(Author’s note… we’ve just returned from two weeks in Scotland, and were to have posted this on September 16th, but held publication until after the funeral of Queen Elizabeth II.  We were in Edinburgh, a mere hundred miles away, when she passed on September 8th, and Edinburgh’s rainy, gray evening seemed appropriate.  This is not an obituary, but publication is held until after the ceremony out of respect.)


The single, most important piece of information in serving a defendant is his/her/its location.  Without the “where,” nothing else matters.  Domestic defendants, foreign defendants, U.S. citizens living abroad… everything boils down to location.  Now, for many places, just saying something like “I need to serve a defendant in Japan” is perfectly sufficient.  The Hague Service Convention applies, and there is one way to get the job done.  And there’s no question about whether translation is required.  Likewise Mexico, Turkey, Korea, and the like.  In those countries, there’s also just a single way to get things done, and a single authority to ask for help.

But there are a few places around the globe that require further inquiry to determine options and requirements.  This post continues a series to look at particular places that aren’t quite so simple, for better or for worse.

THE UNITED KINGDOM

It’s not sufficient to just say you have a defendant to serve in the United Kingdom.  The UK is comprised of four countries, three legal systems, two islands (or parts thereof), and one hell of a mess (more on that later).  I highly recommend that you watch this video as a primer… my commentary stems from the explanation in it.

Point is, saying your defendant is in the UK is not a lot different from saying he’s in “Europe” or “Latin America”.  Sure, it narrows down the concept, but not nearly enough.  In an already-classic Ted Lasso clip, the coach asks incredulously, “how many countries are in this country?”  The unison answer from his cohort: “four.”

It’s really a political mashup of three distinct countries and a fourth that used to be part of a larger whole.  Great Britain is a geographic (and arguably cultural) idea… slightly different from the UK, and definitely different from “the British Isles.”  Seriously… just watch the video above.  Or watch this one.  Or just Google “difference between the UK and Great Britain“.  I won’t belabor the issue– just know that the constituent countries of the UK work a little differently.

Four constituent countries

Pretty straightforward here– the UK is comprised of:

  • England (obviously the most populous and politically dominant, which will hit home shortly)
  • Wales
  • Scotland
  • Northern Ireland
Three judiciaries

Not quite as straightforward– the UK’s legal systems are only three:

  • England and Wales, in a unified system– the granddaddy of all common law systems worldwide.  To be sure, since 2007, there’s been a split in doctrines, with Wales developing its own bodies of law separately from England, but the courts remain unified.
  • Scotland– not exactly common law, not exactly civil law.  Let’s just say the Scots march to the beat of their own drummer.
  • Northern Ireland
Two islands

Don’t confuse the UK with the British Isles– the former is a political distinction, while the latter is geographic.  The official name “The United Kingdom of Great Britain and Northern Ireland” has so much loaded into it that it’s frightening, requiring omission of details here just to preserve some semblance of brevity.  The name also leaves out a fair amount, considering the several special jurisdictions that are decidedly part of the UK, but somewhat on their own administratively and politically.  Chief among those: the Isle of Man (as in the Manx cat) and the Channel Islands, Jersey and Guernsey (like the cows).*

Add in Ireland, and you’re apt to start a fight if you don’t craft the description very carefully, depending on who you talk to.  Ireland is an island– a pretty big one– and commonly considered one of the British Isles (to the chagrin of many Irishmen).  But it hasn’t been a single political entity for a century, having been partitioned in 1922 to create the Irish Free State (the Republic of Ireland since 1948).  Six counties in the north (logically, Northern Ireland) remained part of the United Kingdom, and continue so today.

Brexit

The one hell of a mess I mentioned earlier?  It’s Brexit, which has spawned threats of:

  • the unraveling of the Good Friday Agreement and a return to The Troubles (see here),
  • Northern Ireland deciding to unify with the Republic on its own,
  • Scottish withdrawal,
  • Wales going its own way

… at this point, it’s impossible to predict where things go from here, and it’s entirely likely that this post will have to be amended in a couple of years.  Stay tuned, because it’s more intriguing than any soap opera or murder mystery.

Bottom Line

This stuff is complicated.  Where your defendant is located within the UK (or on the island called Ireland, for that matter) is a critical bit of information if a plaintiff hopes to properly get things done pursuant to the 1965 Hague Service Convention.  Specificity is key.


* These are Crown Dependencies— not to be confused with Overseas Territories.  Far too intricate a difference to describe here.

Photo by Zoë Reeve on Unsplash

In the lion’s share of cases, I recommend to clients that, in Hague jurisdictions where they’re available, a higher cost service option may actually end up saving their clients a chunk of change in the long run.  In just about all of those jurisdictions, we charge considerably more to have a defendant served privately than if we go through government channels; that’s just the way things work.  But the initial price tag can be deceiving.

CHOICES

Let me clarify the options under two distinct parts of the Hague Service Convention:

With Article 5, we file a request with the government agency or court designated by the foreign country to field service requests.  Government officials execute the requests and send us all but unassailable proof of service.  Eventually.  [By “eventually” I mean 3-4 months in much of northwest Europe, 5-6 months in Japan or Korea, and a year or more in China, Mexico , and India.  [To be sure, none of those specific countries allow alternative options, so the rest of this really doesn’t apply to them.]

But where the destination country doesn’t object to it, Article 10(b) allows us to directly engage “competent persons” in that country:

  • Process servers in Anglophone Canada and Australia;
  • Solicitors in England & Wales, Hong Kong, and Ireland;
  • Scottish messengers-at-arms; and
  • Bailiffs in Québec, Belgium and the Netherlands.*
  • There’s also a kinda-sorta-private method available in Israel, and although it technically happens under Article 5(b), I categorize it here in light of its huge value proposition.

COST, SPEED, AND CONTROL

Article 10(b) service often runs half-again as much as Article 5 service.  Sometimes it’s double.  And if you’re a do-it-yourself type, well… the difference is massive.  But three huge benefits come from going the 10(b) route:  Cost containment, speed, and control.

Cost…

I got an email a few years ago from a lawyer in– well, I don’t even remember where the guy was– asking me if I could get his defendant served in Hong Kong.  It seems he was coming up against his 4(m) deadline and had to get things rolling.  Sure, I said.  We can go through government channels and have it take several months, or we can go through my solicitor and have proof back in two or three weeks.

When I told him the cost for both options, he ghosted me, opting to do it all himself.  But I kept tabs on the case just out of curiosity; he just hadn’t seemed too receptive to my advice.  Two months after we spoke, he got called up on a show-cause order and had to submit an affidavit telling the court what he did, when he did it, and how soon he expected the Hong Kong Central Authority to send him a proof (he whiffed that question).  The judge took him to task in a big way, and he blew at least three or four hours of otherwise billable time on the OSC.

A few months after that I checked the docket again, and saw that Hong Kong had rejected the request because he didn’t heed my strenuous drafting advice (Hong Kong really means Hong Kong, China).  He amended and resubmitted his Hague request, caused more delay, and (I’m sure) thrilled the judge to no end.

Had he let me go the solicitor route for him, his OSC would have been mooted by an affidavit of service and perhaps even the defendant’s appearance.  But how much money did he blow in the process?  (That is, how much time can his firm not bill anybody for?)

Speed…

It’s very simple, gang.  Even the fastest of Central Authorities in 10(b) jurisdictions are going to take a few months to get a proof back to the applicant (plaintiff’s counsel or the court).  In Canada, Australia, and Hong Kong, several months go by without a peep from the official channels.  To this day, I still haven’t been able to confirm that Ireland’s Central Authority is functional.  Sure, you have a beautiful safe harbor in federal 4(m) [or analogous state rules], so an OSC ought to be a snap, but that doesn’t save you from a grumpy judge or irritated client.

He’s grumpy, but he calls the shots. Not some smart-mouthed fellow from out of town.

Let us and our overseas partners handle the matter (or find the right agent yourself if you have the kind of time necessary to vet them and properly instruct them), and you’re usually going to have proof in hand two or three weeks after you pull the trigger.  Result: no OSC, no grumpy judge, no irritated client.  Litigation proceeds relatively quickly.

Control…

When we engage a process server or solicitor or bailiff, they work for us.  They’re motivated to do the job correctly because, (1) they’re pros and (2) if they don’t do things right, I go shopping for another overseas partner in the effort.  They’re not going to knock on the defendant’s door one time, wait two minutes, and just walk away, only to tell me that service has failed.  Why?  Because if they don’t do things right, I go shopping.

Exceedingly rare is the foreign judicial official who is as diligent as somebody being paid to be diligent.  An official isn’t going to call me to ask for further instructions.  My guy in Toronto regularly pings me on Signal (because that’s the Double-Naught Spy communication platform) from the defendant’s front porch.

COUNTRIES THAT OBJECT

Unfortunately, if the destination country objects to Article 10, you’re out of luck as far as choices.  But for those countries, make sure the paperwork is filled correctly out and your request is properly assembled & shipped (ahem, we do that, too– or you can DIY it with a little help), and have a little faith.  Most Central Authorities around the world get the job done.  Maybe not as quickly as U.S. or Canadian lawyers (and their clients) might expect, but eventually.

Where you have options, use them.


* Oddly enough, in Québec, Belgium and the Netherlands, we can have an English-competent defendant served without translation, so the bailiff option actually ends up being less costly than the official channel.  On the other hand, France also allows direct engagement of bailiffs, and Italy and Spain allow us to retain in-country counsel for service petitions in local courts, but I’ve found that these avenues don’t save a whole lot of time in exchange for the cost.

Edward Orde, via Wikimedia Commons.

<— Unless this thing used to fly over the jurisdiction where you’re serving, odds are pretty high that you’ll have to translate in order to satisfy the requirements of the destination jurisdiction under the Hague Service Convention.  In most places, there’s no getting around it, even if your defendant was born in Chicago and taught Shakespeare for thirty years before settling in the Kobe Prefecture or a quaint village just outside Palermo.  If you intend to serve him, foreign authorities will require a translation.

Knowing this, many litigators and their support teams just run off to the Googz* and pluck a few ads from atop the search engine results.

They ask, “hey, what would you charge to translate my documents into (language)?”… and responses come back pretty quickly.

If the translators don’t ask for the specific documents but instead send you a price-per-page response, run.  Run away like your hair is on fire, because in that sort of fee structure, somebody loses, and I promise you, it’s not the translator– unless they’re incompetent (which raises a completely different battery of concerns).  Reputable, competent translation providers may ballpark costs for you, but they should always — always— come back with “I can’t give you a specific figure until I have the actual documents themselves.”  So send them the PDFs and let them do their job.**

More importantly, though, even if the numbers are legitimate (ie: priced by the word), don’t just focus on the low bid.  There are a whole bunch of other factors involved– not the least of which is speed, which is balanced by accuracy, thorough attention to detail, proper formatting, and ultimately… competence in legal translation.  You might have a great offer from a linguist who claims native proficiency in (insert language here), but if that linguist isn’t proficient with legal vocabulary specifically, you’re sunk.  It’s a bit like asking me to represent you on a felony assault charge (we’ve all gotten that late-night phone call from Aunt Edna, begging us to bail out cousin Eddie… she was grumpy when I had to refer her to a friend who would charge her).

Of course, market realities dictate that attorneys rein in the costs of litigation– clients are no longer willing to just fork over a few thousand dollars just because their lawyer says it’s necessary.***  But on this issue, the best way to keep costs down is by limiting the breadth of what needs to be translated in the first place (see my series on doing that– part 1 here, part 2 here, and part 3 here).

Oh, and be wary of the boast “we’re a certified translation provider!”  (Oh, really?  Who certified you?)

There’s no such thing– it’s completely made up.  Sure, there are certified translations, the quality of which is attested to by the provider, but not certified providers.

You’ve got to beware.  (Cue Buffalo Springfield…)


* I strongly contend that the best place to start any legal research project is Google.  Conversely, the worst possible thing you can use for translation of service documents is Google Translate.  It’s not an easy way to rein in costs– it’s just stupid.  Sorry, folks– there’s no gentle, diplomatic way to say it.  I love Google Translate, and I use it all the time, but only to get a good sense of what a foreign text says or to find a rough translation into a foreign language (it’s especially handy at a gelato stand in Rome or a beer garden in Munich).  It should NEVER be used to generate translations for submission to a judicial authority.

** Don’t get all cagey if you’re under seal– just have the vendor sign a confidentiality agreement that binds them to the seal.  It’s not a violation– revelation is absolutely necessary if you’re going to get this stuff served properly.  They can’t translate redactions, so open the books.

*** Were clients ever willing to do that?

President Reagan and Soviet General Secretary Gorbachev, Hofdi House, Reykjavík (Oct. 11, 1986). White House photo, via Wikimedia Commons.

Every time I fly through Reykjavík (okay, technically Keflavik, but you get the idea), I think of these two guys.

When this picture was taken, I was well on my way to majoring in Political Science and, eventually, a career in international law.  Mostly because of The Old Man (my grandfather, Clyde*), but also because some of my earliest childhood memories were of the Cold War.  See, my dad was a career Army NCO, and we were stationed in Belgium for three years at the height of the Brezhnev era (late 1970s).  A whole bunch of tank tubes, not to mention nuclear missiles, were pointed at us, and we knew it– though to be fair, I was an extreme nerd even at the tender age of six.  To be even more fair, we were 500 miles from Berlin and would have been evacuated with a quickness had the balloon gone up, so I was never truly in imminent danger of a conventional attack.

By 1986, Dad had retired from the Army and we were back home in Sioux City, where The Old Man was shepherding my transition from just a kid/nerd to an odd high schooler who paid attention to geopolitics for real.  Sioux City happens to be 90 miles north of Offutt Air Force Base, home of Strategic Air Command (now just Strategic Command, STRATCOM), which was #2 on the USSR’s nuclear target list, just behind Washington and ahead of Cheyenne Mountain in Colorado.  Funny how the missiles were still pointed at our heads, and boy, did we know it.

We weren’t big fans of the fellow from Eureka, Illinois, but I have to admit… Reagan had style, and “Mister Gorbachev, TEAR DOWN THIS WALL” was something that Democrats and Republicans could get behind together (wow, haven’t times changed?).

And then a funny thing happened: Gorbachev started dismantling The Wall.  It happened slowly at first, but in the middle of my first semester of college (Fall 1989), it crashed down under the weight of thousands of East Berliners who desperately wanted to breathe free air.  Two years after The Wall fell, the USSR didn’t exist anymore.

Without him that wouldn’t have happened.

Mikhail Sergeyevich Gorbachev died today.  He was the same age as Clyde, and he got to live two decades longer.  His doctrine of Perestroika (restructuring of the Soviet economic model), laid the foundation for real people in the Soviet bloc to taste freedom.  His policy of Glasnost (openness) set a new tone for international relations and the end of Soviet domination in eastern Europe.

We’ll not see the likes of him again.

It’s amazing when you can actually touch the history that you could only watch on TV. Panels of the Berlin Wall, just yards behind the Deutsches Eck, Koblenz.  (Photo by the author.)

 


* Clyde was a a die-hard labor advocate who led the UFCW Local at the Sioux City Stockyards for a couple of decades.  He signed a union card and registered as a Democrat the day he met a dapper, wealthy young fellow from Massachusetts who was running for president.  Clyde’s job was literally to shovel shit– and he hesitated when the candidate extended his hand.  “Um, well, my hand’s a little dirty, Senator.”  Kennedy shook it anyway, and The Old Man was duly impressed.

Alejandro Barba, via Unsplash.

From time to time, I catch myself ranting in this space.  Not in this post, though.  I had so many great conversations with clients today that my voice is hoarse.  And there were so many recurring themes in those conversations that I suddenly feel the need to share my top tips for serving overseas defendants, and also to create sort of a digest of the best pieces of advice I can give a litigator who doesn’t want to screw things up.  So here’s my list of highlights that I preach frequently when on the phone– along with links to some of my favorite posts over the years.

(1) Remember– it ain’t over until the client gets a check.

No, seriously.  You have to think of the long game– several years down the road, so you absolutely must not pick the cheap and easy way of serving if you truly want to make your client whole.

(2) Keep it short, counsel.

Repeat after me: lawyers do not get paid by the word, but translators do.  As such, don’t use twelve words when seven will do.  Yes, I am even more guilty than my fellow bar exam victims, but the stuff I write doesn’t often need a translation.  Save your client some cash, and be brief.

(3) Don’t sweat the time needed.

Yes, yes, the judge is grumpy or the litigant is impatient or lead counsel is breathing down your neck because of a grumpy judge or impatient litigant.  But things take longer overseas.  They just do.

The judge has to deal with the wait (I give you Rule 4(m) in its entirety).  And if the client can’t deal with the wait, he should have picked a defendant in Boston rather than Beijing– just refer him to #1 above.

(4) But don’t sit on your hands either.

Again, you’ve got a friend in 4(m).  The court has to give you the latitude to effect service properly, and in compliance with a mandatory treaty (the Hague Service Convention!).  That doesn’t give you unlimited time, though– a reasonable diligence standard applies, so if you’re dilatory, you’re in trouble.

(5) Ask the defendant to waive service.

Defendants are obliged to waive, and if they don’t have a darn good reason to refuse, then the court can shift fees.  I’m chomping at the bit for a test case on this issue, but recouping unnecessary costs doesn’t seem to be on anybody’s radar.  No fewer than six cases have come across my desk this week with translation bills well into the five-figure range (counsel didn’t heed #2 above), but five- and six-figure translation bills are exactly what Rule 4(d) is designed to avoid.

True, getting a defendant to waive is the best way to not have to hire us to handle your Hague Service, but it’s also the best way to get your client’s money back if they won’t play ball.

(6) Make sure alternatives are actually available before you ask for them.

This is a biggie for me, and I rant frequently about alternative means of service when they really aren’t appropriate (read: legal, valid, acceptable).  I don’t rant about these phantom alternatives because they prevent the flow of fees into my pocket.  I rant because, sooner or later, a savvy, deep-pocketed defendant is going to take my pet 4(f)(3) gripes* to the U.S. Supreme Court and the plaintiff is going to get smacked.  Hard.  Take a quick read of Justice Alito’s opinion in Water Splash v. Menon… the issue before the court was utter nonsense, and he said as much, so I foresee a very similar result coming down the pike on those pet gripes.

I rant because I don’t want my people to be on the receiving end of that inevitable benchslap…  my people being colleagues who ask me for guidance, whether they pay me or not.

(7) “Exercise Extreme Patience”

Why?  Because things take longer overseas.  Get used to it.

Why do they take longer overseas?  Because things work differently overseas.  Get used to it.**

No, really– contrary to popular belief, we can’t tell the rest of the world how to do things.  It just doesn’t work that way.  So you absolutely must sit and wait, like Job in many cases. Patient, patient, patient.  It will come eventually, but shouting at the wind won’t make it come any faster.

It’ll just make you hoarse.


* I have two in particular: (1) electronic service conflicts violently with the Hague Service Convention, and (2) service on U.S. counsel cannot possibly be based on 4(f)(3).

** Hat tip to Dan Harris for the Fourth Principle here.

Over doing the do-it-yourself philosophy. Lorax, via Wikimedia Commons.

Several years ago, I posted my thoughts on the impracticality of litigators handling overseas service on their own.  More recently, an interesting thought dawned on me.  Frankly, it’s not very novel, so I couldn’t really call it an epiphany, but it’s an awfully important analysis to any trial lawyer who works on contingency.

[TL;DR… if you do the work yourself, it’s just one more part of your 33%.*  If you outsource the work necessary to serve offshore defendants, it’s an expense calculated outside the 33%.  Don’t even get me started on the time and frustration you’ll save yourself.]

Take a look at a 2L-style hypo.  A few facts:

  • Personal injury case against an automobile manufacturer.
  • Not catastrophic, but to make the math easy, let’s say the case is worth about $250,000 actual and another $100,000 in punitives.
  • Assume $50,000 in various expenses, like medical records and court reporters and expert witnesses and, oh yeah, process servers who go out and tag your U.S. defendants.
  • But let’s also say for illustration that the carmaker is German, and the defective part was made by a supplier in China.
  • You have a twenty-page complaint to serve along with the summons.
  • Just for funsies– and again, easy math– let’s say you bill $500/hour when you’re doing that sort of thing and not doing contingency work.

How does the money shake out on a $350,000 settlement?

Well first, you have to determine how you get the action served.  You run a Google search on how to serve process in Germany.  In all likelihood, you’ll come across this post to give you a quick rundown.  You then run a comparable search on on how to serve process in China.  You hit this post, and then maybe this one, and perhaps even this one.  In reading those, you conclude that you’ll need to fill out a USM-94 form, and when you read this post on how to do it, you realize that maybe this is going to take a while.

You’ve got three ways to go:

  1. Retain us to handle the whole thing (I’m not trying to get sales-pitchy here– really),
  2. Use the Hague Envoy document automation platform at USM94.com, or
  3. Handle it all yourself, including figuring out what options may or may not be available.

So now, the call of the question: where do those options fall in the financial calculation?

Well, if you’re a personal injury lawyer and you do it all yourself, it’s part of your contingency agreementYou recover no costs other than translation and shipping.  All the time spent researching the ins & outs of how to do things properly… it’s part of your standard one-third of the award.*  So if you spend several hours looking things up, that’s a bunch of fees you can’t deduct from the collected amount.

But when you outsource your efforts to serve abroad, it’s an expense, just like medical records and court reporters and expert witnesses.

If you win, it’s money going back into your pocket.  And you don’t have to spend several hours researching a procedure you won’t touch again for a long time.


* Of course, the percentage varies by jurisdiction and common practice according to locality.

Széchenyi Thermal Bath, Budapest. Victor Malyushev via Unsplash.

Sorry, folks.  Set aside thoughts of goulash, the Gabor Sisters, and nice chess games at a thermal bath… you’re litigating here, not sightseeing.  But with a Hungarian defendant, the procedure before you really isn’t overly challenging.  Service in Hungary is subject to the strictures of the Hague Service Convention.  This holds true regardless of which U.S. or Canadian venue is hearing the matter.  You’ve got three ways to get it done:

  1. Tap us on the shoulder for bespoke attention—and probably some amusing commentary to boot (see the upper right if you’re on a desktop, or way down below if you’re on a phone/tablet),
  2. Cruise over to the Hague Envoy platform at USM94.com to automate the completion of your forms in perhaps twenty minutes or so, or
  3. If you’re feeling froggy & would like to handle the whole thing yourself, keep reading.  This lays out the framework you’ll need.

Some background is in order, if you’re so inclined, before we cut to the chase.

Here’s how it’s done in Hungary:

Article 5 Service

  • Translate the documents. It’s required by Hungary’s declaration to Article 5(3), period.  (It’s not about the defendant’s competence in English.)
  • Fill out a USM-94. Be very careful about ensuring that it is complete and concise, and make sure that it is signed by a court official or an attorney.  If it is not, make sure that the person signing is commissioned by the court.
  • Send to the appropriate Central Authority, in this case Ministry of Justice in Budapest.
  • Sit tight. It may take a while—several months from submission to return of proof.

Article 10 alternative methods

  • They simply aren’t available, because Hungary objects to them all. Article 5 is the only way it can be done.

Seriously—that’s all there is to it.  The method is straightforward and simple.  Hungary’s declarations and Central Authority information—as well as those of all the other countries in the treaty—can be found here.

Bonus practice tip… if you’re defense counsel, always question the validity of service effected on your overseas client.  The plaintiff may not have done it correctly.  [That actually happened once, with a defendant in Norway, and her lawyers were smart enough to fight the issue.  The Washington Court of Appeals erroneously thought going outside the Central Authority was okay, but their Supreme Court saw the matter differently.]

Another FAQ entry here, with a very simple response…

Since we’re serving this foreign defendant under Hague rules, do they get extra time to answer?

Nope.  Nothing in the Hague Service Convention gives a defendant anything.  The deadline is the deadline is the deadline.  Why?  Because the Convention only goes to HOW process is served– it has literally zero effect on the management of the docket– other than perhaps stretching out the service procedure.

The answer deadline is determined entirely by forum court rules.

[Note that this post comes in under 100 words.  It doesn’t need any more.]

Yogendra Singh via Unsplash.

Author’s Note: This is far from a scholarly criticism– it is a nuts & bolts look at how this thing should go down.  Preface:

Frankly, I think electronic service is the only way to get these scofflaws served.

A cause for hope came out of S.D.N.Y. recently, and I’ve been ruminating about it for a couple of weeks, because it reached a kinda-sorta right result, but for the wrong reason, and it upended another kinda-sorta right result based the wrong reason.  The succession of kinda-sortas and wrong reasons makes me look like that guy up above.  He’s just younger and thinner.

The hope?  That S.D.N.Y. would finally kill Gurung v. Malhotra and its demon spawn by recognizing the exclusive nature of the Hague Service Convention, as clearly held in Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694 (1988).

Reuters dropped this story into my newsfeed late last month, and I started reading with incredible (ultimately dashed) optimism.  The case really hit the bigtime this week on both Letters Blogatory, published by my friend, Ted Folkman (whose White Whale is Gurung), and the Transnational Litigation Blog— a fantastic, comprehensive blog by a team of top international law scholars.*

We give you Smart Study Co., Ltd. v. Acuteye-US et al., 1:21-cv-05860.  Folkman synopsizes quite succinctly:

“The case involved a claim to trademark and copyright infringement concerning the Baby Shark song, which no doubt will be running through your head for hours now that you have read the words ‘Baby Shark.’ The defendants were Chinese companies selling alleged knockoffs on the internet. The plaintiff sought and received a temporary restraining order and a preliminary injunction, and received leave to serve process by email.”

Those Chinese companies couldn’t get the song out of their heads either (go ahead, click the link– you know you want to), and they sought vengeful profit by producing all manner of Baby Shark-related memorabilia… which they have no legal right to do.  It’s an all-too common fact pattern in today’s Amazon-dominated economy: a Chinese manufacturer blatantly sells an infringing good via Amazon Marketplace, with no discernible paper trail that would allow a plaintiff to press an ordinary IP suit.  Plaintiffs sue anyway, and they ask the court for an order to serve electronically.  Because of the horrible, terrible, no good Gurung decision, and because judges are naturally (and justifiably) impatient, orders for electronic service under Rule 4(f)(3) are routinely and erroneously granted.  Text of that rule:

(f) Serving an Individual in a Foreign Country. Unless federal law provides otherwise, an individual—other than a minor, an incompetent person, or a person whose waiver has been filed—may be served at a place not within any judicial district of the United States:

(3) by other means not prohibited by international agreement, as the court orders.

(This applies to entities, too, by virtue of 4(h)(2).)

Remember– the ultimate goal is not damages (good luck enforcing that victory in the PRC!), but to keep the infringing goods out of the U.S. market.  A District Court default can smooth the road in a §337 proceeding, which is necessary to stop such goods at the port of entry. I see dozens of these cases on the docket every year, and it astounds me that courts and plaintiffs’ counsel still don’t have a solid handle on the best, proper way to serve the defendants, and quickly.  So here we go, with a real-world criticism of what’s happened lately in the Smart Study case.  (In short, the court denied a default motion,  inter alia, but with similarly tenuous reasoning to the initial order.)

It’s the summer of 2021, and along comes plaintiff Smart Study Co., who succeeds in getting a 4(f)(3) order for electronic service (based in large part on Sulzer Mixpac, a demon spawn of Gurung), and serves the Chinese vendors electronically.  Now in the summer of 2022, a pair of the defendants actually appear (gasp!) in opposition to Smart Study’s default motion, arguing in part what I’ve been saying for years:

ELECTRONIC SERVICE VIOLATES THE HAGUE SERVICE CONVENTION.

Judge Woods says “whoa, wait a minute…” and denies Smart Study’s default motion, determining upon further consideration that the 4(f)(3) order was in error– including a withering criticism of Sulzer Mixpac.

Huzzah for Judge Woods, seemingly a rarity in the Southern District, where 4(f)(3) orders are doled out like candy on Halloween… but whoa, wait a minute.  Let’s dig deeper.  The original 4(f)(3) order was correct, but based on the wrong reasoning— or incorrect in light of what was originally argued–  so perhaps the denial of default was correct, and the original order just needs a tweak.  Everybody knows these scofflaw vendors are purposefully anonymous, and frankly, I think electronic service is the only way to get them served.  But getting to that point should be more meticulous than what the plaintiff did here.

The big, massive, gaping hole in everybody’s reasoning is this:  the methods articulated in Hague Service Convention are EXCLUSIVE, and because it’s a treaty, it’s the Supreme Law of the Land (I read that somewhere, I’m certain).  Trial judges’ and plaintiffs’ justifiable impatience notwithstanding, email is not permitted by the Hague Service Convention, so it’s OUT, arguably where the destination state doesn’t oppose Article 10(a), but unquestionably where that state has objected.

O’Connor, J.  Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694, 710 (1988).

Don’t take my word for it.  Take the word of this nice lady from Arizona–>

 “Those who eschew its procedures risk discovering that the forum’s internal law required transmittal of documents for service abroad, and that the Convention therefore provided the exclusive means of valid service.”  Schlunk, at 706.  (Emphasis mine, of course.)

And Justice Brennan, concurring:

“In response to this and other concerns, the Convention prescribes the exclusive means for service of process emanating from one contracting nation and culminating in another.”  At 710.  (Yes, yes, emphasis mine again.)

 

But– and it’s a critically important but– if the Hague Service Convention doesn’t apply, there’s no violation of it. See Article 1:

This Convention shall not apply where the address of the person to be served with the document is not known.

Smart Study was on the right track– the defendants’ evasion and purposeful anonymity shouldn’t shield them from service– but Smart Study didn’t build up enough steam to get the train moving.  All that’s missing in the original argument is a diligent search for the defendants’ addresses, or proper 4(f)(3) would be a foregone conclusion.

Still, a full year on, following defendants’ opposition to the default motion, Judge Woods and plaintiff’s counsel called in a bunch of experts on Chinese law, which is wholly irrelevant in light of (1) Hague exclusivity and (2) China’s clear objection to the entirety of Article 10.  Nobody needed to get into the tall weeds on this– Chinese municipal law is not applicable– the plaintiff just needed to flesh out the proper syllogism.  Follow my logic here…

  • Without an address for a defendant, the Hague Service Convention does not apply.
  • No Hague applicability, no exclusivity problem.
  • No exclusivity problem, no prohibition by international agreement to upend 4(f)(3).
  • So… get a competent investigator to undertake a diligent search, and lay a solid foundation for a 4(f)(3) order.

That’s what should have been the basis for the original 4(f)(3) motion.  Give the judge something to hang his hat on.**

Again, the ultimate goal is to keep the infringing goods out of the U.S. market– once a District Court default is issued, it makes a §337 proceeding much easier, and that’s really the only realistic hope a IP owner has in this sort of case.

Truly, 4(f)(3) is the way, but only with a proper foundation.***


* TLB really is a tremendous resource, especially for someone seeking scholarly commentary from smarter people than some smart-mouth solo in his home office in Kansas City.  One part of Professor Dodge’s post really bothered me, though:

Judge Woods disagreed. First, he read the Supreme Court’s decisions in Water Splash, Inc. v. Menon (2017) and Volkswagenwerk Aktiengesellschaft v. Schlunk (1988) as indicating that only methods of service specified in the Convention are permissible. This may be the least convincing aspect of his opinion. Water Splash considered whether Article 10’s permission to “send” documents through postal channels allowed them to be “served” that way, whereas Schlunk held that the Convention did not apply when service was completed within the United States according the forum’s law. Neither decision considered whether the means specified in the Convention are exclusive.

That last sentence sent my head spinning wildly off my shoulders.  I certainly agree that Water Splash is off point (and irrelevant to 4(f)(3) analysis anyway… it was all about mail, resolving a very silly semantic circuit split).  But Schlunk held far more than Prof. Dodge indicates– specifically that, if transmission abroad is necessary for service, then Hague doctrine is mandatory, as in “THOU SHALT ADHERE.”  It simply wasn’t necessary to transmit abroad to initiate the Schlunk suit.  The Schlunk opinion also specifically addressed exclusivity twice (once in the court’s opinion, once in concurrence, and not in mere dicta), holding that the Convention is indeed exclusive.  That’s the crux of this entire argument– and to my mind, the most convincing part of Judge Woods’ logic.  He simply didn’t flesh it out with O’Connor’s words.

Major kudos to Dodge, though, for this:

Finally, the decision in Smart Study provides an example of the distinctive issues raised in transnational litigation and covered in (The Transnational Litigation Blog). Judge Woods is clearly a capable and conscientious judge. He did an admirable job getting to the bottom of a difficult question once it came to his attention. But the fact that the question was not immediately apparent shows just how much education about transnational litigation remains necessary for both the bench and the bar.

Amen, sir.  Amen.  (Let’s just not be too emphatic about that… I’d still like to keep doing what I do.

** An alternative to (ie: better option than) an investigation?  Subpoena Amazon for the vendors’ contact details, insisting on true identities and addresses.  A takedown order is going to be part of the 337 anyway, so why not start early?  If they won’t comply, join them as a co-defendant and make them go blind on paperwork.

*** I omit discussion of Article 15 defaults here– sure, they’re valid, but constitutionally unsound without actual notice.  They can still be sought, though… but that’s a discussion for another post.  It’s a distractor in this situation, because Smart Study never applied to China’s Hague Central Authority.

Mustafa Kemal Atatürk… he’s still very big over there. A bit like George Washington, Abe Lincoln, and FDR all rolled into one in the local zeitgeist.

[Ten years ago, I had the great pleasure of visiting the Republic of Turkey on a CLE adventure.   A dozen lawyers (some with their families!) had an amazing time hitting seven cities in ten days… and meeting some truly wonderful people.  In a nod to that country’s wishes, I’ll spell it Türkiye* from here on out.]

Service of process in Türkiye is subject to the strictures of the Hague Service Convention.  This holds true regardless of which U.S. or Canadian venue is hearing the matter.  You’ve got three ways to get it done:

  1. Tap us on the shoulder for bespoke attention—and probably some amusing commentary to boot (see the upper right if you’re on a desktop, or way down below if you’re on a phone/tablet),
  2. Cruise over to the Hague Envoy platform at USM94.com to automate the completion of your forms in perhaps twenty minutes or so, or
  3. If you’re feeling froggy & would like to handle the whole thing yourself, keep reading.  This lays out the framework you’ll need.

Some background is in order, if you’re so inclined, before we cut to the chase.

Here’s how it’s done in Türkiye:

Article 5 Service

  • Translate the documents. Türkiye’s declaration to Article 5(3) does not specifically require documents to be translated, but the defendant is afforded a chance to reject untranslated process (“the performance of the service is up to the Addressee’s will”).  That rejection puts you back at square one, and that’s not a fight worth having, if you ask me..  You can be right or you can be happy… so unless the documents are incredibly voluminous, just translate it.
  • Fill out a USM-94. Be very careful about ensuring that it is complete and concise, and make sure that it is signed by a court official or an attorney.  If it is not, make sure that the person signing is commissioned by the court.
  • Send to the appropriate Central Authority, in this case Ministry of Justice in Ankara.
  • Sit tight. It may take a while—likely many months from submission to return of proof.

Article 10 alternative methods

  • They simply aren’t available, because Türkiye opposes them all. Article 5 is the only way it can be done.

Seriously—that’s all there is to it.  The method is straightforward and simple.  Türkiye’s declarations and Central Authority information—as well as those of all the other countries in the treaty—can be found here.

Bonus practice tip… if you’re defense counsel, always question the validity of service effected on your overseas client.  The plaintiff may not have done it correctly.  That actually happened once, with a defendant in Norway, and her lawyers were smart enough to fight the issue.  The Washington Court of Appeals erroneously thought going outside the Central Authority was okay, but their Supreme Court saw the matter differently.


* Seriously– don’t use the English spelling if you want your stuff to pass muster.


The Grand National Assembly, Ankara

 

Façade of the Library of Celsus, among the ruins of Ephesus.

 

Your author, on the Euphrates River, crossing into Mesopotamia. May, 2012.