Case of the Day: Elcometer v. TQC-USA

The case of the day is Elcometer, Inc. v. TQC-USA, Inc. (E.D. Mich. 2013). Elcometer was a manufacturer and distributor of handheld coating thickness gauges. It sued TQC-USA, Paintmeter.com, and Robert Thoren (Paintmeter’s principal) for trademark infringement. Elcometer attempted to serve Paintmeter and Thoren via personal service and certified mail, but both attempts were unsuccessful. Elcometer also sought to send the summons and complaint to the email address Paintmeter and Thoren used to conduct business, but it received no response.

Elcometer’s lawyer did manage to speak with Thoren by phone before a hearing on its motion for a preliminary injunction, but Thoren, who refused to remove the allegedly infringing marks from the Paintmeter website, “indicated that [Elcometer] had no available recourse since he lives in Panama.” Later, he wrote, using the paintmeter.com email address: “You are wasting your time and your client’s money pursuing this matter. You will recover nothing from me, not one dime, mark my words.” Note to defendants: emails like this just make plaintiffs angry.

Elcometer moved under FRCP 4(f)(3) for leave to serve Paintmeter and Thoren via email. Because Panama is a party to the Inter-American Convention but not the Hague Service Convention, and because the Inter-American Convention is not exclusive, there was no question in the case about whether a treaty barred service by email. Service by email was reasonably calculated to reach the defendants, as was evident from Thoren’s use of the email address. The judge took note of Rio Properties, the leading case condoning service by email. Easy case.

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 2d ed. 2016), 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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