Nylok Corporation v. Fastener World Inc ( 2005 )

In the
United States Court of Appeals
For the Seventh Circuit
____________
No. 04-2047
NYLOK CORPORATION,
Plaintiff-Appellant,
v.
FASTENER WORLD INCORPORATION,
NASALOK COATING CORPORATION,
UNILOCK INDUSTRIAL CO., and
NYPATCH INDUSTRIAL CO.,
Defendants-Appellees.
____________
Appeal from the United States District Court for
the Northern District of Illinois, Eastern Division.
No. 03 C 8238—Suzanne B. Conlon, Judge.
____________
ARGUED DECEMBER 6, 2004—DECIDED JANUARY 25, 2005
____________
Before EASTERBROOK, KANNE, and EVANS, Circuit Judges.
KANNE, Circuit Judge. Nylok Corporation filed a com-
plaint 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 fail-
ure to serve the defendants within 120 days. Nylok argues
on appeal that Rule 4(m) explicitly does not apply to foreign
2 No. 04-2047
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 prod-
ucts 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 for-
warded them to the appropriate Taiwanese and Korean gov-
ernment 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 agree-
ments with each party.1
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.
1
Nylok was able to reach a settlement with Cashi Components
Corporation, and a consent judgment order was entered on
January 27, 2004.
No. 04-2047 3
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 in-
itiative 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 appropri-
ate 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 un-
der Rule 4(m), “there is apparently no time limit for [for-
eign] 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
4 No. 04-2047
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.
A true Copy:
Teste:
________________________________
Clerk of the United States Court of
Appeals for the Seventh Circuit
USCA-02-C-0072—1-25-05