United States District Court, D. Colorado
BEIJING QIYI CENTURY SCIENCE & TECHNOLOGY CO., LTD. and BEIJING IQIYI SCIENCE & TECHNOLOGY CO., LTD., Plaintiffs,
v.
SHENZHEN QIYI INNOVATIONS TECHNOLOGY CO., LTD., Defendant.
ORDER
SCOTT
T. VARHOLAK, UNITED STATES MAGISTRATE JUDGE
This
matter is before the Court on (1) Plaintiffs' Motion for
Alternative Service of Process (the “Motion for
Alternative Service”) [#15] and (2) Plaintiffs'
Motion to Continue Scheduling Conference and Related
Deadlines (the “Motion to Continue”) [#13]. Both
motions have been referred to this Court. [#14, 16] For the
following reasons, the Motion for Alternative Service and the
Motion to Continue are both GRANTED.
I.
BACKGROUND[1]
Plaintiff
Beijing QIYI Century Science & Technology Co., Ltd. and
Plaintiff Beijing iQIYI Science & Technology Co., Ltd.
(collectively, “Beijing QIYI”) are Chinese
limited companies that are each a subsidiary or affiliated
company of iQIYI, Inc., a publicly-traded Chinese company.
[#1 at ¶¶ 4-6] Beijing QIYI (together with its
parent and affiliated companies) is one of the largest
providers in the world of on-line content, programming, and
entertainment services, and is sometimes referred to as
“the Netflix of China.” [Id. at
¶¶ 8-9] Beijing QIYI “has developed a
diversified offering of services in addition to its on-line,
streaming, and downloadable content offerings that includes
membership services, online advertising services, live
broadcasting, online games, online literature, e-commerce,
and related services.” [Id. at ¶ 10]
Since at least as early as 2011, Beijing QIYI (including
through its parent company, licensees and affiliates) has
used a stylized version of IQIYI (the “IQIYI
Mark”) throughout the United States in connection with
the promotion, advertising, offering, and sale of its various
goods and services. [Id. at ¶ 13] As a result
of its widespread, continuous and substantially exclusive use
of the IQIYI Mark to identify its goods and services, Beijing
QIYI contends that it “owns valid and subsisting
federal statutory and common law rights to the IQIYI
Mark.” [Id. at ¶ 15]
According
to the Complaint, Defendant Shenzhen QiYi Innovations
Technology Co., Ltd., a Chinese limited company, is a
start-up that began operating in 2016. [Id. at
¶¶ 7, 21] Defendant manufactures, distributes,
advertises, and sells a variety of products and services,
including products and software for use with mobile devices
and for enhancing or enabling the use of those devices with
multimedia services. [Id. at ¶ 24] Plaintiffs
contend that, “[w]ell after Beijing QIYI had coined and
built its multi-billion business under its IQIYI Mark
throughout the United States and the world, Defendant adopted
a confusingly similar tradename, Shenzhen QIYI, ” and
began using marks similar to the IQIYI Mark (the
“Infringing Mark”) to sell goods into the United
States. [Id. at ¶ 22] Plaintiffs allege that
“Defendant was aware of Beijing QIYI's well-known
IQIYI Mark and intentionally selected its Infringing Mark so
as to trade off the goodwill and value associated with
Beijing QIYI's IQIYI Mark.” [Id. at ¶
23] Plaintiffs further allege that, despite its knowledge of
the IQIYI Mark, on May 16, 2017, Defendant obtained a
trademark for the Infringing Mark from the United States
Patent and Trademark Office (“USPTO”) by making
false statements and omissions. [Id. at ¶¶
29-36] As a result, when Beijing QIYI filed an application to
register the IQIYI Mark, the USPTO refused to register this
application as to certain goods due to a likelihood of
confusion with Defendant's Infringing Mark. [Id.
at ¶ 38]
On
September 14, 2018, Plaintiffs filed the instant lawsuit
asserting claims against Defendant for trademark infringement
and cancellation of the registration of Defendant's
Infringing Mark. [Id. at 11-14] On September 26,
2018, this Court issued an order setting a Scheduling
Conference for December 17, 2018. [#12] To date, Defendant
has neither been served nor entered an appearance in the
lawsuit.
In
addition to the current litigation, Plaintiffs and Defendant
also are engaged in at least three other legal proceedings
involving the IQIYI Mark: (1) a cancellation proceeding at
the UPTPO's Trademark Trial and Appeal Board (the
“TTAB Proceeding”), (2) a trademark litigation
filed by Beijing QIYI against Defendant in China (the
“China Proceeding”), and (3) a trademark
opposition proceeding in the European Union (the “EU
Proceeding”). [#15-1 at ¶ 2]
II.
ANALYSIS
A.
Motion for Alternative Service
Through
the Motion for Alternative Service, Plaintiffs seek an order
of the Court authorizing service of process on Defendant via
email to Defendant and its U.S. counsel in the TTAB
Proceeding. [#15 at 1-2] Plaintiffs represent that, upon
filing the instant lawsuit, they “promptly initiated
service under the Hague Convention on the Service Abroad of
Judicial and Extrajudicial Documents (the ‘Hague
Convention').” [Id. at 4] On October 18,
2018, Plaintiffs sent a request for service abroad pursuant
to the procedures of the Hague Convention to the Ministry of
Justice of China. [#15-1 at ¶ 4] Plaintiffs contend,
however, that service through the Hague Convention in China
“may often take longer than a year and there is no
guarantee service will ever be effected.” [#15 at 4] As
a result, in addition to pursuing service through the Hague
Convention, Plaintiffs also sought Defendant's agreement
to a waiver of service.
On
September 21, 2018, counsel for Plaintiffs sent a request to
waive service pursuant to Federal Rule of Civil Procedure 4
(a “Waiver Package”) to an attorney who had
represented Defendant in pre-suit negotiations and had
previously made an offer of settlement on behalf of
Defendant, but, in response to the Waiver Package, the
attorney stated that he was not representing Defendant in
connection with the instant litigation. [#15-1 at ¶ 3]
On November 5, 2018, Plaintiffs sent a Waiver Package to
attorneys who had originally entered an appearance on behalf
of Defendant in the TTAB Proceeding. [Id. at ¶
5] One of those attorneys responded that he had forwarded the
Waiver Package to the Chinese Firm that had hired him.
[Id.] On November 21, 2018, Plaintiffs sent a Waiver
Package to the individual and email address that Defendant
had designated as its agent for service of process in the
TTAB Proceeding. [Id. at ¶ 6] In the TTAB
Proceeding, service was effectuated using this email address,
and Defendant responded, retained counsel, and filed an
answer. [Id.] On November 26, 2018, Plaintiffs sent
a Waiver Package to the attorney who represents Defendant in
the EU Proceeding. [Id. at ¶ 7] The attorney
acknowledged receipt and said that he would forward the
request to Defendant's Chinese counsel. [Id.] On
December 3, 2018, Plaintiffs sent a Waiver Package to the
attorney who currently represents Defendant in the TTAB
Proceeding and discussed the request with that attorney
during a conference in the TTAB Proceeding. [Id. at
¶ 8] To date, despite multiple follow-up communications,
none of the attorneys to whom the Waiver Package was sent
have returned a signed waiver or otherwise indicated that
Defendant will agree to waive service. [Id. at
¶ 9]
Federal
Rule of Civil Procedure 4(h) provides, in relevant part, that
a foreign corporation or unincorporated association may be
served “at a place not within any judicial district of
the United States, in any manner prescribed by Rule 4(f) for
serving an individual, except personal delivery.” Rule
4(f)(1) allows service “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.” Rule 4(f)(3) also allows service “by
other means not prohibited by international agreement, as the
court orders.” “Courts have held that Rule 4(f)
does not create a hierarchy among its subsections dictating
that one form of service is favored over another.”
Garb Oil & Power Corp. v. Titan Int'l Sec.,
Inc., No. 2:17-CV-00762-PMW, 2018 WL 4401737, at *1 (D.
Utah Sept. 14, 2018) (collecting cases). “Accordingly,
‘service of process under Rule 4(f)(3) is neither a
last resort nor extraordinary relief.'”
Id. (quoting Rio Props., Inc. v. Rio Int'l
Interlink, 284 F.3d 1007, 1015 (9th Cir. 2002)). To
comply with due process, any means of service must be
“reasonably calculated, under all the 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 &
Trust Co., 339 U.S. 306, 314 (1950).
Here,
Plaintiffs seek leave of the Court to serve Defendant by
email sent to Defendant and its U.S. counsel in the TTAB
Proceeding. Numerous courts have found that neither method of
service is prohibited by any international agreement and thus
have permitted service on Chinese defendants by email and/or
by substituted service on legal counsel pursuant to Rule
4(f)(3).[2] See, e.g., Jackson Lab. v.
Nanjing Univ., No. 1:17-CV-00363-GZS, 2018 WL 615667, at
*4 (D. Me. Jan. 29, 2018) (collecting cases allowing service
by email pursuant to Rule 4(f)(3)); Micron Tech., Inc. v.
United Microelectronics Corp., No. 17-CV-06932-MMC, 2018
WL 6069646, at *2 (N.D. Cal. Nov. 20, 2018) (collecting cases
finding that service upon US-based counsel does not violate
international law). The Court thus finds that the requested
forms of alternative service are available methods of service
upon Defendant pursuant to Rule 4(f)(3).
The
Court also finds that granting Plaintiffs leave to effectuate
service through these alternative methods pursuant to Rule
4(f)(3) is justified under the circumstances presented by
this case. Plaintiffs allege that “Defendant's
ongoing infringement of Beijing QIYI's trademark through
the sales of cheap, substandard products is causing
irreparable harm to the [IQIYI] Mark's goodwill and
confusion in the market place.” [#15 at 8] As a result,
Plaintiffs contend that completing service through the Hague
Convention-which can take longer than a year-would cause
significant delay and hardship. [Id.] Such delay and
potential hardship appear unnecessary here, given that the
parties already are actively engaged in several related
proceedings around the world and ...