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Nylok Corp. v. Fastener World Inc.

United States Court of Appeals, Seventh Circuit
Jan 25, 2005
396 F.3d 805 (7th Cir. 2005)

Summary

finding plaintiff attempted service when he hired a process server

Summary of this case from Trilliant Funding, Inc. v. Marengere (In re Bozel S.A.)

Opinion

No. 04-2047.

Argued December 6, 2004.

Decided January 25, 2005.

Appeal from the United States District Court for the Northern District of Illinois, Suzanne B. Conlon, J.

Thomas G. Scavone, Frederick C. Laney (argued), Niro, Scavone, Haller Niro, Chicago, IL, for Plaintiff-Appellant.

Before EASTERBROOK, KANNE, and EVANS, Circuit Judges.


Nylok Corporation filed a complaint in the district court alleging trademark violations by five foreign corporations. The case was dismissed under Federal Rule of Civil Procedure 4(m) because of Nylok's failure to serve the defendants within 120 days. Nylok argues on appeal that Rule 4(m) explicitly does not apply to foreign service and that the district court's decision to dismiss should be reversed. For the reasons set forth in this opinion, we agree.

I. History

Nylok Corporation manufactures and sells a variety of fasteners. The fasteners made and sold by Nylok are blue in color, and this federally recognized blue trademark has been used to distinguish Nylok's fasteners from the products of competitors. On November 17, 2003, Nylok filed a complaint against four Taiwanese corporations and one Korean corporation alleging trademark infringement in violation of 15 U.S.C. § 1114.

In order to effectuate service on these foreign corporations, Nylok hired Celeste Ingalls, a professional service agent who specializes in the service of civil process in foreign countries. Ingalls prepared the necessary documents (e.g., translation of complaint and court executed rogatory letters) and forwarded them to the appropriate Taiwanese and Korean government entities on December 30, 2003. Nylok also provided copies of all filings and motions to the defendants via Federal Express and has attempted to pursue settlement agreements with each party.

Nylok was able to reach a settlement with Cashi Components Corporation, and a consent judgment order was entered on January 27, 2004.

On February 10, 2004, the district court sent notice to Nylok that service needed to be completed within 120 days from the date of filing under Rule 4(m). On February 23, Nylok filed a motion for clarification and argued that Rule 4(m) does not apply to foreign service and, thus, is not applicable to this case. Nevertheless, the court dismissed the case on March 26 for lack of service.

II. Analysis

This case was dismissed under Rule 4(m). That rule states:

If service of the summons and complaint is not made upon a defendant within 120 days after the filing of the complaint, the court, upon motion or on its own initiative after notice to the plaintiff, shall dismiss the action without prejudice as to that defendant or direct that service be effected within a specified time; provided that if the plaintiff shows good cause for the failure, the court shall extend the time for service for an appropriate period. This subdivision does not apply to service in a foreign country pursuant to subdivision (f) or (j)(1).

Fed.R.Civ.P. 4(m) (emphasis added).

The explicit language of this rule makes it very clear that the 120-day limit is inapplicable in cases involving service in a foreign country. This rule seems to recognize that the timeliness of foreign service is often out of the plaintiff's control. Nylok offers proof that service of process in Taiwan generally takes between six and twelve months and in Korea it can exceed four months.

Because district courts need to be able to control their dockets, we have stated that the amount of time allowed for foreign service is not unlimited. See O'Rourke Bros. Inc. v. Nesbitt Burns, Inc., 201 F.3d 948, 952 (7th Cir. 2000) (expressing disagreement with Ninth Circuit view that under Rule 4(m), "there is apparently no time limit for [foreign] service") (citing Lucas v. Natoli, 936 F.2d 432 (9th Cir. 1991)). If, for example, a plaintiff made no attempt to begin the process of foreign service within 120 days, it might be proper for a court to dismiss the claim. See id. at 951-52.

Nylok, however, made every effort to serve the defendants in a timely manner. Two days after filing the complaint in this case, Nylok hired Ingalls and instructed her to take the steps necessary to effectuate service. The appropriate materials were sent to the authorized agencies in Taiwan and Korea 41 days later. The next step involved waiting for the agencies to forward the materials to the applicable Taiwanese and Korean judicial authorities who would then serve the defendants. Under this system, although Nylok took all of the necessary affirmative steps, it could not control the timing of service.

III. Conclusion

Generally, a plaintiff is required to serve process upon defendants within 120 days after the complaint is filed. Rule 4(m), however, provides an exception in cases where service must occur in a foreign country. Nylok is entitled to litigate its trademark infringement case in federal court, and dismissal of its claim was improper. We REVERSE the dismissal and REMAND for further proceedings.


Summaries of

Nylok Corp. v. Fastener World Inc.

United States Court of Appeals, Seventh Circuit
Jan 25, 2005
396 F.3d 805 (7th Cir. 2005)

finding plaintiff attempted service when he hired a process server

Summary of this case from Trilliant Funding, Inc. v. Marengere (In re Bozel S.A.)

stating that "the amount of time allowed for foreign service is not unlimited" and suggesting that dismissal may be appropriate "[i]f, for example, a plaintiff made no attempt to begin the process of foreign service within 120 days"

Summary of this case from Blackstone Int'l, Ltd. v. Zhejiang Mikia Lighting Co.

interpreting previous 120-day limit

Summary of this case from Prem Sales, LLC v. Guangdong Chigo Heating & Ventilation Equip. Co.

interpreting previous 120-day limit

Summary of this case from Prem Sales, LLC v. Guangdong Chigo Heating & Ventilation Equip. Co.

stating that "the amount of time allowed for foreign service is not unlimited" and suggesting that dismissal may be appropriate "[i]f, for example, a plaintiff made no attempt to begin the process of foreign service within 120 days"

Summary of this case from Blackstone Int'l, Ltd. v. Zhejiang Mikia Lighting Co.

explaining that "district courts need to be able to control their dockets"

Summary of this case from Briseno v. Mktg. & Mgmt. Sols., LLC

noting that dismissal might be appropriate where “a plaintiff made no attempt to begin the process of foreign service within 120 days.”

Summary of this case from FirstBank P.R. v. Atl. Fin. Bus. Corp.

In Nylok the court explicitly provided an example of a case where failure to effect service on a foreign defendant could warrant dismissal of that defendant, saying, "[i]f... a plaintiff made no attempt to begin the process of foreign service within 120 days, it might be proper for a court to dismiss the claim.

Summary of this case from Tran v. Illinois Department of Corrections

noting 120 rule does not apply because timeliness of foreign service is often "out of a plaintiff's control" but holding time available to serve foreign defendant is not unlimited and plaintiff must begin making efforts to attempt service

Summary of this case from 3M COMPANY v. DARLET-MARCHANTE-TECHNOLOGIE SA
Case details for

Nylok Corp. v. Fastener World Inc.

Case Details

Full title:NYLOK CORPORATION, Plaintiff-Appellant, v. FASTENER WORLD INCORPORATION…

Court:United States Court of Appeals, Seventh Circuit

Date published: Jan 25, 2005

Citations

396 F.3d 805 (7th Cir. 2005)

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