United States Court of Appeals 

for the Federal Circuit ______________________ 

HALO CREATIVE & DESIGN LIMITED, HALO 

TRADEMARKS LIMITED, HALO AMERICAS 

LIMITED,

Plaintiffs-Appellants

v.

COMPTOIR DES INDES INC., DAVID OUAKNINE,

Defendants-Appellees

______________________ 

2015-1375

______________________ 

Appeal from the United States District Court for the 

Northern District of Illinois in No. 1:14-cv-08196, Senior 

Judge Harry D. Leinenweber. 

______________________ 

Decided: March 14, 2016

______________________ 

 BARRY HORWITZ, Greenberg Traurig LLP, Chicago, IL, 

argued for plaintiffs-appellants. Also represented by 

RICHARD DANIEL HARRIS. 

 MARK RAY BAGLEY, Tolpin & Partners, PC, Chicago, 

IL, argued for defendants-appellees. 

______________________ 
2 HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 

Before DYK, MAYER, and HUGHES, Circuit Judges.

DYK, Circuit Judge. 

Halo Creative & Design Ltd., Halo Trademarks Ltd., 

and Halo Americas Ltd. (collectively, “Halo”), own two 

U.S. design patents, thirteen U.S. copyrights, and one 

U.S. common law trademark relating to twenty-five of 

their furniture designs. Halo is located in Hong Kong. 

Halo sued Comptoir Des Indes, Inc. (“Comptoir”), a Canadian company, and its CEO, David Ouaknine (collectively,

“appellees”), a Canadian resident, in the Northern District of Illinois. Halo asserted that appellees infringed 

their intellectual property and violated Illinois consumer 

fraud and deceptive business practices statutes. 

Appellees moved to dismiss on forum non conveniens

grounds, contending that the Federal Court of Canada

would be a superior forum. The district court granted the 

motion and dismissed the case. Halo Creative & Design 

Ltd. v. Comptoir Des Indes, Inc., No. 14C8196, 2015 WL 

426277, at *3 (N.D. Ill. Jan. 29, 2015) (“Halo”). Halo 

appeals. We reverse and remand for further proceedings.

BACKGROUND

Halo is a Hong Kong private company that designs

and sells high-end modern furniture. It is the exclusive 

owner of U.S. Design Patent Nos. D655,526 S and 

D655,100 S, thirteen U.S. copyrights,1 and one U.S. 

 

1 Halo has pending copyright applications, not registered copyrights, but the Seventh Circuit follows the 

prevailing “application approach” rather than the “registration approach,” see Chi. Bd. of Educ. v. Substance, Inc., 

354 F.3d 624, 631 (7th Cir. 2003); 2 Melville B. Nimmer & 

David Nimmer, Nimmer on Copyright § 7.16[B][3][b][ii] 
HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 3

common law trademark, all relating to twenty-five of its 

furniture designs. Halo’s common law trademark, 

ODEON, is used in association with at least four of its 

designs. Halo sells its furniture in the United States, 

including through its own Timothy Oulton retail stores. 

Appellee Comptoir, a Canadian corporation, also designs 

and markets high-end furniture. Comptoir’s furniture 

products are produced by manufacturers in China, Vietnam, and India. Comptoir’s furniture products are 

imported into the United States, where Comptoir offers 

its products for sale to consumers directly at various 

furniture shows and also through several distributors

across the country, including in the Northern District of 

Illinois. 

On October 20, 2014, Halo brought suit against appellees in the Northern District of Illinois, alleging infringement of its U.S. design patents, copyrights, and 

trademark. Halo also alleged that appellees had violated 

Illinois consumer fraud and deceptive business practices 

statutes. Halo accused twenty-five of appellees’ products 

of infringement. Twenty-three of those twenty-five were

the subject of Halo’s copyright infringement allegations. 

With respect to two products, Halo alleged infringement 

only of its design patents. Four of appellees’ products 

were also alleged to infringe Halo’s trademark. 

Appellees moved to dismiss on forum non conveniens

grounds, contending that Canada, where appellees reside,

“is a far superior forum in which to resolve this dispute.” 

A. 229.2 Appellees’ theory was that a copyright remedy 

 

(2015), and therefore Halo’s copyright applications suffice 

to bring suit for infringement pursuant to 17 U.S.C. 

§ 411(a). For convenience we refer to the applications as 

“copyrights.” 

2 Pages in Halo’s appendix are referred to as A __. 
4 HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 

would be available in the Federal Court of Canada. 

Appellees’ only evidence concerning the remedies available in the Federal Court of Canada was a printout of a 

webpage from the site of the Federal Court of Canada. 

The webpage explained that the Federal Court of Canada 

has jurisdiction to adjudicate “intellectual property rights, 

including copyright, industrial design . . . patents . . . and 

trade-marks.” A. 249. Appellees did not adduce any 

expert testimony regarding the adequacy of the Federal 

Court of Canada as an alternative forum. Nor did appellees submit any evidence that the Canadian courts could 

provide a remedy for United States infringement. Halo 

opposed the motion, arguing both that Canada would not 

be an adequate forum to resolve its United States intellectual property dispute and that private and public interests militated against dismissal. 

The district court concluded that Canada would be an 

adequate forum. It explained that Halo could seek relief 

for its copyright claims under Canadian law, because 

Canada, Hong Kong, and the United States are all signatories of the Berne Convention. Further, even though 

there was no evidence that the Canadian courts would 

apply United States law, the court reasoned that “the 

United States has recognized the potential of applying the 

copyright laws of other nations and perhaps Canada could 

do likewise.” Halo, 2015 WL 426277, at *2. The court did 

not address Halo’s design patent, trademark, or state law 

allegations. 

The district court then balanced the private and public interests. As for private interests, the district court 

found that access to proof and the cost of obtaining attendance of willing witnesses weighed in favor of appellees. As for public interests, the district court found that 

the existence of a local interest in having localized controversies decided at home was neutral, while familiarity 

with governing law pointed perhaps slightly in Halo’s 
HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 5

favor. Balancing all of the interests, the district court 

concluded that they weighed in appellees’ favor. Accordingly, the district court dismissed the complaint. 

Halo appeals. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(1). Under Seventh Circuit law, we 

review a district court’s grant of a motion to dismiss on 

forum non conveniens grounds for abuse of discretion. 

Fischer v. Magyar Allamvasutak Zrt., 777 F.3d 847, 866

(7th Cir. 2015); see also Piper Aircraft Co. v. Reyno, 454 

U.S. 235, 257 (1981). 

DISCUSSION

The doctrine of forum non conveniens has a long 

history. Although transfer between federal courts was 

codified in 28 U.S.C. § 1404(a), forum non conveniens 

concerning foreign and state venues has always been a 

common-law doctrine. Piper Aircraft, 454 U.S. at 253;

14D Charles Alan Wright et al., Federal Practice and 

Procedure § 3828 (4th ed.). In 1947, the Supreme Court 

recognized that the doctrine applies to suits in federal 

district court in Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 

507 (1947), and Koster v. (American) Lumbermens Mutual

Casualty Co., 330 U.S. 518, 526 (1947). Forum non conveniens, the Court explained, 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.” 

Koster, 330 U.S. at 527. Whether dismissal would promote convenience and justice should be determined by 

weighing various private and public interest factors. See 

Gilbert, 330 U.S. at 508. Such 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; [and the] possibility of view of the 

premises.” Id. Public interest factors include: “con-
6 HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 

gest[ion]” 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.” 

Id. at 508–09. 

The Supreme Court returned to the doctrine of forum 

non conveniens in Piper Aircraft. There the Court confronted a wrongful death action arising out of a plane 

crash in Scotland. 454 U.S. at 238–39. All of the decedents were Scottish residents, and their administrator 

brought suit against the American plane and propeller

manufacturers in United States district court, asserting, 

inter alia, strict tort liability theories. Id. at 239–40. The 

district court dismissed on forum non conveniens grounds,

but the Third Circuit reversed, reasoning that strict tort

liability theories were unavailable in Scotland, and thus 

dismissal would “work a change in the applicable law” 

such that forum non conveniens dismissal was precluded. 

Id. at 246. 

The Supreme Court disagreed. Every forum non conveniens inquiry, the Court explained, must begin with a 

determination of whether there exists an alternative 

forum that is both adequate and available to hear the 

case. Id. at 254 n.22. An alternative forum is available if 

“the defendant is ‘amenable to process’ in the other jurisdiction.” Id. An alternative forum is adequate unless “the 

remedy offered by the other forum is clearly unsatisfactory,” as when “the alternative forum does not permit 

litigation of the subject matter of the dispute.” Id. Contrary to the holding of the Third Circuit, “[t]he possibility 

of a change in substantive law” does not automatically 

render an alternative forum inadequate. Id. at 247. 

Rather, an alternative forum is inadequate only if the 

remedy it would provide is “so clearly inadequate or 

unsatisfactory that it is no remedy at all.” Id. at 254. If 

no available and adequate alternative forum exists, forum 
HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 7

non conveniens dismissal is not permitted. Id. at 254 

n.22. If such an alternative forum does exist, district 

courts must proceed to balance the private and public 

interest factors described in Gilbert to determine whether 

dismissal is warranted. See id. at 257. 

It is clear after Piper Aircraft that an alternative forum is not adequate unless it “permit[s] litigation of the 

subject matter of the dispute.” Id. at 254 n.22; see also 

Kamel v. Hill-Rom Co., Inc, 108 F.3d 799, 803 (7th Cir. 

1997) (“An alternative forum is adequate when the parties 

will not be deprived of all remedies or treated unfairly.”). 

In other words, adequacy is determined by whether the 

foreign forum will provide “some potential avenue for 

redress for the subject matter of the dispute.” Stroitelstvo 

Bulg. Ltd. v. Bulgarian-Am. Enter. Fund, 589 F.3d 417, 

421 (7th Cir. 2009). Thus while “it is not enough to say 

that the transfer will ‘lead to a change in applicable law 

unfavorable to the plaintiff,’” Fischer, 777 F.3d at 867 

(quoting In re Factor VIII or IX Concentrate Blood Prods. 

Litig., 484 F.3d 951, 956 (7th Cir. 2007)), a change in law 

cannot be such that the plaintiff would be left without any 

“potential avenue for redress for the subject matter of the 

dispute.” Stroitelstvo, 589 F.3d at 421.3 

The moving party bears the burden of persuasion as 

to the adequacy of the alternative forum. In re Ford 

Motor Co., Bridgestone/Firestone North Am. Tire, LLC, 

344 F.3d 648, 652 (7th Cir. 2002). Appellees fail to meet 

that burden here. 

 

3 See also Lockman Found. v. Evangelical All. Mission, 930 F.2d 764, 768 (9th Cir. 1991); Cheng v. Boeing 

Co., 708 F.2d 1406, 1411 (9th Cir. 1983); Figueiredo 

Ferraz E Engenharia de Projeto Ltda. v. Republic of Peru, 

665 F.3d 384, 390 (2d Cir. 2011). 
8 HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 

The first requirement for an alternative forum is

availability, i.e., that “all parties are amenable to process 

and are within the forum’s jurisdiction.” Fischer, 777 

F.3d at 867 (quoting Kamel, 108 F.3d at 803). Appellees, 

a Canadian corporation, would be amenable to process in 

Canada. Halo does not dispute that it too would be subject to the Federal Court of Canada’s jurisdiction if it filed 

suit there. Thus, the Federal Court of Canada is an 

available alternative forum. But Halo vigorously contests 

that the Federal Court of Canada would be an adequate

forum.

The district court based its adequacy analysis exclusively on Halo’s copyright claims, and, on appeal, appellees continue to focus solely on copyright in defending the 

adequacy of the Federal Court of Canada. The district 

court offered two reasons in support of its conclusion that 

the Federal Court of Canada is an adequate forum. First, 

the district court posited that because Canada, Hong 

Kong, and the United States are all signatories to the 

Berne Convention, Halo is “entitled to all of the protections offered by Canadian [copyright] law to Canadian 

citizens.” Halo, 2015 WL 426277, at *1. True enough, but 

this alone is no answer to the ultimate question of whether the Federal Court of Canada could provide “some 

potential avenue for redress for the subject matter of the 

dispute.” Stroitelstvo, 589 F.3d at 421. The Berne Convention requires “national treatment,” which means that 

“authors should enjoy in other countries the same protection for their works as those countries accord their own 

authors.” 5 Nimmer on Copyright § 17.01[B][1][a] (alterations omitted). The Berne Convention does not require 

that member countries provide remedies for extraterritorial infringing activity. Nor does the Berne Convention 

require that Canada apply its laws extraterritorially. The 

district court improperly conflated “national treatment” 

with extraterritorial enforcement. While the district 
HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 9

court was correct that, under the Berne Convention, Halo 

would be entitled to all of the protections available to 

Canadian citizens under Canadian law, there is no indication that Canadian citizens could successfully sue in 

Canada with respect to exclusively extraterritorial infringement. 

Halo’s complaint seeks redress for alleged infringement of its United States intellectual property rights that 

occurred in the United States. Territoriality is always of 

concern in intellectual property disputes. It cannot be 

assumed that a foreign court would adjudicate an intellectual property dispute where the alleged infringement 

occurred elsewhere, and the case otherwise has little or no 

connection to the chosen forum. The copyright and patent 

laws of the United States certainly reflect such territoriality. United States copyright law, for example, generally 

admits of no remedy for extraterritorial infringement 

unless a predicate act of infringement was first committed 

within the United States. Nimmer on Copyright § 17.02; 

Tire Eng’g & Distrib., LLC v. Shandong Linglong Rubber 

Co., 682 F.3d 292, 307 (4th Cir. 2012).4 Appellee has 

provided no evidence that Canadian copyright law operates any differently. To the contrary, a leading Canadian 

Copyright treatise notes that “a Canadian court would not 

have jurisdiction to entertain in an action brought by an 

author of a work in respect of acts being committed outside Canada, even if the defendant was within Canada.” 

John S. McKeown, Canadian Law of Copyright and 

 

4 Patent law is also territorial. E.g., Microsoft Corp. 

v. AT&T Corp., 550 U.S. 437, 455 (2007) (“The traditional 

understanding that our patent law operates only domestically and does not extend to foreign activities is embedded 

in the Patent Act itself.” (alterations, citations, and internal quotation marks omitted)). 
10 HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 

Industrial Designs 591 (3d ed. 2000).5 While the Seventh 

Circuit has approved the use of expert testimony to establish the adequacy of an alternative forum, e.g., Fischer, 

777 F.3d at 867; In re Factor VIII, 484 F.3d at 956–57, 

appellees have adduced no such evidence. 

The only evidence appellees submitted to the district 

court was a printout of a webpage from the site of the 

Federal Court of Canada, simply showing that the Federal Court of Canada has jurisdiction to adjudicate “intellectual property rights, including copyright, industrial 

design . . . patents . . . and trade-marks.” A. 249. But this 

evidence demonstrates nothing more than the unremarkable proposition that the Federal Court of Canada has 

jurisdiction over Canadian intellectual property disputes. 

For the first time on appeal, appellees also cite certain 

 

5 Because “protection given under the [Canadian 

Copyright] Act is territorial,” “extra territorial proceedings” have been precluded “on the basis that a territorial 

right cannot be violated by an extraterritorial act.” Id. at 

523, 591. “[T]he jurisdiction of Canadian courts is confined to matters where a real and substantial connection 

with the forum jurisdiction exists.” Tolofson v. Jensen

(sub nom. Lucas (Litig. Guardian of) v. Gagnon), [1994] 3 

S.C.R. 1022, 1026. Another treatise confirms that “Canadian rights do not extend to reproductions that occur 

abroad,” David Vaver, Intellectual Property Law 152 (2nd 

ed. 2011), as does a 2010 case from the Canadian Federal 

Court of Appeal, Sirius Canada Inc. v. CMRRA/SODRAC 

Inc., 2010 FCA 348, [2012] 3 F.C.R. 717 (“[T]he act of 

authorizing [an infringing act] in Canada is not actionable 

under the Copyright Act where the primary infringement 

occurs outside Canada,” given the “well established and 

well understood territorial limitation of the Copyright 

Act.”). 
HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 11

provisions of the Canadian Copyright Act. Section 64 of 

the Act covers “useful articles,” which are defined as any 

“article that has a utilitarian function,” i.e., “a function

other than merely serving as a substrate or carrier for 

artistic or literary matter,” and provides certain situations in which infringement of such “useful articles” may 

occur. Copyright Act, R.S.C. 1985, c. C-42, § 64, available 

at http://laws.justice.gc.ca/eng/acts/c-42/page-27.html. 

But neither this provision nor any other in the Canadian 

Copyright Act provides a remedy for extraterritorial 

infringement. 

There is no evidence in the record that any act of alleged infringement occurred in Canada.6 There is no 

evidence that appellees’ furniture is designed in Canada, 

or that the allegedly infringing furniture was shipped 

through Canada to the United States after manufacture 

in Asia. It is undisputed that the only evidence of any 

connection to Canada in the record is that appellees have 

their principal place of business there. But this fact alone 

cannot suffice. The question is whether the Federal Court 

of Canada could provide “some potential avenue for 

 

6 The sole material before the district court consisted of the parties’ briefs, which made no mention of infringing activity in Canada. When asked at oral 

argument whether the record reflects that Comptoir’s 

furniture was designed in Canada, counsel for appellees 

stated, “the record does not show that. I would agree with 

that.” Oral Arg. at 16:13–16:17. When asked whether the 

record shows if any infringing act occurred in Canada, 

counsel stated, “I will admit that the record did not get 

that specific. . . . The presumption was if you have a 

Canadian company, the courts of Canada are going to 

have jurisdiction over it, and that’s as far as the analysis 

went.” Id. at 19:49–19:53, 22:33–22:44. 
12 HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 

redress for the subject matter” of Halo’s dispute. 

Stroitelstvo, 589 F.3d at 421. There is no evidence of any 

predicate act of infringement that occurred in Canada—

let alone evidence that such a predicate act, if found, 

would enable the Federal Court of Canada under Canadian law to redress subsequent infringing acts in the United 

States. 

Second, the district court explained that “the United 

States has recognized the potential of applying the copyright laws of other nations and perhaps Canada could do 

likewise.” Halo, 2015 WL 426277, at *2. But this is mere 

speculation as to what the Canadian courts would do. 

The district court cited no support for the proposition that 

a Canadian court could or would apply United States

copyright law, or, for that matter, patent or trademark 

law. Nor have appellees adduced any such evidence. On 

appeal, appellees do not even argue that the Federal 

Court of Canada would apply United States law. To the 

contrary, it appears that the only intellectual property 

law the Federal Court of Canada would apply is its own. 

See, e.g., Lesley Ellen Harris, Canadian Copyright Law 66

(4th ed. 2014). To be sure, there is isolated support in the 

United States cases, whatever the relevance of United 

States case authority may be, that United States courts 

can sometimes redress infringement occurring abroad by 

applying foreign law, see, e.g., Boosey & Hawkes Music 

Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481, 492 (2d 

Cir. 1998), or that foreign courts could redress United 

States infringement by applying United States law, see 

Creative Tech., Ltd. v. Aztech Sys. Pte., Ltd., 61 F.3d 696, 

702 (9th Cir. 1995). But these are cases in which at least 

a predicate infringing act occurred in the forum jurisdiction. 

In Boosey & Hawkes, a film was produced in the United States, and alleged infringement occurred abroad 

where the film was distributed. 145 F.3d at 484–85. The 
HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 13

Second Circuit suggested that the United States district 

court might give redress for the foreign infringement. Id.

at 491. In Creative Technology, the initial acts of alleged 

infringement occurred in Singapore, and the court determined that the High Court of Singapore would not be 

precluded from redressing damages stemming from the 

subsequent distribution of those products in the United 

States. 61 F.3d at 702. 

The continued vitality of Boosey & Hawkes is open to 

doubt. See 5 Nimmer on Copyright § 17.03[A]. Even in 

cases where predicate infringing acts occurred in the 

United States, the application of foreign copyright law has 

remained an “anomaly in the jurisprudence,” and the 

“specter” of “opening the floodgates to resolution in U.S. 

courts of cases alleging violation of other nations’ copyright laws . . . remains unrealized in practice, with rare 

exception.” Id. at § 17.03[A]. In any event, there is no 

evidence that any predicate act occurred in Canada, and 

no authority that Canada would provide a remedy for 

United States infringement or apply United States law 

under such circumstances. 

 Thus, based on the evidence in the record, the Federal Court of Canada would fail to provide any “potential 

avenue for redress for the subject matter” of Halo’s dispute, Stroitelstvo, 589 F.3d at 421, even with regard to 

Halo’s claims of copyright infringement. The district 

court abused its discretion in concluding otherwise. 

It is particularly important that a forum non conveniens movant demonstrate the adequacy of an alternative 

forum when the dispute implicates the enforcement of 

intellectual property rights. The policies underlying 

United States copyright, patent, and trademark laws 

would be defeated if a domestic forum to adjudicate the 

rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction. 
14 HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 

It is largely for this reason that district courts have 

routinely denied motions to dismiss on forum non conveniens grounds when United States intellectual property 

rights form the crux of the dispute. See, e.g., Potothera, 

Inc. v. Oron, No. 07-CV-490-MMA(AJB), 2009 WL 734282, 

at *4 (S.D. Cal. Mar. 19, 2009) (“Israel does not provide an 

adequate alternative forum because Plaintiff’s claims 

could not be resolved fully there and an Israeli decision 

regarding U.S. patent rights would be unenforceable in 

this country.”); Greenlight Capital, Inc. v. GreenLight 

(Switzerland) S.A., No. 04 Civ. 3136(HB), 2005 WL 13682 

(S.D.N.Y. Jan. 3, 2005) (“[T]here is no evidence that 

Greenlight Capital will be able to fully litigate its U.S. 

trademark rights in Switzerland because trademark 

rights are largely territorial.”) (citations, internal quotation marks, and alterations omitted); Jose Armando 

Bermudez & Co. v. Bermudez Int’l, No. 99 Civ. 9346(AGS),

2000 WL 1225792 (S.D.N.Y. Aug. 29, 2000) (“[T]he Dominican courts are unlikely to be able to grant an adequate remedy to plaintiff, because plaintiff’s claims are 

primarily governed by U.S. trademark and copyright law 

and are based on infringing acts in the United States.”). 

Because we hold that the district court abused its discretion and therefore that dismissal on forum non conveniens grounds was improper, we need not address Halo’s 

remaining arguments regarding whether the district 

court abused its discretion by focusing solely on Halo’s

copyright claims when two of the accused products were

allegedly covered only by design patents, whether Canadian copyright law would even protect the furniture 

designs at issue, or whether the district court erred in 

allocating the burden of proof or balancing the private

and public interest factors. 

REVERSED AND REMANDED
HALO CREATIVE & DESIGN v. COMPTOIR DES INDES INC. 15

COSTS

Costs to appellees.