Case of the Day: Facebook v. Banana Ads

"Wikipedia" misspelled in a browser address barNo, today’s case of the day does not involve the Winklevi. Instead, it involves one of the most annoying bad practices on the Internet: typosquatting. I fall victim to it almost every day when I point my browser at nytiems.com or hufingtonpost.com. Some kinds of typosquatting are worse than others. Some involve pointless ads that don’t try to trick you into thinking you’ve gotten to the website you want. But others are not just tacky and annoying but deceptive, trying to trick you into thinking, for example, that facebock.com really is facebook.com.

Facebook sued dozens of alleged typosquatters for cybersquatting, trademark infringement, false designation of origin, trademark dilution—you get the picture. About half of the defendants were in the US and half were abroad. Some of the defendants had provided false registration information when they registered their domain names or had failed to update their information. Facebook was unable to serve ten of the foreign defendants (in Anguilla, Antigua, Canada, Hong Kong, Panama, and Thailand) despite its efforts to reach them by mail, email, and telephone. Facebook therefore sought permission to serve them by email under Rule 4(f)(3).

The judge held that the service was reasonably calculated to the defendants and therefore comported with due process. The remaining question was whether an international agreement prohibited service by email (Antigua, Hong Kong, and Canada are parties to the Hague Service Convention). The easy answer to the question, as the judge recognized in a footnote, was that the Convention did not apply, since the defendants’ addresses were unknown and it was apparent that Facebook had used reasonable diligence. But instead of relying on this point, the judge cited to cases holding that service by email is not prohibited by the Hague Service Convention. Clearly she had not read my end-of-the-year post on this question, which argues that service by email is not permissible under the Convention when the Convention applies! ;-)

The cases the judge cited all involve defendants whose addresses were unknown. For example, she cites a brief unpublished order in Gucci America, Inc. v. Wang (N.D. Cal. 2010), but the motion for leave to make service by email in China makes it clear that the defendants’ whereabouts were unknown. The same is true of craigslist, Inc. v. Temple (N.D. Cal. 2010), involving service in Canada, and mostly true of Williams-Sonoma, Inc. v. Friendfinder, Inc., 2007 WL 1140639 (N.D. Cal. 2007), which also involves Canada but in which it is unclear whether the addresses of all of the defendants were unknown.

For this reason, we shouldn’t read the case as holding that service by email is permitted by the Convention when the defendant’s address is known.

Photo credit: Wikipedia

About Ted Folkman

Ted Folkman is a shareholder with Murphy & King, a Boston law firm, where he has a complex business litigation practice. He is the author of International Judicial Assistance (MCLE 2012), a nuts-and-bolts guide to international judicial assistance issues, and of the chapter on service of process in the ABA's forthcoming treatise on International Aspects of US Litigation, and he is the publisher of Letters Blogatory, the Web's first blog devoted to international judicial assistance, which the ABA recognized as one of the best 100 legal blogs in 2012, 2014, and 2015.

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