IP Law Daily, TRADEMARK—S.D.N.Y.: District Court’s exercise of jurisdiction not invalidated by the Second Circuit’s opinion in Smart Study, (Feb 19, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The district court found that that Mexico has not objected to the authority of a court outside Mexico, in a “case of urgency,” to impose “provisional or protective measures” against defendants located in Mexico, even where the Hague Convention’s usual service requirements have not been satisfied.

The U.S. District Court for the Southern District of New York found that Article 15(3) of the Hague Convention permits it to exercise jurisdiction for the purposes of entering temporary injunctive relief and of enforcing that relief by appropriate civil contempt sanctions. Therefore, the district court concluded that the jurisdiction it has exercised over MDM, MSD, and the other non-party co-contemnors is not invalidated by the Second Circuit’s opinion in Smart Study (Fox Corp. v. Media Deportes Mexico, S. de R.L. de C.V., No. 1:25-cv-06703-JSR (S.D.N.Y. Feb. 17, 2026)).

Background. On August 14, 2025, Fox Corporation, Fox Media LLC, and Fox Sports en Espanol LLC (plaintiffs) commenced an action alleging that Media Deport es Mexico, S. de R.L. de C.V. (MDM) breached an agreement under which a Fox Corporation affiliate assigned MDM a license to broadcast sporting events in Mexico using certain trademarks (Fox Sports Trademarks). According to the plaintiffs, MDM breached the license agreement by pursuing and obtaining, in the courts of Mexico, an injunction barring plaintiffs Fox Corporation and Fox Media LLC and certain of their affiliates from, among other things, using the Fox Sports Trademarks in Mexico. The district court entered a temporary restraining order (TRO) prohibiting MDM and anyone acting in concert with it from (1) using the Fox Sports Trademarks in Mexico; (2) using the U.S. Fox Sports marks in the United States; (3) pursuing any legal or regulatory action relating to the Fox Sports Trademarks in Mexico, including seeking to enforce the injunction issued on March 26, 2025 by Civil Department 42 of the Superior Court of Justice of Mexico City; and (4) taking any action to disrupt, hinder, or undermine Fox’s business relationships with 17 named affiliates.

On August 20, 2025, the plaintiffs moved for an Order directing MDM to show cause why it should not be held in civil contempt for violating the TRO. The district court granted the plaintiffs’ motion. On August 29, 2025, plaintiffs filed emergency motions requesting that the district court immediately hold MDM and third parties and non-party Mexico Sports Distribution LLC (MSD) a U.S. affiliate of MDM that had appeared before the district court, Grupo Lauman Holding, S. de R.L. de C.V. (Grupo Lauman), and Manuel Arroyo in civil contempt for further violating the TRO.

The district court repeatedly authorized the plaintiffs to effectuate electronic service on MDM of such papers as the complaint, the TRO that the district court issued on August 14, 2025, and an Order to Show Cause why MDM should not be held in civil contempt that the district court issued on August 20, 2025.

However, on December 18, 2025, the United States Court of Appeals for the Second Circuit issued an opinion in Smart Study Co., Ltd. v. Shenzhenshixindajixieyouxiangongsi. 164 F.4th 164 that the Convention on Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters, 20 U.S.T. 361 (1969) (Hague Convention), prohibits electronic service of process when directed into countries that have objected to service of process by “postal channels.” In light of Smart Study, the district court invited the plaintiffs’ counsel and substitute counsel for MSD to submit briefing as to whether, as a result of Smart Study, the district court lacked jurisdiction over MDM altogether from the get-go. The parties submitted their briefs.

Hague convention, art. 15(3). The district court found that Mexico, like China, has objected to the provisions of the Hague Convention that authorize service of process by “postal channels.” However, Mexico has not objected to the authority of a court outside Mexico, in a “case of urgency,” to impose “provisional or protective measures” against defendants located in Mexico, even where the Hague Convention’s usual service requirements have not been satisfied.

The district court found that Smart Study concerns a district court's jurisdiction to enter final judgment where service has not properly been effectuated under the Hague Convention, but does not address the scope of a district court's jurisdiction to order, “in case of urgency, any provisional or protective measures,” even where usual Hague Convention service has not been effectuated.

In that case, Smart Study moved for the entry of default judgment, which, if granted, would have finally resolved Smart Study's claims and imposed damages and a permanent injunction on the defaulting defendants. Here, in contrast, the plaintiffs have not sought the entry of judgment on any of their claims against MDM. Instead, the plaintiffs initially sought, and the district court initially granted, temporary injunctive relief in the form of the TRO and preliminary injunction prohibiting MDM and those acting in concert with it from continuing to engage in conduct that the plaintiffs alleged was in violation of the parties’ underlying agreement. Then, when the plaintiffs brought forward evidence that MDM, along with MSD, Grupo Lauman, and Arroyo, violated the TRO and preliminary injunction, the district court took the further steps of holding MDM and its co-contemnors in civil contempt and of imposing appropriate sanctions on them. Thus, the plaintiffs have requested, and the district court has taken, no step in this case that is remotely similar to the motion for entry of default judgment that was at issue in Smart Study. Rather, the district court exercised jurisdiction only by entering temporary injunctive relief and by sanctioning contumacious conduct.

The district court also noted that numerous courts, both in this district and elsewhere, have cited Article 15(3) as a basis for granting temporary injunctive relief even where service has been effectuated electronically upon defendants located in countries that have objected to Article 10 of the Hague Convention.

The district court also rejected MSD’s argument that the plaintiffs did not seek leave of the court to serve by e-mail pursuant to Article 15(3) of the Convention and that such electronic service cannot be retroactively authorized because the text of Article 15(3) contains no requirement.

Accordingly, the district court concluded that Article 15(3) of the Hague Convention is a safety valve that is appropriately limited to the issuance of “provisional or protective measures,” and does not allow litigants who reside in countries and have objected to Article 10 of the Hague Convention to evade the jurisdiction of United States courts during the period when service remains pending.

The Case is No. 1:25-cv-06703-JSR.

Judge: Rakoff, J.

Attorneys: Christopher T. Berg (Ellis George LLP) for Fox Corp.

Companies: Fox Corp.

Cases: Trademark NewYorkNews GCNNews