Imapizza, LLC v. At Pizza Ltd.

• Decision Date: 24 September 2018
• Docket Number: Civil Action No. 17-2327 (TJK)
• Citation: 334 F.Supp.3d 95
• Parties: IMAPIZZA, LLC, Plaintiff, v. AT PIZZA LIMITED et al., Defendants.
• Court: U.S. District Court — District of Columbia

334 F.Supp.3d 95

IMAPIZZA, LLC, Plaintiff,

v.AT PIZZA LIMITED et al., Defendants.

Civil Action No. 17-2327 (TJK)

United States District Court, District of Columbia.

Signed September 24, 2018

Andrew D. Skale, Ben L. Wagner, Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., San Diego, CA, David Barmak, Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., Washington, DC, for Plaintiff.

Matthew James Dowd, Dowd PLLC, Washington, DC, Patricia Y. Ho, Sheridan Ross P.C., Denver, CO, for Defendants.

MEMORANDUM OPINION AND ORDER

TIMOTHY J. KELLY, United States District JudgePlaintiff IMAPizza, LLC ("IMAPizza") operates a chain of pizza restaurants under the name "&pizza." Defendants—a company called At Pizza Limited ("At Pizza") and its alleged owners, Bhasker Dhir and Rupert Lyle—plan to operate a similar pizza restaurant called "@pizza." IMAPizza is understandably upset, and thinks that Defendants have improperly coopted the name and design of its restaurants.

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, 11.¹ "&pizza is an anti-establishment establishment" that prides itself on its "creative pies and craft beverages, localized shop design, and the strength, unity and vibe of its living-wage-paid, ampersand-tattooed" employees. Compl. ¶ 12.

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.

Lyle and Dhir reside in, and are citizens of, the United Kingdom. Id. ¶¶ 8-9. According to IMAPizza, they are "controlling owner[s] and director[s]" of At Pizza, the corporate entity (organized under the laws of the United Kingdom) through which they operate the @pizza business. Id. ¶¶ 7-10.

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 responded that Lyle or Dhir "would be personally escorting their general manager to Washington, D.C. so he or she could also carefully observe &pizza's design, operation and marketing." Id. ¶ 32. As of the filing of the complaint, Defendants planned to launch the first @pizza location in November 2017 in Edinburgh, Scotland. Id. ¶ 33.

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, 17 U.S.C. § 101 et seq. , alleges that Defendants have infringed IMAPizza's copyrights in the architectural works and three photographs mentioned above. Compl. ¶¶ 34-47. The second cause of action, for "passing off" under the common law of the United Kingdom, alleges that Defendants have improperly traded on the goodwill associated with IMAPizza's distinctive trademark and other features, thereby harming IMAPizza. Id. ¶¶ 48-61. The third and fourth causes of action, for "trademark infringement" and "unfair competition," respectively, bring similar claims under the Lanham Act, 15 U.S.C. § 1051 et seq. Compl. ¶¶ 62-78. The fifth and final cause of action alleges that Defendants committed trespass under District of Columbia law when they entered &pizza restaurants without permission for the purpose of stealing IMAPizza's intellectual property. Id. ¶¶ 79-87.

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...