IP Law Daily, COPYRIGHT—S.D. Fla.: Defendant’s name is Maximus, but Plaintiff has her revenge, (Mar 24, 2023)

By Matthew Hersh, J.D.

But service problems limit the sculptor to only a TRO and not a preliminary injunction.

An Indian company that filed a DMCA counternotice that agreed to accept service of process did not waive its right to have service of a follow-on copyright infringement complaint served under the process provided for in an international treaty covering service abroad, the federal court for Miami has held. The court’s ruling on a little-litigated provision of the landmark 1998 statute, while sparsely reasoned, appeared to be relying on a reading of the statute in light of analogous language in the Hague Convention (Cook v. Maximus International Specialists, March 23, 2023, Moore, K.).

The dispute arose when Maximus International Specialists, a company doing business as Replicartz, that operates out of the Himalayas-adjacent Indian state of Uttarakhand, allegedly began retailing on Amazon a knock-off of a rattlesnake-themed sculptor created by an American sculptor. That sculptor, Jennifer Cook, served a takedown notice under the Digital Millennium Copyright Act upon Amazon. The Indian company, in response, served a counter-notice under the DMCA upon Amazon.

The next step, inevitably, was a copyright infringement lawsuit by the American artist. The artist obtained, in a proceeding before a Miami magistrate judge, a report and recommendation for an order granting a temporary restraining order, but not a preliminary injunction, against the Indian company. The artist objected to the magistrate’s recommendation to deny her request for the preliminary injunction, leading to this District Court opinion.

Service. The court adopted the magistrate’s recommendation for issuance of the TRO, but also agreed with the magistrate that a preliminary injunction was not appropriate at this time. The question faced by the court was whether the American artist had properly served the Indian company, which did not show at the TRO hearing. The American artist contended that the Indian company had agreed in its DMCA counter-notification, as required by the DMCA, to “accept service of process” from the artist. Thus, the artist served the Indian company only by email. Was that enough? The Miami court found that it was not.

The language in the counter-notification was not enough, the court noted, because “[a]lthough the counter-notice filed by Defendant stated that Defendant would accept service of process from Plaintiff, the counter-notice did not state that Defendant waived formal service requirements.” (A statement that, this author and litigator would note, seems odd in a world where lawyers typically agree to waive formal service upon their clients by agreeing to “accept service” on their behalf.) As a support for its conclusion, the court noted, it appeared that the overarching purpose of this section of the DMCA was “to identify alleged copyright infringers, not to supplant the formal service requirements of the Federal Rules.”

The Miami court’s reasoning was decidedly sparse, but a more fulsome account of the argument may be found in Wrinkled Surface Enterprises LLC v. Gurianov, No. 19-CV-8882 (JPO), 2021 WL 142280, at *1 (S.D.N.Y. Jan. 15, 2021), a case cited by the court. In that case, the Manhattan court reached the same conclusion, but based upon a more fulsome analysis of the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents. That convention, the Manhattan court noted, provides that “an addressee who accepts [service] voluntarily” submits to so-called “informal service” under the treaty. But “informal service” under the convention, while it lifts some formalities such as the requirement of native language translation, still requires service that is “[]compatible with the law of the State addressed.” Thus, the Manhattan court noted, the DMCA can be understood as requiring parties filing counternotices to submit to “informal service” under the Hague Service Convention, but not to service simply by email.

The Case is No. 1:23-cv-20589-KMM.

Attorneys: Marian V. Quintero (Sriplaw, P.A.) for Jennifer L. Cook.

Companies: Maximus International Specialists

Cases: Copyright TechnologyInternet FloridaNews GCNNews