In a case that could have significant implications for global intellectual property enforcement, the creator of the viral “Baby Shark” brand is waging a case against international counterfeiters before the U.S. Court of Appeals for the Second Circuit. Central to the currently-pending appeal is a seemingly narrow but pivotal question: Can email be used to serve foreign defendants under international law? The decision from the Second Circuit could profoundly impact the ability of rights holders – across industries – to pursue online counterfeiters operating beyond U.S. borders.
The Background in Brief: Smart Study Co., LTD, the company behind Baby Shark, originally filed suit in the U.S. District Court for the Southern District of New York in July 2021, targeting the operators of dozens of Amazon storefronts that it alleged were selling counterfeit “Baby Shark”-branded products. The South Korean entertainment company secured a temporary restraining order and later a preliminary injunction against the long list of defendants.
However, when Smart Study moved for default judgment against the non-appearing defendants, the court declined. Despite having initially authorized service by email, SDNY Judge Gregory Woods later dismissed the case against the two remaining defendants located in China. His reasoning: under the Hague Convention, China has formally objected to service by “postal channels,” with the court interpreting that to also encompass service by email. Because email service was deemed invalid, the court found that it lacked personal jurisdiction over the Chinese defendants and dismissed the claims against them.
Smart Study appealed the decision to the Second Circuit last year, arguing in an appellate brief that the court misapplied the Hague Convention and overreached by categorically barring email service.
Service by Email as a Lifeline for Enforcement
At the heart of Smart Study’s appeal is its argument that email is the only viable method of contacting anonymous online sellers, such as those in the case at hand. The district court’s blanket rejection of email service is not only legally flawed, the plaintiff argues; it is so overbroad that it would make it nearly impossible for U.S. plaintiffs to sue Chinese defendants, especially in counterfeiting cases where sellers routinely use false identities and addresses.
“Third-party merchants on platforms such as Amazon, like the defendants, have been known to use aliases, false addresses and other incomplete identification information to shield their true identities,” according to Smart Study. “It is, however, required for every defendant to have a current and operational email address” – as distinct from a physical address – “to operate their Merchant Storefronts and conduct their businesses,” making them one of the only reliable channels for service.
Smart Study also aims to distinguish between China’s rejection of service via “postal channels” and service via email, arguing that courts have found that “[w]here a signatory nation has objected to the alternative means of service provided by the Hague Convention, that objection is expressly limited to those means and does not represent an objection to other forms of service, such as email or website posting” – or even service via NFT, which at least one court (S.D. Fla.) determined was a permissible way to serve Chinese defendants.
In short: Since counterfeit sellers frequently register storefronts with false names and addresses, alternative service under Rule 4(f)(3) of the Federal Rules of Civil Procedure – which allows courts to authorize service by email on foreign defendants when traditional methods are ineffective – is a critical tool in fighting digital counterfeiting.
The Digital Realities of Global Commerce
Smart Study’s appeal rests on a key legal distinction: the Hague Convention does not explicitly address email. It outlines approved methods (like service through a central authority) and allows countries to object to specific ones (like postal mail), but it says nothing about electronic communication, which did not exist when the treaty was drafted in 1965.
Backing up Smart Study in its appeal is a coalition of industry groups, which filed an amicus brief last year, arguing that “counterfeiters use a variety of common tactics to conceal their identities, the full scope and interworking of their counterfeiting operation, and to avoid being shut down,” and that “rights holders should be permitted to use alternative service [to ensure that] counterfeits [are] not able to easily avoid service and continue to violate U.S. law without consequence.”
In their brief, the Toy Association and the Halloween Industry Association argue that requiring formal Hague service procedures in every case effectively shields foreign counterfeiters from U.S. enforcement and rewards evasive behavior, a position that reflects a growing tension between traditional service conventions – drafted in an analog era – and the digital realities of global commerce.
Smart Study maintains that many U.S. courts have held that a country’s objection to mail under Article 10(a) does not automatically bar email, and that email service under Rule 4(f)(3) is valid as long as it is “not prohibited by international agreement” and meets constitutional due process standards. At the same time, it argues that other district court judges “have since issued conflicting decisions, while [still] others have held off on issuing opinions pending this appeal,” highlighting the need for the Second Circuit to “resolve such uncertainty.”
THE BIGGER PICTURE: While the case is formally limited to two Chinese sellers on Amazon, the outcome could influence how federal courts treat service of process in hundreds of similar counterfeit cases filed each year. If the Second Circuit affirms the district court’s reasoning, rights holders may face steeper costs, longer delays, and additional barriers to enforcement against foreign defendants operating online.
But if the court adopts Smart Study’s position – that email is a lawful and necessary means of service under the Federal Rules when traditional options are unworkable, it would reinforce a pragmatic approach that many other district courts already embrace.
The case is Smart Study Co., LTD v. Acuteye-US, 1:21-cv-05860 (SDNY).
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