IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 13-50042

INDUSOFT, INCORPORATED, a Texas Corporation; INDUSOFT 

BUSINESS DEVELOPMENT, INCORPORATED, a Texas Corporation; 

INDUSOFT DESENVOLVIMENTO DE SOFTWARE, LIMITADA, formerly 

known as InduSoft do Brasil, Limitada, a Brazilian Corporation,

Plaintiffs - Appellants CrossAppellees

v.

MARCOS V. TACCOLINI, an Individual; TATSOFT, L.L.C., a Delaware 

limited liability company,

Defendants - Appellees CrossAppellants

TATSOFT INFORMATICA, LIMITADA, a Brazilian entity; ERIC VIGIANI, 

an individual; DOES 1-20,

Defendants - Appellees

Appeals from the United States District Court

for the Western District of Texas

USDC No. 1:12-CV-52

Before OWEN, SOUTHWICK, and GRAVES, Circuit Judges.

PER CURIAM:*

* Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not 

be published and is not precedent except under the limited circumstances set forth in 5TH 

CIR. R. 47.5.4.

United States Court of Appeals

Fifth Circuit

FILED

March 19, 2014

Lyle W. Cayce

Clerk

 

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This appeal concerns whether the district court properly dismissed the 

lawsuit on forum non conveniens grounds. The plaintiffs appeal the dismissal 

of their claims; two defendants cross-appeal the dismissal of their 

counterclaims. We AFFIRM the dismissal of the plaintiffs’ claims, but 

REVERSE and REMAND for further proceedings on the counterclaims.

FACTS AND PROCEDURAL HISTORY

Plaintiff InduSoft, Inc. is a software company incorporated in Texas and 

headquartered in Austin. Its affiliate companies, who are also plaintiffs, are 

InduSoft Business Development, Inc., a domestic company incorporated in 

Texas, and InduSoft Desenvolvimento De Software, Ltda., a foreign company 

incorporated in Sao Paulo, Brazil (collectively, “InduSoft”). InduSoft’s flagship 

product is Web Studio.1 

In 1997, InduSoft contracted with Unisoft Systems, Ltda., a Brazilian 

company owned by Marcos Taccolini, to write software. Two years later, 

InduSoft acquired Unisoft in exchange for giving Taccolini a 50% ownership 

interest in the company. Taccolini became InduSoft’s Chief Technology Officer 

and worked at InduSoft’s headquarters in Austin. In 2008, Taccolini became 

involved in an ownership dispute with the other InduSoft owners and sued to 

dissolve the company in Ohio state court. InduSoft and Taccolini resolved that 

dispute by settlement agreement in early 2009. As a part of the agreement, 

Taccolini surrendered his rights to InduSoft’s proprietary information, 

including Web Studio’s source codes, in exchange for compensation.

1 The function of Web Studio is not at issue on appeal, but InduSoft states that Web 

Studio allows customers to “convert their personal computers, web browsers, cell phone and 

other devices into industrial testing, automation, and measurement devices, taking full 

advantage of internet connectivity.”

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Less than a month after settlement, Taccolini founded Tatsoft, LLC, 

which is incorporated in Delaware with its principal place of business in 

Houston, Texas. A related company, Tatsoft Informatica, Ltda., also began to

operate in Sao Paulo, Brazil. Roberto Vigiani, Jr., a former InduSoft software 

designer, is the majority owner of Informatica. Shortly thereafter, Taccolini 

(or one of the Tatsoft entities) hired Roberto Vigiani’s brother, Eric Vigiani, 

who was also a long-time InduSoft software engineer. In 2010, Tatsoft 

launched its own software product called Factory Studio, which performs a 

similar function as InduSoft’s Web Studio.2 

InduSoft alleges that in 2011 it received a tip from Glaucia Tavares 

Vasconcelos, an Informatica employee, that Eric Vigiani, while he was still an 

InduSoft employee, stole Web Studio’s source codes at the direction of Taccolini 

and Roberto Vigiani. InduSoft commenced a provisional legal action in Sao 

Paulo, against Taccolini, Informatica, Eric Vigiani, and Roberto Vigiani. 

Tatsoft was not named in this action. As a result of this action, Brazilian law 

enforcement officers searched Informatica offices and the home of Fernando 

Rosa, one of its employees, looking for data on any of its servers to support 

InduSoft’s allegations that Eric Vigiani stole Web Studio’s source code. They 

found enough information to substantiate InduSoft’s infringement claims. As

a result, InduSoft was granted an injunction related to its claims of copyright 

infringement. The provisional action was dismissed, and InduSoft instituted 

a related, civil action against the same defendants. That second action is 

ongoing.

2 Unlike the allegedly “out-of-date” Web Studio, the defendants contend that Factory 

Studio is a “highly evolved design solution for process automation applications, including 

real-time data acquisition, database population, and access, reporting, scripting, 

communication drivers, and graphical displays.”

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InduSoft then filed a third civil suit, namely, the suit before us, against 

Taccolini, Vigiani, Tatsoft, and Informatica in the United States District Court 

for the Southern District of Texas. Various state and federal law claims were 

made. Taccolini and Tatsoft answered the first amended complaint and filed 

counterclaims. Eric Vigiani and Informatica, however, did not answer or file 

counterclaims. Instead, they moved to dismiss the suit based on the doctrine 

of forum non conveniens. The district court granted their motion, dismissing 

without prejudice all claims in InduSoft’s complaint. The district court also 

dismissed sua sponte Taccolini and Tatsoft’s counterclaims against InduSoft 

on the same grounds, despite its awareness that Taccolini and Tatsoft did not 

join the other defendants’ motion to dismiss.

InduSoft timely appealed the district court’s dismissal, raising four 

issues with the district court’s forum non conveniens analysis. Taccolini and 

Tatsoft cross-appealed the dismissal of its counterclaims, arguing that the 

district court erred by dismissing their counterclaims without providing notice 

that those claims were in jeopardy of dismissal.

DISCUSSION

A district court’s forum non conveniens determination “may be reversed 

only when there has been a clear abuse of discretion; where the court has 

considered all relevant public and private interest factors, and where its 

balancing of these factors is reasonable, its decision deserves substantial 

deference.” Piper Aircraft Co. v. Reyno, 454 U.S. 235, 257 (1981).

To dismiss a case on forum non conveniens grounds, a court must first 

find that an adequate and available alternative forum exists for the parties to 

litigate their claims. Saqui v. Pride Cent. America, LLC, 595 F.3d 206, 211 

(5th Cir. 2010). If such a forum exists, the court weighs a number of public 

and private interest factors to determine whether the case should be dismissed 

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in favor of that forum. Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). A 

court, however, does not engage in a straight balancing test; depriving the

plaintiff of his chosen forum is an exceptional outcome, only appropriate when 

the balance is “strongly in favor of the defendant.” Id. The Supreme Court has 

made clear that a plaintiff “should not be deprived of the presumed advantages 

of his home jurisdiction except upon a clear showing of facts which . . . establish 

such oppressiveness and vexation to a defendant as to be out of all proportion 

to plaintiff's convenience . . . .” Koster v. (Am.) Lumbermens Mut. Cas. Co., 330 

U.S. 518, 524 (1947).

I. Is Brazil an available and adequate forum?

We first examine whether the district court erred by finding that Brazil 

was an available and adequate forum. Alternative-forum analysis requires a 

court to determine whether “all parties can come within the jurisdiction” of the 

alternative forum and whether parties will be “deprived of all remedies or 

treated unfairly, even though they might not enjoy the same benefits as they 

might receive in an American court.” Saqui, 595 F.3d at 211-12 (quotation 

marks and citation omitted). The district court assumed that all parties could 

come within the jurisdiction of Brazil and relied on the presumption that the 

substantive law of the foreign forum was adequate.

InduSoft contends that the district court erred by presuming that Brazil 

was an adequate forum. It argues the district court’s application of a 

presumption violated this principle: “A defendant of course bears the burden 

of invoking the doctrine and moving to dismiss in favor of a foreign forum. This 

burden of persuasion runs to all the elements of the forum non conveniens

analysis.” In re Air Crash Disaster Near New Orleans, La. on July 9, 1982, 821 

F.2d 1147, 1164 (5th Cir.1987) (en banc) (citations omitted), vacated on other 

grounds sub nom. Pan Am. World Airways, Inc. v. Lopez, 490 U.S. 1032 (1989). 

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Though defendants must carry the burden of proving an adequate forum, they 

may rely on a presumption that the foreign forum is adequate. See DTEX, LLC 

v. BBVA Bancomer, S.A., 508 F.3d 785, 796 (5th Cir. 2007); see also Vaz 

Borralho v. Keydril Co., 696 F.2d 379, 392 (5th Cir. 1983) (applying this 

presumption), overruled on other grounds by In re Air Crash Disaster, 821 F.2d 

1147. A plaintiff may overcome that presumption by making a contrary 

showing. DTEX, 508 F.3d at 796. InduSoft did not show that the law of Brazil 

was inadequate. Moreover, the fact that the parties, with the exception of 

Tatsoft, currently are engaged in litigation in Brazil indicates that Brazil is an 

available forum. The district court did not err in concluding that Brazil was a 

suitable alternative forum. 

II. Did the district court properly weigh the private interest factors?

Private interest factors include: “(1) the ease of access to evidence; (2) the 

availability of compulsory process for the attendance of unwilling witnesses; 

(3) the cost of obtaining attendance of willing witnesses; (4) the possibility of a 

view of the premises, if appropriate; and (5) any other practical factors that 

make trial expeditious and inexpensive.” Saqui, 595 F.3d at 213. Focusing 

primarily on the ease of access to the evidence and the availability of 

compulsory process, the district court found that “viewed as a whole,” the 

private-interest factors favored having the suit in Brazil.

As for accessibility of the evidence, some evidence related to this dispute 

is in the United States, while other evidence is in Brazil. The district court 

found that the practical difficulties associated with ensuring the evidence in 

Brazil was available in the United States weighed in favor of the foreign forum. 

InduSoft disputes this finding, claiming that the “defendant-appellants still 

have possession of the original hard drives and can produce duplicate copies if 

anyone needs access to the raw data retrieved.” The defendants deny this 

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assertion, claiming that Brazilian authorities currently possess the servers 

containing the relevant data and that they will be unable to recover them “in 

all likelihood.” Given the deferential standard of review on this issue of fact, 

we cannot conclude that the district court abused its discretion in weighing the 

ease of access factor slightly in favor of the foreign forum.

The district court also weighed the availability of compulsory process in 

favor of Brazil. That was error. Vasconcelos, the one witness mentioned by 

the district court as potentially subject to compulsory process, cannot be a 

reason to favor the foreign forum because she, as InduSoft’s primary 

informant, is a willing witness. “When no witness’ unwillingness has been 

alleged or shown, a district court should not attach much weight to the 

compulsory process factor.” Duha v. Agrium, Inc., 448 F.3d 867, 877 (6th Cir. 

2006). The defendants’ counterargument, which centers on the citizenship or 

residence of the parties, is unpersuasive. Whether one party may incur greater 

costs and fees is a separate private-interest factor, and the district court 

correctly viewed this factor to favor neither party, concluding that “neither 

forum is ideal for all parties, and some inconvenience is unavoidable.”

Regardless of this narrow disagreement on compulsory process, the more 

important consideration is that the district court found that the private 

interest factors weighed only slightly in favor of the foreign forum. This court 

typically affirms dismissals only when the balance strongly favors the 

dismissal. See DTEX, 508 F.3d at 794-95; Camejo v. Ocean Drilling & 

Exploration, 838 F.2d 1374, 1381 (5th Cir. 1988). The insubstantial weight of 

these factors, even with the factor of the availability of compulsory process 

counted in favor of the foreign forum, alone does not justify a finding that the 

plaintiffs’ claims should be dismissed on forum non conveniens grounds.

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III. Did the district court properly weigh the public interest factors?

Both parties make a modest attempt to show how the public interest 

factors favor their preferred forum. Public interest factors include:

(1) the administrative difficulties flowing from court congestion; 

(2) the local interest in having localized controversies decided at 

home; (3) the interest in having the trial of a diversity case in a 

forum that is at home with the law that must govern the action; 

(4) the avoidance of unnecessary problems in conflict of laws, or in 

the application of foreign law; and (5) the unfairness of burdening 

citizens in an unrelated forum with jury duty.

Saqui, 595 F.3d at 214. The district court found that the public interest factors 

were evenly balanced.

The parties appear to argue that the country whose copyright law 

governs their infringement claims has a greater public interest in hosting the 

dispute. Whether the United States copyright laws are applied, however, bears 

on the private interest of the litigants, not the interests of the public, because 

United States copyright laws “are designed to protect the property rights of 

copyright owners.” See Creative Tech., Ltd. v. Aztech Sys. Pte., Ltd., 61 F.3d 

696, 704 (9th Cir. 1995) (citation omitted). Which law governs could pertain to 

the conflict of law factor. We discern no conflict arising out of InduSoft’s 

copyright infringement claims because both Brazil and the United States are 

signatories of the Universal Copyright Convention and the Berne Convention 

for the Protection of Literary and Artistic Works. Those agreements commit 

each country to apply foreign copyright law when required. See Itar-Tass 

Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 90-91 (2d Cir. 1998). 

The parties also briefly discuss the relevance of the fact that InduSoft 

has claims arising out of Vigiani’s employment in Texas. Neither party 

explains why the state or federal government has an interest in adjudicating

the employment-related claims, and relatedly, whether a court in Brazil would 

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or could apply state or federal law. As for the remaining public-interest factors, 

neither party offers a compelling argument that the district court erred by 

declaring these factors neutral. The public interest factors did not appear to 

affect the outcome of the district court’s decision, and they do not affect the 

outcome of this appeal.

IV. Did the district court ignore the heightened burdens required for forum 

non conveniens dismissal?

Finally, InduSoft argues that the district court either misunderstood or 

misapplied the correct standard for dismissing a case for forum non conveniens. 

It asserts that the district court’s analysis was wrong for four reasons: it failed 

to find that litigation in Texas district court would be vexatious or oppressive;

it erred in rejecting its choice of home forum; it failed to require any evidence 

to support the dismissal; and it gave improper weight to the litigation in Brazil. 

These arguments can be summarized by saying that the district court 

did not give the deference typically afforded the plaintiff in a forum non 

conveniens case. The Supreme Court, though, has held that a plaintiff’s choice 

is entitled to less deference when it does not file in its home forum. Piper 

Aircraft Co., 454 U.S. at 255-56. Though the third suit was filed in Indusoft’s 

home forum, the first two were not. That lessened deference flows from the 

fact that convenience is the central focus of the forum analysis:

When the home forum has been chosen, it is reasonable to assume 

that this choice is convenient. When the plaintiff is foreign, 

however, this assumption is much less reasonable. Because the 

central purpose of any forum non conveniens inquiry is to ensure 

that the trial is convenient, a foreign plaintiff's choice deserves less 

deference.

Id. A plaintiff’s choice of a foreign forum suggests that instead of convenience, 

it is favorable law that the plaintiff seeks. Any “deference accorded a plaintiff's 

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choice of forum has never been intended to guarantee that the plaintiff will be 

able to select the law that will govern the case.” Id. at 256 n.24.

Instead of relying on the traditional private and public interest factors, 

the district court dismissed InduSoft’s claims based largely on the plaintiff’s 

decision to initiate litigation in a foreign forum before filing suit in its home 

forum. It acknowledged that “not all considerations strongly point to the 

conclusion that this litigation should be in Brazil.” Instead, the district court 

focused on InduSoft’s decision to initiate litigation in Brazil. It reasoned that 

“[t]o allow InduSoft to litigate related issues in two different forums against 

the same Defendants gives rise to a host of practical inconveniences to the 

parties and their witnesses and would require all parties to incur inordinate 

legal expenses.” It further expressed its concern over “the substantial risk of 

inconsistent and conflicting outcomes in each forum.” Because of these two 

considerations, it concluded “that InduSoft’s choice of this forum is not entitled 

to substantial deference.” 

Whether the district court’s decision not to give substantial deference to 

InduSoft’s choosing Texas for this suit was warranted by InduSoft’s voluntary 

litigation in Brazil is a key issue in this appeal. Convenience, as Piper

indicates, is the linchpin in the analysis. Filing suit first in Brazil does indicate 

convenience in Brazil at least on the claims brought there. On the other hand, 

practical difficulties created by parallel or duplicative litigation, and the costs 

and expenses associated with having to litigate in two forums, comfortably fit 

within the traditional private interest inquiry. We agree with the Fourth 

Circuit that “the mere presence of parallel litigation bears only marginally on 

the touchstone of the forum non conveniens analysis; namely, convenience.” 

SAS Inst., Inc. v. World Programming Ltd., 468 F. App’x 264, 266 (4th Cir. 

2012); see also Adelson v. Hananel, 510 F.3d 43, 53-54 (1st Cir. 2007).

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The defendants cite two cases to support their assertion that the district 

court did not err in affording the litigation in Brazil special weight. One case 

states that the court should be mindful of the realities of international 

commerce in conducting its forum non conveniens analysis. DTEX, 508 F.3d

at 795 (quoting Contact Lumber Co. v. P.T. Moges Shipping Co., Ltd., 918 F.2d 

1446, 1450 (9th Cir. 1990)). We do not read into that statement that these 

realities alter the traditional analysis. The realities in DTEX were that the 

events giving rise to the litigation occurred wholly in a foreign state and the 

defendant had only a minimal presence in the plaintiff's chosen domestic forum 

— a presence that was unrelated to the events that sparked the litigation. 

DTEX, 508 F.3d at 788-92. The court held that both the public and private

interest factors strongly favored dismissal. Id. at 804.

Another case cited by the defendants is similar to DTEX. See U.S.O. 

Corp. v. Mizuho Holding Co., 547 F.3d 749 (7th Cir. 2008). Both the plaintiff 

and defendant in U.S.O. conducted extensive business in the foreign forum, 

and the litigation arose out of conduct that occurred in that forum. Id. at 750. 

The plaintiff, a Delaware corporation, initiated litigation in both the foreign 

and domestic forum. Id. The Seventh Circuit wrote briefly about the concerns 

raised by the duplicate litigation, including the potential overlap between the 

doctrine of forum non conveniens and the doctrine of abstention. See id. at 750-

51. The defendant did not urge abstention, though, and neither does the 

defendant here. Therefore the plaintiff’s duplicative lawsuit in the foreign 

forum did not play a particularly important role in the court’s analysis. See id. 

Instead, the court held that the nexus between the litigants’ voluntary 

international business activities and the events giving rise to the litigation 

created strong enough private and public interests in the foreign forum to 

overcome the home-forum presumption. See id. at 755.

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These cases are not an exact fit for what is before us. InduSoft’s primary 

business operations are in Texas, and the software at issue in this litigation 

was developed there. Both Taccolini and Eric Vigiani lived in Texas for some 

time, worked for InduSoft at its Texas headquarters, and signed contracts with 

the domestic company. In addition, the business relationship between 

Taccolini, the purported instigator of the alleged theft, and InduSoft has a long

and turbulent history, which has been the subject of litigation in Ohio state 

court. There is a settlement agreement related to that litigation which both 

InduSoft and the counterclaimants wish to have interpreted and enforced. 

Moreover, the complaint includes allegations that certain wrongs, including 

the actual theft of the source code, occurred in Texas. Consequently, a 

substantial connection has been alleged between InduSoft and its chosen 

forum in Texas.

Nevertheless, there does appear to be some overlap between the claims 

InduSoft has asserted in Brazil and the claims asserted here. The parties 

dispute the exact nature of the litigation in Brazil, and it is difficult to 

determine from the record the extent of the overlap between the two cases. But 

we do know that InduSoft is pursuing its copyright infringement claims in 

Brazil and also seeking damages for that action, which are necessarily related 

to the defendants’ alleged theft and use of the software. Further, those claims 

appear to be closely tied to the settlement agreement, which provides that both 

Sao Paulo and Austin are appropriate jurisdictions to resolve any disputes 

arising out of the agreement.

The district court, with a few exceptions we noted, made proper 

determinations of the public and private interest factors. The district court 

properly gave less weight to the plaintiff’s choice of forum inasmuch as a 

foreign forum was chosen first, indicating convenience was not the central 

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motive. Our review reveals there are considerations under forum non 

conveniens analysis that could have justified allowing this litigation to proceed 

in Texas. Still, we are mindful of the Supreme Court’s directive:

The forum non conveniens determination is committed to the 

sound discretion of the trial court. It may be reversed only when 

there has been a clear abuse of discretion; where the court has 

considered all relevant public and private interest factors, and 

where its balancing of these factors is reasonable, its decision 

deserves substantial deference.

Piper, 454 U.S. at 257. We conclude that there was no clear abuse of discretion 

when the district court dismissed Indusoft’s claims.

As for the counterclaims, Taccolini and Tatsoft are correct that the 

district court should have given them notice that their counterclaims were in 

jeopardy of dismissal. We conclude that the court’s sua sponte dismissal of 

their counterclaims was error. See Lozano v. Ocwen Federal Bank, FSB, 489 

F.3d 636, 643 (5th Cir. 2007). We point out, however, the apparent 

inconsistency of Taccolini and Tatsoft’s positions on appeal. They seemingly 

argue that it would be overly burdensome for them to defend on two different 

fronts but appear unconcerned about the costs and expenses required to 

prosecute their counterclaims on one front and defend on another. Allowing 

Taccolini and Tatsoft to proceed in this manner could place InduSoft in the 

same vexatious position that the district court determined equitably 

warranted dismissal. This apparent contradiction may be the reason the 

district court dismissed the counterclaims without discussion.

Counsel for Taccolini and Tatsoft asserted at oral argument that the 

counterclaims strictly concern whether Taccolini was given adequate 

consideration for InduSoft’s purchase of the software. It is unclear whether 

the contract claim described by counsel can be meaningfully divorced from the 

other claims in this case. Should Taccolini and Tatsoft prevail on this claim, it 

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appears they would effectively undermine InduSoft’s purchase and ownership 

of the software, the settlement agreement that relates to the ownership of the 

software, and even cast significant doubt on defendants’ alleged copyright 

infringement claims. 

We also note InduSoft’s statement that Tatsoft is not a party to the 

litigation in Brazil. Dismissal is appropriate only when all parties can come 

within the alternative forum. Saqui, 595 F.3d at 211. Tatsoft has stated in 

briefing that it will willingly submit to the jurisdiction of the Sao Paulo court. 

Because the district court did not allow Taccolini and Tatsoft to address 

the possible dismissal of their counterclaims, we reverse and remand for 

further proceedings consistent with this opinion.3

AFFIRMED in part and REVERSED and REMANDED in part.

3 The defendants’ counsel suggested that his clients would be able to file their 

counterclaims in Brazil, and they only appealed the dismissal of the counterclaims after 

InduSoft appealed the dismissal of its claims. The defendants on remand can inform the 

district court whether they still wish to contest the dismissal of the counterclaims.

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