`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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` No. 19 C 7736
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` Judge Virginia M. Kendall
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`KINON SURFACE DESIGN, INC.,
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` Plaintiff,
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` v.
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`HYATT INTERNATIONAL CORP.,
`HYATT INTERNATIONAL TECHNICAL
`SERVICES, INC., HYATT OF CHINA, LTD.,
`HYATT INTERNATIONAL HOTEL
`MANAGEMENT (BEIJING) CO., LTD., and
`CHINA RESOURCES (DALIAN) CO., LTD.,
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` Defendants.
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`MEMORANDUM OPINION AND ORDER
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`Kinon Surface Design (“Kinon”) is a Florida corporation that designs decorative panels for
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`placement in hotels, residences, retail establishments, offices, and the like. In 2010, an interior
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`design firm working on the soon-to-be-constructed Grand Hyatt Dalian (the “Hotel”) in China
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`purchased two panels from Kinon for use as sample headboards for the Hotel. The design company
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`then sought a quote for Kinon to supply headboards for all the guestrooms in the new Hotel, but
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`the parties could not come to an agreement. Years later, Kinon discovered that all guestrooms in
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`the Hotel were outfitted with headboards identical to the two panels that the design firm had
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`purchased. Believing that these headboards were copies of its copyrighted designs, Kinon filed a
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`series of lawsuits alleging violations of U.S. and Chinese copyright law.
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`The first of these cases, “Kinon I,” 18 CV 81065, which Kinon brought against Hyatt
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`Corporation for copyright infringement in the Southern District of Florida, resulted in a jury verdict
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`of no liability. Kinon then filed and voluntarily dismissed the second case (“Kinon II”), which it
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`brought in the Southern District of Florida against several travel websites, China Resources, Hyatt
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`1
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 2 of 14 PageID #:1577
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`International Corporation (“HIC”), Hyatt International Technical Services (“HITS”), Hyatt of
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`China (“HOC”), and Hyatt International Hotel Management (“HIHM”) for the same alleged
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`infringement. In the instant case, Kinon alleges copyright infringement against HIC, HITS, HOC,
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`and HIHM (collectively, the “Hyatt Defendants”) as well as China Resources.
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`The Hyatt Defendants now move to dismiss the claims against them on the grounds that
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`(1) issue preclusion and judicial estoppel bar this action; (2) the Court lacks subject matter
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`jurisdiction; (3) the Court lacks personal jurisdiction over HOC and HIHM; (4) the suit is time-
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`barred under the Copyright Act’s limitations period; and (5) the common-law doctrine of forum
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`non conveniens dictates that this case should be tried in China, not the United States. China
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`Resources also moves to dismiss because (1) the Court lacks personal jurisdiction over it; (2)
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`Kinon did not properly effect service on it; and (3) pursuant to the doctrine of forum non
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`conveniens, China is a more appropriate forum for this litigation. For the reasons set forth below,
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`the Hyatt Defendants’ Motion to Dismiss (Dkt. 59) is granted in part and denied in part, and China
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`Resources’ Motion to Dismiss (Dkt. 66) is granted
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`BACKGROUND
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`I.
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`The Work
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`Richard Satz is the founder and President of Kinon. (Dkt. 1 ¶ 8.) He created the proprietary
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`and patented resin and manufacturing process that Kinon uses to manufacture its panels. (Id.)
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`Kinon designs are protected by copyright. (Id.)
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`In or about 2010, a Singapore-based interior design firm, LTW Designworks, contacted
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`Kinon concerning the construction of the Hotel in Dalian, China. (Id. ¶¶ 25–26.) Kinon proceeded
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`to work with LTW to design what would become the Work for use as headboards in the Hotel’s
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`guestrooms. (Id. ¶¶ 28, 35.) LTW then procured two sheets of the Work for use in the mock-up
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`2
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 3 of 14 PageID #:1578
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`rooms constructed for the purpose of evaluating interior designs specified for the Hotel. (Id. ¶ 37.)
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`China Resources was the purchaser of the two sheets. (Dkt. 1 ¶ 38.) China Resources proceeded
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`to install the two sheets in the mock-up rooms set up in trailers on the construction site. (Id. ¶ 39.)
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`On July 21, 2011, Satz and Michael Weiner, Kinon’s Vice President of Sales, traveled to
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`Dalian at Kinon’s expense to meet with Zhang Wei, the individual in charge of the Hotel’s
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`construction. (Id. ¶ 41.) Wei requested an estimate for 750 panels. (Id. ¶ 43.) Kinon provided an
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`estimate in the amount of $1,749,180. (Id. ¶ 47.) Wei then requested a lower price and Kinon
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`offered a final estimate of $1,592,900. (Id. ¶ 49.) LTW later informed Kinon that it had chosen to
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`source less expensive materials for the Hotel’s headboards. (Dkt. 1 ¶ 51.)
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`Years
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`later,
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`in
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`2016,
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`Satz
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`visited
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`the
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`Hotel’s
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`website
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`at
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`www.dalian.grand.hyatt.com/en/hotel to see if he could discern what headboards the Hotel had
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`chosen. (Id. ¶ 52.) While visiting the site, Satz noticed that the photographs advertising the rooms
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`appeared to show the Work being used as headboards in the guest rooms. (Id. ¶ 53.) Unsure
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`whether these photos were from the mock-up rooms for which Kinon provided the sample boards,
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`he searched for photos of the Hotel posted by visitors on tripadvisor.com. (Id. ¶ 55.) In early 2018,
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`he began to notice visitors posting pictures of guest rooms on various travel websites that depicted
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`the Work as headboards. (Id. ¶ 57.)
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`China Resources, with the knowledge and consent of the Hyatt Defendants, took the two
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`samples of the Work that Kinon sold to China Resources and used them to produce a cheaper
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`version of the same design. (Id. ¶ 59.) HIC contracted a photographer to take photos of the Work
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`and distribute them on its website to promote the Hotel’s business around the world. (Id. ¶ 61.)
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`None of the Hyatt entities have ever been licensed to copy, distribute, or display the Work.
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`(Id. ¶ 64.)
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`3
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 4 of 14 PageID #:1579
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`II.
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`Defendants’ Agreements
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`The Defendants have each entered into a variety of agreements with one another. Pursuant
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`to agreements with HOC, HIHM, and HITS, China Resources granted those three entities the right
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`and ability to supervise and control China Resources’ activities concerning the Grand Hyatt
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`Dalian. (Dkt. 1 ¶ 76–78.) Those three entities also received a direct financial interest in China
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`Resources’ activities concerning the Hotel. (Id.) HOC’s Agreement also gave HOC the exclusive
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`right to determine the form and presentation related to Hyatt names in marks related to the Hotel.
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`(Id. ¶ 76.) The HIHM Agreement also gave HIHM the duty to oversee design recommendations
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`and the design of the mock-up rooms. (Id. ¶ 77.) The HITS Agreement gave HITS the right to
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`review and approve specifications for “carpeting, wall coverings, fabrics, etc.” (Id. ¶ 78.) Finally,
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`China Resources and HIC entered into the Trademark Agreement whereby China Resources
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`granted HIC the right to supervise and control China Resources’ use of HIC’s trademarks in
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`connection with the Hotel as well as a direct financial interest in the trademarks’ usage. (Id. ¶ 79.)
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`HIC also entered into the Photograph Agreement with photographer Geoff Lung whereby
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`HIC obtained a worldwide perpetual license to use photographs taken by Lung of the Hotel in all
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`media for all purposes. (Dkt. 1 ¶ 81.)
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`Kinon owns a valid copyright in the Work and has registered the Work with the Register
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`of Copyrights pursuant to 17 U.S.C. § 411(a). (Id. ¶¶ 87–88.) Kinon also owns a copyright of the
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`Work under Chinese Copyright Law. (Id. ¶ 130.)
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`III. Kinon I
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`Kinon I, the case brought against Hyatt Corporation in the Southern District of Florida,
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`went to a jury trial. Using a special verdict form, the jury made, inter alia, the following
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`determinations by the preponderance of the evidence. First, Kinon is the entity that “actually
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`4
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 5 of 14 PageID #:1580
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`created or owns [the Work].” (Dkt. 34-1 at p. 1.) Second, the Work was original to its author and
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`it possess at least a minimal degree of creativity. (Id. at p. 2.) Third, Kinon registered the Work
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`with the United States Copyright Office on January 1, 2015. (Id.) Fourth, Hyatt Corporation did
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`not copy Kinon’s work. (Id. at p. 3.) Fifth, Hyatt Corporation did not have access to the Work.
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`(Id.) Sixth, the photos that appeared on hyatt.com are strikingly similar to the Work such that the
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`similarity was unlikely to occur unless there was copying. (Id. at p. 4.) Seventh, the jury did not
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`find that the accused photos on hyatt.com were independently created nor that they were not
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`copied—the logical inference being that they were not independently created and were copied.
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`(Dkt. 34-1 at p. 4.) Eighth, the Work has no intrinsic, functional use beyond displaying the
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`appearance of the Work or conveying useful information. (Id.) Ninth, Kinon suffered a loss, but
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`Hyatt Corporation did not cause the loss. (Id. at p. 5.)
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`DISCUSSION
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`I.
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`Issue Preclusion
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`The Hyatt Defendants first move to dismiss on the grounds that the issue of infringement
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`related to the posting of pictures on hyatt.com was already litigated in Kinon I such that issue
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`preclusion bars this action. Following the verdict in Kinon I, Kinon filed Kinon II, which is
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`substantially similar to the instant action. HIC and HITS are both headquartered in Illinois and it
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`appeared they could defeat personal jurisdiction in Florida, so Kinon dismissed Kinon II without
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`prejudice.
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`In order to successfully invoke issue preclusion, the Hyatt Defendants must demonstrate
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`that: (1) the issue sought to be precluded is the same as an issue in Kinon I, (2) the issue must have
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`been actually litigated in Kinon I, (3) the determination of the issue must have been essential to
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`the final judgment, and (4) the party against whom issue preclusion is invoked must have been
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`5
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 6 of 14 PageID #:1581
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`fully represented in the prior action. Adams v. City of Indianapolis, 742 F.3d 720, 736 (7th Cir.
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`2014). Issue preclusion does not apply in this case because the issues sought to be litigated are not
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`the same. Namely, the issue in Kinon I was whether Hyatt Corporation infringed Kinon’s copyright
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`by posting images of the Work on hyatt.com. The issue in the instant action is whether the Hyatt
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`Defendants, none of which were defendants in Kinon I, infringed Kinon’s copyright by posting the
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`images to hyatt.com. The jury’s verdict form makes clear that it correctly understood those to be
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`separate questions because it found that Hyatt Corporation did not copy the Work, but that the
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`Work had indeed been copied and Kinon had been injured by that copying.
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`The principal issue before the jury in Kinon I was whether Hyatt Corporation infringed
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`Kinon’s copyright. That is not a question in the instant action. Issue preclusion does not, therefore,
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`bar this action against the Hyatt Defendants.
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`II.
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`Judicial Estoppel
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`The Hyatt Defendants contend that the doctrine of judicial estoppel bars the claims against
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`them because this action is premised on a theory of liability that is inherently contradictory to the
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`theory Kinon advanced in Kinon I. Judicial estoppel is a common-law doctrine that prohibits a
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`party from asserting a claim in a legal proceeding that is inconsistent with a claim taken by that
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`party in a previous proceeding. New Hampshire v. Maine, 532 U.S. 742, 749 (2001). The doctrine
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`makes litigants “‘choose one position irrevocably,’” thereby “‘rais[ing] the cost of lying.’”
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`Cannon-Stokes v. Potter, 453 F.3d 446, 448 (7th Cir. 2006) (quoting Chaveriat v. Williams Pipe
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`Line Co., 11 F.3d 1420, 1428 (7th Cir. 1993)). Courts invoke the doctrine at their discretion, and
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`the “circumstances under which [it] may be invoked are probably not reducible to any general
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`formulation of principle.” Id. at 743. Courts consider several factors to determine whether applying
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`judicial estoppel is appropriate. First, the party’s later position must be “clearly inconsistent” with
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`6
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 7 of 14 PageID #:1582
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`its previous position. New Hampshire, 532 U.S. at 750; United States v. Hook, 195 F.3d 299, 306
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`(7th Cir. 1999). Second, courts consider whether the party succeeded in persuading a court to
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`accept its earlier position, “so that judicial acceptance of an inconsistent position in a later
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`proceeding would create ‘the perception that either the first or the second court was misled.’” New
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`Hampshire, 532 U.S. at 750 (quoting Edwards v. Aetna Life Ins. Co., 690 F.2d 595 (6th Cir. 1982)).
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`Third, courts consider “whether the party seeking to assert an inconsistent position would derive
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`an unfair advantage or impose an unfair detriment on the opposing party if not estopped.” New
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`Hampshire, 532 U.S. at 750. Finally, judicial estoppel only applies where the plaintiff’s
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`inconsistent positions indicate a subjective intent to deceive. Spaine v. Community Contacts, Inc.,
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`756 F.3d 542, 547 (7th Cir. 2014).
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`In Kinon I, Kinon alleged that Hyatt Corporation was responsible for the dissemination of
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`images of the work on hyatt.com. See Kinon Surface Design, Inc. v. Hyatt Corporation, 18 CV
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`81065, Dkt. 33 at p. 7 (S.D. Fla. Jan. 29, 2019). In the instant action, Kinon alleges that the Hyatt
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`Defendants are responsible for that same dissemination. These are plainly inconsistent positions,
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`but the inconsistency does not give the impression that the earlier court was misled. Nor does this
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`inconsistency enable Kinon to derive an unfair advantage, nor does it impose a detriment on the
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`Hyatt Defendants. It also does not suggest that Kinon intended to deceive either court. Indeed, the
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`first court was not misled, as evidenced by the jury’s defense verdict. Having to litigate
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`infringement of its copyrighted design for a third time does not suggest that Kinon has derived
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`some advantage; instead, Kinon has had to endure years of costly litigation. Litigation of this action
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`does not impose an unfair detriment on the Hyatt Defendants because they are, as they say, entirely
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`distinct entities from the defendant in Kinon I. Finally, this is unlike a case where a debtor in
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`bankruptcy fails to disclose a cause of action to the bankruptcy trustee, obtains the benefit of the
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`7
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 8 of 14 PageID #:1583
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`discharge of debts, and then attempts to bring an action that should have belonged to the trustee.
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`In such a case, there is a clear motive to deceive. Here, by contrast, Kinon has no motivation to
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`deceive the Court because having to again litigate whether someone infringed its copyright is an
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`expense that nobody would wish to incur. Judicial estoppel does not bar this action.
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`III.
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`Subject Matter Jurisdiction
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`The Hyatt Defendants next move to dismiss on the grounds that U.S. courts have no
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`jurisdiction over extraterritorial acts of infringement. Of course, the act of actually using the
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`copyrighted design in the guestrooms is an extraterritorial act over which this Court would lack
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`jurisdiction.1 See Impression Prods., Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523, 1528 (2017)
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`(explaining that copyright protections have no extraterritorial effect). But the relevant act of
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`infringement alleged in this action against the Hyatt Defendants is the distribution of images of
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`the Work, without Kinon’s authorization, on the Hotel’s website to people viewing those images
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`in the United States. (Dkt. 1 ¶¶ 90, 96, 105, 114, 123); c.f. 17 U.S.C. §§ 101, 107 (granting
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`copyright holders the exclusive right to “display” the copyrighted work, “display” meaning, inter
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`alia, to show a copy on a device). The Hyatt Defendants protest this interpretation on the grounds
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`that the testimony in the Kinon I trial elucidated that Hyatt Corporation, not the Hyatt Defendants,
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`own the hyatt.com website on which the photos were posted. This argument misses the mark
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`because Stephanie Jean-Jacques, in-house counsel for the Hyatt Corporation, testified at trial that
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`although Hyatt Corporation owns the website, “in terms of the entity that actually manages the
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`property site for international hotels, that’s a separate entity, that’s a Hyatt international
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`subsidiary. So while Hyatt Corporation is the entity that owns the domain name for hyatt.com, it
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`1 As explained below, the Court lacks personal jurisdiction over China Resources. Although China Resources did not
`move to dismiss on subject matter jurisdiction grounds, the Court notes sua sponte that the only infringement alleged
`against China Resources is extraterritorial. Therefore, the Court also lacks subject matter jurisdiction over the claims
`against China Resources.
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`8
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 9 of 14 PageID #:1584
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`works in conjunction with subsidiaries, and there are—there is Hyatt International subsidiary [sic]
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`that actually is in charge for updating this particular property site.” Kinon I, Dkt. 154-2 at p. 13.
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`Assuming the truth of Ms. Jean-Jacques’s testimony, the Hyatt Defendants can be held liable for
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`the allegedly unauthorized dissemination of the photographs of the Work in the United States via
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`hyatt.com.
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`Kinon also seeks to hold HIC and HITS vicariously liable for China Resources’ copying
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`of the Work. As explained above, China Resources committed this alleged infringement in China,
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`so the Court lacks jurisdiction to adjudicate that claim. Kinon suggests that HIC and HITS could
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`still be vicariously liable for that foreign act of infringement via the predicate act doctrine. See
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`Motorola Solutions, Inc. v. Hytera Commc’ns., Corp., 436 F. Supp. 3d 1150, 1168 (N.D. Ill. Jan.
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`31, 2020) (The predicate act doctrine provides that “if an infringing act occurred within the United
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`States, then the plaintiff may recover for foreign violations that are directly linked to the domestic
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`infringement.”) The Seventh Circuit has not explicitly adopted the predicate act doctrine. Id. Even
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`assuming that the predicate act doctrine applies in this Court, it does not apply to this case because
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`China Resources’ foreign infringement is the predicate to the Hyatt Defendants’ alleged domestic
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`infringement, not the other way around. Thus, the Court lacks subject matter jurisdiction over the
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`alleged vicarious foreign infringement by the Hyatt Defendants.
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`IV.
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`Personal Jurisdiction
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`HOC, HIHM, and China Resources contend that this Court lacks personal jurisdiction over
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`them. HOC is a Hong Kong entity with its principal place of business in Hong Kong. (Dkt. 1 ¶ 19.)
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`HIHM is a Chinese entity with its principal place of business in Beijing, China. (Id. ¶ 20.) China
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`Resources is a Chinese company with its principal place of business in Dalian, China. (Id. ¶ 24.)
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`None of these entities are “at home” in Illinois, so they are not subject to general jurisdiction in
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`9
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 10 of 14 PageID #:1585
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`this Court. See Daimler AG v. Bauman, 571 U.S. 117, 127 (2014) (explaining that a court can
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`assert general jurisdiction over entities that are “at home” in the forum state).
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`The only possible basis for personal jurisdiction as to HOC, HIHM, and China Resources
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`is specific jurisdiction. Specific jurisdiction exists where a defendant has “‘certain minimum
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`contacts . . . such that the maintenance of the suit does not offend traditional notions of fair play
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`and substantial justice.’” Walden v. Fiore, 571 U.S. 277, 284 (2014). The requisite minimum
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`contacts exist where there is a relationship among the defendant, the forum, and the litigation. Id.
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`at 283–84. The defendant must create that relationship itself and the relationship must be with the
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`forum state itself, not persons who live in the state. Id. at 284–85 (“[I]t is the defendant's conduct
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`that must form the necessary connection with the forum State that is the basis for its jurisdiction
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`over him.”); see also N. Grain Mktg., LLC v. Greving, 743 F.3d 487, 492 (7th Cir. 2014) (Specific
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`jurisdiction exists where (1) “the defendant has purposefully directed its activities at the forum
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`state or purposefully availed himself of the privilege of conducting business in that state,” (2) “the
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`alleged injury arises out of the defendant's forum-related activities,” and (3) “[t]he exercise of
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`jurisdiction [ ] comport[s] with traditional notions of fair play and substantial justice.”).
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`The Complaint alleges that the Hyatt international entities, which include HOC and HIHM,
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`posted images on the Hotel’s website of the Work. These images were then accessible to
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`individuals in Illinois. This is not enough to establish adequate minimum contacts as to HOC and
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`HIHM. Posting copyrighted images on a website only establishes personal jurisdiction in Illinois
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`if the poster intended to target residents of Illinois. See Advanced Tactical Ordinance Sys., LLC v.
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`Real Action Paintball, Inc., 751 F.3d 796, 803 (7th Cir. 2014). That customers might access the
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`website in the forum state is not enough to establish jurisdiction; the question is whether the
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`defendants “in some way targeted residents of a specific state” or otherwise “formed a contact with
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`10
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 11 of 14 PageID #:1586
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`the forum state.” Id.; see also be2 LLC v. Ivanov, 642 F.3d 555, 558 (7th Cir. 2011) (“Courts
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`should be careful in resolving questions about personal jurisdiction involving online contacts to
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`ensure that a defendant is not haled into court simply because the defendant owns or operates a
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`website that is accessible in the forum state, even if the site is ‘interactive.’”) “[T]he operation of
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`an interactive website does not show that the defendant has formed a contact with the forum state.
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`And without the defendant’s creating a sufficient connection (or ‘minimum contact’) with the
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`forum state itself, personal jurisdiction is not proper.” Id. at 803. Under Advanced Tactical, this
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`Court has no basis for exercising personal jurisdiction over HOC and HIHM because all they did
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`is operate a website; they did not direct their activities toward Illinois.
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`Kinon also suggests that because other Hyatt entities are based in Illinois, HOC and HIHM
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`would have understood that by posting the images online they would have some outsized effect in
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`Illinois as compared to any other jurisdiction around the world. This is a losing argument. Neither
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`HOC nor HIHM have any particular affiliation with Illinois and potential Hotel customers do not
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`predominately reside in Illinois such that HOC and HIHM would have targeted Illinois residents.
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`That other Hyatt entities are based in Illinois does not indicate that HOC and HIHM directed their
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`activities to Illinois.
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`Personal jurisdiction is even more plainly lacking as to China Resources. All of HOC’s
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`allegedly infringing activities took place in China. That is, China Resources allegedly procured
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`knock-off versions of the Work to use in the Hotel. It is undisputed that this happened in China,
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`not in Illinois. That China Resources contracted with Illinois-based entities is conduct that is
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`unrelated to the issues of this litigation—namely, the copyright infringement alleged by Kinon.
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`Kinon has failed to identify any contacts with Illinois that would plausibly create personal
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`jurisdiction. Subjecting China Resources to personal jurisdiction on these facts would offend
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`11
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 12 of 14 PageID #:1587
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`traditional notions of fair play and substantial justice. Accordingly, the Court dismisses China
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`Resources from this case for lack of personal jurisdiction. This issue is dispositive, so the Court
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`does not reach China Resources’ argument about service of process.
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`V.
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`Statute of Limitations
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`The remaining defendants, HIC and HITS, move to dismiss on the grounds that this action
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`is time-barred under the three-year limitations period provided by the Copyright Act. A defendant
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`is permitted to raise a statute of limitations defense at the motion to dismiss stage “if ‘the
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`allegations of the complaint itself set forth everything necessary to satisfy the affirmative
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`defense.’” Brooks v. Ross, 578 F.3d 574, 579 (7th Cir. 2009) (quoting United States v. Lewis, 411
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`F.3d 838, 842 (7th Cir. 2005)). If, however, there is “any set of facts that if proven would establish
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`a defense to the statute of limitations,” then the motion to dismiss should be denied. Clark v. City
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`of Braidwood, 318 F.3d 764, 768 (7th Cir. 2003).
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`Viewing the allegations of the Complaint in the light most favorable to Kinon, Mr. Satz
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`did not become aware until early 2018 that the images of the headboards appearing in Hotel photos
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`on hyatt.com depicted unauthorized copies of the Work. There is no basis for assuming at this
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`stage that he should have known this sooner as he could have been under the impression that these
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`were images of the mock-up designs that he sold to China Resources, not images of illegal copies
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`of the Work. Kinon filed this lawsuit in November, 2019, well within the limitations period. At
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`this stage of the litigation, dismissal on statute of limitations grounds is not appropriate. HIC and
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`HITS can, if they wish, raise the statute of limitations issue at later stages of the litigation.
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`VI.
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`Forum Non Conveniens
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`Defendants contend that China is the proper forum for this litigation and that the Court
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`should therefore dismiss the case pursuant to the common law doctrine of forum non conveniens.
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`12
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 13 of 14 PageID #:1588
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`The doctrine of forum non conveniens “comes down to this: a trial court may dismiss a suit over
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`which it would normally have jurisdiction if it best serves the convenience of the parties and the
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`ends of justice.” Kamel v. Hill-Rom Co., Inc., 108 F.3d 799, 802 (7th Cir. 1997). “When an
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`alternative forum has jurisdiction to hear a case, and when a trial in the chosen forum would result
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`in vexation and oppression to the defendant which would far outweigh the plaintiff's convenience
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`or when the chosen forum would generate administrative and legal entanglements for the trial
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`court, the court may dismiss the case.” Id. Provided that an adequate alternative forum exists,
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`courts consider a variety of public and private factors in determining whether to apply the doctrine.
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`The private factors include, inter alia, the relative ease of access to sources of proof, availability
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`of compulsory process, and the cost of obtaining willing witnesses. Id. at 803. The public factors
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`include, inter alia, the administrative difficulties stemming from court congestion and the
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`avoidance of unnecessary conflicts of law or the application of foreign law. Id. “A defendant
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`invoking forum non conveniens ordinarily bears a heavy burden in opposing the plaintiff's chosen
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`forum.” Sinochem Int’l Co. Ltd. v. Malaysia Int’l Shipping Co., 549 U.S. 422, 430 (2007).
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`Now that China Resources is not a defendant in this action, the remaining claims pertain
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`to the alleged dissemination of images of the Work on hyatt.com by Illinois-based entities. An
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`entire case pertaining to website-based infringement has already been litigated in the United States.
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`That fact makes clear that this issue is capable of resolution in the United States without any
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`vexation or oppression. Indeed, Kinon reports that most of the witnesses who would testify at trial
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`are here in Chicago. (Dkt. 71 at p. 38.) The Hyatt Defendants note this case may require the Court
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`to apply Chinese law, which it cites as an administrative and legal entanglement. But if this case
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`were instead filed in a Chinese court, that court would have to apply American law because the
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`Complaint seeks relief under U.S. and Chinese copyright law. Both forums would have to deal
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`Case: 1:19-cv-07736 Document #: 80 Filed: 12/04/20 Page 14 of 14 PageID #:1589
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`equally with the complication of applying foreign law. The Hyatt Defendants also note that the
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`docket in this Court is congested and Chinese courts apparently adjudicate claims of this nature
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`more quickly than American courts. But requiring the plaintiffs to refile this case in China would
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`certainly add cost and take more time. On these facts, the Hyatt Defendants have not met the high
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`burden required to invoke forum non conveniens.
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`CONCLUSION
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`The Hyatt Defendants’ Motion to Dismiss [59] is granted in part and denied in part. The
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`claims against Hyatt of China and Hyatt International Hotel Management are dismissed without
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`prejudice for lack of personal jurisdiction. The Motion is denied as to Defendants Hyatt
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`International Corporation and Hyatt International Technical Services, except to the extent that the
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`alleged injury is a foreign act of infringement.
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`China Resources’ Motion to Dismiss [66] is granted for lack of personal jurisdiction. The
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`claims against China Resources are dismissed without prejudice.
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`____________________________________
`Virginia M. Kendall
`United States District Judge
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`Date: December 4, 2020
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