334 F. Supp. 3d 95
D.C. Cir.2018Background
- IMAPizza, a D.C.-based LLC operating the &pizza chain in the U.S., sued U.K. defendants At Pizza Limited and its alleged owners Lyle and Dhir over their planned @pizza restaurant in Edinburgh, claiming copyright infringement, Lanham Act trademark and unfair competition, U.K. common-law “passing off,” and D.C. trespass.
- IMAPizza alleges Lyle discovered &pizza in the U.S., incorporated a U.K. company shortly thereafter, and that Dhir made visits to &pizza locations in D.C. and elsewhere, took photos, and used some images in @pizza materials. Defendants admit some travel but deny directed copying.
- Defendants moved to dismiss for lack of personal jurisdiction and for failure to state claims; they later raised forum non conveniens in reply.
- The Court found IMAPizza made a prima facie showing of specific personal jurisdiction (based mainly on admitted visits and timing), but treated jurisdiction as a close question requiring possible future discovery.
- The Court dismissed IMAPizza’s federal Copyright Act and Lanham Act claims and its D.C. trespass claim for failure to state a claim, concluding U.S. copyright and Lanham Act generally do not reach wholly foreign infringement and that entry into a public restaurant by a competitor is not trespass.
- The only surviving claim was U.K. “passing off”; the Court denied forum non conveniens dismissal without prejudice for lack of an adequate record and ordered briefing on that issue and an affidavit establishing IMAPizza’s citizenship for diversity jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction (specific) | Dhir and Lyle purposefully availed themselves of D.C. by visiting &pizza and studying its designs; those contacts are related to the claims. | Defendants argued contacts were insufficient, incidental, or corporate-only; jurisdiction would be unreasonable. | Prima facie showing of specific jurisdiction satisfied on pleadings; close call, may require discovery; not dismissed at this stage. |
| Copyright extraterritoriality | Access, photographing U.S. locations, and downloading images from U.S. servers establish domestic acts enabling liability for foreign infringement. | Copyright Act does not apply extraterritorially; alleged acts in U.S. did not constitute domestic infringement (photos lawful, downloads not plausibly in U.S., reproduction occurred abroad). | Copyright claims dismissed: plaintiff failed to plead a domestic act of infringement sufficient to invoke U.S. copyright law. |
| Lanham Act extraterritoriality | Defendants’ U.K. use will confuse U.S. tourists and prospective U.K. partners; interference with planned U.K. expansion harms U.S. goodwill and commerce. | Defendants’ conduct and effects were confined to the U.K.; no substantial/significant effect on U.S. commerce. | Lanham Act claims dismissed: plaintiff’s allegations of effects on U.S. commerce were speculative and insufficient under any extraterritoriality test. |
| Trespass under D.C. law | Defendants entered &pizza restaurants by pretending to be customers to steal designs; entry was unauthorized and consent was vitiated by deception. | Restaurants are public; entry as customers (even with ulterior motives) is consent; fraud as to motive does not negate consent to enter public spaces. | Trespass claim dismissed as a matter of law: entry into public restaurant does not constitute trespass absent revocation or entry into nonpublic areas or other aggravating facts. |
Key Cases Cited
- Livnat v. Palestinian Auth., 851 F.3d 45 (D.C. Cir. 2017) (plaintiff bears prima facie burden to establish jurisdiction; resolve disputes in plaintiff's favor at motion to dismiss stage)
- Mwani v. bin Laden, 417 F.3d 1 (D.C. Cir. 2005) (plaintiffs may rest jurisdictional showing on pleadings and affidavits; court may order jurisdictional discovery)
- Daimler AG v. Bauman, 571 U.S. 117 (2014) (general jurisdiction limited to where a defendant is "at home")
- Walden v. Fiore, 571 U.S. 277 (2014) (specific jurisdiction focuses on defendant's forum contacts, not plaintiff's contacts with forum residents)
- Morrison v. Nat'l Austl. Bank Ltd., 561 U.S. 247 (2010) (presumption against extraterritorial application of U.S. statutes)
- Spanski Enters., Inc. v. Telewizja Polska, S.A., 883 F.3d 904 (D.C. Cir. 2018) (Copyright Act applies where the exclusive rights are infringed in the U.S.; focus on location of the infringing act)
- Cambridge Literary Props., Ltd. v. W. Goebel Porzellanfabrik G.m.b.H., 295 F.3d 59 (1st Cir. 2002) (forum contacts that are proximate cause of claim can support jurisdiction)
- Steele v. Bulova Watch Co., 344 U.S. 280 (1952) (Lanham Act can have extraterritorial application where foreign acts affect U.S. commerce or involve U.S. citizens)