United States District Court, W.D. Texas, Waco Division
BEIJING IQIYI SCIENCE & TECHNOLOGY CO., LTD., BEIJING QIYI CENTURY SCIENCE & TECHNOLOGY CO., LTD., Plaintiffs,
ITALK GLOBAL COMMUNICATIONS, INC., A TEXAS CORPORATION, DOES 1 THROUGH 100, INCLUSIVE, Defendants.
MEMORANDUM AND ORDER DENYING DEFENDANT'S MOTION
TO DISMISS FOR FORUM NON CONVENIENS
ALBRIGHT UNITED STATES DISTRICT JUDGE.
the Court is Defendant iTalk Global Communications,
Inc.'s (“iTalk Global”) Motion to Dismiss for
Forum Non Conveniens (ECF No. 24), Plaintiffs Beijing iQIYI
Science & Technology Co., Ltd. and Beijing QIYI Century
Science & Technology Co., Ltd.'s (collectively,
“iQIYI”) Response (ECF No. 31), Defendant iTalk
Global's Reply (ECF No. 32), and iQIYI's Sur-Reply
(ECF No. 34). After having reviewed the parties' briefs,
case file, and applicable law, the Court has determined that
Defendant iTalk Global's Motion to Dismiss should be
DENIED for the following reasons.
case concerns the alleged infringement of U.S. copyrights
owned by several Chinese companies by a Texas corporation,
iTalk Global. Because of the fact-intensive nature of forum
non conveniens motions, the Court must develop an extensive
Beijing iQIYI Science & Technology Co., Ltd. and Beijing
QIYI Century Science & Technology Co., Ltd. are Chinese
companies with their principal place of business in Beijing,
China. iQIYI is “an innovative market-leading online
entertainment service platform that provides video streaming
services to viewers all over the world. Pl.'s Compl., ECF
No. 1 at ¶ 1.
other hand, Defendant iTalk Global, d/b/a iTalkBB, is a Texas
corporation with its principal place of business in Austin,
Texas and McLean, Virginia. Id. at ¶ 2.
Defendant iTalk Global is primarily engaged in the business
of providing Voice-over-Internet Protocol
(“VoIP”) services for native Chinese and Korean
speakers in the U.S. and elsewhere. Def.'s Mot. at 4.
Additionally, iTalk Global acts as the sales and billing
agent for iTalkTV HK, which is a wholly owned subsidiary of
Chinese company Beijing Capital Online Network Technology Co.
Id. iTalkTV HK owns and operates the iTalkBB Chinese
TV platform, a primarily Chinese language Internet Protocol
Television (“IPTV”) service delivered to consumes
in the U.S., Canada, and Australia via a set-top box.
Id. at 5. As a sales agent for iTalkTV HK, iTalk
Global sells subscriptions to the iTalkBB Chinese TV
platform, which is accomplished by bundling the TV platform
with subscriptions to iTalk Global's VoIP service.
Id. The TV shows that encompass the subscriptions to
the iTalkBB Chinese TV platform are the basis for Plaintiff
iQIYI's alleged copyright infringement and other claims.
Plaintiff iQIYI's Business and Services
iQIYI is the self-proclaimed “go-to internet video
streaming platform in China for premium content
providers.” Pl.'s Compl. at 5. Plaintiff iQIYI
broadcasts its programs to viewers worldwide-including to
viewers in the United States-over the Internet, through
tablet applications and mobile applications. Id.
Importantly, iQIYI has the sole and exclusive right in the
United States to import, reproduce, distribute, publicly
perform, broadcast, and enforce rights of certain Chinese
language programs over the Internet, including over IPTV
(collectively, the “iQIYI Exclusive Shows”).
Id. The iQIYI Exclusive shows contain copyrightable
subject matter under U.S. law and consist of approximately
thirteen TV shows. Id. at 6-7. Plaintiffs allege
that Defendant iTalk Global (and other affiliated entities)
imported “into the United States, reproduced,
distributed, and publicly performed, broadcasted, and
otherwise exploited the iQIYI Exclusive Shows via
iTalkBB's IPTV platform without authorization of
Plaintiffs.” Id. at 7.
Defendant iTalk Global's Business and Services
previously mentioned, Defendant iTalk Global sells
subscriptions to the iTalkBB Chinese TV platform, which is
accomplished by bundling the TV platform with subscriptions
to iTalk Global's VoIP service. iTalk Global's IPTV
service is made available to subscribers through the purchase
of an IPTV set-top box that sits on top of the viewer's
television. Compl. at 9. To stream the service, a subscriber
is required to pay a monthly or annual subscription fee
before the subscriber can view iTalk Global's IPTV
contents. Id. iQIYI alleges that its' Exclusive
Shows are shown through this set-top box and the iTalkBB IPTV
platform. Thus, the streaming of iQIYI's Exclusive Shows
form the basis of Plaintiff iQIYI's various claims for
relief, which include: direct copyright infringement,
inducement of copyright infringement and contributory
copyright infringement, vicarious copyright infringement,
violation of the DMCA, false designation of origin and false
advertising, and common law conspiracy. See Pl.'s Compl.
filed their Complaint on April 23, 2019. ECF No. 1. Defendant
iTalk Global filed its answer to Plaintiffs' Complaint on
June 28, 2019. ECF No. 16. On August 20, 2019, iTalk Global
filed a motion to dismiss for forum non conveniens generally
arguing that China was an adequate alternative forum and a
more convenient forum in which to resolve the current
dispute. ECF No. 24. On September 30, 2019, iQIYI filed its
Response to Defendant's Motion to Dismiss, arguing that
China is not an adequate alternative forum and it is clearly
not a more convenient forum to litigate the current dispute.
ECF No. 31. Defendant filed a Reply to Plaintiffs'
Response on October 18, 2019. ECF No. 32. Plaintiff then
filed a Sur-Reply. ECF No. 34. The Court held a hearing on
the motion on December 4, 2019, in which the Court denied
Defendant's Motion to Dismiss.
essence of the forum non conveniens doctrine is that a court
may decline jurisdiction and may actually dismiss a case,
even when the case is properly before the court, if the case
more conveniently could be tried in another forum.” In
re Volkswagon of Am., 545 F.3d 304, 315 (5th Cir. 2008)
(“Volkswagon II”); see also Dickson Marine Inc.
v. Panalpina, Inc., 179 F.3d 331, 341 (5th Cir. 1999) (the
premise of forum non conveniens is that a court may resist
imposition upon its jurisdiction even when jurisdiction is
authorized). The determination of whether a case should be
dismissed for forum non conveniens is “committed to the
sound discretion of the trial court.” Piper Aircraft
Co. v. Reyno, 454 U.S. 235, 237 (1981).
defendant bears the burden of persuasion on all elements of
the forum non conveniens analysis. Thus, a defendant must
“establish that there is an alternate forum that is
both available and adequate.” Perforaciones Exploracion
Y Produccion v. Maritimas Mexicanas, S.A. de C.V., 356 Fed.
App'x. 675, 679 (5th Cir. 2009). If the Court finds there
is not an adequate and available forum, the inquiry ends, and
the court should deny the motion to dismiss. Norex Petroleum,
Ltd. v. Access Indus., 416 F.3d 146, 160 (2d Cir. 2005);
Perforaciones Exploracion. 356 Fed. App'x. at 679.
However, if the moving party carries its burden of
establishing an alternate forum that is both adequate and
available, then the defendant is charged with showing that
dismissal is warranted because of certain private and public
interest factors weigh in favor of dismissal. McLennan v. Am.
Eurocopter Corp., Inc., 245 F.3d 403, 424 (5th Cir. 2001).
to the courts, the relevant private interest factors include:
the “relative ease of access to sources of proof; [the]
availability of compulsory process for attendance of
unwilling, and the cost of obtaining attendance of willing,
witness[es]; [the] possibility of view of premises, if view
would be appropriate to the action; and all other practical
problems that make trial of a case easy, expeditious and
inexpensive.” Dickson Marine, 179 F.3d at 342 (internal
quotes omitted). The relevant public interest factors
include: the “administrative difficulties flowing from
court congestion; the local interest in having localized
controversies decided at home; 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; the avoidance of unnecessary
problems in conflict of laws, or in the application of
foreign law; and the unfairness of burdening citizens in an
unrelated forum with jury duty.” Id. (internal
iQIYI has two main arguments as to why the Court should deny
Defendant iTalk Global's Motion to Dismiss. First, iQIYI
argues that the Court should deny iTalk Global's Motion
because it cannot show that China is an adequate alternative
forum. Pl.'s Resp. at 1. Secondly, in the event the Court
finds that China is an adequate alternative forum, iQIYI
argues that the private and public interest factors weigh
against dismissing the case. Id. Because the first
argument proffered by iQIYI is potentially dispositive, the
Court will first address whether China is an alternative
motion to dismiss for forum non conveniens will not be
granted unless there is an alternative forum in which the
action can be brought. The defendant must show that the
proposed alternative forum is both (1) available and (2)
adequate. Piper, 454 U.S. at 254 n.22. Although some courts
conflate these two issues, availability and adequacy of the
proposed alternative forum are better considered as
independent issues that warrant separate consideration.
Cotemar S.A. De C.V. v. Hornbeck Offshore Serv., L.L.C., 569
Fed. App'x. 187, 190 (5th Cir. 2014) (establishment of
foreign tribunal as available and adequate is a prerequisite
to considering public and private interest factors that may
support dismissal). Thus, the Court will first address
whether China is both available and adequate.
Whether China is Available as an Alternative Forum
doctrine of forum non conveniens “presupposes at least
two forums in which the defendant is amenable to
process.” Gulf Oil Corp. v. Gilbert, 330 U.S. 501,
506-07 (1947). Thus, an alternative forum generally is deemed
available if the case and all of the parties come within that
alternative court's jurisdiction. Id. In this case,
iQIYI does not dispute that China is “available”
as an alternative forum. Therefore, the Court assumes China
is available and will concentrate on the second
Whether China is or is not an Adequate Alternative
the alternative forum is available, it cannot be considered
adequate-and thus the forum non conveniens motion will be
denied-if the remedy offered by the other forum is clearly
unsatisfactory. Piper, 454 U.S. at 254; Saqui v. Pride Cent.
Am., LLC, 595 F.3d 206, 211-214 (5th Cir. 2010) (holding that
Mexico was an adequate forum because plaintiff could recover
damages there, even though the recovery in Mexico would be
lower than in the United States). Many courts have held that
an alternative forum is adequate so long as the plaintiff was
not deprived of all remedies or subjected to unfair treatment
in the alternative forum. See, e.g., Saqui, 595 F.3d at 212
(“the mere fact that the amount of damages would be
more limited under Mexican as opposed to American law, does
not provide the basis for finding Mexican courts an
inadequate alternative forum.”). Although defendants
must carry the burden of proving an adequate forum, they may
rely on a presumption that the foreign forum is adequate.
Indusoft, Inc. v. Taccolini, 560 Fed. App'x. 245, 248-49
(5th Cir. 2014). However, a plaintiff can overcome that
presumption by making a contrary showing. Id. In
this case, iQIYI clearly articulated a contrary showing to
the adequacy of Chinese courts to resolve this dispute.
support of its motion to dismiss, Defendant iTalk Global
submits three arguments that China is an adequate alternative
forum for iQIYI to assert its claims. First, iTalk Global
argues that China is an adequate alternative forum because
China also has copyright and trademark laws under which iQIYI
can seek relief, including damages and injunctive relief.
Mot. at 8. Defendant iTalk Global also notes that Plaintiffs
are Chinese companies; thus, they are entitled to seek relief
in Chinese courts. Secondly, iTalk Global points out iQIYI
has already filed several lawsuits in China seeking the same
relief it seeks in this case against iTalk Global's
Chinese parent companies based on airings of the iQIYI
Exclusive shows in Australia. Id. at 8. Thus, iTalk
Global argues, the Chinese lawsuits filed by iQIYI confirm
the adequacy of Chinese courts as an alternative forum for
Plaintiff's claims. Id. Finally, iTalk Global
asserts that even though the acts of infringement occurred in
the United States, this does not render China an inadequate
forum for iQIYI's claims. Id. at 9.
iQIYI argues that even though China has copyright and
trademark laws, iTalk Global cannot demonstrate that China is
an adequate alternative forum for this dispute. First, iQIYI
asserts that it would be deprived of all remedies under
Chinese law for lack of proof. Resp. at 1. Secondly, iQIYI
argues that Chinese law only recognizes two of the six causes
of action asserted in this case. The Court will address each
argument in turn. Id.
China is not an Adequate Forum Because the Chinese Rules of
Evidence Deny iQIYI's Requested Relief
argue that if the Court dismisses this case, iQIYI will not
be able to adequately litigate the case because it does not
have evidence in a form that is acceptable to a Chinese court
to show copyright infringement. Pl.'s Resp. at 4. The
Court agrees. The Plaintiffs should not be forced to forfeit
a forum where they can obtain full relief unless the
substitute forum offers at least the equivalent potential for
a full recovery.
to the declaration of former Judge Shi Yun,  iQIYI will not be
able to prove infringement in a Chinese court even though
they would be able to in an American court. The rules of
evidence in China are significantly different from those in
the United States. Chinese courts permit only very limited
discovery and rely almost exclusively on documentary
evidence, rather than the testimony of witnesses. Former
Judge Mr. Shi Yun Decl. ¶ 5.3, ECF No. 31; Xu Decl.
¶¶ 17-19, ECF No. 31. In order to prove copyright
or trademark infringement in a Chinese court, a plaintiff
must demonstrate infringement in the courtroom and provide
notarized evidence of infringement. Former Judge Decl. ¶
18; XU Decl. ¶ 8. It is not disputed that iTalk
Global's TV service is not available in China. Thus,
iQIYI would not be able to demonstrate infringement in a
Chinese courtroom. This would preclude iQIYI from having the
equivalent opportunity to recover damages that it would have
in this Court.
iQIYI cannot provide notarized evidence acceptable to a
Chinese court's legal standards of admissibility. In
order to obtain notarized evidence, the Chinese rules of
evidence require iQIYI to obtain an official video taken by a
notary company. The video must show that the notary purchased
a new iTalkBB set-top box from iTalk Global, reset it to
factory settings, connected it to the internet in the United
States, and accessed the iQIYI Exclusive Shows from the
iTalkBB platform. See Former Judge Decl. ¶ 18; Xu
Decl. ¶ 10. It is undeniable that the failure to follow
the Chinese evidentiary rules will result in rejection of the
unqualified evidence. Thus, it follows that the
plaintiff's claims would be dismissed by a Chinese court
for lack of proof. See Former Judge Decl. ¶¶ 19-20;
Xu Decl. ¶¶ 11-13.
case, iQIYI cannot now collect the necessary notarized
evidence of infringement that would be necessary in a Chinese
court because iTalk Global removed the iQIYI Exclusive Shows
from the iTalkBB platform. Thus, the required evidence of
U.S. copyright and trademark infringement that could have
been used in China is now unobtainable. Compare with Shijie
“Jenny” Qu Decl (“Qu Decl.”) at
¶¶ 7-10 (describing how iQIYI was able to acquire
notarized evidence of infringement in a similar case against
iTalk Global's Chinese parent companies). Because a
Chinese court would not accept iQIYI's existing evidence
of infringement, iQIYI would be left without a remedy against
iTalk Global. Therefore, the Court will not dismiss
iQIYI's claims based on the doctrine of forum non
iTalk Global argues that China is an adequate alternative
forum because China has copyright and trademark laws equal to
that of the United States appears to be chimerical at best.
The trademark and copyright protections may seem, at first,
to provide adequate legal remedies; however, upon closer
inspection of the evidentiary requirements, China as an
adequate forum in this case is merely a mirage. It is true
that China does provide for the legal protection of property
interests that include copyright and other intangible
property. Constitution of the People's Republic of China
(1982, as amended through 2018), arts. 5, 11, 13, 20, 32. As
Mr. DeLisle points out in his declaration, Chinese copyright
law has been crafted to conform to the demands of
international treaties and the obligations China ...