Imapizza, LLC v. At Pizza Limited
965 F.3d 871
| D.C. Cir. | 2020Background
- IMAPizza operates the U.S. &pizza chain and sought U.K. expansion; At Pizza ("@pizza") is a U.K. company that opened a similar restaurant in Edinburgh.
- At Pizza's principals visited &pizza locations in the U.S., photographed restaurants, downloaded copyrighted photos from U.S. servers, and used the information to build the Edinburgh store.
- IMAPizza sued in D.C. for copyright infringement, Lanham Act trademark/unfair competition, D.C. common-law trespass, and (under U.K. law) passing off.
- Defendants moved to dismiss for lack of personal jurisdiction and for failure to state a claim; the district court dismissed the federal claims as extraterritorial or inadequately pleaded and dismissed the U.K. passing-off claim for lack of subject-matter jurisdiction.
- The D.C. Circuit affirmed: it held IMAPizza failed to plead domestic copyright or Lanham Act effects, and failed to plead an unauthorized entry for trespass; the district court did not abuse its discretion on leave to amend, surreply, or declining supplemental jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Leave to amend | IMAPizza asked for leave in opposition brief and should have been allowed to amend if dismissal warranted | Defendants noted IMAPizza never filed a formal motion or attached a proposed amended complaint per local rules | Denied: court did not abuse discretion; informal request failed to satisfy Local Rules and was forfeited |
| Copyright extraterritoriality / domestic infringement | Downloads from U.S. servers and photos taken in U.S. are domestic acts or essential steps giving U.S. copyright reach | Copies are "fixed" where the received copy is made/perceived (here, in the U.K.); alleged conduct culminated abroad | Denied: IMAPizza failed to plead a domestic act of infringement; downloads from U.S. servers without alleging downloading in the U.S. or unauthorized U.S. uploading are insufficient |
| Lanham Act extraterritoriality | U.S. tourists/students, a confused potential investor, and defendants’ U.S. visits show effects on U.S. commerce | Defendants operate only in the U.K., make no U.S. sales or ads, and cause no plausible U.S. commercial harm | Denied: even under the Ninth Circuit's "some effect" test, IMAPizza did not plausibly allege an effect on U.S. commerce |
| Trespass (D.C. common law) | Defendants’ visits and photography were for illicit copying, so consent to enter was vitiated | Restaurants were open to the public; plaintiffs did not allege access to non-public areas or conditions on photography | Denied: no unauthorized entry alleged; fraudulent or covert entry claims fail absent access to nonpublic areas or other specific invasions of possessory interests |
| Supplemental jurisdiction / U.K. passing off | If federal claims remanded, district court should exercise supplemental jurisdiction over passing-off claim | IMAPizza failed to establish diversity jurisdiction when asked; comity counseled against injunction for foreign conduct | Denied: dismissal for lack of subject-matter jurisdiction and refusal to exercise supplemental jurisdiction was not an abuse of discretion |
Key Cases Cited
- RJR Nabisco Inc. v. European Community, 136 S. Ct. 2090 (2016) (sets framework for extraterritorial application of U.S. statutes)
- Spanski Enters., Inc. v. Telewizja Polska, S.A., 883 F.3d 904 (D.C. Cir. 2018) (Copyright Act may apply domestically when conduct relevant to statute’s focus occurs in the U.S.)
- Steele v. Bulova Watch Co., 344 U.S. 280 (1952) (Lanham Act applied to foreign sales that produced forbidden results within the U.S.)
- Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020 (9th Cir. 2013) (transmission/upload-download analysis and where copies are made)
- Desnick v. American Broadcasting Cos., Inc., 44 F.3d 1345 (7th Cir. 1995) (fraudulent consent and limits on trespass liability)
- Trader Joe’s Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016) (Lanham Act extraterritoriality—"some effect" standard)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (copyright originality/copying standard)