Out Fit 7 Limited et al v. Nanjing oooo3D Information Technology, Co, LTD

Doc. 1712345678IN THE UNITED STATES DISTRICT COURT9FOR THE NORTHERN DISTRICT OF CALIFORNIAUnited States District Court
For the Northern District of California

1011121314151617181920212223
2425262728

No. C 13-00050 CRB

OUT FIT 7 LIMITED ET AL.,

ORDER GRANTING MOTION FOR
ALTERNATIVE SERVICE

Plaintiffs,v.
NANJING 00003D INFORMATIONTECHNOLOGY, CO, LTD,Defendant.

/Plaintiffs Out Fit 7 Limited and Out Fit 7, Inc. have filed an Administrative Motion
for Alternative Service and Adjournment of the August 16 Court Conference. For thereasons below, the motion is hereby GRANTED.
Plaintiffs are the owners of copyrights and trademarks pertaining to the TALKING
TOM and TALKING FRIENDS characters and software applications–commonlyabbreviated “apps”–for various mobile platforms. See generally Compl. (dkt. 1). “TalkingTom” is a program that creates a graphical representation of an anthropomorphic cat whowill, for example, upon touch or audio cues, “play the cymbals” or “repeat everything you
say in a silly voice.” Id. ¶ 45. Plaintiffs have produced both a “Talking Tom” program and a“Talking Tom 2” program. Id. ¶ 40. “Talking Friends” includes other characters such asGinger, Angela (both cats), Pierre (a parrot) and Santa (a human), each of whom appears in
one or more programs. Id. ¶ 56.

Dockets.Justia.com

United States District Court
For the Northern District of California

1

Defendant has produced the “Talking Tom 3” and “Talking Tom 4” programs, which2also star an anthropomorphic cat. Defendant markets them as part of the “Talking Family.”3Id. ¶¶ 46, 55. Plaintiffs allege that by doing so, Defendant infringed Plaintiffs’ trademarks

4and copyrights. See generally id.

5Plaintiffs filed this suit on January 4, 2013. See dkt. 1. Plaintiffs attempted to serve

6

Defendant under the Hague Convention, using documents translated into Chinese, Fedman

7

Decl. ¶¶ 13-14 & Ex. B, but were unsuccessful because Defendant moved without leaving a

8

forwarding address, id. Ex. G. Plaintiffs’ counsel also sent Defendant the documents via

9international mail, and e-mailed Defendant the documents and a request for waiver of service

10

under Rule 4(d)(1). Id. ¶ 3.

11

Defendant responded to the e-mail, resulting in extensive further correspondence

12

between Plaintiffs’ counsel and representatives of Defendant, including someone identifying

13

herself as Defendant’s in-house legal counsel. See Id. ¶¶ 4-9, Exs. B-F. Plaintiffs’ counsel

14

also discussed the lawsuit with Defendant’s in-house counsel and CEO via telephone

15

conference. Id. ¶ 5. Defendant’s communications made clear that its leadership has actually16

received the documents and has notice of this suit. See id. Despite some early indications

17

that it would consider waiving service, Defendant ultimately refused to execute the waiver.

18

See dkt. 9-3.

19

A district court may authorize service on a foreign party by “any other means not20

prohibited by international agreement.” Fed. R. Civ. P. 4(f)(3). The court has the discretion21

to craft alternate means of service, particularly when a defendant is trying to evade service.

22

Rio Props, Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1016 (9th Cir. 2002). The Ninth Circuit

23

has approved of e-mail as a viable means of effecting service on a foreign party. Id.

24

Plaintiffs here have diligently, patiently, and unsuccessfully attempted service through25

formal international process, but failed because Defendant has made it unusually difficult to26

locate its physical address. The correspondence between the parties makes clear that

27

Plaintiffs have identified e-mail addresses used by Defendant that are regularly monitored by28

its leadership and in-house legal personnel. Consequently, the Court finds that service upon2

United States District Court
For the Northern District of California

1

Defendant by e-mail would be reasonable under the circumstances of this case and would

2

satisfy the requirements of due process.

3

For the foregoing reasons, Plaintiffs’ motion is GRANTED.

4The Court ORDERS Plaintiffs to serve a copy of the summons and complaint upon

5

Defendant at the following e-mail addresses within 10 days of this order and that this will be6deemed proper service under Federal Rule of Civil Procedure 4(f)(3).

7

Kate.liu@oooo3d.com

8

Michael@oooo3d.com

9appstore@oooo3d.com

10abey.lv@oooo3d.com

11frank.dai@oooo3d.com

12Plaintiffs are further ORDERED to file proof of valid e-mail transmission with the131415
16Court.
The Case Management Conference currently scheduled for August 16, 2013 is hereby
VACATED.
IT IS SO ORDERED.

17
18
19

CHARLES R. BREYER
UNITED STATES DISTRICT JUDGE

Dated: July 29, 201320
212223
24
25
26
27
28

G:\CRBALL\2013\0050\order re alternative service v2.wpd

3