Vondran Legal® - IP Litigation Essentials - Service of Process on Foreign Defendants in YouTube DMCA cases.  Call us for legal representation at (877) 276-5084.

Introduction

Here is a case from the United States District Court Northern District of California

Plaintiff syndicates and licenses video content of extreme weather events
from around the world. Defendant, a citizen of Spain, allegedly downloaded and copied Plaintiff's
copyrighted materials from YouTube, and then re-uploaded infringing versions of Plaintiff's
copyrighted media content to his YouTube channel(s). Plaintiff seeks leave to serve Defendant
via email and posting on a designated website. Plaintiff alleges XXXXX operates the YouTube Channel XXXXXX. Defendant is alleged to have “downloaded and edited Plaintiff's Works, removed their copyright management information, and then uploaded infringing versions of the Works to YouTube in order
“to advertise, market and promote their YouTube channel, grow their YouTube channel subscriber
base, earn money from advertising to their YouTube subscribers, and engage in other moneymaking business activities using Plaintiff's copyrighted media content.” 

Plaintiff notified YouTube and Defendant of the allegedly infringing behavior by filing DMCA takedown notices, but Defendant responded with false and misleading information. After filing this action, Plaintiff was granted leave to subpoena Google to obtain information sufficient to identify the individual operating Defendant's YouTube channel. Plaintiff now seeks leave to serve Defendant through alternative email service to the
email address Google provided in response to the subpoena as well as by website posting. Plaintiff contends “allowing e-mail service in the present case is appropriate and comports with constitutional notions of due process, particularly given Defendant's decision to conduct his illegal businesses using the Internet and utilizing e-mail as a primary means of communication.”

After carefully considering Plaintiff's motion and the relevant legal authority, the Court concludes oral argument is unnecessary, see Civ. L.R. 7-1(b), and DENIES WITHOUT PREJUDICE the motion for alternative service.

Service of Process on Foreign Defendants

Federal Rule of Civil Procedure 4(f) provides the applicable authority for serving an
individual in a foreign country.

Under Rule 4(f)(3), courts can order service through a variety of
methods, “including publication, ordinary mail, mail to the defendant's last known address,
delivery to the defendant's attorney, telex, and most recently, email” so long as the method of service is not prohibited by an international agreement. Rio Props., Inc. v. Rio Intern. Interlink, 284 F.3d 1007, 1016 (9th Cir. 2002) (citation omitted).

“However, the fact that an alternative method of service is not prohibited by international agreement does not mean that the plaintiff is entitled to use such a method under Rule 4(f)(3).” Keck v. Alibaba.com, Inc., 330 F.R.D. 255, 257–58 (N.D. Cal. 2018). It is within a court's “sound discretion” to determine whether “the
particularities and necessities of a given case require alternate service of process under Rule
4(f)(3).” Rio Properties, 284 F.3d at 1016. To comport with due process, alternate service of process must be “reasonably calculated to apprise interested parties of the pendency of the action and afford them an opportunity to present their objections.”

Service by email may be proper when:

(1) international agreement does not prohibit service by email,

and

(2) service by email is reasonably calculated to provide actual notice to the defendant. See D.Light Design, Inc. v. Boxin Solar Co., No. C–13–5988 EMC, 2015 WL 526835, at *1 (N.D. Cal. Feb. 6, 2015) 

International agreement does not prohibit service by email here. The Hague Service
Convention governs because the United States and Spain are both parties to this multilateral treaty.
See Hague Service Convention Status Table,
https://www.hcch.net/en/instruments/conventions/status-table/?cid=17 (last visited Apr. 11, 2024).

The Convention's language is mandatory “in all cases, in civil or commercial matters, where there
is occasion to transmit a judicial or extrajudicial document for service abroad.” Volkswagenwerk v.Aktiengesellschaft v. Schlunk, 486 U.S. 694, 699 (1988). 

The Convention authorizes service in several ways, including

(a) through a receiving country's central authority,

(b) by diplomatic and consular agents, through consular channels, on judicial officers in
the receiving country, or direct service by postal channels, unless the receiving country objects,

and

(c) by additional methods of service that a signatory country may designate within their
borders either unilaterally or through side agreements. Facebook, Inc. v. 9 Xiu Network(Shenzhen) Technology Co., Ltd., 480 F. Supp. 3d 977, 980 (2020).

“Nothing in the Hague Convention itself prohibits alternative service by email, when such service is directed by a court.” See Google LLC v. Does 1-3, No. 23-CV-05823-VKD, 2023 WL 8851619, at *2 (N.D. Cal. Dec. 21, 2023) (collecting cases).

Plaintiff, however, has not made an adequate showing service by email comports with due
process.

As a threshold matter, Plaintiff has not identified the email address(es) it intends to use to
serve Defendant.

Plaintiff indicates it plans to use the email address Google provided in response
to a subpoena, but it has not attached a copy of Google's response. See, e.g., Google, 2023 WL
8851619, at *2 (relying on Google subscriber records submitted with the motion for alternative
service demonstrating the accounts were active and recently accessed to demonstrate service by
email was “likely to reach defendants and is reasonably calculated to provide them actual notice of
this action.”).

Nor has Plaintiff provided evidence the email address Defendant provided Google is likely
to be legitimate.

Plaintiff contends Defendant must provide Google “a valid electronic means to
contact her” “in order to communicate with Google, receive notice of DMCA takedowns, submit
counternotices, receive payment advices, and communicate with YouTube concerning his
YouTube channel,” but Plaintiff alleged in the complaint the information in Defendant's
counternotice was fraudulent. The counternotice indicates XXXXX is registered to XXXXXX of Alicante, Spain and uses the email address XXXXX. Plaintiff does not
explain what portion of this information it believes is inaccurate or fraudulent and whether Google
provided a different address for XXXXX in response to the subpoena.

Nor has Plaintiff provided other evidence demonstrating service by email is likely to reach
Defendant. For example, Plaintiff has not provided evidence it attempted to communicate with
Defendant at the XXXXX email address or another email address to ensure
the address is legitimate. See, e.g., F.T.C. v. Pecon Software Ltd., No. 12 CIV. 7186 PAE, 2013
WL 4016272, at *5 (S.D.N.Y. Aug. 7, 2013) (“Service by email alone comports with due process
where a plaintiff demonstrates that the email is likely to reach the defendant.”); Hillbroom v.
Lujan, 2010 WL 11515374, at *2 (C.D. Cal. May 3, 2010) (permitting service of foreign
individual by email where individual used the subject email address to communicate with
counsel); Goes Int'l, AB v. Dodur Ltd., No. 14-CV-5666, 2015 WL 1743393, at *3 (N.D. Cal. Apr.
16, 2015) (same).

While Plaintiff has previously indicated it was concerned Defendant might
change ownership of the YouTube channel if Plaintiff provided notice of this action, the motion
for alternative service does not discuss this issue.

Finally, while the motion repeatedly references Defendant's email address in the singular,
it also states “[b]ased upon plaintiff's investigation, XXXXX has multiple forms of electronic
means of contact, demonstrating that this means of contact is not just effective, but the most
reliable means of communicating with XXXXX and consequently, the most reliable means of
providing XXXX with notice of this action.”

Mr. Rollin's declaration, however, only refers to Defendant's “email address.” It is unclear if this is a
typographical error or if XXXXX has multiple email addresses at which Plaintiff should
attempt service. Likewise, Mr. Rollin's declaration includes reference to a different defendant
(XXXX) and indicates Defendant is located in Ukraine rather than Spain.

Motion was denied without prejudice.