Case of the Day: Footprint International v. Footprint Asia

The case of the day is Footprint International LLC v. Footprint Asia, Ltd. (D. Ariz. 2024). Footprint International was an Arizona company that made fiber-based bowls, plates, and cutlery. It had a contract with Footprint Asia, a Chinese company, to manufacture its products in China. Footprint International brought a trademark infringement claim against Footprint Asia and sought a preliminary injunction. It served process by email, with the court’s permission.

The interesting question was whether the court could grant the preliminary injunction even if the service by email was improper under the Service Convention. I’ve written about this issue before. Rule 65 requires notice, but not service of process, before an injunction can be enforced. But I don’t think that’s a complete answer to the question. It may be that an injunction doesn’t have to be served in the same manner as process is served. But if you have to give notice to someone in a Service Convention state, must you give notice in a way that the Convention authorizes or permits?

The Convention says it applies in all cases where there is occasion to transmit a judicial document abroad for service. There is no question that an injunction is a judicial document. And there is no question that it has to be transmitted abroad. But is it transmitted abroad for service? T he US cases seem to say no, that the Convention only applies to the transmission of judicial documents abroad in connection with service of process.

I find that plausible and maybe, from a practical perspective, necessary. But I also find it hard to square with the text of the Convention, which applies to the transmission of judicial and extrajudicial documents. Extrajudicial documents, according to the HCCH Practical Handbook, include “notarial documents, demand for payment, notices to quit in connection with leaseholds or contracts of employment, protests with respect to bills of exchange and promissory notes, provided that they are issued by an authority or huissier, notice of dates of mediation hearings, notices served by creditors upon debtors, testamentary documents, notifications to beneficiaries of a deceased estate,” and others. None of these are “process,” so how can we possibly read the Convention to apply to the transmission of judicial documents only when for formal service?

The bottom line is that despite these concerns, the cases are clear that an injunction does not need to be transmitted by a method authorized or permitted by the Convention.

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