TIMOTHY J. KELLY, United States District Judge
But there's a catch: all of IMAPizza's restaurants are located in the Eastern United States, while Defendants' restaurant is located in Scotland. Defendants have filed a motion to dismiss (ECF No. 18) on a variety of grounds, most of which reflect the same general argument: IMAPizza has improperly brought this lawsuit in an American court and (mostly) under American law, while it should have been brought in the United Kingdom under that country's laws.
As is explained below, the Court largely agrees with Defendants. To the extent that IMAPizza brings claims under federal law, it improperly seeks to apply our laws to conduct that occurred overseas. The one claim it brings under District of Columbia law (alleging that Defendants trespassed by entering &pizza restaurants) is meritless. Those claims will be dismissed. The Court will also order the parties to brief whether the remaining claim (under United Kingdom law) should be dismissed under the doctrine of forum non conveniens .
Finally, IMAPizza will also be required to submit an affidavit with sufficient facts to establish its citizenship for diversity purposes.
I. Factual and Procedural Background
IMAPizza, from its headquarters in the District of Columbia (the "District"), operates a restaurant chain called &pizza in the District and other locations in the Eastern United States. Compl. ¶¶ 6, 11.
IMAPizza claims that its "trademarked name" is just one aspect of its "unique commercial impression." Id. ¶ 13. &pizza has other distinctive features as well, such as "an elongated oval skinny pizza design," "elongated rectangular skinny boxes," "slogans that include 'LOVE&pizza' and 'YOU&pizza,' " a set of "four core values," and employees that are referred to as its "Tribe." Id. ¶¶ 15-16. IMAPizza has also submitted copyright applications for the "architectural and interior design plans" of its restaurants, "including the layout, and look and feel of its locations." Id. ¶ 35.
After "tour[ing] a number of &pizza locations in Washington, D.C.," Lyle allegedly "[r]ealiz[ed] the uniqueness of &pizza's restaurant chain" and decided to copy it. Id. ¶ 17. In October 2015, Lyle incorporated a private limited company called "& Pizza Limited" under the laws of the United Kingdom. Wagner Decl. Ex. 1, at 3-9. In June 2016, he renamed the business At Pizza. Id. at 10-12. IMAPizza alleges that Dhir, at Lyle's direction, also "took numerous trips to visit the Washington, D.C. locations of &pizza" to study the restaurants. Compl. ¶ 17. During their visits, Lyle and Dhir allegedly "entered into &pizza's Washington, D.C. locations masquerading as customers, took extensive pictures (not identifying themselves as the competition), accessed all parts of the restaurant that they could to observe its design, and returned to Scotland, U.K. with this copyrighted information." Id. ¶ 25. They also downloaded photographs of &pizza restaurants from websites operating on servers located in the United States, including "yelp.com" (a restaurant review website) and "flydulles.com" (the website for the Dulles International Airport). Id. ¶ 39. IMAPizza claims that these downloads included "at least three pictures for which [IMAPizza] owns the copyrights in the pictures themselves (in addition to the architectural and interior designs they depict)." Id. ¶ 40.
For their part, Lyle and Dhir describe their travel to the United States somewhat differently in declarations they have submitted. Lyle admits that he was inspired by American restaurants like &pizza to start his own pizza business, but claims that he came across the restaurant by happenstance during a family vacation in July 2015-which was the only time he visited an &pizza restaurant. See Lyle Decl. ¶ 5. He denies having instructed Dhir to visit the United States. Id. ¶ 12. For his part, Dhir admits to having visited the United States once, in August 2017, as part of his research for the opening of @pizza. Dhir Decl. ¶¶ 8, 10. He claims, however, that he visited many different restaurants in two different cities during the trip, and was not fixated on &pizza. Id. ¶¶ 8-9. He also claims that he took pictures only for "purely personal" reasons, to "look for new ideas" for home-cooked meals with his family. Id. ¶ 9.
IMAPizza claims that Lyle and Dhir used the information they gathered to create "copycat" restaurants "possessing the same look and feel" as &pizza. Compl. ¶ 25. In designing @pizza, they "copied &pizza's architectural and interior designs." Id. ¶ 38. They also copied other distinctive features of &pizza, such as the oval shape of the pizza, &pizza's slogans, and "the promotion of its staff as 'the Squad' or 'the Pack' " (similar to &pizza's "Tribe"). Id. ¶ 53. And they chose a trademark, @pizza, that was extremely similar to &pizza. Id. Dhir and Lyle also allegedly used photographs of &pizza (including the three photographs for which IMAPizza owns the copyrights) in a "marketing deck circulated by @pizza to its business partners," effectively passing off &pizza's unique designs as their own. Id. ¶¶ 26-29. (Dhir and Lyle claim that they used this document, which they describe as a "mood board," only "during the recruitment of a General Manager" and never for marketing purposes. Lyle Decl. ¶ 11; Dhir Decl. ¶¶ 5-7.) When IMAPizza demanded that Defendants cease and desist from this conduct, they refused. Compl. ¶¶ 30-31. In fact, they
IMAPizza alleges that these acts have caused an effect on U.S. commerce. It claims that a large number of U.S. tourists visit Edinburgh, Scotland, every year, and that they "are likely to be confused as to an association or sponsorship between &pizza and @pizza." Id. ¶ 65(a). In addition, "a substantial number of university students in Edinburgh come from U.S. states in which &pizza is located" and will experience similar confusion. Id. ¶ 65(b). IMAPizza also alleges that a "potential business partner of @pizza has contacted &pizza to report the infringing use" of &pizza's trademark and "frustration experienced as a result of the potential partner actually being confused into believing that @pizza was affiliated with the well-established &pizza." Id. ¶ 22.
IMAPizza filed this case in November 2017. It brings five causes of action. The first, under the Copyright Act,
Defendants have moved to dismiss on several grounds. Among other things, they have moved to dismiss all claims except the trespass claim for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2). Defs.' Br. at 10-13. They have also moved to dismiss all claims except the "passing off" claim for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Defs.' Br. at 13-21. In addition, Defendants' reply raised, for the first time, the issue of dismissal under the doctrine of forum non conveniens . Defs.' Reply at 25. The Court granted IMAPizza leave to file a surreply to address this new ground for dismissal, along with two other issues that Defendants raised for the first time in their reply. See ECF No. 36 (order); Pl.'s Surreply. Both parties have requested oral argument on the motion. Defs.' Br. at 22; Pl.'s Opp'n at 36. The Court finds, in its discretion, that oral argument would not be helpful to resolution of the motion, and therefore denies their request. LCvR 7(f).
II. Legal Standard
A. Motion to Dismiss for Lack of Personal Jurisdiction ( Rule 12(b)(2) )
The plaintiff bears the burden "to 'make a prima facie showing of the pertinent jurisdictional facts' to survive a motion to dismiss for lack of personal jurisdiction." Livnat v. Palestinian Auth. ,
If facts material to the Court's exercise of personal jurisdiction over the defendant remain in dispute, the Court must adopt appropriate procedures to resolve them. Cf. Herbert v. Nat'l Acad. of Scis. ,
B. Motion to Dismiss for Failure to State a Claim ( Rule 12(b)(6) )
"A Rule 12(b)(6) motion to dismiss tests the legal sufficiency of a plaintiff's complaint; it does not require a court to 'assess the truth of what is asserted or determine whether a plaintiff has any evidence to back up what is in the complaint.' " Herron v. Fannie Mae ,
III. Analysis
The Court will begin-as it must-by examining Defendants' argument that the Court lacks personal jurisdiction over them. While this is a close question, the Court concludes that IMAPizza has made a prima facie showing of jurisdiction as is required to avoid dismissal at this stage. The Court will then turn to Defendants' argument that IMAPizza has failed to state a claim under the Copyright Act, the Lanham Act, and the common law of trespass, concluding that Defendants are correct and those claims must be dismissed. The Court further concludes that it lacks an adequate record to dismiss IMAPizza's remaining claim (for "passing off" under the law of the United Kingdom) under the doctrine of forum non conveniens . The Court will order the parties to propose a schedule for briefing a renewed motion to dismiss on that ground. Finally, in order to ensure that it has diversity jurisdiction over the "passing off" claim, the Court will require IMAPizza to submit an affidavit establishing its citizenship.
A. Personal Jurisdiction
Defendants argue that the Court lacks personal jurisdiction to hear IMAPizza's intellectual-property claims (that is, everything except the trespass claim, which they concede the Court has jurisdiction to hear). See Defs.' Br. at 10-13; Defs.' Reply at 20-25. Personal jurisdiction is not a mere technicality, but " 'an essential element of the jurisdiction of a district ... court,' without which the court is 'powerless to proceed to an adjudication.' " Ruhrgas AG v. Marathon Oil Co. ,
There are two types of personal jurisdiction. Under the first type, known as general or "all-purpose" jurisdiction, courts located where defendants are at "at home" may exercise jurisdiction over any claim against them. Daimler AG v. Bauman ,
To establish specific personal jurisdiction, IMAPizza must show that jurisdiction is proper under both (1) the District of Columbia's long-arm statute and (2) the U.S. Constitution's Due Process Clause. See Fed. R. Civ. P. 4(k)(1)(A) ; Walden ,
1. District of Columbia Long-Arm Statute
The District of Columbia long-arm statute provides, among other things, for "personal jurisdiction over a person, who acts directly or by an agent, as to a claim for relief arising from the person's":
(1) transacting any business in the District of Columbia;
(2) contracting to supply services in the District of Columbia;
(3) causing tortious injury in the District of Columbia by an act or omission in the District of Columbia; [or]
(4) causing tortious injury in the District of Columbia by an act or omission outside the District of Columbia if he regularly does or solicits business, engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed, or services rendered, in the District of Columbia....
To invoke § 13-423(a)(1), the plaintiff must first make a threshold showing "that the defendant has purposefully engaged in some type of commercial or business-related activity directed at District residents." Holder v. Haarmann & Reimer Corp. ,
The case law does not precisely delineate the boundaries of "commercial or business-related activity" falling within the statute. Certainly, it covers "business transactions" in the everyday sense of commercial deal-making activities like negotiating or performing contracts. See, e.g., Helmer v. Doletskaya ,
By contrast, courts have declined to extend § 13-423(a)(1) to conduct that is not meaningfully "business-related." For example, participating outside the District in a criminal conspiracy that affects District residents does not necessarily constitute "transacting business" in the District. Holder ,
Defendants argue, with some force, that their contacts with the District do not resemble traditional business transactions. See Defs.' Reply at 21-22. IMAPizza seeks to rely on its allegation that Defendants targeted their acts of infringement,
Nonetheless, the Court concludes that, when all factual disputes are resolved and inferences are drawn in IMAPizza's favor, some of Dhir's contacts with the District qualify as business transactions under § 13-423(a)(1). Even in Defendants' own account, Dhir traveled to the District for a business purpose: to conduct research for At Pizza about other pizza restaurants. See Dhir Decl. ¶¶ 8-9. For a start-up like At Pizza, such research could be considered an important business activity. This performance of business duties in the District appears to constitute "transacting business" within the meaning of the statute. Cf. Lex Tex ,
Defendants also argue that these contacts cannot be attributed to Lyle and Dhir, because they acted solely in their capacities as officers of At Pizza. See id. at 24-25. It is true that, under District of Columbia law, a plaintiff cannot establish personal jurisdiction over a corporate officer based solely on the corporation's conduct. See Flocco v. State Farm Mut. Auto. Ins. Co. ,
Of course, it is not enough for IMAPizza to show that Defendants engaged in business transactions in the District. It must also show that its claims "aris[e] from" these business transactions.
There is no need to belabor the question of suit-relatedness under District of Columbia law. The "arising from" requirement "operates as a due process check on the reach or scope of the 'transacting business' provision of the long-arm statute."
2. Due Process Clause
The Due Process Clause prohibits a court from exercising jurisdiction over a nonresident defendant unless he has "certain minimum contacts ... such that the maintenance of the suit does not offend 'traditional notions of fair play and substantial justice.' " Walden ,
IMAPizza has alleged the type of purposeful conduct that could constitute minimum contacts with the District of Columbia. It claims that Dhir, at Lyle's direction, paid multiple visits to the District. See Compl. ¶ 17. "[P]hysical entry into the [jurisdiction]-either by the defendant in person or through an agent, goods, mail, or some other means-is certainly a relevant contact." Walden ,
The real issue in this case is not whether Defendants had purposeful contacts with the District, but whether those contacts are sufficiently related to IMAPizza's intellectual-property claims. As Judge Moss recently explained, the test for suit-relatedness under the Due Process Clause remains an unsettled question in this Circuit. Triple Up Ltd. v. Youku Tudou Inc. ,
If IMAPizza's prima facie showing satisfies the demanding "proximate cause" test, then there is no need for the Court to decide, at this time, which of these three tests is the correct one. And that is in fact the case.
The First Circuit's opinion in Cambridge Literary Properties, Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. ,
Here, many of the key facts are undisputed. Lyle admits that he discovered &pizza during a July 2015 trip to the United States. Lyle Decl. ¶ 5. IMAPizza has introduced a document showing that Lyle initially incorporated his business as "& Pizza Limited" in the United Kingdom just three months later, on October 8, 2015. Wagner Decl. Ex. 1, at 3-9. In 2016, Lyle changed the name to At Pizza. Id. at 10-12. And Dhir admits traveling to the United States as part of his "due diligence and research process" for At Pizza in August 2017. Dhir Decl. ¶ 8. Dhir also admits that he visited an &pizza location in the District on the trip and took pictures of the restaurant. Id. ¶¶ 8-9. That occurred just three months before the planned opening of the first @pizza restaurant in November 2017. See Compl. ¶ 33.
When all reasonable inferences are drawn in IMAPizza's favor, one could conclude that Defendants' contacts with the District were an indispensable part of a plan to copy the ingredients of &pizza's success. The fact that Lyle incorporated "& Pizza Limited" just months after learning about &pizza supports IMAPizza's assertion that he was, from the outset, on a "copycat mission" to replicate its restaurants. Compl. ¶ 52; see id. ¶ 17. And that fact also supports the inference that Dhir's trip to the District was, indeed, focused on copying &pizza (not merely for general background research). This narrative is consistent with additional facts that Defendants
In fact, one could also reasonably infer that these contacts resembled a "proximate cause" of IMAPizza's intellectual-property claims. The timing of Dhir's admitted trip-in August 2017, just three months before the planned opening of the first @pizza restaurant in November 2017, see id. ¶ 33; Dhir Decl. ¶¶ 8-10-suggests that it "play[ed] a close and significant role" in carrying out the alleged infringement. Cambridge Literary Properties ,
Defendants might well be right that, under their version of the facts, their contacts with the District are not enough to support personal jurisdiction. Lyle claims that he never directed Dhir to travel to the United States. Lyle Decl. ¶ 12. And for his part, Dhir claims that his travel was aimed at conducting background research on a number of different restaurants-not &pizza specifically-and that some of his activities were for his personal benefit, unrelated to At Pizza's business. Dhir Decl. ¶¶ 8-9. He also claims that he visited &pizza only once, not multiple times. If all that is true, then the relationship between these forum contacts and At Pizza's alleged operation of a "copycat" restaurant seems much more tenuous. But at this stage, the Court must resolve all factual disputes, and draw all reasonable inferences, in IMAPizza's favor. See Livnat v. Palestinian Auth. ,
Finally, Defendants argue that, even if minimum contacts exist, personal jurisdiction would be "unreasonable." Defs.' Reply at 23-24. It is true that, "even after 'it has been decided that a defendant purposefully established minimum contacts within the forum ..., these contacts may be considered in light of other factors to determine whether the assertion of personal jurisdiction would comport with "fair play and substantial justice." ' " Mwani v. bin Laden ,
It is possible that these considerations may warrant dismissal for lack of personal jurisdiction in this case. But Defendants have not adequately made the case for that result. They rely on the conclusory statement that "the weight of the factors demonstrates it would be unreasonable to impose jurisdiction on the U.K. Defendants." Defs.' Reply at 23. They also make a general argument that Defendants could not have foreseen being haled into this Court, without attention to the specific factors the Supreme Court has identified. Id. at 23-24. This is not the "compelling case" that Defendants must make to warrant dismissal on this basis.
* * *
Personal jurisdiction in this case is a close call. When IMAPizza is given the benefit of all disputed facts and reasonable inferences, it has eked out a prima facie showing of personal jurisdiction. But it is unclear whether discovery will bear out all of IMAPizza's claims about Defendants' contacts with the District of Columbia, or if it could prevail at an evidentiary hearing on the matter. Moreover, Defendants may ultimately be able to show that jurisdiction is unreasonable despite their contacts with the District of Columbia.
Still, those are issues for the future. IMAPizza has made out a prima facie showing of jurisdiction, and so the Court may proceed to consider Defendants' motion under Rule 12(b)(6).
B. Failure to State a Claim
Defendants argue that IMAPizza's Copyright Act, Lanham Act, and trespass claims should be dismissed for failure to state a claim. See Defs.' Br. at 15-21.
1. Copyright Act (First Cause of Action)
"It is axiomatic that United States copyright law does not apply extraterritorially."
"It is a 'longstanding principle of American law that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.' " Morrison v. Nat'l Austl. Bank Ltd. ,
The D.C. Circuit recently addressed the territorial limits of the Copyright Act in Spanski Enterprises, Inc. v. Telewizja Polska, S.A. ,
To bolster its case for applying the Copyright Act to the conduct here, IMAPizza invokes the "predicate act" doctrine adopted by several other courts of appeals. See Pl.'s Opp'n at 21. Under this doctrine, if the defendant has committed a domestic act of copyright infringement, and that act has enabled further acts of infringement abroad, then the plaintiff may recover damages for the foreign conduct. See, e.g., Tire Eng'g & Distribution, LLC v. Shandong Linglong Rubber Co. ,
The parties seem to agree that the principal acts of infringement alleged in the complaint occurred overseas. IMAPizza alleges that Defendants' restaurant-located in Scotland-incorporates its copyrighted "architectural and interior designs." Compl. ¶ 43. IMAPizza also alleges that
But ultimately, IMAPizza's arguments fail. None of these acts plausibly constituted infringement within the United States.
a. Travel to &pizza Restaurants
IMAPizza's first theory is that Defendants, by accessing its copyrighted design elements in the United States, and then returning to the United Kingdom to copy them, committed conduct within the scope of the Copyright Act. See id. at 21. This theory is meritless.
Access to a copyrighted work is, in a sense, a logical prerequisite to copyright infringement. Copyright law only protects against "actual copying" of copyrighted works. See Sturdza v. United Arab Emirates ,
But that does not mean that access can be equated with infringement. The D.C. Circuit has made clear that infringement occurs where the defendant violates the plaintiff's exclusive rights under
Therefore, IMAPizza's allegations about where Defendants accessed its copyrighted works cannot support Copyright Act liability.
b. Pictures Taken at &pizza Restaurants
IMAPizza also suggests that Defendants committed infringement by taking "extensive pictures" of &pizza restaurants.
As Defendants argue, these pictures cannot be infringing as a matter of law. See Defs.' Br. at 19 n.5; Defs.' Reply at 9. IMAPizza claims that certain design elements of its restaurants constitute architectural works. See Compl. ¶ 35; Pl.'s Opp'n at 18-20. By statute, taking photographs of an architectural work is not infringement "if the building in which the work is embodied is located in or ordinarily
c. Downloading of Images from U.S. Servers
IMAPizza's final theory is that an act of domestic copyright infringement occurred each time Defendants downloaded images from servers located in the United States. Pl.'s Opp'n at 21-22 (citing Compl. ¶¶ 39, 43). But this theory also fails.
As the Ninth Circuit has explained, the transmission of a file across the internet involves two potential copyright violations. "Both uploading and downloading copyrighted material are infringing acts. The former violates the copyright holder's right to distribution [under
But in this case, IMAPizza has not alleged that its pictures were "uploaded" unlawfully. That is, there is no claim that the websites hosting these pictures committed copyright infringement by distributing pictures of IMAPizza's restaurants. See Compl. ¶¶ 34-47. And in fact, IMAPizza's complaint suggests that there would be no basis for such a claim. The websites that hosted these pictures include yelp.com, a well-known site for restaurant reviews, and the website for the Dulles International Airport. See id. ¶¶ 39-40. IMAPizza presumably wants pictures of its restaurants on these websites for promotional purposes. It certainly does not contend otherwise.
Instead, IMAPizza alleges only that the receiving end of the transmission-Defendants' downloading of the pictures-was unlawful. See id. The Court is somewhat skeptical that copyright infringement occurs when someone merely downloads an image from a reputable, publicly available website. Cf. Perfect 10, Inc. v. Amazon.com, Inc. ,
As mentioned above, an unlawful download violates the plaintiff's exclusive right to reproduce the copyrighted work under
Under this definition, it is plain that the ephemeral transmission of a picture across the internet does not create a "copy." Instead, the "copy" is made where the receiving computer assembles the transmitted information into a complete image that can be "perceived."
IMAPizza objects that Defendants improperly rely on their declarations (which assert that Dhir downloaded the pictures from the United Kingdom, see Dhir Decl. ¶ 6) in posing their extraterritoriality challenge. Pl.'s Opp'n at 20. The Court may not, of course, consider either party's declarations in connection with Defendants' Rule 12(b)(6) motion. Nonetheless, IMAPizza mistakes its burden. While the Court has located no case directly on point, extraterritoriality does not appear to be an affirmative defense. Rather, courts have described domestic infringement as a necessary element of a Copyright Act claim. See Int'l Diamond Importers, Inc. v. Med Art, Inc. , No. 15-cv-4045 (KMW),
IMAPizza also relies on cases holding that, if even part of an act of infringement occurs in the United States, then the conduct is subject to federal copyright law. Pl.'s Opp'n at 21-22 & n.7. There is certainly authority supporting this proposition. See generally Shropshire ,
Finally, IMAPizza cites a case finding domestic copyright violations where foreign plaintiffs hacked into U.S. servers. Pl.'s Opp'n at 22 n.7 (citing Synopsys, Inc. v. Ubiquiti Networks, Inc. , No. 17-cv-561 (WHO),
For these reasons, IMAPizza has not alleged a domestic act of infringement, meaning that its federal copyright claims must be dismissed for failure to state a claim.
2. Lanham Act (Third and Fourth Causes of Action)
Defendants also argue that IMAPizza improperly seeks to hold them liable under the Lanham Act for conduct that occurred entirely overseas. Defs.' Br. at 19-21. Here too, the Court agrees.
As an initial matter, the parties dispute whether this issue goes to the Court's subject matter jurisdiction. See Defs.' Br. at 19; Pl.'s Opp'n at 22. Neither party has identified binding authority on this issue. The Court is persuaded by the Ninth Circuit's analysis in Trader Joe's Co. v. Hallatt ,
The Supreme Court examined the extraterritorial application of the Lanham Act in Steele v. Bulova Watch Co. ,
Several courts of appeals, applying Steele , have adopted various tests for when the Lanham Act applies to conduct abroad. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 29:58 (5th ed. 2018). These courts disagree on how great an effect the defendant's conduct must have on U.S. commerce: some require a "substantial" effect, others a "significant" effect, and at least one (the Ninth Circuit) only "some" effect.
In the absence of guidance from the D.C. Circuit, the parties dispute which test should apply. Defendants argue for the relatively stringent test that the First Circuit has applied to cases involving defendants that are not U.S. citizens. Defs.' Reply at 15 (citing McBee v. Delica Co. ,
Unlike Steele , this is a case where Defendants' "operations and their effects" are entirely "confined within the limits of a foreign nation."
IMAPizza tries its best to conjure up an effect on U.S. commerce. It alleges that many "25-34 year olds" visit Edinburgh from the United States every year. Compl. ¶ 65(a). These tourists are allegedly from @pizza's "target demographic" and thus likely to visit Defendants' restaurant.
These allegations, however, do not "raise a right to relief above the speculative level." Hettinga v. United States ,
Nor is the Court persuaded by IMAPizza's claim that Defendants are "interfering with &pizza's foreign expansion." Pl.'s Opp'n at 24. The fact is that IMAPizza has not expanded to the United Kingdom. And unless it expands to Edinburgh specifically, it may never be in competition with @pizza. Here too, the claimed effect on U.S. commerce is simply speculative.
The one non-speculative instance of confusion identified in the complaint concerns a "potential business partner of @pizza." Compl. ¶ 22. IMAPizza alleges that this business partner "contacted &pizza to report the infringing use and the frustration experienced as a result of the potential partner actually being confused into believing that @pizza was affiliated with the well-established &pizza."
Finally, the cases that IMAPizza cites are distinguishable. In Warnaco Inc. v. VF Corp. ,
In sum, IMAPizza's Lanham Act claims must be dismissed.
3. Trespass (Fifth Cause of Action)
IMAPizza alleges that Defendants committed a trespass under the common law of the District of Columbia by entering &pizza restaurants. Compl. ¶¶ 79-87. "The tort of trespass is defined as 'an unauthorized entry onto property that results in interference with the property owner's possessory interest therein.' " Greenpeace, Inc. v. Dow Chem. Co. ,
Neither party has identified binding authority that controls the viability of this claim. Therefore, this Court's obligation is to predict how the District of Columbia Court of Appeals would decide the issue. See In re Stevenson ,
A plaintiff cannot recover for trespass if he consented to the defendant's entry onto his property. See Restatement (Second) of Torts §§ 167, 892A(1) (Am. Law Inst. 1965-1979). "If words or conduct are reasonably understood by another to be intended as consent, they constitute apparent consent and are as effective as
As is obvious from the complaint, &pizza restaurants-like pizza restaurants generally-are open to the public. See supra pp. 118-19. Indeed, this entire case is predicated on the claim that IMAPizza is trying to attract the public to its restaurants through its branding, and that Defendants are interfering with those efforts. See, e.g., id. ¶ 56. IMAPizza does not dispute the basic fact that it allows the public into its restaurant as customers. See Pl.'s Opp'n at 13-15. Instead, it alleges in conclusory fashion that Defendants' entry onto the premises was "without authorization." Compl. ¶ 81. But this allegation lacks "facial plausibility," because IMAPizza has provided no "factual content" to support it. Iqbal ,
IMAPizza repeatedly falls back on its theory that Defendants were "posing" or "masquerading as customers" (implicitly acknowledging that it let them in on that basis). Compl. ¶¶ 25, 82; Pl.'s Opp'n at 14. This theory rests on the flawed assumption that someone can be either a competitor or a customer, but not both. In fact, when Dhir patronized IMAPizza's restaurants, he was both a competitor and a customer. As such, IMAPizza consented for him, like all its other customers, to enter.
In a similar vein, IMAPizza suggests that Defendants' hidden purpose-to steal its intellectual property-vitiated its consent for them to enter. Compl. ¶ 82; Pl.'s Opp'n at 14-15. It analogizes to cases in which consent was procured by fraud. Pl.'s Opp'n at 14-15 (citing Democracy Partners v. Project Veritas Action Fund ,
It is true that consent may be invalid when it is induced by a substantial mistake or fraud. Restatement (Second) of Torts § 892B(2). But there is an important limitation on this principle: the mistake or fraud must "concern[ ] the nature of the invasion of [the plaintiff's] interests or the extent of the harm to be expected from it."
This limitation serves an important function in the trespass context. As Judge Posner explained in Desnick v. ABC ,
[A] restaurant critic could not conceal his identity when he ordered a meal, or a browser pretend to be interested in merchandise that he could not afford to buy. Dinner guests would be trespassers if they were false friends who never would have been invited had the host known their true character, and a consumer who in an effort to bargain down an automobile dealer falsely claimed to be able to buy the same car elsewhere at a lower price would be a trespasser in the dealer's showroom.
The Desnick court applied this reasoning to a "hidden-camera" case. A television producer had dispatched "test patients" to a medical clinic, secretly arming them with cameras that recorded their examinations.
Here, the fact that Defendants entered a public space makes any fraud or mistake about their intentions irrelevant to the issue of consent. See Democracy Partners ,
The cases that IMAPizza cites are distinguishable on this very basis. See Pl.'s Opp'n at 14-15. In CAIR , one of the defendants secured an internship at a Muslim advocacy organization based on a fictitious identity and resume, without disclosing his true intention of stealing documents and information from the organization (which he proceeded to do after
IMAPizza argues, based on Democracy Partners , that Judge Posner's opinion in Desnick is inconsistent with District of Columbia law. See Pl.'s Opp'n at 14; ECF No. 30 at 4-5. The Court disagrees. Democracy Partners did not reject Desnick ; it rejected the defendants' argument (citing Desnick ) that the plaintiff had failed to make out the "interference with the plaintiff's possessory interest" element of a trespass claim.
Finally, IMAPizza argues in its opposition that some of Defendants' activities exceeded the scope of its consent. Pl.'s Opp'n at 14-15. These activities included taking pictures of the restaurants and bringing employees there to show them how &pizza franchises operate.
Tying all this together, the Court concludes, as a matter of law, that if a restaurant has opened itself to the public, then its consent to enter reasonably extends to competitors as well-even if they harbor an ulterior motive of studying the restaurant for their own gain. In addition
Put more simply: it is not the law that a businessperson, by entering a public establishment to check out the competition, commits a trespass. Because that is the result that IMAPizza seeks, this claim must be dismissed.
C. Forum Non Conveniens
As a result of the foregoing analysis, the only remaining claim is IMAPizza's claim for "passing off" under the law of the United Kingdom.
"The forum non conveniens analysis calls for the court to consider '(1) whether an adequate alternative forum for the dispute is available and, if so, (2) whether a balancing of private and public interest factors strongly favors dismissal.' " de Csepel v. Republic of Hungary ,
The Court agrees with IMAPizza that Defendants have not met their burden, on two fronts. See Pl.'s Surreply at 6-8. First, the "defendant bears the burden of proving that there is an adequate alternative forum." El-Fadl v. Cent. Bank of Jordan ,
Based on this record, the Court has no choice but to deny Defendants' request for
IV. Further Proceedings
As noted above, there are factual questions regarding the existence of personal jurisdiction in this case. The Court must resolve those questions before the merits of this case can proceed further. See Kaplan ,
The Court concludes, in its discretion, that the parties should address the issue of forum non conveniens before any other proceedings in this action occur. Both forum non conveniens and personal jurisdiction are aimed, among other things, at avoiding unfairness that might result from requiring foreign defendants to litigate in our courts. But adjudicating personal jurisdiction would require costly jurisdictional discovery and a possible evidentiary hearing, while forum non conveniens can be disposed of through briefing and affidavits (and, if appropriate, a motion hearing). Resolving forum non conveniens first has the potential, if dismissal is warranted, to reduce the burden on the Court and the foreign defendants.
Accordingly, the Court will order the parties to propose a schedule for a renewed motion to dismiss on the ground of forum non conveniens .
In addition, IMAPizza will be required to submit an affidavit addressing its citizenship for diversity purposes. IMAPizza asserts that the Court has diversity jurisdiction over its "passing off" claim against the foreign Defendants, see Compl. ¶ 3, on the basis that it is "a limited liability company of Delaware with its principal place of business" in the District of Columbia, id. ¶ 6. But these allegations are insufficient to establish IMAPizza's citizenship. Because IMAPizza is a limited liability company, it has the citizenship of each of its members for diversity purposes. See CostCommand, LLC v. WH Administrators, Inc. ,
V. Conclusion and Order
For all of the above reasons, Defendants' Motion to Dismiss (ECF No. 18) is GRANTED IN PART and DENIED IN PART . IMAPizza's first, third, fourth and fifth causes of action are DISMISSED for
SO ORDERED.
Notes
In considering the instant motion, the Court has considered all relevant parts of the record including: ECF No. 1 ("Compl."); ECF No. 18 ("Defs.' Br."); ECF No. 29 ("Dhir Decl."); ECF No. 29-1 ("Lyle Decl."); ECF Nos. 20-1 to 20-8 (exhibits to Lyle Declaration); ECF No. 23 ("Pl.'s Opp'n"); ECF No. 23-1 ("Wagner Decl."); ECF No. 23-2 ("Wagner Decl. Ex. 1"); ECF No. 26 ("Defs.' Reply"); ECF No. 37 ("Pl.'s Surreply"). The Court has considered the parties' affidavits and other materials outside the pleadings only when evaluating personal jurisdiction.
Some opinions in this District, including one cited by Defendants, state that a court "need not accept the plaintiff's allegations as true and 'may ... weigh affidavits and other relevant matter[s] to assist in determining the jurisdictional facts.' " E.g., Bigelow v. Garrett ,
IMAPizza also argues, alternatively, that jurisdiction would be proper under Rule 4(k)(2) even if the local long-arm statute did not apply. See Pl.'s Opp'n at 29. The Court need not address this argument.
IMAPizza briefly mentions § 13-423(a)(3) and (4), as well. See Pl.'s Opp'n at 31 n.9. The Court will not consider this argument, which is raised only in passing, and in a footnote. See Paleteria la Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. de C.V. ,
The Court notes that, in Kaplan , the D.C. Circuit recently held that a district court must "assure itself that it has personal jurisdiction before moving on to address the merits of a claim."
Defendants also argue that all claims against Dhir and Lyle should be dismissed because IMAPizza improperly seeks to pierce the corporate veil and hold them liable for At Pizza's conduct. See Defs.' Br. at 13-15. The Court will not address this argument, because the only claim left after considering their motion is the "passing off" claim under United Kingdom law, and Defendants have addressed this issue only under U.S. law. See id. Defendants are free to advance this argument again if the "passing off" claim survives further proceedings on the threshold issues of forum non conveniens and personal jurisdiction.
The Court need not address Defendants' remaining arguments to dismiss the copyright claim. Notably, Defendants argue that IMAPizza improperly brought suit before the Copyright Office had issued it copyright registrations, Defs.' Br. at 16-17-raising an issue that the Supreme Court is likely to decide in its coming term. See Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC , --- U.S. ----,
IMAPizza also cites MGM Resorts International v. Unknown Registrant of www.imgmcasino.com , No. 2:14-cv-1613 (GMN) (VCF),
The CAIR court expressed reservations about whether the plaintiff was required to allege that its offices were closed to the public to state a claim for trespass. See
Defendants argue that the Court could decline to exercise supplemental jurisdiction over this claim. See Defs.' Br. at 21-22. But that argument fails because IMAPizza has also asserted diversity jurisdiction over it. See Compl. ¶ 3. Of course, if IMAPizza fails to submit facts that establish its domestic citizenship, see infra Section IV, the Court will revisit this issue. The Court notes that Defendants have not challenged the Court's exercise of supplemental jurisdiction over the trespass claim.