Halo Creative & Design Limited et al v. Comptoir Des Indes, Inc. et al

Filing 35

MEMORANDUM Opinion and Order. Signed by the Honorable Harry D. Leinenweber on 1/29/2015. (rm, )

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

HALO CREATIVE & DESIGN
LIMITED, HALO TRADEMARKS,
LIMITED, and HALO AMERICAS
LIMITED,

Case No. 14 C 8196

Plaintiffs,
Harry D. Leinenweber
v.
COMPTOIR DES INDES INC., CDI
INTERNATIONAL, CDI FURNITURE,
and DAVID OUAKNINE,
Defendants.

MEMORANDUM OPINION AND ORDER
I.

BACKGROUND

This is an intellectual property action between Hong Kong
Plaintiffs and Canadian Defendants. While none of the parties have
any employees or a physical presence in Illinois, the Plaintiffs
chose this venue.

They contend that they designed their product

(high-end furniture) for consumption in the United States under the
protection of its intellectual property laws so they seek to
enforce the rights here. The Defendants, competitors, sell similar
furniture in the United States through independent United States
distributors.

The Defendants have moved to dismiss based on forum

non conveniens, contending that the Plaintiffs should refile this
suit in the federal courts in Canada.

II.

DISCUSSION

The law relating to forum non conveniens is not particularly
complicated.

See, Kamel v. Hill-Rom Co., Inc., 108 F.3d 799 (7th

Cir. 1997).

A court may dismiss a suit for forum non conveniens

over which it has jurisdiction if it best serves the convenience of
the parties and the ends of justice.
839, 842-43 (1947).

Gulf Oil v. Gilbert, 67 S.Ct.

While a plaintiff’s choice of forum is

entitled to some deference, where its choice is not its home forum,
its deference has less force.

Sinochem International Co. Ltd. v.

Malasyia Intern. National Shipping Corp., 127 S.Ct. 1184, 1191
(2007).

However, there must be an adequate alternative forum

available and the “vexation and oppression” of the defendant must
outweigh the convenience to the plaintiff.

Piper Aircraft Co. v.

Reyno, 102 S.Ct. 252, 258 (1981).
To be an available forum, the parties must be amenable to
process and subject to jurisdiction in the foreign court.

Here,

the Defendants, being Canadians, are obviously subject to the
jurisdiction of the Canadian courts, and the Plaintiffs, Hong Kong
citizens, would be subject to the jurisdiction of the Canadian
courts if they filed suit in Canada.

Moreover, the individual

Defendant, David Ouaknine, would be subject to the jurisdiction of
the Canadian courts and a refiling there by Plaintiffs would moot
his objection to the jurisdiction of this Court.

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The next issue is whether the available forum is an adequate
forum.

Here Plaintiffs take issue with the adequacy because they

are seeking to enforce United States Intellectual property laws
which they contend a Canadian court cannot do.

Defendants answer

that Canadian courts, as signatories of the Berne Convention for
the Protection of Literary and Artistic Works, can offer Plaintiffs
adequate protection of their intellectual property rights.
this

convention

a

signatory

nation

must

extend

all

Under
of

the

protection it affords its own citizens to foreign nationals. Since
Canada,

Hong

Kong,

and

the

United

States

are

signatories,

Plaintiffs are entitled to all of the protections offered by
Canadian law to Canadian citizens.

Even if the Canadian law does

not offer exactly the same protections as United States law, the
test is whether the local law fails to offer a potential avenue for
redress, i.e., whether the foreign laws are so inadequate so as to
amount to no remedy at all.
and not available.

If so, then the forum is inadequate

Stroitelsivo Bulgaria Ltd. v. Bulgarian-

American Enterprise Fund, 589 F.3d 417, 421 (7th Cir. 2009).
In

addition,

although

neither

party

discusses

Canadian

conflict of laws to determine whether a Canadian Court could, in
fact, enforce United States intellectual property laws, as pointed
out in Creative Technology, Ltd. v. Aztech Systems Pte., Ltd., 61
F.3d 696, 702 (9th Cir. 1995), the United States has recognized the
potential of applying the copyright laws of other nations and

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perhaps Canada could do likewise.

Finally, the Canadian Courts

could, if Plaintiffs are successful in establishing violations of
the

copyright

laws,

enjoin

Defendants

from

exporting

their

furniture to the United States which would effectively prevent any
continuing violation in the United States of its intellectual
property laws.
The next step in the analysis is the balancing of the private
and public interest factors.

The factors must weigh in favor of

the Defendants to warrant dismissal under forum non conveniens.
The private factors include ease of access to sources of proof,
availability of compulsory process, cost of obtaining attendance of
willing

witnesses,

and

the

enforceability

of

any

judgment.

Clerides v. Boeing Co., 534 F.3d 623, 628 (7th Cir. 2008).
to proof would seem to tilt toward the Defendants.

Access

Plaintiffs

would need to have access to evidence of design, promotion and sale
of Defendants’ alleged infringing goods all of which are located in
Canada.

In addition, the documents probably are in the French

language and the need to translate such documents would not be
necessary in a Canadian Court which in Quebec is bilingual, but
would be necessary in an American court.
Compelling attendance of unwilling witnesses could be slightly
more difficult out of a Canadian court if the witnesses were
located in the United States, but not impossible because they could
be compelled through the issuance of letters rogatory to the

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district court in which the witnesses resides.
§ 1782.

See, 28 U.S.C.

The cost of obtaining attendance of the willing witnesses

to Plaintiffs would be similar because they would need to transport
their witnesses from Hong Kong to either Chicago or Montreal.

The

cost to Defendants would, of course, be considerably higher if they
had to transport their witnesses from Montreal to Chicago.

This

factor greatly weighs in Defendants’ favor.
The public interest factors likewise do not compel denial of
the Motion to Dismiss.

These factors include relative congestion

of the courts, familiarity with governing law, existence of a local
interest, avoidance of conflict of law problems, and any unfairness
of

burdening

citizens

of

Clerides, 534 F.3d at 628.

an

unrelated

forum

with

jury

duty.

The Plaintiffs argue that the “local

interest” factor weighs in their favor. However, the vast majority
of

Plaintiffs’

enforcement.

case

involves

copyright

and

not

trademark

Copyrights exist to protect the property rights of

the copyright owner and not necessarily to protect the consumer.
After all, a person who buys an infringing sofa does not believe it
is the sofa of the infringed party so there is not a “passing off”
problem. Canada, on the other hand, has an interest in seeing that
claims against its citizens are fairly resolved.

This factor is,

at best, neutral.
Familiarity with the law would not pose any problem if Canada
applies its own laws to the case and the possibility that it would

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apply United States law about which it would be less familiar would
possibly make this point slightly in favor of Plaintiffs but not by
much.

The issue of the burden of jury duty does not appear to the

Court to be significant.
Considering all of the private and public factors, together
they weigh in favor Defendants. Since Canada is an adequate forum,
the Motion for Dismissal for forum non conveniens is granted.
III.

CONCLUSION

For the reasons stated herein, the Defendants’ Motions to
Dismiss on forum non conveniens are granted.

The Defendant David

Ouaknine has also moved to dismiss based on a lack of jurisdiction.
Since the case is dismissed, his Motion is denied as moot.
IT IS SO ORDERED.

Harry D. Leinenweber, Judge
United States District Court
Dated:1/29/2015

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