Copyright, Trademark, International IP, and Trespass: Imapizza LLC v. At Pizza Limited

This Kat's favorite sort of IP case is one that involves the intersection of different IP rights. Last month, the Court of Appeals for the D.C. Circuit ruled in a case regarding the international dimensions of copyright and trademark, as well as a general property right issue - trespass! 

The D.C. Circuit affirmed the dismissal of all three counts, ruling that Imapizza's claims fell outside the limits of extraterritorial application of US copyright and trademark law. Let's explore the ruling of the court concerning these punctuation pizza parlors in Imapizza LLC v. At Pizza Limited.

Background

An &pizza pizza

Imapizza LLC owns and operates &pizza, a pizza chain with locations along the east coast of the United States. &pizza sells pizzas in elongated oval shapes, served on black, oval-shaped dishes. Although the company claims to be planning to pursuing an entrance into the UK market, all &pizza locations - and the servers that host the website - are inside the US. 

@pizza is a pizza company with restaurants in Glasgow and Birmingham. The company is owned by two UK citizens, and similarly serves elongated oval pizzas on black trays. Imapizza claims that one of the owners of @pizza traveled to the US, he visited an &pizza location in Washington D.C. and decided to copy the restaurant. He then sent his business partner to do the same; both owners photographed the restaurant on their visits. 

@pizza pizzas

Imapizza brought suit against @pizza in the U.S. District Court for the District of Columbia, alleging copyright infringement, trademark infringement, trespass, and claims under UK law. The UK claims were dismissed for comity and a lack of subject matter jurisdiction; the copyright and trademark infringement claims were dismissed due to extraterritoriality. The trespass claim, which concerned the @pizza's owners taking pictures of an &pizza location was dismissed due to a lack of sufficient facts to support the claim.

D.C. Circuit

On appeal, the Court of Appeals for the D.C. Circuit considered the copyright, trademark, and trespass claims; the D.C. Circuit affirmed the ruling of the district court, dismissing all claims.

Copyright

On appeal, the D.C. Circuit Court considered the extraterritorial scope of the Copyright Act in light of Spanski v. Telewizja Polska, allowing domestic application of the Act if "conduct relevant to the statute's focus occurred in the United States." Imapizza raised two acts by the owners of @pizza on appeal: downloading photos from the &pizza website and taking photos of the inside of an &pizza location. 

Imapizza argued that owners of @pizza had copied photos from the &pizza website by downloading photos that were hosted on a sever in the US; the downloading took place within the UK. The Court rejected this argument, noting that no unauthorized uploading or downloading had taken place in the US. The copying occurs not at the place of the host server, but where the new copy is fixed in a tangible form. Because the copying occurs where the download takes place (UK in this case) rather than where the content is hosted (US), there was no domestic infringing act.

Although the owners of @pizza photographed the inside of an &pizza location, there is no copyright infringement in such photography. Under Section 120(a) of the Copyright Act, the copyright in an architectural work does not extend to an exclusive right to photograph the work if "located in or ordinarily visible from a public place." The Court rejected this argument as well.

Because the Court found no infringing act in the United States, the Court rejected Imapizza's assertion that @pizza's conduct falls within the predicate act test for extraterritorial copyright infringement. The predicate act test allows for extraterritorial application of the Copyright Act if the foreign infringement stems from a predicate act of domestic infringement. Imapizzza uploaded their own photos in the US, and @pizza's owners did not violate copyright protections by photographing the &pizza restaurant; therefore, @pizza did not commit any domestic infringing acts and the Court affirmed the dismissal of the copyright claim.

Lanham Act

Imapizza alleged that @pizza marketing materials and the Edinburgh restaurant were confusingly similar to the &pizza trademarks and business features, in violation of the Lanham Act. US courts are split as to the proper test for extraterritorial application of the Lanham Act; the First Circuit requires that the foreign conduct have a "a substantial effect" upon US commerce while the Ninth Circuit merely requires "some effects" upon US commerce. Rather than deciding the proper state of the law in the D.C. Circuit, the Court ruled that Imapizza failed to allege facts that would satisfy either test.

Imapizza raised three potential effects on appeal, none of which the Court found convincing. First, the Court rejected that US students and tourists visiting Edinburgh could serve as the basis for US effects; otherwise, the Lanham Act would extend US law to anywhere that US tourists visit in substantial numbers. Second, confusion by a potential @pizza business partner at an @pizza marketing presentation cause not harm, despite Imapizza's allegations. 

Finally, Imapizza claimed that the @pizza owners' visit to &pizza prompted effects on US commerce. The Court rejected this argument, noting that it would extend application of US law worldwide, far beyond the intentions of the Lanham Act. Ruling that the actions of the owners of @pizza had no plausible effect upon US commerce, the Court affirmed the dismissal of Imapizza's Lanham Act claim. Crucially, the Court declined to endorse either test for extraterritorial application of the Lanham Act.

Trespass

Credit: zestycarl

Imapizza alleged that the owners of @pizza, by entering &pizza with the intent to photograph the restaurant, had trespassed upon their property. The Court rejected this claim, noting that under D.C. common law, trespass requires the "unauthorized entry onto the property." Here, the general public - and by extension, the owners of @pizza - had consent to enter &pizza during normal business hours. 

The mere implicit misrepresentation of their intentions by entering &pizza as customers to photograph the restaurant cannot defeat Imapizza's consent alone; Imapizza does not prohibit customers from photographing the restaurants. Otherwise, a restaurant critic could be trespassing by visiting a restaurant as a customer to review the food. Had the owners of @pizza entered non-public areas or viewed non-public IP during their visit, Imapizza may have a claim; with no such allegations, the Court affirmed the dismissal of the trespass claim. 

Comment

The Court recognized that this ruling may have negative effects for Imapizza's business.

"We are not blind to the difficulty that Imapizza may encounter in trying to enter the UK market now that At Pizza has established a copycat restaurant there."

Credit: 3juha

This Kat believes that the ruling of the Court, however, maintains a necessary balance in extraterritorial application of US law. Regarding the US copyright claims, US copyright law would be without territorial limit if downloading from a US server while abroad constituted a domestic act. Foreign downloads must be adjudicated under the law where the reproduction of the copyrighted material occurred to protect national sovereignty and comity.

Regarding the Lanham Act claims, this Kat was disappointed to see that the Court declined to take a stand on the circuit split over extraterritorial application. Yet, application of the Lanham Act in this case under either test would extend US law without meaningful limit. 

While the Court affirmed the dismissal of all US claims, the district court dismissed the UK claims for a lack of subject matter and comity; Imapizza may still litigate those claims in the UK. Although @pizza did not infringe the US copyright of photos on Imapizza's website, they may still litigate potential infringement of the UK copyright on the same photos.