The opinion
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ILLINOIS
BRAINLIFE LLC d/b/a BRAIN FUEL,
Plaintiff,
v. Case No. 3:24-cv-01389-JPG
BEEKEEPER’S NATURALS INC. et al.,
Defendants.
MEMORANDUM AND ORDER
This matter comes before the Court on an ex parte motion for expedited discovery and
email service. (Doc. 12). The Plaintiff filed their motion on June 3, 2024. Finding that the
Plaintiff has undertaken diligent efforts to discover physical addresses for some of the defendants
to no avail, the Court GRANTS in part and DENIES in part the ex parte motion.
I. INTRODUCTION
The Plaintiff claims that the defendants in this case have infringed on their trademark, in
violation of the Lanham Act. The Plaintiff filed the ex parte motion currently before the Court
alleging that many of the defendants were online retailers from foreign countries that, upon being
notified of this suit, would shut down their shops and vanish—as is the modus operandi for many
of these off-shore infringers.
However, the Plaintiff did not specify which defendants they did and did not have
addresses for. Accordingly, the Court called a hearing on the motion. (Doc. 14). At that hearing,
the Court inquired what efforts the Plaintiff had undertaken to discover the physical addresses of
the defendants. The Plaintiff indicated that they have located many of the defendants’ physical
addresses, but not all. The Court deferred ruling on the motion and ordered the Plaintiff to file a
supplement to the motion detailing which defendants they had addresses for and what diligent
efforts they have undertaken in locating the defendants that they did not have addresses for. The
Plaintiff filed that supplement shortly thereafter.
II. BACKGROUND
Brainlife LLC is a supplement company that makes “Brain Fuel.” Brain Fuel is a
supplement marketed as helping boost mental performance. BRAIN FUEL, Registration No.
4,067,325. The Plaintiff holds a trademark for Brain Fuel. However, that mark is currently
undergoing a cancellation challenge brought by one of the defendants in this case—M2
Ingredients, Inc., d/b/a Om Mushroom Superfood. BRAIN FUEL, Registration No. 4,067,325,
Proceeding No. 92,083,527, (T.T.A.B. 2023). M2 initiated that proceeding before the United
States Trademark and Patent Office’s Trademark Trial and Appeal Board (T.T.A.B.) on October
19, 2023, after they received a cease and desist order from Brainlife. The T.T.A.B. has yet to rule
on the cancellation proceeding.
Brainlife has named thirty-five defendants. (Doc. 1). They can be roughly sorted into two
categories: manufacturers and merchants. The manufacturers are the defendants making products
labelled as “brain fuel” or “breinfuel,” and selling them directly to consumers. (Doc. 3). The
merchants, on the other hand, are websites or individuals on third-party websites reselling the
manufacturers’ products. (Id.). There are approximately fourteen manufacturers and twenty-one
merchants. All of them sell and ship their products to the State of Illinois. (Id.).
In cases of trademark infringement, offshore merchants will often sell their infringing
products in the United States. When the trademark owner learns of that infringement, the mark’s
owner will send cease and desist letters. In some cases, mark owners will sue these infringers
directly. However, either upon notice of the cease and desist, or at the first signs of a lawsuit;
some of these offshore merchants will close down their ecommerce shops and disappear without
a trace. See e.g., Kay v. Individual, No. 22-cv-3033, 2024 U.S. Dist. LEXIS 42430 (S.D. Ill.
Feb. 22, 2024). This most often results in a game of “Whack-a-mole” wherein infringers pop up
faster than mark owners can stop them and then disappear when the mark owners attempt to
pursue them.
This state of affairs has led to the growth of ex parte motions—such as the one here—to
obtain the contact and financial information of these merchants to track them down and stop
them from escaping. As these merchants often have no physical address, email service has
become a common way to serve them.
Brainlife’s supplemental motion has detailed the diligent efforts they have undertaken to
locate the physical addresses of the defendants. They have succeeded in locating the addresses
for some of the defendants, but not others. The Plaintiff has been unable to obtain physical
addresses for:
• HHFS-Online
• Healthplusliving
• Wanda’s Health and Beauty
• Daily Deals Sales
• Tiendamia
• Todayslifestlenetau888
• VitaminsPro
• Beautyproductsnstuff
• Vita Shop Smart
• Desertcart Zimbabwe
• Desertcart Albania
• Kardiac Kids
• Goodthingstobuynow
III. LEGAL STANDARD
Expedited Discovery
As expedited discovery requests are generally made to prepare for a preliminary
injunction hearing, a decision to grant expedited discovery should be based on “the
reasonableness of the request in light of all surrounding circumstances.” Merrill Lynch, Pierce,
Fenner & Smith v. O'Connor, 194 F.R.D. 618, 624 (N.D. Ill. 2000). When it comes to the service
of foreign nationals there is a “thumb on the scale weighing against [extensive] discovery.” In re
Sheehan, 48 F.4th 513, 526 (7th Cir. 2022) (internal citations and quotations omitted). While the
Court has wide discretion when it comes to discovery, the Plaintiff “must be able to establish a
colorable or prima facie showing of personal jurisdiction before discovery should be permitted.”
Id. at 526 (internal citations and quotations omitted).
Personal jurisdiction must exist for a court to exercise authority over a party. Personal
jurisdiction can be waived and is generally raised by the defendant, not the Court. However, if a
lack of personal jurisdiction or improper venue is obvious, a Court may dismiss the suit, but it is
generally better to transfer the suit to an appropriate venue or forum. Spherion Corp. v.
Cincinnati Fin. Corp., 183 F. Supp. 2d 1052, 1059-060 (N.D. Ill. 2002).
Personal Jurisdiction requires: (1) minimum contacts with the forum state, (2) that the
claims arise out of contacts with the forum state; and (3) the maintenance of the lawsuit must not
offend traditional notions of fair play and substantial justice. International Shoe Co. v.
Washington, 326 U.S. 310, 316, (1945). A defendant does not have minimum contacts with a
state when they merely operate an interactive website accessible to people in that state. Illinois v.
Hemi Group LLC, 622 F.3d 754 (7th Cir. 2010). To establish minimum contacts, a defendant
must have purposefully exploited the market of the forum state. Curry v. Revolution Labs.,LLC,
949 F.3d 385, 399-400 (7th Cir. 2020) (citing be2 LLC v. Ivanov, 642 F.3d 555, 558 (7th Cir.
2011)). “There is no per se requirement that the defendant especially target the forum in its
business activity; it is sufficient that the defendant reasonably could foresee that its product
would be sold in the forum.” Id. at 399-400 (citing Keeton v. Hustler Magazine, Inc., 465 U.S.
770, 781 (1984)). A court in a forum state has personal jurisdiction over defendants in trademark
infringement cases when the defendants offer their products for sale in the forum state, send an
email confirmation, and ship to that state. Id.
Email Service
In all cases involving alternative forms of service, a court “must determine whether the
alternative method is reasonably calculated, under all circumstances, to apprise interested parties
of the pendency of the action and afford them an opportunity to present their objections.”
NYKCool A.B. v. Pac. Int'l Servs., Inc., 66 F. Supp. 3d 385, 391 (S.D.N.Y. 2014) (internal
quotations omitted).
Fed. R. Civ. P. (hereinafter “FRCP”) 4 governs summons. Traditionally, summons are
served directly to the individual. FRCP 4(e) governs service on individuals in the United States
while FRCP 4(f) governs service on individuals in foreign countries.
(e) SERVING AN INDIVIDUAL WITHIN A JUDICIAL DISTRICT OF THE UNITED STATES. 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 in a judicial district of
the United States by:
(1) following state law for serving a summons in an action brought in courts of
general jurisdiction in the state where the district court is located or where service
is made;
. . . .
(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:
(1) by any internationally agreed means of service that is reasonably calculated to
give notice, such as those authorized by the Hague Convention on the Service
Abroad of Judicial and Extrajudicial Documents;
(2) if there is no internationally agreed means, or if an international agreement
allows but does not specify other means, by a method that is reasonably calculated
to give notice:
(A) as prescribed by the foreign country's law for service in that country in
an action in its courts of general jurisdiction;
(B) as the foreign authority directs in response to a letter rogatory or letter
of request; or
(C) unless prohibited by the foreign country's law, by:
(i) delivering a copy of the summons and of the complaint to the
individual personally; or
(ii) using any form of mail that the clerk addresses and sends to the
individual and that requires a signed receipt; or
(3) by other means not prohibited by international agreement, as the court orders.
FRCP 4(e), 4(f). Illinois Supreme Court Rules 11 and 105(b)(1) explicitly authorize service by
email. ILL. SUP. R’S 11, 105(b)(1). Midwest Commer. Funding, LLC v. Kelly (Williams), 2023 IL
128260, ⁋ 22 (Ill. 2023). Therefore, if a defendant is within the United States, they may be served
by email by plaintiffs suing within the state of Illinois under certain circumstances.
However, even if email service is permissible under Illinois rules, email service on
foreign nationals may still be inappropriate. International service of process is governed by the
Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and
Commercial Matters art. 10(a), Nov. 15, 1965, 20 U.S.T. 361, 658 U.N.T.S. 163 (“Hague
Convention”). Email service was not contemplated by the Hague Convention, so it would fall
under the category of “other means” of service under FRCP 4(f)(3). FRCP 4(f)(3) requires that
email service not violate federal law, foreign law, or international agreements—including the
Hague Convention. Id. The Hague Convention did not contemplate email as a form of acceptable
service because email did not exist at the time of the Convention. Therefore, the question is
whether the Hague Convention proscribes email service by excluding alternative service; if it
does, then email service on the international defendant would not comply with FRCP 4(f)(3).
Yet, whether the Hague Convention prohibits email service is a matter of dispute and also
depends on the country.
The legality of email service depends on multiple factors: whether foreign law proscribes
email service, whether the country objects to Article 10(a) of the Convention, and whether the
country objects specifically to email service. Article 10(a) of the Hague Convention states:
“[p]rovided the State of destination does not object, the present Convention shall not interfere
with . . . the freedom to send judicial documents, by postal channels, directly to persons abroad.”
20 U.S.T. at 361. Put in simpler terms, if the country objects to Article 10(a), service by postal
channels is impermissible.
Courts are divided on whether the Convention’s silence on alternative forms of service,
such as email, excludes those alternative forms of service. Compare Luxottica Grp. v. P’ships &
Unincorporated Ass’n., 391 F. Supp. 3d 816, 825 (N.D. Ill. 2019) with Parsons v. Shenzen Fest
Tech. Co., 2021 U.S. Dist. LEXIS 35903 at *4-5 (N.D. Ill. Feb 26, 2021). Courts are also divided
on whether “postal channels” encompass email. Id. Consequently, some courts have found that
emails do not fall under the definition of “postal channels” and, because the Convention’s silence
as to other forms of service is exclusionary, that email service is impermissible. Luxottica Grp.,
391 F. Supp. at 825. Other courts have disagreed, finding that email service falls within the scope
of “postal channels.” Elobied v. Baylock, 299 F.R.D. 105, 108 (E.D. Pa. 2014). Sulzer Mixpac
AG v. Medenstar Indus. Co. Ltd., 312 F.R.D. 329, 331-32 (S.D.N.Y. 2015) (collecting cases).
However, even the courts that consider email to be within the scope of “postal channels” are
divided. Id. Some hold that, because email service is encompassed by “postal channels” that a
country’s objection to service by “postal channels” i.e., an objection to Article 10(a), proscribes
postal service and email service equally. Elobied v. Baylock, 299 F.R.D. at 108. Others hold that,
while email service may be encapsulated by the term “postal channels” a country’s objection to
service by “postal channels,” alone, does not proscribe email service; rather a country must
specifically object to service by email. Sulzer Mixpac AG v. Medenstar Indus. Co. Ltd., 312
F.R.D. at 331-32.
Relevantly, there is a split within this circuit over whether the Hague Convention
prevents email service to individuals in the People’s Republic of China specifically. The PRC
objects to Article 10(a). The majority of district courts in this circuit have found that service by
email is acceptable to individuals in the PRC. E.g. Hangzhou Chic Intelligent Tech. Co. v.
P'ships & Unincorporated Ass’n, (No. 20 C 4806) 2021 U.S. Dist. LEXIS 64064 at *10-11 (N.D.
Ill. Apr. 1, 2021). These courts reason that, because email service does not involve physical
intrusion into a foreign country, email service does not fall within the scope of “postal channels.”
Id. At least one district court in this circuit has come to the opposite conclusion, finding, because
the Hague Convention could be extended to email service, that the Convention’s restrictions on
other service should also be extended to email. Luxottica Grp. at 827.
Regardless, the Hague Convention only applies in cases where the physical address of the
defendant is known. NBA Props. v. P'ships & Unincorporated Ass’ns, 549 F. Supp. 3d 790, 796
(N.D. Ill. 2021) (“The Convention does not apply if the defendant's address is ‘not known.’”).
However, some courts have found, before accepting “that a defendant's address is ‘not known,’
[that] the plaintiff must make reasonably diligent efforts to ascertain and verify defendant’s
mailing address.” Id. There is no mandatory authority on whether Plaintiffs must undertake
“reasonably diligent efforts” before allowing service by email. Some courts have issued email
service without this showing while others have not. Delta Faucet Co. v. Watkins, 2023 U.S. Dist.
LEXIS 52495 at *5 (S.D. Ind. Mar. 27, 2023).
When a plaintiff includes business information in their complaint, but did not look to see
if mailing addresses were available or valid, that plaintiff fails to exercise reasonable diligence.
While a plaintiff may believe that those addresses are unlikely to be valid, a plaintiff’s “bare
assertion regarding the reliability of [d]efendant[s’] publicly available address are not a substitute
for actual diligence.” Id.
IV. ANALYSIS
Before examining the merits of the motion, as stated above, there is no mandatory
authority on the question of whether plaintiffs must show reasonably diligent efforts to discover
defendants’ physical addresses before a court allows email service. Consequently, this Court
must determine whether a plaintiff must show those efforts before authorizing service by
email—especially given the Plaintiff’s claims here that some of the defendants are located in the
PRC; a country that has objected to Article 10(a) of the Hague Convention.
Email Service Generally
Service by email in the United States is dependent on state law, while service by email
abroad is subject to U.S. law, foreign law, and international agreements—such as the Hague
Convention. FRCP 4(e), 4(f). Many of the Courts who have issued rulings on email service for
defendants whose physical addresses are unknown have analyzed the question under FRCP 4(f)
(service on foreign nationals). However, defendants with unknown addresses are not necessarily
foreign defendants—they may actually be within the United States. If a defendant with a known
address turns out to reside in the United States, analyzing the appropriateness of email service
under FRCP 4(f) would have been inappropriate. Alternatively, the defendants may be in a
country that prohibits email service and, likewise, email service under FRCP 4(f) would have
been inappropriate. These plausible scenarios can create major procedural issues down the line.
While this is a risk any time a Court orders email service, requiring reasonably diligent efforts to
discover defendants’ addresses should filter out many of these issues.
Some courts have not required that plaintiffs show reasonably diligent efforts to uncover
defendants’ addresses. Beyond increasing the likelihood that one of the scenarios outlined above
will occur, that approach also creates a public policy problem.
Service of process, even on defendants whose addresses are known, can be costly and
time-consuming. Requiring little to no effort to discover a defendant’s address would encourage
plaintiffs to stick their head in the sand to avoid discovering those addresses, effectively giving
plaintiffs carte blanche to serve all defendants by email—cutting down on the delay and costs
ordinarily associated with service. Initially, service by email may sound quick, efficient, and
cost-effective; but it may also allow plaintiffs to move for speedy entries of default and default
judgments before defendants realize they have been summoned. There is no telling whether an
email address that a plaintiff finds is one that is checked regularly by the defendant. Even if it is
regularly monitored, an email summons might be mistaken for being a scam email—presuming
email auto-filtering does not designate the email as spam.
Additionally, not requiring reasonably diligent efforts would allow some plaintiffs to
easily circumvent foreign law, state law, and international agreements by pleading ignorance of a
defendant’s location when the state, foreign, or international law in the defendant’s location
proscribes email service. As illustrated by the multiple splits that exist over the interpretation of
the Hague Convention, it would be easier for a plaintiff to exercise no effort to discover a
defendant’s address if they know that it may result in complex litigation over service.
For all these reasons, this Court will only authorize email service after a plaintiff shows
that they have exercised reasonably diligent efforts to find a defendant’s physical address
without success.
Expedited Discovery and Email Service in This Case
Now the Court turns to the merits of Brainlife’s motion. The Plaintiff’s reason for
seeking an expedited discovery order is that they fear the offshore merchants will close down
their ecommerce stores upon seeing this lawsuit. Expedited discovery would allow the Plaintiff
to receive financial and account information from third-party websites to discover their real
identities or at least prevent them from vanishing.
However, at the hearing on the motion, the Court observed that many of the defendants—
the manufacturers—were established companies within the United States and did not appear to
be at any risk of vanishing. The Court ordered the Plaintiff to file a supplement to the motion
indicating which defendants the Plaintiff had physical addresses for and which ones the Plaintiff
did not have addresses for. Also, that the Plaintiff detail the efforts they have taken to locate the
defendants.
Now, the Court has reviewed the supplement and the Plaintiff’s efforts. The Court finds
that expedited discovery is reasonable for some of the defendants in light of the significant risk
in these cases that certain merchants may vanish at the signs of this lawsuit. Without accurate
information provided by third-parties, it would be extremely difficult for the Plaintiff to find
valid email address associated with the Defendants that are reasonably calculated to give them
notice. There is a far higher likelihood that a defendant will receive notice of this lawsuit if it is
delivered to the email that they have primarily used in their business operations. For these
reasons, the Court finds that email service for some of the defendants through the primary email
they use for ecommerce is reasonably calculated to apprise them of the pendency of this action.
Additionally, the Plaintiff presented sufficient evidence that each of the Defendants—including
the Defendants the Plaintiff seeks to serve via email—offers to ship and will ship their products
to the State of Illinois, establishing sufficient personal jurisdiction.
Accordingly, the Court will grant the motion for expedited discovery and service of
process by email solely for the relevant defendants. Service by email and expedited discovery as
to all other defendants will be denied, but denied without prejudice—in case the Plaintiff
discovers that the physical address for one or more of the other Defendants is invalid. Given the
individuals behind these accounts are unknown at this time, the Court finds that utilizing service
through information provided to their payment platforms is the best method, reasonably
calculated to give them notice of the pendency of this action. If, through this expedited discovery
process, the Plaintiff discovers the physical addresses for any of these Defendants, the Plaintiff
should arrange for service to be carried out in compliance with the relevant federal rule of civil
procedure.
While the Court was reviewing the Plaintiff’s supplement, the Plaintiff—without the
leave of this Court—requested and was issued summonses for all defendants, including those
who the Plaintiff only had email information for. (Docs. 60, 62–65, 69, 72–74, 76–78, 80–81, 84,
86–87). Most of these summonses included placeholder emails that were clearly erroneous.
However, some of these summonses included the defendants’ correct email addresses, with no
corresponding physical address. (Doc. 60, 76–78, 86). Though the Court has ultimately found
that the Plaintiff has exercised reasonably diligent efforts and authorized email service, the
Plaintiff’s decision to request these summons before the Court had an opportunity to rule on the
matter is concerning. The Court understands that the Plaintiff may have done this out of a desire
to move this case along, however, that is not an excusable reason to act without authorization,
especially when the matter is pending disposition. The Plaintiff may have just opened the door to
procedural challenges later on. It would be unwise for the Plaintiff to act without authorization
again.
V. CONCLUSION
For the reasons outlined above, the Court GRANTS in part and DENIES in part
without prejudice the Plaintiff’s Ex Parte Motion for Expedited Discovery and Email Service.
(Doc. 12). Accordingly, expedited discovery and email service are authorized for the following
defendants:
• HHFS-Online
• Healthplusliving
• Wanda’s Health and Beauty
• Daily Deals Sales
• Tiendamia
• Todayslifestlenetau888
• VitaminsPro
• Beautyproductsnstuff
• Vita Shop Smart
• Desertcart Zimbabwe
• Desertcart Albania
• Kardiac Kids
• Goodthingstobuynow
Additionally, when a pending matter is before the Court, the Plaintiff is ADVISED not to
initiate actions that require this Court’s leave without authorization.
IT IS SO ORDERED.
DATED: June 20, 2024
s/ J. Phil Gilbert
J. PHIL GILBERT
DISTRICT JUDGE