816 F.3d 1366
Fed. Cir.2016Background
- Halo (Hong Kong) owns two U.S. design patents, 13 U.S. copyright applications, and a U.S. common-law trademark for 25 furniture designs and sued Comptoir (Canadian corp.) and its CEO in N.D. Ill. for infringement and Illinois consumer-fraud claims.
- Comptoir designs/markets furniture manufactured in Asia and sells/imports into the U.S., including in the Northern District of Illinois. Halo’s suit alleges most infringing acts occurred in the U.S.; no record evidence shows infringing acts in Canada.
- Comptoir moved to dismiss on forum non conveniens grounds, arguing the Federal Court of Canada is a superior and adequate forum; the district court granted dismissal. Halo appealed.
- The district court’s adequacy analysis relied solely on copyright claims, noting Berne Convention membership and a Federal Court of Canada webpage showing IP jurisdiction, but produced no evidence that Canadian law would remedy extraterritorial U.S. infringement or apply U.S. law.
- The Seventh Circuit reversed, holding appellees failed to meet their burden to show Canada provides a meaningful avenue for redress for alleged U.S. IP infringements, especially given IP territoriality and lack of evidence of predicate acts in Canada.
Issues
| Issue | Plaintiff's Argument (Halo) | Defendant's Argument (Comptoir) | Held |
|---|---|---|---|
| Adequacy of alternative forum (Federal Court of Canada) | Canada is inadequate because it cannot redress alleged U.S. IP infringement; no evidence of remedy for extraterritorial acts | Canada is adequate; Federal Court of Canada has jurisdiction over IP and parties are amenable there | Held: Canada not shown to be adequate — appellees failed to prove an avenue for redress for U.S. infringement |
| Burden of proof on forum non conveniens movant | Halo: movant must show adequacy; appellees did not meet burden | Comptoir: pointed to Berne Convention and Federal Court webpage as sufficient | Held: Movant bears burden; appellees did not meet it with mere webpage and treaty invocation |
| Territoriality of IP rights | Halo: U.S. IP rights are territorial; foreign courts may not remedy U.S. infringement | Comptoir: argued Berne membership and Canadian IP jurisdiction could permit relief | Held: Territoriality defeats assumption Canada could redress U.S. acts; Berne Convention doesn’t require extraterritorial remedies |
| Reliance on copyright-only analysis | Halo: district court erred by analyzing only copyright claims and ignoring patents/trademark/state claims | Comptoir: focused on copyright adequacy as dispositive | Held: Court reversed without reaching all subsidiary errors, but criticized district court’s copyright-only focus as insufficient to justify dismissal |
Key Cases Cited
- Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981) (framework for forum non conveniens: available and adequate alternative forum then balance private/public interests)
- Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947) (private and public interest factors for forum non conveniens analysis)
- Koster v. (American) Lumbermens Mut. Cas. Co., 330 U.S. 518 (1947) (forum non conveniens doctrine applies in federal courts)
- Stroitelstvo Bulg. Ltd. v. Bulgarian-Am. Enter. Fund, 589 F.3d 417 (7th Cir. 2009) (alternative forum adequate if it provides some potential avenue for redress)