The case of the day is Halo Creative & Design Ltd. v. Comptoir Des Indes Inc. (N.D. Ill. 2015). Halo, a Hong Kong firm that designed high-end furniture, sued Comptoir Des Indes, a Québec competitor, for infringement of a US design patent as well as for copyright infringement and trademark infringement and on various other claims. Comptoir moved to dismiss on forum non conveniens grounds in favor of litigation in Canada.
I don’t usually write about forum non conveniens cases, but this one is interesting to me because a design patent, like any US patent, grants exclusive rights to make, use, sell, or offer to sell an invention in the United States or to import an invention into the United States. Because intelletual property rights, like real property rights, are local, it seems the forum non conveniens analysis should be weighted towards litigation in the state that created the IP rights and where the IP rights have legal effect. On the other hand, there’s something to be said for trying to centralize litigation when parties have an IP dispute that involves many countries’ patents. My partner David Evans and I wrote about this issue in a chapter on choice of law in Tom Halket’s book on Arbitration of International Intellectual Property Disputes, and the ALI has given an American perspective on the issue in Intellectual Property: Principles Governing Jurisdiction, Choice of Law & Judgments in Transnational Disputes.
The court granted the motion to dismiss without much real discussion. Halo argued that the Canadian courts were not “adequate” for purposes of the FNC analysis because it was seeking to enforce US intellectual property rights. The court pointed to some US precedents suggesting that US courts could enforce foreign copyrights, and it suggested (without any citations) that a Canadian court might do likewise. But it seems to me that even if, in a simple copyright case, the greater universality of copyright law (I’m not going to go into detail on this) would suggest that territoriality is relatively less important, here there are registered patents involved. Patents, it seems to me, present the issue of the territoriality of IP law in the starkest form. So I am not at all sure the court did the right thing, and the issue is at least worthy of a more detailed discusion.