Luxottica Group S.p.A. v. The Partnerships and Unincorporated Associations Identified on Schedule "A"

              IN THE UNITED STATES DISTRICT COURT                        
             FOR THE NORTHERN DISTRICT OF ILLINOIS                       
                       EASTERN DIVISION                                  

LUXOTTICA GROUP S.p.A. and Oakley,  )                                    
Inc.,                          )  Case No. 18 CV 2188                    
                               )                                         
          Plaintiffs,          )  Judge Joan B. Gottschall               
     v.                        )                                         
                               )                                         
The Partnerships and Unincorporated  )                                   
Associations Identified on Schedule “A,”  )                              
                               )                                         
          Defendants.          )                                         

                MEMORANDUM OPINION AND ORDER                             

    Plaintiffs move for reconsideration of the court’s memorandum opinion and order dated 
May 24, 2019, ECF No. 131 (cited herein as “slip op.”), granting the motion of six defendants 
(“defendants”), all of which are based in China, to dismiss for improper service.  In summary, 
the court found that the Hague Service Convention1 applied to defendants, that plaintiffs had not 
exercised reasonable diligence to identify defendants’ addresses, and that the temporary 
restraining order authorizing service under Federal Rule of Civil Procedure 4(f)(3) by email and 
by posting on a website was inconsistent with the Hague Service Convention.  Familiarity with 
the opinion will be presumed.                                             
    “Motions for reconsideration serve a limited function: to correct manifest errors of law or 
fact or to present newly discovered evidence.”  Caisse Nationale de Credit Agricole v. CBI 
Indus., Inc., 

90 F.3d 1264, 1269

 (7th Cir. 1996)) (quoting Keene Corp. v. Int’l Fid. Ins. Co., 

561 F. Supp. 656, 665

 (N.D. Ill. 1982)).  Because “‘manifest error’ is not demonstrated by the 
disappointment of the losing party,” Oto v. Metro. Life Ins. Co., 

224 F.3d 601, 606

 (7th Cir. 

1 The Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters, Nov. 15, 
1965 (“Hague Service Convention”), 20 U.S.T. 361.                         
2000) (quoting Sedrak v. Callahan, 

987 F. Supp. 1063, 1069

 (N.D. Ill. 1997)), a motion for 
reconsideration is no place for “rehashing previously rejected arguments or arguing matters that 
could have been heard during the pendency of the previous motion,” Ahmed v. Ashcroft, 

388 F.3d 247, 249

 (7th Cir. 2004) (quoting Caisse Nationale de Credit Agricole, 

90 F.3d at 1270

).  

Hence, “[t]he repetition of previous arguments is not sufficient to prevail” on a motion to 
reconsider, id (quoting United States v. $23,000 in U.S. Currency, 

356 F.3d 157

, 165 n.9 (1st Cir. 
2004), unless the court misunderstood the argument in the first place, see Bank of Waunakee v. 
Rochester Cheese Sales, Inc., 

906 F.2d 1185

, 1191–92 (7th Cir. 1990) (quoting Above the Belt, 
Inc. v. Mel Bohannan Roofing, Inc., 

99 F.R.D. 99, 101

 (E.D. Va. 1983)).  The party seeking 
reconsideration bears the burden of explaining why the court should change its mind.  Ahmed, 

388 F.3d at 249

.  With the exception of one defendant for which a clearer record is needed, 
plaintiffs have not carried their burden.                                 
                          Factual Issues                                 
    Plaintiffs first attack the court’s conclusion that plaintiffs did not exercise reasonable 

diligence to identify defendants’ mailing addresses.  Slip op. at 5–8.  The attack is based on three 
primary factual premises and a policy argument concerning the burden of investigating potential 
addresses in China.  See Mot. to Reconsider 6–7, ECF No 132.  All could have been raised in 
plaintiffs’ sur-reply, ECF No. 120, and that is reason enough to deny reconsideration.  Goplin v. 
WeConnect, Inc., 

893 F.3d 488

 (7th Cir. 2018); Ahmed, 

388 F.3d at 249

 (citation omitted).     
    The first premise is that addresses were potentially available from the company that 
hosted defendants’ online stores.  One of plaintiffs’ lawyers, Justin R. Gaudio, avers that 
Alibaba, Inc.’s (“Alibaba”) in-house counsel stated on an unspecified date that producing the 
names and addresses of store owners would violate Chinese privacy law.  Decl. of J. Gaudio ¶ 2, 
May 31, 2019, ECF No. 132-1.  The point appears to be that Alibaba would refuse to produce 
defendants’ names and mailing addresses, and this court would have no power to compel the 
disclosure.2  Not only is plaintiffs’ evidence hearsay, see Fed. R. Evid. 801, 802, but plaintiffs 
have also given no reason why they could not have made this argument during the briefing on 

the motion to dismiss.  Had they done so, the parties might have explored the content of Chinese 
privacy law, Alibaba’s amenability to this court’s orders, and defendants’ willingness to waive 
any protections Chinese law affords them.  A motion for reconsideration does not give a party a 
“do over” on the original motion.  Hutchens v. McDonogh, 

2013 WL 11322823

, at *1 (N.D. Ill. 
Oct. 28, 2013).                                                           
    Second, plaintiffs assert that defendants’ potential addresses were unknown to them 
because they received the packages ordered from defendants after they filed their motion for an 
order allowing email service.3  But he court’s analysis did not turn on a finding of the date on 
which plaintiffs received packages.  The court instead concluded that return address labels were 
“an important source of information” of which plaintiffs were aware (from other cases) and for 

which plaintiffs should have waited (or at the very least plaintiffs should have advised the court 
of the possibility of receiving shipping labels).  See slip op. at 7–8.  Plaintiffs do not challenge 
the court’s legal conclusion that the Hague Service Convention requires them to conduct a 
reasonable investigation of possible addresses for defendants.4  Slip op. at 6 (quoting Advanced 

2 The evidence to this point has shown that AliExpress, Inc., (“AliExpress”) hosted defendants’ stores.  See, e.g., slip op. at 2.  
Presumably, AliExpress and Alibaba are related, but plaintiffs shed no light on their exact relationship and why Alibaba’s 
counsel’s statements would bind AliExpress.                               

3 As with the prior argument, plaintiffs give no reason why they could not have made these arguments in their surreply.  See slip 
op. at 7 (quoting arguments made in sur-reply).  Plaintiffs’ failure to explain why these arguments were unavailable to them is an 
independently sufficient reason to deny reconsideration.                  

4 Plaintiffs assert that “[d]ue diligence must also be considered in the broader context of this case, and the widespread and 
massive problem of trademark counterfeiting by vast numbers of anonymous online sellers in China.”  Mot. to Reconsider 6.  
They cite no authority, however.  See 

id.

  Plaintiffs waived this one-sentence argument by inadequately developing it.  See, e.g., 
Puffer v. Allstate Ins. Co., 

675 F.3d 709, 718

 (7th Cir. 2012) ((“[P]erfunctory and undeveloped arguments, and arguments that are 
Access Content Sys. Licensing Admin., LLC v. Shen, 

2018 WL 4757939

, at *5 (S.D.N.Y. Sept. 
30, 2018)).  Plaintiffs have not demonstrated that the court manifestly erred.  On the contrary, 
Gaudio’s declaration attached to plaintiffs’ motion to reconsider bolsters the court’s findings.  
Gaudio avers:                                                             

    3. As part of Plaintiffs’ due diligence investigation, a purchase from an Internet 
    store is typically performed. This purchase usually takes two to eight weeks to 
    arrive from China. For some stores, the product never arrives. The buys are shipped 
    to Plaintiffs’ counsel and are typically processed within a few weeks of receipt. 
    Plaintiffs’ counsel regularly handle over 1,000 packages per month related to 
    China-based Internet store buys.                                     

    4. To keep up with the rampant infringement by China-based Internet counterfeiters 
    and to protect consumers from being duped into purchasing counterfeits online, 
    Plaintiffs filed new lawsuits against China-based Internet stores about every three 
    weeks during the period of 2016-2018.  In most cases, Plaintiffs file a lawsuit before 
    any products arrive and are processed because it is clear from the product listings 
    that the Internet stores are using counterfeit trademarks in connection with the sale 
    of unauthorized products in violation of the Lanham Act. Plaintiff’s counsel was 
    unable to identify any package received from Defendant Shop513892 Store. 

E.g., Decl. of J. Gaudio ¶¶ 3–4, May 31, 2018, ECF No. 132-1.  Gaudio confirms that plaintiffs 
regularly receive packages showing China-based addresses for the allegedly counterfeit goods 
plaintiffs purchase.  See id. ¶ 3.  Plaintiffs’ desire for speed is understandable, but following 
counsel’s timelines, plaintiffs would have had to wait at most six weeks to see whether packages 
with potential addresses for defendants would arrive.  Six weeks is less than the 90 days 
plaintiffs ordinarily have to serve a complaint and summons.  Fed. R. Civ. P. 4(m).  Plaintiffs do 
not explain why the damages they have sought and obtained—$1 million in statutory damages—
would not make them whole.  These plaintiffs, and similarly situated plaintiffs, have consistently 
told the court that the danger of defendants’ closing online counterfeiting operations and 
absconding with their ill-gotten gains arises after offshore counterfeiters receive notice of the 

unsupported by pertinent authority, are waived. . . .”) (quoting United States v. Berkowitz, 

927 F.2d 1376, 1384

 (7th Cir. 1991)) 
(alterations omitted)).                                                   
suit, not before.  E.g., Decl. of J. Gaudio ¶¶ 5–7, Mar. 28, 2018, ECF No. 15.  Plaintiffs have 
therefore not demonstrated a manifest error in the court’s conclusion that they failed to conduct a 
reasonable investigation.                                                 
    However, the court cannot evaluate the significance, if any, of Gaudio’s averment that a 

shipment associated with defendant Shop513892 Store has not been located.  Decl. of J. Gaudio 
¶ 4, May 31, 2019, ECF No. 132-1.  The shipping labels supplied by defendants show legible 
addresses, but they appear to be written primarily in the Chinese language.  See ECF No. 117-1.  
The products plaintiffs allegedly ordered cannot be correlated with defendants’ alleged 
shipments on this record.  As a result, the court cannot determine whether the record gives reason 
to believe that this defendant shipped a product to plaintiffs or, alternatively, that it shipped a 
product, but it was not received.  The parties should be prepared to propose a plan to resolve this 
issue at the next status hearing.                                         
    Third, plaintiffs point out that the names on the return address labels do not match the 
names of the online store from which the product was ordered, but they cite no authority 

allowing them to disregard an address because names do not match perfectly.  See Mot. to 
Reconsider 9.   Plaintiffs cannot ignore a lead like the return addresses.  They must conduct 
reasonable investigation of a “purported mailing address.”  Slip op. at 8 (emphasis added).  As 
the court has concluded, generalized assumptions about the invalidity of an address do not 
suffice and “the fact that defendants allegedly offer counterfeit goods for sale does not 
automatically mean that every address listed for them is invalid or that they are evading service 
of process.  More specific proof is needed.”  Slip op. at 8.  Plaintiffs did not adduce any such 
defendant-specific proof on the original motion, and they have done no better on reconsideration. 
    Plaintiffs next make a policy argument.  They represent that they have filed more than 55 
suits naming more than 70,000 unique online stores as defendants in 2016–18.  Mot. to 
Reconsider 7 n.6.  Gaudio estimates that it would cost $1,500 to investigate each Chinese 
address, so plaintiffs may have to pay millions to protect their intellectual property rights.  Decl. 

of J. Gaudio ¶ 6, May 31, 2019, ECF No. 132-1.  By citing a case in which the plaintiff hired a 
private investigator, this court did not require a similar investigation of every China-based 
defendant.  See slip op. at 8.  What is reasonable in any given case must be litigated in that case 
on its unique facts.  In any event, if plaintiffs are successful, certain expenses associated with 
serving process may sometimes be taxed as costs.  See Collins v. Gorman, 

96 F.3d 1057

, 1058–
71 (7th Cir. 1996).  Moreover, plaintiffs overstate the costs here.  Of the 906 defendants 
plaintiffs sued, six have appeared and moved to dismiss.  As plaintiffs note, four of the shipping 
label addresses associated with the moving defendants are unique, so the cost of an investigation 
comes to at most $6,000, not millions.  For all of these reasons, plaintiffs’ cost-based arguments 
do not demonstrate manifest error.                                        

                           Legal Issues                                  
    As for supposed legal errors, plaintiffs maintain that the memorandum opinion and order 
is grounded on dicta in the leading Supreme Court cases applying the Hague Service 
Convention.  Mot. to Reconsider 7–10.  This and plaintiffs’ other arguments refine positions 
taken in their briefing on the motion to dismiss.  This is improper because “[a] motion for 
reconsideration is an improper vehicle to introduce . . . new legal theories.”  Bally Exp. Corp. v. 
Balicar, Ltd., 

804 F.2d 398, 404

 (7th Cir. 1986).                         
    In any event, the court made no such error.  In both cases, the Supreme Court stated that 
“the Hague Service Convention ‘specifies certain approved methods of service and ‘pre-empts 
inconsistent methods of service’ wherever it applies.’”  Water Splash, Inc. v. Menon, 

137 S. Ct. 1504, 1507

 (2017) (quoting Volkswagenwerk Aktiengesellschaft v. Schlunk, 

486 U.S. 694, 698

 
(1988)), quoted in slip op. at 5.  This broad pronouncement does not conclusively settle the 
precise questions here for neither Schlunk nor Water Splash involved Rule 4(f)(3) or email 
service.5  Several cases involving email say as much.  See, e.g., Strabala v. Zhang, 

318 F.R.D. 81

, 115 n.36 (N.D. Ill. 2016) (citing In re GLG Life Tech. Corp. Secs. Litig., 

287 F.R.D. 262, 266

 
(S.D.N.Y. 2012)) (dictum).                                                
    It was nevertheless appropriate for this court to look to Schlunk and Water Splash’s 
reasoning.  The Supreme Court’s reasoning on a related legal issue deserves serious and 
respectful consideration.  See Cent. Virginia Cmty. Coll. v. Katz, 

546 U.S. 356, 363

 (2006) 
(citing Cohens v. Virginia, 

6 Wheat. 264, 399

 (1821)).  Schlunk’s reasoning guided the court’s 
analysis, as when the court observed that “the Supreme Court has stated that the drafters of the 
Hague Service Convention intended to prohibit a method of service not mentioned in its text.”  
Slip op. at 10.  And this court declined to follow a Fifth Circuit case because it did not attempt to 
harmonize the reasoning of Schlunk and Water Splash.6  Slip op. at 11 n.7 (citing Nagravision 

SA v. Gotech Int’l Tech. Ltd., 

882 F.3d 494, 498

 (5th Cir. 2018)).        
    Finally, plaintiffs observe that the court cited no case finding email service to be 
improper in China (though dicta in several cases were cited).  See Mot. to Reconsider 9–10.  
Plaintiffs do not engage with the court’s analysis of China’s objections under Article 10(a) of the 
Hague Service Convention.  The court determined that China’s objections are at least as broad as 


5 If it did, the court’s extensive analysis would have been unnecessary.  

6 The May 24, 2019, opinion incorrectly states that plaintiffs failed to cite Nagravision in their briefing.  The opinion is amended 
to delete this statement.                                                 
the objections of other nations, such as Switzerland and Germany, which courts have found 
preclude email service.  See slip op. at 13–14.  Instead of grappling with China’s objections, 
plaintiffs again urge the court to adopt the reasoning of cases such as Sulzer Mixpac AG v. 
Medenstar Indus. Co. Ltd., 

312 F.R.D. 329

 (S.D.N.Y. 2015).  See Mot. to Reconsider 9–10.  The 

court discussed Sulzer Mixpac and similar cases in its opinion but found another line of authority 
more persuasive.  See slip op. at 13.  Plaintiffs disagree with the court’s analysis in their motion 
to reconsider7 but cite no authority not already considered by the court.  See ECF No. 132 at 7, 
Mot. to Reconsider 10.  Rehashing an argument and expressing disagreement with the court’s 
analysis does not demonstrate a manifest error.  See Vesely v. Armslist LLC, 

762 F.3d 661, 666

 
(7th Cir. 2014).  Plaintiffs have therefore failed to demonstrate a manifest error of law. 
                              * * *                                      
    For the reasons stated, plaintiffs’ motion for reconsideration, ECF No. 132, is denied 
except as to defendant Shop513892 Store.                                  


Date:   June 4, 2019                    /s/                               
                                  Joan B. Gottschall                     
                                  United States District Judge           


7 Plaintiffs assert in a footnote that it is unclear whether the court considered a case they cited in a notice of supplemental 
authority filed after briefing on the original motion closed, see Gianni Versace, S.p.A. v. The Partnerships & Unincorporated 
Ass’ns Identified on Schedule “A,” No. 18 C 5385.  Order (N.D. Ill. Feb. 27, 2019) (ECF No. 70).  Plaintiffs did not seek leave to 
file their  notices of supplemental authority, so the court could have disregarded them.  The court nevertheless exercised its 
discretion to consider all of the cases plaintiffs cited in their notices of supplemental authority.  They do not alter the outcome.  
Gianni Versace relies on 

Nagravision, supra,

 for the proposition that the Hague Service Convention does not preempt Rule 
4(f)(3).   Slip op. at 2.  This court continues to find Nagravision unpersuasive for the reasons given in its opinion.  Gianni 
Versace appears distinguishable for an additional reason.  Unlike in this suit, the Hague Service Convention did not apply in 
Gianni Versace because the defendant’s address was unknown.  See Gianni Versace, slip op. at 2 (stating that “email service of 
an online business defendant is warranted when the defendant has no readily discoverable physical address, conducts business 
over the Internet, and uses email regularly in contacting customers”) (citation omitted)).