March 14, 2016

While a Nice Place, Canada is not the Best Place to Litigate U.S. IP

By Bryan K. Wheelock, Principal

In Halo Creative & Design Limited v. Comptoir des Indes Inc., [2015-1375] (March 14, 2016), the Federal Circuit reversed the Northern District of Illinois’ dismissal of Halo’s complaint for copyright, trademark and U.S. design patent infringement for forum non conveniens grounds because the Federal Court of Canada would be a superior forum.

Forum non conveniens, allows a 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.  Whether dismissal would promote convenience and justice should be determined by weighing private and public interest factors. Private interest factors include the relative ease of access to sources of proof; availability of compulsory process for attendance of unwilling, and the cost of obtaining the attendance of unwilling, witnesses.  Public interest factors include congestion of the courts; the burden of jury duty imposed upon a community which has no relation to the litigation; a local interest in having localized controversies decided at home; and the potential for a conflict of laws.  The Federal Circuit found that Comptoir des Indes failed to meet its burden to show that Canada is a more appropriate forum for Halo’s claims of infringement of copyrights, trademarks, and patents in the United States.