Imagine you are a trademark owner, and you’ve discovered there is someone out there using your trademark – or something very close to it. You take steps to persuade the infringer to stop using your mark. First, you reach out to the infringer directly asking him or her to stop. From time to time starting a conversation with the infringer and explaining to him or her why your mark cannot be used is all it takes to make the infringer stop. Or, you may need to engage an attorney to send a stronger signal. However, asking doesn’t always work; you may find it’s necessary to file a lawsuit.
Once you’ve filed a lawsuit, the U.S. Constitution requires you give the person you are suing notice about where the lawsuit is pending and when the infringer can have his or her side of the story heard. This notice includes a copy of your complaint with the date of the court hearing. Delivering it to the other party is called “service of process” or “service.” In the United States, there are a number of generally accepted methods of service. The preferred method is where the notice is personally handed to the infringer, as in “you’ve been served,” and the infringer signs that he or she has received the notice. Some states (including Virginia) allow you to serve a family member, leave a copy of the notice posted to the infringer’s front door, send the notice by certified mail with a return receipt or publish a notice in a local newspaper.
But what if your infringer is not located within the United States? Providing notice of a U.S. lawsuit to a foreign national can be somewhat tricky, although most of the same rules apply to the service of foreign nationals. The overall rule is that the notice must be reasonably calculated to provide the infringer with an awareness of the lawsuit, the ability to respond or appear in court, and for international defendants, must not violate any international treaties. You can use diplomatic channels or hire a professional service to put the notice in the hands of the infringer. You can also use registered mail. If you still cannot physically locate the infringer, you may be able to convince a court that service through electronic means, including email or social media, is the only way to properly notify the infringer of the lawsuit.
The Case: Whoshere, Inc. v. Gokhan Orun
In a recent case in Virginia federal court, the judge determined that service via email, Facebook and LinkedIn was an effective way of notifying a particularly difficult Turkish infringer. In Whoshere, Inc. v. Gokhan Orun, the plaintiff had emailed Orun, a Turkish citizen, prior to the filing of the lawsuit. Whoshere, Inc. v. Gokhan Orun, Civil Action No. 1:13-cv-00526-AJT-TRJ (Feb. 20, 2014). Orun responded via email confirming that he was the founder and developer of the allegedly infringing application and provided an additional email address and Skype user name. Orun also told Whoshere he could be located on all social networking sites with his email. Whoshere did, in fact, locate Orun on Facebook and LinkedIn with more infringing material.
After filing suit, Whoshere emailed Orun a courtesy copy of the complaint and attempted to complete physical service of the complaint through the Turkish Ministry of Justice (who translated the complaint and summons into Turkish). The Turkish Ministry of Justice was unable to locate Orun and returned the complaint to the U.S. At this point, Whoshere asked Magistrate Judge Jones in the Eastern District of Virginia to allow alternative methods of service on Orun through the email addresses and social networking user names Orun previously provided Whoshere.
Magistrate Judge Jones stated that service by two email addresses and two social networking accounts (Facebook and LinkedIn) was reasonably calculated to provide Orun notice of the suit because Orun himself provided Whoshere with the email contacts and referred Whoshere to the social networking profiles which appear to be regularly viewed and maintained by the defendant.
The approval of service through social media is a remarkable move forward in the fight against international trademark infringement. It is still unclear whether Magistrate Judge Jones’ practical and logical view of international service will become pervasive throughout the Eastern District and other federal courts dealing with the same types of issues. In the U.S., service can only be accomplished by methods that are specifically approved by the state law and certain federal procedural rules. Currently, electronic service through email and social media sites are not approved for initial service of complaint. It is possible that we may see future legislation adding electronic means of email and social media to the approved methods of service.
Can Virginia Businesses Be Served Via Social Media or Email?
It is clear from the unique situation in Whoshere, that when dealing with foreign national infringers – if during pre-lawsuit conversations the infringer confirms his ownership of email and social media accounts – you may be able to use these confirmations to later serve the infringer via email or social media, especially if you are unable to physically find the infringer. After this decision, can your business in Virginia be served with notice of a lawsuit by Facebook, LinkedIn or email? Most likely not. But if you are chasing an infringer around the world, this handy decision could help you bring that infringer to justice.