Safavieh Intl LLC v. Chengdu Junsen Fengrui Technology Co, Ltd.-Tao Shen et al

Filing 14

MEMORANDUM DECISION AND ORDER DENYING PLAINTIFF'S MOTION FOR ALTERNATIVE SERVICE: This constitutes the decision and order of the court. It is a written opinion. The Clerk of Court is respectfully directed to terminate the motion at Docket Number 10. (Signed by Judge Colleen McMahon on 6/13/2023) (tg)

Case 1:23-cv-03960-CM Document 14 Filed 06/13/23 Page 1 of 11

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
__________________________________________x
SAFAVIEH INTL, LLC,
-against-

Plaintiff,

No. 23 Civ. 3960 (CM)

CHENGDU JUNSEN FENGRUI TECHNOLOGY CO,
LTD.-TAO SHEN and DOES 1-10,
Defendants.
__________________________________________x
MEMORANDUM DECISION AND ORDER DENYING PLAINTIFF’S
MOTION FOR ALTERNATIVE SERVICE
McMahon, J.:
This ex parte application for an order authorizing alternative service arises in connection
with a dispute between two rug merchants.
Plaintiff Safavieh Intl, LLC (“Safavieh”) is a New York designer rug company that has
copyright registrations for a number of its rug designs. It sells its rugs on various websites,
including the online marketplace Amazon. Defendant Chengdu Junsen Fengrui Technology Co,
Ltd.-Tao Shen (“Chengdu”) is a Chinese rug dealer that also sells its goods in the United States
through Amazon. Defendants Does 1-10 are the unknown officers, employees and/or agents of
Chengdu.
Starting in or around September 2022, Chengdu began to sell rugs on Amazon under the
brand name “Wonnitar.” Plaintiff claims these rugs are substantially similar in appearance and
design to certain of Safavieh’s copyrighted rug designs. Sometime prior to April 5, 2023,
Plaintiff sent a takedown notice to Amazon, seeking the removal of all listings that appeared to
infringe Safavieh’s designs, pursuant to the Digital Millennium Copyright Act, 17 U.S.C. § 512
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(the “DMCA”). On April 5, 2023, Safavieh received an email from Amazon stating that it had
received a counter-notice (“Counter-Notice”) from Chengdu challenging the removal of the
material identified in the notice of infringement.
In the Counter-Notice, Chengdu made the following representations:
(I) “I 1 am located outside of the United States and I consent to the jurisdiction of any
judicial district in which Amazon may be found.”
(II) “I agree to accept service of process from the person who provided notification under
subsection (c)(1)(C) or an agent of such person.”
On May 11, 2023, Plaintiff filed the instant complaint, asserting one count of copyright
infringement and seeking injunctive relief and damages. Less than a week later, Plaintiff filed its
motion for an order to show cause authorizing alternative service of its complaint on Defendants
through the email address provided in the Counter-Notice.
In essence, Plaintiff argues that it should be able to serve Defendants by email because it
would be “extremely difficult and time-consuming” to serve them in China pursuant to the
methods stated in the Convention on the Service Abroad of Judicial and Extrajudicial Documents
in Civil or Commercial Matters (the “Hague Service Convention” or “Convention”).
Unfortunately, Plaintiff is stuck with “extremely difficult and time-consuming.”
There are three requirements for establishing personal jurisdiction over a defendant.
“First, the plaintiff's service of process upon the defendant must have been procedurally proper.
Second, there must be a statutory basis for personal jurisdiction that renders such service of
process effective.... Third, the exercise of personal jurisdiction must comport with constitutional

The pronoun “I” in this instance refers specifically to the entity that filed the counter-notice and provided its
contact information, which is “Chengdu Junsen Fengrui Technology Co, Ltd.-Tao Shen.” (Dkt. No. 11-1 at 2). That
entity is the named defendant in this lawsuit.
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due process principles.” Licci ex rel. Licci v. Lebanese Canadian Bank, SAL, 673 F.3d 50, 59–60
(2d Cir. 2012).
Plaintiff argues that Defendants have consented to this court’s jurisdiction because
Chengdu consented to the jurisdiction of “any judicial district court in which Amazon may be
found” and Amazon, as a national business doing business in every judicial district of the United
States, may be found in the Southern District of New York. Certainly that appears to be the case;
it says so in the Counter-Notice, and Chengdu would have to file a special appearance to contest
Safavieh’s prima facie showing of consent. 2
But consent to jurisdiction is not enough. Before a court can take cognizance of a claim
against a particular defendant, that defendant must be properly served with process. Plaintiff’s
proposed method for serving the Defendants would not effect proper service.
“Before a federal court may exercise personal jurisdiction over a defendant, the
procedural requirement of service of summons must be satisfied.” Dynegy Midstream Servs. v.
Trammochem, 451 F.3d 89, 94 (2d Cir. 2006) (citation omitted). Plaintiff argues that Federal
Rule of Civil Procedure (“Fed. R. Civ. P.”) 4(e)(1) authorizes service on an individual according
to state law, and that New York state law, specifically New York Civil Practice Law and Rules
(“CPLR”) § 308(f), allows for alternative service if service is otherwise impracticable by the
methods contemplated by the rule. While Plaintiff knows the business address of the Defendant
Chengdu, it argues that all of the methods authorized by CPLR Section 308 are impracticable
because all Defendants are in China. Thus, it asks this court to allow it to serve Defendants via
the email address provided in the Counter-Notice. Plaintiff further argues that service by email is
appropriate because the Chengdu consented to service of process via email. Finally, Plaintiff
Whether Chengdu’s consent also qualifies as consent to jurisdiction on behalf of its unnamed employees, agents
and officers is another matter entirely, but not one that the court needs to address now.

2

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contends that this court may, in its discretion, authorize service be email pursuant to Fed. R. Civ.
P. 4(f)(3).
None of these arguments persuades.
First, Fed. R. Civ. P. 4(e)(1) is not the applicable rule of service here. Fed. R. Civ. P. 4(e)
governs service of process on an individual within a judicial district of the United States. But
Chengdu is a corporation, not an individual. 3 Fed. R. Civ. P. 4(h) governs service on a
corporation. Under Rule 4(h), a corporation “at a place not within any judicial district of the
United States,” (i.e., a corporation in a foreign country) must be served in any manner authorized
by Rule 4(f), except personal delivery. Fed. R. Civ. P. 4(h)(2). Plaintiff wishes to serve
Defendants in China, so it must do so in accordance with Fed. R. Civ. P. 4(f), not Fed. R. Civ. P.
4(e).
Second, in the Counter-Notice, Chengdu did not agree to accept service via email. It has
only consented to “accept service of process from the person who provided notification under
subsection (c)(1)(C) or an agent of such person.” This is consent to accept service effected by a
particular person (Safavieh), not consent to accept service in a particular manner (via email).
Third, and determinative, Chengdu could not consent to service via email unless email
service were permissible under the Hague Convention. It is not.
“[C]ompliance with the [Hague] Convention is mandatory in all cases to which it
applies.” Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694, 705 (1988).
It specifically applies to service on foreign citizens in signatory countries, except “where the
address of the person to be served with the document is not known.” Advanced Access Content
Sys. Licensing Adm'r, LLC v. Shen, 2018 WL 4757939, at *4 (S.D.N.Y. Sept. 30, 2018) (citing
Plaintiff’s repeated references to CPLR § 308 – service on an individual – also fails to take into account that the
relevant provision for service on a corporation like Chengdu is CPLR § 311, not CPLR § 308.
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Hague Convention art. 1) (internal quotations omitted). Both China and the United States are
parties to the Hague Convention, so the Convention applies to this action. See The World
Organisation for Cross-border Co-operation in Civil and Commercial Matters, HCCH Members,
available at https://www.hcch.net/en/states/hcch-members (last visited May 18, 2023). This
means that service may only be effected pursuant to the provisions of that Convention, as long as
the address of the person to be served with the document is known.
In this case the address of the only named defendant (Chengdu) is known – it is contained
in the Counter-Notice. Plaintiff concedes on the face of its complaint that a physical address was
provided for the company in its Counter-Notice — Sichuan Province Chengdu No. 32, No. 962,
Qianlong Road Wuhou District, Chengdu, Sichuan Province. Therefore, the Convention by its
terms governs the propriety of service of process on Chengdu, a defendant located in China.
Under the Hague Convention, use of Convention procedures is mandatory if documents
have to be transmitted abroad to effect service. Fed. R. Civ. P. Rule 4 Advisory Committee
Note—1993 Amendment. Since the complaint and related documents still need to be transmitted
to Chengdu in China, service must be effected according to Convention procedures. A Defendant
such as Chengdu could not agree to a manner of service that bypasses those procedures.
Finally, Plaintiff asks this court to allow alternative service via email pursuant to Rule
4(f)(3), rather than require it to serve Defendants pursuant to Rule 4(f)(1) (the procedures
affirmatively authorized by the Hague Convention). However, alternative service, pursuant to
Fed. R. Civ. P. 4(f)(3), is not available at this stage of litigation.
Fed. R. Civ. P 4(f)(1) authorizes service of foreign defendants by any “internationally
agreed means of service that is reasonably calculated to give notice,” such as the Hague
Convention. In general, the Hague Convention permits multiple methods of service:

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“First, an applicant can send a request for service to a receiving country's central
authority, an entity that every signatory to the Convention must establish. . . .
Second, the Convention permits alternative methods of service unless the
receiving country objects. These methods include service by diplomatic and
consular agents, service through consular channels, service on judicial officers in
the receiving country, and direct service ‘by postal channels.’”
Smart Study Co. v. Acuteye-Us, 2022 WL 2872297, at *7 (S.D.N.Y. July 21, 2022) (quoting
Facebook, Inc. v. 9 Xiu Network (Shenzhen) Tech. Co., 480 F. Supp. 3d 977, 980 (N.D. Cal.
2020) (cleaned up). However, China has specifically objected to many of these methods of
service, including service “by postal channels.” See China – Central Authority & Practical
Information, Hague Conference on Private Int'l Law,
https://www.hcch.net/en/states/en/states/authorities/details3/?aid=243 (last visited May 19,
2023).
The only method of service on defendants in China that is affirmatively authorized by the
Convention is submission of requests to serve to China’s central authority; a method that, as
Plaintiff notes, can take six months to execute. Id. For this reason, Plaintiff asks this court to
allow it to serve Defendants via email, pursuant to Fed. R. Civ. P. 4(f)(3), which allows service
“by other means not prohibited by international agreement.” Since “email,” is not mentioned
anywhere in the Convention—which long predates the advent of email—Plaintiff contends that it
is not prohibited by the Convention, even where a signatory country has objected to service by
postal channels.
I disagree.
In recent years, my colleagues in this Circuit have split over whether e-mail service is
permitted where signatories to the Hague Convention object to service by postal channels. I am
inclined to agree with the more recent cases, which hold that service via email on litigants
located in China is not permitted by the Hague Convention.
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Since 2015, starting with a decision written by the Honorable Jed S. Rakoff, Sulzer
Mixpac AG v. Medenstar Indus. Co., 312 F.R.D. 329, 332 (S.D.N.Y. 2015)—cited approvingly
by Plaintiff—some courts in this Circuit have reasoned that service by email of foreign
defendants is permitted under the Hague Convention, because a signatory country’s objection to
service by “postal channels” does not expressly bar service by email. Smart Study, 2022 WL
2872297, at *9 (collecting cases). Specifically, Sulzer and its progeny hold that the (1) the term
“postal channels” does not explicitly encompass email, so any objection to service by postal
channels does not bar service by email, and (2) since email is not otherwise expressly barred, it is
a permissible form of service. Id.
However, recently, courts in this Circuit have begun to shift the other way. The
Honorable Gregory H. Woods, in a thorough and well-researched decision — one that draws on
an amicus brief filed by Professor Benjamin Liebman, the “Robert L. Lieff Professor of Law and
Director of Columbia Law School's Hong Yen Chang Center for Chinese Legal Studies” and
Geoffrey Sant, a partner and co-chair of Pillsbury Winthrop Shaw Pittman LLP's China Practice
—determined that service of defendants in China by email was prohibited under the Hague
Convention. Smart Study, 2022 WL 2872297, at *8. 4
In light of the recent Supreme Court decision Water Splash, Inc. v. Menon, 581 U.S. 271,
273 (2017)—decided after Sulzer—the Smart Study court determined that the specific methods
of service outlined in the Hague Convention are exclusive, and any methods not explicitly
authorized are forbidden. Smart Study, 2022 WL 2872297, at *7. Or, as the Supreme Court put it,

4
After the Smart Study court held that service by email was improper, the plaintiff filed an interlocutory appeal of
the order in the Second Circuit. However, the Second Circuit determined that it lacked appellate jurisdiction over the
district court’s order because the order was neither a final decision nor an interlocutory order appealable under 28
U.S.C. § 1292(a)(1).

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“the Hague Service Convention specifies certain approved methods of service and ‘pre-empts
inconsistent methods of service’ wherever it applies.” Smart Study Co., 2022 WL 2872297, at *8
(quoting Water Splash, 581 U.S. at 273).
Judge Woods then went on to hold that, regardless of whether email is a permissible
method of service under the Convention procedures, China’s specific objection to service by
postal channels precludes service by email. As Judge Woods determined, with the assistance of
the amici, Chinese authorities have stated that China’s objection to service by postal channels
includes an implicit objection to service by email. Id. at *9. Indeed, China’s rules of civil
procedure affirmatively prohibit foreign agencies and individuals from serving documents
through any channels other than those authorized in the Hague Convention. Id. at *11. As a
result, service on defendants in China via email is prohibited under the Hague Convention and
would not be proper under Rules 4(f)(1), 4(f)(2)(c), or (4)(f)(3). 5 The Smart Study court
concluded that the plaintiff must serve the defendants via the Chinese central authority, the only
method authorized by the Hague Convention.
Many courts in this circuit have since adopted the court’s holding in Smart Study. See,
e.g., Moonbug Ent. Ltd. v. www.blippimerch.com, 2023 WL 2730107, at *3 (S.D.N.Y. Mar. 28,
2023); Kadmon Corp., LLC v. Ltd. Liab. Co. Oncon, 2023 WL 2346340, at *4 (S.D.N.Y. Mar. 3,
2023); Kyjen Co., LLC v. Individuals, Corps., Ltd. Liab. Companies, Partnerships, &
Unincorporated Associations Identified on Schedule A to Complaint, 2023 WL 2330429, at *1
(S.D.N.Y. Mar. 2, 2023); Schluter Sys., L.P. v. Sanven Corp., 2023 WL 130888, at *5 (N.D.N.Y.

Fed. R. Civ. P. 4(f)(2)(c) provides for service by a means reasonably calculated to give notice unless prohibited by
the foreign country’s law. Since the Chinese rules of civil procedure prohibit service via channels not authorized by
the Hague Convention, email service would not be proper under Rule 4(f)(2)(c). Smart Study Co., 2022 WL
2872297, at *11.
5

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Jan. 6, 2023); Shenzhen Chengront Tech. Co. v. Besign Direct, 2022 WL 17741496, at *2
(S.D.N.Y. Dec. 9, 2022). 6 With all respect to those whose decisions came before Judge Woods
handed down his magnum opus, I believe that Smart Study offers the correct interpretation of the
Hague Convention in light of recent Supreme Court precedent.
Moreover, Smart Study’s holding makes the most sense. As the Smart Study court opined,
the Hague Convention “is meant to set forth simple and certain methods of service that can be
used to serve foreign litigants.” Smart Study Co. v. Acuteye-Us, 2022 WL 2872297, at *10.
Therefore, “to infer that the Convention's silence as to a particular method [of service] equates to
an implied permission to use virtually any method of service not proscribed by the Convention
contravenes that purpose.” Id. It seems beyond the remit of this court, and against the principles
of international comity, to decide that Chinese defendants can be served by email simply because
an international treaty does not mention this post-treaty technological development—especially
given China’s recent pronouncement that the method is impermissible.
However, I emphasize that this is not necessarily my final answer. “When courts have
allowed for alternative service, they have done so when ‘plaintiffs have been unable, despite
diligent efforts, to serve the defendant in the [foreign country] according to the Hague []
Convention procedures.’” S.E.C. v. China Ne. Petroleum Holdings Ltd., 27 F. Supp. 3d 379, 398
(S.D.N.Y. 2014) (quoting S.E.C. v. Shehyn, 2008 WL 6150322, at *3 (S.D.N.Y. Nov. 26, 2008))
(alterations and emphasis in original). If Safavieh were to persuade this court that it was unable
despite diligent efforts to effect Hague Convention service, then I would be free to consider other

As my colleague, the Honorable Paul A. Engelmayer, observed in Kelly Toys Holdings, LLC. v. Top Dep't Store,
2022 WL 3701216, at *8 n.6 (S.D.N.Y. Aug. 26, 2022), Judge Woods’ analysis also tracks that of courts in other
districts. See, e.g., Anova Applied Elecs., Inc. v. Hong King Grp., Ltd., 334 F.R.D. 465, 472 (D. Mass. 2020); CRS
Recovery, Inc. v. Laxton, 2008 WL 11383537, at *2 (N.D. Cal. Jan. 8, 2008); Facebook, Inc. v. 9 Xiu Network
(Shenzhen) Tech. Co., 2020 WL 5036085, at *8 (N.D. Cal. Aug. 19, 2020); Luxottica Grp. S.p.A. v. P'ships &
Unincorp. Assocs. Identified on Schedule “A,” 391 F. Supp. 3d 816, 827 (N.D. Ill. 2019).

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methods of service. In particular, if it turns out that the address provided by Chengdu in the
Counter-Notice is not an address where Chengdu can be served in accordance with the Hague
Convention, I could authorize other means of service, because the Hague Convention applies
only where the defendant’s address is “known.”
“Courts in this Circuit have found that an address is ‘not known’ if the plaintiff exercised
reasonable diligence in attempting to discover a physical address for service of process and was
unsuccessful in doing so.” Id. (collecting cases). Safavieh makes no showing that it has
exercised reasonable diligence to determine whether the address is or is not an appropriate
address for service on Defendants. Reasonable diligence requires more than a “mere perusal of a
defendant's storefront.” Smart Study, 2022 WL 2872297, at *6. A plaintiff must make further
efforts, such as investigating likely physical addresses and determining whether they are
associated with the defendants. See Kelly Toys Holdings, LLC. v. Top Dep't Store, 2022 WL
3701216, at *6 (S.D.N.Y. Aug. 26, 2022). There is no evidence in the record that suggests
Plaintiff has taken any steps to confirm or deny whether the physical address provided is
appropriate for service — not even the bare minimum of calling the phone number provided in
the Counter-Notice.
Therefore, Safavieh must begin the “extremely difficult and time-consuming” process of
trying to serve Chengdu in accordance with Hague Convention rules. There is neither any endrun around the rules of procedure nor any exigent circumstances exception to Rule 4. Baliga on
behalf of Link Motion Inc. v. Link Motion Inc., 385 F. Supp. 3d 212, 220 (S.D.N.Y. 2019). And if
there were an exigent circumstances exception, Plaintiff fails to identify any “exigent
circumstances” that would justify an order permitting alternative service. If, after making the
necessary effort, it is able to convince the court that reasonable diligence has failed to uncover a

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legitimate physical address in China for Chengdu, Plaintiff will be free to renew its application
for leave to effect service via email. Until that happens, Plaintiff's request for leave to serve by
alternative means is denied without prejudice.
CONCLUSION
This constitutes the decision and order of the court. It is a written opinion. The Clerk of
Court is respectfully directed to terminate the motion at Docket Number 10.

Dated: June 13, 2023

__________________________________
U.S.D.J.
BY ECF TO ALL COUNSEL

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