Sulzer Mixpac AG, 312 F.R.D. at 332 (service through email appropriate because “email address
in question is listed prominently on [defendant’s] Internet homepage . . . [,] [the defendant]

Jan. 29, 2018) (citing cases); FKA Distrib. Co., LLC v. Yisi Tech. Co., Ltd., 2017 WL 4129538,
at *1 (E.D. Mich. Sept. 19, 2017) (service on Chinese defendants via email permissible); Sec. &
Exch. Comm’n v. Craven, 2015 WL 9275741, at *1 (W.D. Ky. Dec. 18, 2015) (citing cases);
PCCare247 Inc., 2013 WL 841037, at *3-4 (ordering service by email and Facebook on Indian
defendants, and noting that “[n]umerous courts have held that service by email does not violate
any international agreement where the objections of the recipient nation are limited to those
means enumerated in Article 10.”). As Sulzer Mixpac AG observed, limiting an Article 10
objection to service by postal mail recognizes the material differences between service by postal
mail and email, namely that “email communications may be more reliable than long-distance
postal communications, and the arrival of an email at its destination address may be more readily
tracked.” 312 F.R.D. at 332.
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presumably relies at least partially on contact through [its email] to conduct overseas business,
and it is reasonable to expect [defendant] to learn of the suit against it through this email
address.”); Dama S.p.A., 2015 WL 10846737, at *2 (“several recent Southern District of New
York cases have authorized email service where a defendant was, as here, alleged to be an online
China-based counterfeiting network linked to a functioning email address but which otherwise
remained anonymous.”) (citations omitted); Philip Morris USA Inc. v. Veles Ltd., 2007 WL
725412, at *3 (S.D.N.Y. Mar. 12, 2007) (authorizing service of process via email on defendants
who “conduct business extensively, if not exclusively, through their Internet websites and
correspond regularly with customers via email”). Thus, it is the means most likely to afford
notice to the defendants in this action.
Accordingly, we find that service to the defendants’ email addresses associated with
their eBay and PayPal accounts “comport[s] with constitutional notions of due process.” Rio
Props., 284 F.3d at 1015.
III. CONCLUSION
For the foregoing reasons, the motion for alternate service on defendants (Docket # 39) is
granted. Plaintiffs are authorized to serve the following defendants by email: Siew Yee Chew,
Lynette K. Chew, Kok Kit Lau, Akitrade Global Sdn. Bhd., Shein Wei Choo, Yumi Wee Keng
Yee, Lew Moy, Lim Sei Haw, Liao Wei Hao, Jiao Leng, Zheng Xiaohong, Lin Zhen Wei, and
Luo Zhihong. To allow maximum information regarding the effectiveness of service in case it is
needed at a later date, plaintiffs should use an email tracking service.

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SO ORDERED.
Dated: March 12, 2018
New York, New York

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