Forum non conveniens dismissal abuse of discretion absent evidence that all litigation could be redressed in foreign forum

Halo Creative & Design v. Comptoir Des Indes Inc., No. 2015-1375 (Fed. Cir. Mar. 14, 2016)

The plaintiff, a Hong Kong corporation, sued the defendant, a Canadian corporation, in the Northern District of Illinois for infringement of copyrights, design patents, and a trademark; and for violation of Illinois unfair business practices and consumer protection statutes. All alleged infringing acts occurred in the U.S. The defendant moved to dismiss on forum non conveniens grounds, arguing that the Federal Court of Canada was a more appropriate forum for the dispute. The district court granted the motion and dismissed the complaint, and the Federal Circuit reversed.

Forum non conveniens is a common law doctrine that allows a federal district court to dismiss a suit, over which it would normally have jurisdiction, if trial in a foreign forum would best serve the convenience of the parties and the ends of justice. For a foreign venue to be adequate, it must provide “some potential avenue for redress for the subject matter of the dispute.” The moving party bears the burden of persuasion.  

The Federal Circuit found that the defendant failed to set forth adequate proof that infringement occurring wholly within the U.S. could be redressed by a Canadian court. Rather, the defendant only provided evidence that copyright disputes can be heard in the Federal Court of Canada. There was no record of proof, such as expert testimony, on what could be redressed in a Canadian court, no case law showing redress for foreign infringement by the Federal Court of Canada, and no evidence of a predicate act of infringement in Canada which, if redressed, would also serve to redress the U.S. infringement. The court noted that typically IP disputes are territorial in nature, and for that reason motions to dismiss on forum non conveniens grounds are routinely denied in IP disputes. The court held that the defendant failed to meet its burden of persuasion and the district court abused its discretion in granting the motion.

A copy of the opinion can be found here.