Imapizza, LLC v. At Pizza Limited ( 2020 )

United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Argued February 19, 2020 Decided July 17, 2020
No. 18-7168
IMAPIZZA, LLC,
APPELLANT
v.
AT PIZZA LIMITED, ET AL.,
APPELLEES
Appeal from the United States District Court
for the District of Columbia
(No. 1:17-cv-02327)
David Barmak argued the cause for appellant. With him
on the briefs was Andrew D. Skale.
Matthew J. Dowd argued the cause and filed the brief for
appellees.
Before: ROGERS and TATEL, Circuit Judges, and
GINSBURG, Senior Circuit Judge.
Opinion for the Court filed by Senior Circuit Judge
Ginsburg.
GINSBURG, Senior Circuit Judge: IMAPizza, which
operates the “&pizza” chain of restaurants in the United States,
2
has brought this suit under the Copyright and Lanham Acts as
well as D.C. common law against At Pizza, operator of the
“@pizza” restaurant in Edinburgh, Scotland. IMAPizza
alleges At Pizza’s restaurant is an unauthorized copycat version
of its “&pizza” stores. Because At Pizza operates only in the
United Kingdom, IMAPizza’s claims test the limits of the
extraterritorial application of the Copyright and Lanham Acts.
The district court dismissed these and IMAPizza’s other
claims. For the reasons below, we affirm the judgment of the
district court.
I.
We take the facts as IMAPizza describes them. Its &pizza
restaurant chain is “renowned for its creative pies and craft
beverages, localized shop design, and its strength, unity and
vibe.” There are several &pizza locations along the East Coast
of the United States, and the company is pursuing expansion
into the U.K. At Pizza, the U.K. corporation operating the
@pizza restaurant in Edinburgh, is owned by Rupert Lyle and
Bhasker Dhir, both citizens of the U.K. 1 After touring some
&pizza restaurants in Washington, D.C., Lyle decided to copy
them. Upon returning to the U.K., he incorporated “& Pizza
Limited,” and soon thereafter renamed the business At Pizza.
At Lyle’s behest, Dhir then visited &pizza locations in the U.S.
in order to learn about and copy the restaurants’ appearance and
operations. Lyle and Dhir took pictures of &pizza restaurants
in the U.S. and downloaded copyrighted pictures of &pizza
restaurants from websites operating on U.S. servers. They used
the photos and information they had gathered to market and
create in Edinburgh a copycat version of the &pizza restaurants
they had seen in the U.S.
1
For simplicity we refer to At Pizza throughout, but note that
IMAPizza included Dhir and Lyle in all their claims.
3
IMAPizza filed this suit against At Pizza for infringement
under the Copyright Act, for trademark infringement and unfair
competition under the Lanham Act, and for trespass under the
common law of the District of Columbia, along with a claim of
“passing off” under U.K. common law.
The defendants moved under Federal Rule of Civil
Procedure 12(b)(2) and (6) to dismiss the case for lack of
personal jurisdiction and for failure to state a claim upon which
relief can be granted. With respect to Rule 12(b)(2), the district
court held IMAPizza had just “eked out a prima facie showing
of personal jurisdiction,” but noted that, should the case
proceed, At Pizza “may ultimately be able to show that
jurisdiction is unreasonable.”
As to Rule 12(b)(6), the district court held IMAPizza’s
Copyright and Lanham Act claims failed because the pertinent
facts arose beyond the territorial reach of those Acts. More
specifically, the district court held IMAPizza failed to allege a
domestic violation of its copyrights, as required by the
Copyright Act, and IMAPizza’s Lanham Act claims fell
beyond the extraterritorial limits of that law. Regarding the
trespass claim under D.C. law, the district court held IMAPizza
failed to allege facts showing that Lyle or Dhir exceeded the
consent granted visitors of &pizza restaurants. Because
IMAPizza failed to allege sufficient facts to support the court’s
diversity jurisdiction (namely the citizenship of the members
of the IMAPizza LLC) even after the district court ordered it to
submit evidence, the district court dismissed IMAPizza’s
passing off claim under U.K. law for lack of subject matter
jurisdiction. The court declined to exercise supplemental
jurisdiction as “considerations of comity weighed heavily
against issuing injunctive relief, based solely on another
country’s laws, to restrain business conduct taking place in that
country.” Nonetheless, IMAPizza now asks this court, in the
4
event any of its other claims are remanded, to revive its passing
off claim under supplemental jurisdiction. For the reasons set
out below, we affirm the judgment of the district court
dismissing all of IMAPizza’s claims.
II.
The court reviews de novo the dismissal of a complaint for
failure to state a claim. Banneker Ventures, LLC v. Graham,
798 F.3d 1119, 1128 (D.C. Cir. 2015). “To survive a motion
to dismiss, a complaint must contain sufficient factual matter,
accepted as true, to ‘state a claim to relief that is plausible on
its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
A. Leave to Amend
Before we turn to the substance of IMAPizza’s claims, we
address its challenge to what it describes as the district court’s
decision not to grant it leave to amend its complaint. Under
Rule 15, leave to amend a complaint is to “be freely given when
justice so requires.” Firestone v. Firestone, 76 F.3d 1205, 1208
(D.C. Cir. 1996) (quoting FED. R. CIV. P. 15(a)). We review
for abuse of discretion a district court’s decision not to grant
leave to amend. Belizan v. Hershon, 434 F.3d 579, 582 (D.C.
Cir. 2006).
Under Local Rules 7 and 15.1 of the district court,
IMAPizza was required to file a motion for leave to amend and
provide a copy of its proposed amended complaint. LCvR 7(a),
(i), 15.1; Belizan, 434 F.3d at 582. IMAPizza argues that it did
so in its Memorandum in Opposition to the Defendants’
Motion to Dismiss, in which IMAPizza stated that “were the
Court inclined to grant the Rule 12(b)(6) challenge in any
respect, it should be with leave to amend.” As we have held
5
before, such an informal request does not satisfy the
requirements of Local Rules 7 or 15. Belizan, 434 F.3d at 582–
83. Though made in writing, IMAPizza’s request was not a
motion, and a copy of the proposed amended complaint was
not attached to it. LCvR 7(a), (i), 15.1. There was no abuse of
discretion since the plaintiff’s failure to follow the rules denied
the district court a proper opportunity to exercise its discretion.
In its reply brief in this court, IMAPizza attempts to elide
its failure to request leave to amend by arguing the district court
should not have dismissed its complaint with prejudice.
IMAPizza forfeited this argument by failing to make it in its
opening brief. See In re Asemani, 455 F.3d 296, 300 (D.C. Cir.
2006). Therefore, we take IMAPizza’s complaint as it was
filed and considered by the district court.
B. Copyright Act
IMAPizza claims At Pizza infringed its “exclusive rights”
to its photographs and its architectural and interior design plans
by making unauthorized copies of three copyrighted pictures of
&pizza restaurants and taking pictures of &pizza restaurants.
17 U.S.C. § 106. “To establish copyright infringement,”
IMAPizza “must prove ‘(1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are
original.’” Stenograph L.L.C. v. Bossard Assocs., Inc., 144
F.3d 96, 99 (D.C. Cir. 1998) (quoting Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)) (cleaned up).
The Copyright Act, like most laws, “governs domestically but
does not rule the world.” RJR Nabisco Inc. v. European Cmty.,
136 S. Ct. 2090, 2100 (2016); Spanski Enters., Inc. v. Telewizja
Polska, S.A., 883 F.3d 904, 913 (D.C. Cir. 2018) (recognizing
“the Copyright Act has no extraterritorial application”).
6
This court recently considered the limits to extraterritorial
application of the Copyright Act in Spanski v. Telewizja
Polska, concluding that even when conduct crosses
international borders, there is a “permissible domestic
application” of the Copyright Act if “conduct relevant to the
statute’s focus occurred in the United States.” 883 F.3d at 913
(quoting RJR Nabisco, 136 S. Ct. at 2101). The focus of the
Copyright Act, we said, was upon “policing infringement or,
put another way, on protecting the exclusivity of the rights it
guarantees.” Id. at 914. Therefore, although the transmission
of the copyrighted television show originated in Poland, the
Act applied to its performances on television screens in the
U.S. Id. As in Spanski, the question in this case is not simply
whether At Pizza infringed IMAPizza’s “exclusive rights”
under the Copyright Act but whether IMAPizza has adequately
alleged At Pizza did so in the U.S. Litecubes, LLC v. N. Light
Prods., Inc., 523 F.3d 1353, 1368 (Fed. Cir. 2008) (holding the
domestic location of an act of infringement is “an element of
the claim which must be proven before relief can be granted”).
The parties agree the applicability of the Copyright Act
depends upon whether IMAPizza has alleged an act of
“domestic infringement.” Of course, they disagree as to
whether IMAPizza has done so. IMAPizza says it alleged two
infringing acts in the United States: (1) downloading its
copyrighted pictures of &pizza restaurants from websites
operating on servers located in the U.S., and (2) taking pictures
of &pizza restaurants in the U.S.
IMAPizza argues that downloading of copyrighted
pictures from servers in the U.S. is an act of domestic
infringement “regardless of where the receiving computer is
located.” The district court agreed that the unauthorized
downloading of pictures from a website could infringe
IMAPizza’s exclusive right to reproduce the pictures under
7
§ 106(1) of the Act but, given At Pizza’s location in the U.K.,
held IMAPizza’s allegation that At Pizza downloaded those
pictures from servers located in the U.S. was insufficient to
establish a domestic infringement.
As the alleged infringement under § 106(1) of the
Copyright Act is the reproduction of a picture, we determine
where the infringement occurred by looking to where the copy
was made. The Copyright Act defines “copies” as “material
objects . . . in which a work is fixed” and considers a work
“‘fixed’ in a tangible medium of expression when its
embodiment in a copy . . . is sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration.”
17 U.S.C. § 101. We agree with the district court that this
definition of copy does not include “ephemeral transmission of
a picture across the internet.” Instead, the copy becomes
“fixed” when the picture is reproduced for a viewer.
IMAPizza, however, failed plausibly to allege that any such
reproduction occurred in the United States.
In Spanski we applied the Copyright Act to the
transmission of television shows over the internet from Poland
because it resulted in performances on computer screens in the
U.S., acts of domestic infringement under § 106(4). 883 F.3d
at 914. As the focus of the Copyright Act is the protection
against infringing performances, and the infringing
performances occurred on screens in the U.S., the court
determined “the conduct relevant to the statute’s focus
occurred in the United States” and therefore provided the basis
for “a permissible domestic application” of the Act. Id.
This is in accord with the district court’s decision that, in
view of At Pizza’s being located in the U.K., IMAPizza’s
allegations were insufficient to “support a plausible inference
8
of domestic infringement.” The district court reasoned that a
“‘copy’ is made where the receiving computer assembles the
transmitted information into a complete image that can be
‘perceived.’” Cf. Columbia Pictures Indus., Inc. v. Fung, No.
06-cv-5578 (SVW) (JCx), 2009 WL 6355911, at *8 (C.D. Cal.
Dec. 21, 2009), aff’d in part, vacated in part on other grounds,
and modified in part, 710 F.3d 1020 (9th Cir. 2013). IMAPizza
argues the Columbia Pictures decision would support
application of the Copyright Act if either the sender or the
recipient of the copy is located in the U.S. At Pizza responds,
and we agree, that IMAPizza misreads Columbia Pictures; the
court in that case simply recognized a transmission involves
two potentially infringing acts, the unauthorized uploading and
the unauthorized downloading of a file, either one of which
could create a copy that would constitute a domestic act of
infringement — but only if completed in the U.S. Id. As
IMAPizza did not allege the upload of the pictures was
unauthorized, and failed to allege the pictures were
downloaded in the U.S., it has not alleged a domestic act of
infringement.
IMAPizza asserts the U.S. servers from which the
download occurred are “where the copying took place.” It
provides no technical, legal, or other support, however, for the
proposition that downloading a picture from a server located in
the U.S. creates a copy of that picture in the U.S. in addition to
the copy where the receiving device is located. 2
2
In support of applying the Copyright Act to a transmission from the
U.S. to a receiving computer outside the U.S., IMAPizza cites three
district court cases, no one of which supports its assertion. In Liberty
Media Holdings, LLC v. Vinigay.com, the court found an application
of the Copyright Act was not “wholly extraterritorial” when video
files downloaded from U.S. servers were then uploaded to servers in
an unknown location “for display, distribution, and copying by
Internet users in the United States . . . .” No. 11-cv-280 (PHx)
9
IMAPizza also argues the taking of pictures in its U.S.
restaurants were acts of domestic infringement as part of a
scheme to create a copycat restaurant, but that argument fails
because the Copyright Act does not create a right to prevent the
taking of pictures of an architectural work “if the building in
which the work is embodied is located in or ordinarily visible
from a public place.” 17 U.S.C. § 120(a). Nonetheless,
IMAPizza complains that the taking of pictures in its U.S.
restaurants “culminated with the opening of an infringing
restaurant in Scotland,” but even IMAPizza must recognize it
has alleged an act of potential infringement that culminated
where the infringing building was constructed, that is, in the
U.K., not in the U.S.
IMAPizza next argues that, even if the download of
copyrighted pictures from servers located in the U.S. or
photographing restaurants in the U.S. are not complete acts of
domestic infringement, the Copyright Act may still be applied
if “essential steps” to that end occurred in the U.S., namely (1)
(LOA), 2011 WL 7430062, at *5 (D. Ariz. Dec. 28, 2011), report
and recommendation adopted, 2012 WL 641579 (D. Ariz. Feb. 28,
2012) (emphasis added). The court did not, as IMAPizza suggests
we do here, rely solely upon the location of the servers from which
the videos were initially downloaded. In Elsevier Ltd. v. Chitika,
Inc., the court held the allegation that a person in the U.S.
downloaded infringing copies from a website in India adequately
pled an act of infringement in the U.S. 826 F. Supp. 2d 398, 402–03
(D. Mass. 2011). Finally, Synopsys Inc. v. Ubiquiti Networks, Inc.
involved allegations of criminal copyright infringement and
violations of the Digital Millennium Copyright Act based upon
Ubiquiti’s unauthorized reproduction of copyrighted files across
“communications networks, file repositories, email servers, IP
addresses, and website domains hosted in the United States” and his
importation of counterfeit access keys from Taiwan that were used
on computers based in the U.S. No. 17-cv-00561-WHO, 2017 WL
3485881 at *3–8 (N.D. Cal. Aug. 15, 2017) (emphasis added).
10
downloading of pictures from U.S. servers and (2) taking of
pictures in U.S. restaurants. Here IMAPizza conflates the
“predicate act” test applied by the Second, Fourth, and Ninth
Circuits with its own novel “partial-act” theory.
Under the predicate act test, a court may apply the
Copyright Act to foreign acts of infringement provided there
was an initial infringing act in the U.S. See, e.g., Tire Eng’g &
Distrib., LLC v. Shandong Linglong Rubber Co., 682 F.3d 292,
306–08 (4th Cir. 2012) (applying the Copyright Act to foreign
conduct stemming from the creation of an infringing copy
made in the U.S.). As the district court observed, the predicate
act test originated with Judge Learned Hand’s decision in
Sheldon v. Metro-Goldwyn Pictures Corp., which awarded
damages for overseas performances of a motion picture,
because the unauthorized copying of the negatives that made
those foreign performances possible was done in the United
States. 106 F.2d 45, 52 (2d Cir. 1939).
As the district court correctly said, and At Pizza echoes,
the predicate act test “adds nothing to IMAPizza’s case absent
an allegation that an act of infringement occurred in the United
States.” IMAPizza has failed to make that allegation. Its
allegations concerning pictures downloaded from U.S. servers
and pictures taken in U.S. restaurants do not implicate the
Copyright Act — even under the predicate act test. See
Allarcom Pay Television, Ltd. v. Gen. Instrument Corp., 69
F.3d 381, 387 (9th Cir. 1995) (holding the Copyright Act
inapplicable where satellite television signals were broadcast
from the U.S. into Canada because potential infringement was
not complete until the signals were received in Canada); Robert
Stigwood Group Ltd. v. O’Reilly, 530 F.2d 1096, 1100 (2d Cir.
1976) (holding the Copyright Act inapplicable for want of an
infringement in the U.S. where “the defendants assembled and
arranged in the United States all the necessary elements for the
11
performances in Canada, and then simply travelled to Canada
to complete the performances”).
Lastly, IMAPizza warns that if it loses this case, then “an
illegal video download company could purchase legitimate
copies of all U.S. movies, and distribute them to the entire
world (other than the U.S.) from a U.S. server without any
liability under U.S. copyright law, with the U.S. movie
company powerless to pursue complete relief unless it did so
under the copyright laws of the 194 countries in the world other
than the U.S.” Not so: The unauthorized upload of a video to
a server in the U.S. for unauthorized distribution abroad would
be an act of infringement in the U.S. See Columbia Pictures,
2009 WL 6355911, at *8 (recognizing unauthorized uploading
in the United States as a domestic infringement); cf. Los
Angeles News Service v. Reuters Television Intern., Ltd., 149
F.3d 987, 991–92 (9th Cir. 1998) (recognizing copies made in
the U.S. to enable transmission abroad as acts of infringement
in the U.S.). Notably, IMAPizza made no allegations of
uploading in the U.S.
In sum, IMAPizza failed to state a claim under the
Copyright Act because it did not allege an act of copyright
infringement in the United States. We decline, as have other
courts, to extend the Copyright Act beyond its territorial limits
lest U.S. law be used to sanction what might be lawful conduct
in another country. See, e.g., Subafilms Ltd. v. MGM-Pathe
Commc’ns Co., 24 F.3d 1088, 1097 (9th Cir. 1994) (discussing
the international discord that could result from extraterritorial
application of U.S. copyright law).
C. Lanham Act
IMAPizza’s allegations of trademark infringement and
unfair competition under the Lanham Act are based upon the
12
similarities between IMAPizza’s trademarks “and other
features of its business” and At Pizza’s marketing materials and
restaurant in Edinburgh. The Lanham Act protects trademarks
against their “use in commerce . . . likely to cause confusion,”
and reaches “all commerce which may lawfully be regulated
by Congress.” 15 U.S.C. §§ 1114(1)(a), 1127.
Whether a statute applies extraterritorially is determined
per the framework most recently explicated by the Supreme
Court in RJR Nabisco: The first question is “whether the statute
gives a clear, affirmative indication that it applies
extraterritorially”; if it does, then that is the end of the matter.
136 S. Ct. at 2101. In Morrison v. National Australia Bank
Ltd., the Supreme Court reiterated that its opinion in Steele v.
Bulova Watch Co., “interpret[ed] . . . the Lanham Act to have
extraterritorial effect,” 561 U.S. 247, 271 n.11 (2010) (citing
344 U.S. 280 (1952)), and so it is to Steele we look to determine
whether the Lanham Act applies to particular conduct abroad.
Steele involved a U.S. citizen who bought components of
watches in the U.S. and assembled and sold them as Bulova
watches in Mexico. Steele, 344 U.S. at 286–87. The Court
observed that “spurious ‘Bulovas’ filtered through the Mexican
border” into the U.S. and “could well reflect adversely” upon
Bulova’s reputation in the U.S. Id. at 286. Thus, although the
watches were made and sold in Mexico, the defendant’s
conduct “brought about forbidden results within the United
States.” Id. at 288 (citation omitted).
Though this court has not had an occasion to decide the
proper test for applying the Lanham Act to conduct abroad, our
sister circuits have embraced multiple tests for applying Steele
v. Bulova Watch. IMAPizza insists we should adopt the Ninth
Circuit’s test, which provides that the conduct must have “some
effect” on U.S. commerce, see Trader Joe’s Co. v. Hallatt, 835
13
F.3d 960, 969 (9th Cir. 2016), while At Pizza urges us to apply
the First Circuit’s more stringent requirement that conduct by
a foreign defendant must have “a substantial effect on United
States commerce,” McBee v. Delica Co., Ltd., 417 F.3d 107,
120 (1st Cir. 2005) (emphasis added). We need not resolve the
proper test today because, even applying the Ninth Circuit’s
looser “some effects” test, the facts of this case do not plausibly
involve an effect on U.S. commerce sufficient to state a claim.
The district court helpfully contrasted the facts in Steele with
those alleged here, noting the defendants here are foreign
citizens; their business, which is “quintessentially local,”
operates solely in the U.K.; they neither purchased supplies
from nor made sales to the U.S.; and neither their products nor
their advertisements are alleged to have “filtered through” to
the U.S.
IMAPizza argues nonetheless the At Pizza restaurant in
Scotland has had an effect on U.S. commerce principally
because (1) some of the U.S. students and U.S. tourists who
visit Edinburgh and purchase food there may be familiar with
the &pizza restaurants in the U.S., (2) a potential investor
confused At Pizza with &pizza, and (3) At Pizza visited the
U.S. to further its scheme of copying the &pizza restaurants.
First, to apply the Lanham Act based upon U.S. students
and tourists buying food while in Edinburgh would, as the
district court said and At Pizza argues, “extend [the Act] to all
commercial conduct occurring anywhere in the world that
American tourists visit in significant numbers.” In any event,
IMAPizza nowhere alleged that a bad experience in Scotland
will cause it to lose customers in the U.S. Therefore, even if
some U.S. consumers in Edinburgh are confused about what
IMAPizza calls an “affiliation” between the restaurants,
IMAPizza has not explained how their confusion will affect
14
pizza purchases in U.S. commerce sufficiently to state a
Lanham Act claim.
Second, although a potential business partner of At Pizza
was allegedly confused by an At Pizza marketing presentation,
as the district court observed, IMAPizza does not allege this
confusion caused it any harm. It is not possible, therefore, to
say this single instance of confusion had any effect upon U.S.
commerce.
Finally, IMAPizza points to its allegations regarding the
number and nature of the defendants’ visits to the U.S. to
research &pizza restaurants. Those visits do not establish the
domestic reputational harm to U.S. firms deemed sufficient to
apply the Lanham Act extraterritorially in Steele, 344 U.S. at
285, and Trader Joe’s, 835 F.3d at 971–72. Indeed, applying
the Lanham Act based upon those visits to restaurants in the
U.S., like applying the Act based upon the visits of American
students and tourists to a restaurant in Edinburgh, would
expand the reach of the Lanham Act worldwide without the
requisite demonstrated effect on U.S. commerce. 3
3
IMAPizza cites several district court cases that it incorrectly argues
support application of the Lanham Act based upon the facts it has
alleged. MGM Resorts Int’l v. Unknown Registrant of
www.imgmcasino.com, No. 2:14-cv-1613 (GMN) (VCF), 2015 WL
5674374 (D. Nev. July 8, 2015), report and recommendation
adopted, 2015 WL 5682783 (D. Nev. Sept. 23, 2015); Warnaco Inc.
v. VF Corp., 844 F. Supp. 940, 951–52 (S.D.N.Y. 1994); and Kroma
Makeup EU, Ltd. v. Boldface Licensing + Branding, Inc., No. 6:14-
CV-1551-ORL, 2015 WL 1708757 at *11–12 (M.D. Fla. Apr. 15,
2015). All involved allegations of lost sales and other effects on U.S.
commerce. IMAPizza has not alleged that @pizza sales of pizzas in
Edinburgh, Scotland will cause lost sales at its restaurants in the U.S.
15
In sum, with no need to commit this Circuit to one standard
or another, we hold IMAPizza failed to state a claim under the
Lanham Act because it failed to allege some plausible effect —
let alone a significant or substantial effect — upon U.S.
commerce.
D. Trespass
In the common law of the District of Columbia, 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., 97 A.3d 1053,
1060 (D.C. 2014) (emphasis omitted) (citation omitted).
IMAPizza alleges At Pizza’s entries into its restaurants were
unauthorized because they were for the purpose of observing
and taking pictures in furtherance of At Pizza’s scheme to copy
&pizza restaurants. At Pizza argues its entries were not
unauthorized because &pizza restaurants are open to the
public, and IMAPizza’s allegations are insufficient because
“supported by mere conclusory statements.”
The district court, lacking binding authority from the
District of Columbia Court of Appeals, looked — as D.C.
courts have done in the past — to the Second Restatement of
Torts and persuasive precedents of other jurisdictions in order
to predict how the Court of Appeals would decide the issue.
See, e.g., Doe v. Bernabei & Wachtel, PLLC, 116 A.3d 1262,
1266 (D.C. 2015) (referencing the Second Restatement of Torts
regarding a tort for invasion of privacy); Lacy v. Sutton Place
Condo. Ass’n, Inc., 684 A.2d 390, 394 (D.C. 1996). In doing
so, the district court agreed with At Pizza that “IMAPizza
cannot invite the public in, and then rely on its unexpressed
preferences to single out Defendants as trespassers after the
fact.”
16
Of course, it is black letter law that “one who effectively
consents to conduct of another . . . cannot recover in an action
of tort for the conduct or for harm resulting from it.”
Restatement (Second) of Torts § 892A(1) (1979). IMAPizza,
while acknowledging that its restaurants invite the public in,
argues its consent to enter was “extinguished” with respect to
At Pizza because it was obtained through “misrepresentation,
fraud, or mistake” or because the restaurants were accessed for
“tortious acts,” namely “stealing &pizza’s intellectual
property.” Here IMAPizza looks to two federal cases applying
District of Columbia common law for the proposition that
“consent given upon fraudulent misrepresentation will not
always defeat a claim for trespass.” Democracy Partners v.
Project Veritas Action Fund, 285 F. Supp. 3d 109, 118–19
(D.D.C. 2018) (quoting Counsel on American-Islamic
Relations Action Network, Inc. v. Gaubatz, 793 F. Supp. 2d
311, 345 (D.D.C. 2011)). As At Pizza points out, however, in
both those cases the court refused to dismiss claims of trespass
against former interns who, based upon fraudulent internship
applications, had gained access to non-public office areas and
materials. The defendants here are not alleged to have accessed
non-public areas of the restaurants or violated any condition
IMAPizza set upon access to public areas of its restaurants.
IMAPizza does not allege, for example, that it prevents
customers from taking photos in its restaurants.
The plaintiff, the defendants, and the district court all
looked to Judge Posner’s opinion in Desnick v. American
Broadcasting Cos., Inc. for the principle that even fraudulently
obtained consent may invalidate a claim of trespass unless the
tortfeasor invaded “specific interests that the tort of trespass
seeks to protect,” namely “ownership or possession of land.”
44 F.3d 1345, 1352–53 (7th Cir. 1995). If a party could
successfully recover for trespass based upon misrepresentation
alone, Judge Posner observed, “a restaurant critic could not
17
conceal his identity when he ordered a meal.” Id. at 1351. On
the other hand, IMAPizza points out, Judge Posner instances a
competitor who poses as a customer to steal trade secrets as an
example of trespass despite apparent consent. IMAPizza’s
allegation is not sufficient to make out a trespass analogous to
Judge Posner’s hypothetical because it failed to allege the
defendants accessed non-public areas of &pizza restaurants or
observed any intellectual property that was not visible to the
public during its visits. Therefore, IMAPizza’s trespass claim
fails for want of any unauthorized entry into its restaurants.
E. Denial of Surreply
Lastly, IMAPizza offers up a perfunctory discussion of the
allegedly new issues as to which the district court denied it
leave to file a surreply, but fails to show the district court
abused its discretion. As At Pizza points out, IMAPizza’s
initial brief in this court did not even explain why it claimed
the district court erred. Rather than substantively rebut the
district court’s holding that a surreply on those issues was not
necessary, it merely identified the arguments for which its
request was denied.
IMAPizza also contends the district court abused its
discretion in declining to exercise supplemental jurisdiction
over the U.K. “passing off” claim. IMAPizza makes this claim
on appeal despite having failed to satisfy the district court’s
reasonable efforts to ensure the court had subject matter
jurisdiction. It was only after IMAPizza had failed twice to
substantiate its allegation of diversity jurisdiction that the
district court dismissed IMAPizza’s claim for lack of subject
matter jurisdiction. Declining to exercise supplemental
jurisdiction over this remaining claim, particularly after giving
IMAPizza multiple opportunities to demonstrate jurisdiction,
was not an abuse of discretion.
18
III.
We are not blind to the difficulty IMAPizza may encounter
in trying to enter the U.K. market now that At Pizza has
established a copycat restaurant there. If IMAPizza had made
allegations showing At Pizza’s conduct affects U.S. commerce,
it is quite possible IMAPizza would be able to obtain relief
under the Lanham Act. On the facts as alleged, however, it
cannot do so. For the foregoing reasons, the judgment of the
district court is
Affirmed.