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MANATT, PHELPS & PHILLIPS, LLP
Attorneys for Plaintiffs
CENTRAL DISTRICT OF CALIFORNIA MEMORIAL FUND, a charitable trust; and THE HONORABLE FRANCES RUTH SHAND KYDD, THE LADY ELIZABETH SARAH LAVINIA McCORQUODALE and THE RIGHT REVEREND AND RIGHT HONORABLE RICHARD JOHN CAREW CHARTRES, BISHOP OF LONDON, EXECUTORS OF THE ESTATE OF DIANA, PRINCESS OF WALES, Plaintiffs, vs.
FRANKLIN MINT COMPANY, a Delaware Defendants. Case No. 98-3847 COMPLAINT FOR: (1) FALSE DESIGNATION OF ORIGIN UNDER THE LANHAM ACT (15 U.S.C. Section 1125 et seq.); (2) TRADEMARK DILUTION; (3) VIOLATION OF STATUTORY RIGHT OF PUBLICITY (CAL. CIV. CODE 990); (4) FALSE ADVERTISING UNDER THE LANHAM ACT (15 U.S.C. Section 1125 et seq.); AND (5) UNFAIR COMPETITION AND FALSE AND MISLEADING ADVERTISING UNDER CALIFORNIA LAW (CAL. BUS & PROF. CODE Sections 17200 AND 17500 et seq. DEMAND FOR JURY TRIAL Plaintiffs The Diana, Princess of Wales Memorial Fund (the "Fund") and the Honorable Frances Ruth Shand Kydd, the Lady Elizabeth Sarah Lavinia McCorquodale and The Right Reverend and Right Honorable Richard John Carew Chartres, Bishop of London, Executors of the Estate of Diana, Princess of Wales, (the "Estate") (jointly, "Plaintiffs") allege as follows:
1. Like vultures feeding on the dead, Defendants are profiting from the death of Diana, Princess of Wales by commercially exploiting her identity without permission and falsely implying that their actions are sanctioned and/or will benefit her Estate or the Fund. Plaintiffs seek injunctive relief to stop Defendants' infringing conduct and compensatory and punitive damages to compensate them and punish Defendants for the harm they have done.
2. Plaintiffs The Honorable Frances Ruth Shand Kydd, The Lady Elizabeth Sarah Lavinia McCorquodale and The Right Reverend and Right Honorable Richard John Carew Chartres, Bishop of London, are the duly appointed executors authorized to supervise administration of the assets, including but not limited to intellectual property assets of the late Diana, Princess of Wales. They bring this action in his representative capacity as an executor for the Estate of Diana, Princess of Wales. 3. Plaintiff the Fund is a non-profit charitable trust organized in accordance with the laws of England and Wales which, through its U.S. entity, engages in charitable activities in the United States, including the Central District of California, and which has the exclusive license (subject to certain reservations) to the relevant intellectual property rights of the Estate. 4. Defendant Roll International Corporation, Inc. ("Roll") is a corporation organized under the laws of the State of Delaware with its principal place of business in the County of Los Angeles, State of California, and is the managing general partner of the Franklin Mint Company. 5. Plaintiffs are informed and believe and on that basis allege that Defendant "Franklin Mint Company" is a Delaware partnership controlled by Roll which does business as "the Franklin Mint", and which has its principal place of business in the State of Pennsylvania. 6. Defendants Stewart Resnick and Lynda Resnick are individuals who reside in the County of Los Angeles, State of California. They own, control, and/or are the general partners of Franklin and Roll. 7. Defendants, and each of them, are individuals and business entities, who, upon information and belief, are acting in concert and active participation with each other in committing the wrongful acts alleged herein, and are directly, vicariously and/or contributorily liable for the acts alleged herein.
8. The Court has subject matter jurisdiction over the claims in this action which relate to trademark infringement and unfair competition pursuant to the provisions of 15 U.S.C. Section 1121, 28 U.S.C. Section 1331 and 28 U.S.C. Section 1338(a), as well as pendent jurisdiction over any state law claims asserted herein. 9. Venue is proper in this district under 28 U.S.C. Section 1391(b).
10. Diana, Princess of Wales ("Princess Diana") was one of the best known and most widely admired public figures of the last half of the 20th century. Bursting upon the world stage upon her 1981 marriage to the heir to the British throne, Charles, Princess of Wales, Princess Diana for 16 was the object of intensive public interest and media scrutiny. As a member of the British Royal family and a tireless worker for charitable causes, Princess Diana's name, likeness and image have become uniquely identifiable throughout the United States and the world, have achieved extraordinary fame, are identified in the minds of the public as the source of the charitable activities which Princess Diana performed, and posses a valuable goodwill. 11. Princess Diana tragically and unexpectedly died on August 31, 1997. Her death precipitated an unprecedented outpouring of public grief in the United Kingdom, United States and the world. Her September 6, 1997 funeral was extensively covered by all major television networks and news organizations in the United States. Her assets, including the rights to her name, likeness, image and marks, passed by will to the Estate. The executors have been entrusted with these assets for the benefits of Princess Diana's heirs. As such, the executors have the exclusive right to control the commercial value and exploitation of these assets. In compliance with California Civil Code Section 990, the Estate filed its interest with the California Secretary of State on October 6, 1997. A true and correct copy of that registration is attached as Exhibit A. Pursuant to federal law, the Estate also filed three applications for federal trademark registrations in various classes for "Diana Princess of Wales" and "Diana Princess of Wales Memorial Fund" with priority dates of September 4 and September 11, 1997. 12. Following her death, many people wished to make charitable contributions on Princess Diana's behalf to demonstrate their love and respect for her. On September 4, 1997, her family and an executor of the Estate established the Fund to insure that these donations were responsibly administered and put to the use for which they were intended, which was to honor Princess Diana's memory by carrying on the charitable activities with which she was associated during her life, especially with regard to six charities for whom Princess Diana had been a major fundraiser, and thus who faced a significant loss of funds upon her death. The Fund is, subject to certain reservations, the only charity authorized by the Estate to engage in charitable activities and utilize Princess Diana's name, likeness, image and marks. 13. On December 19, 1997 the High Court of Justice, Chancery Division in London, England entered an order naming The Right Reverend and Right Honorable Richard John Carew Chartres, Bishop of London and other executors for the Estate and empowering them to act in connection with the intellectual property rights of the Estate. The Estate thereafter granted exclusive licenses, subject to certain reservations, to the name and likeness of Princess Diana, and to the trademarks "Diana, Princess of Wales" and "Diana, Princess of Wales Memorial Fund" to the Fund, which licenses were approved by the Charities Commission for England and Wales and completed by the parties on February 27, 1998. The Fund has used and has authorized use of the trademarks on products and services in the United States, such as a compact disc featuring the song "Candle in the Wind" by Elton John and a gala event recently held in Beverly Hills, California.
14. On or about June 25, 1997, Defendant Lynda Resnick paid $135,000 for a dress Princess Diana sold at a charity auction. She claimed at that time that she did not intend to commercially exploit the dress, and by implication Princess Diana's name or likeness. However, on August 8, 1997, Defendants filed an intent to use trademark application for "Diana, Forever A Princess," which admitted that they intended to use the mark in commerce. 15. Defendants dramatically increased their efforts to exploit Princess Diana following her August 31 death. Beginning on or about September 4, 1997. Defendant Stewart Resnick on behalf of the other Defendants sought to obtain permission to utilize Princess Diana's name and likeness on products and in advertising. This offer was declined in October 1997 and Defendants were repeatedly advised, both orally and in writing, that any exploitation of Princess Diana's identity by them was unauthorized. 16. Having failed to obtain consent to use Princess Diana's identity and trademarks, Defendants simply stole them and embarked on a campaign to profit from Princess Diana's death. On September 4, 1997, Defendants filed or caused to be filed trademark applications for "Diana, Queen of Our Hearts" and "Diana, Queen of Hearts" (phrases identified in the public's mind with Princess Diana), "Diana, Angel of Mercy," and "Diana, the People's Princess" (another phrase publicly identified with Princess Diana) for use with jewelry, plates, sculptures and dolls. On September 19, 1997, they filed or caused to be filed applications for "Design of Princess Diana Wearing Tiara," "Design of Head of Diana Wearing Ribbon and Princess Diana" and "Design of Princess Diana Wearing a Tiara and Princess Diana" for similar goods. Further, beginning in early September 1997, Defendants advertised for sale throughout the United States, including in the Central District of California, a "Princess Diana Tribute Plate." A true copy of exemplar advertisements for that plate are attached as Exhibit B. Defendants thereafter aggressively promoted and continue to sell throughout the United States, including the Central District of California, the plate and a number of other items of unauthorized Princess Diana merchandise, including a "Diana, Princess of Wales Porcelain Portrait Doll," which features a reproduction of the dress Lynda Resnick said Defendants would not exploit, a "Diana, Queen of Hearts Jeweled Tribute Ring," a "Diana, England's Rose Diamond Pendant," a "Princess Diana Tiara Ring," an "England's Rose Heirloom Collector Plate," and "Diana, The People's Princess Doll," which is alleged to be "crafted in poseable, lifelike vinyl," and "beautifully costumed in detailed miniature reproductions of some of her most famous fashion ensembles." True copies of exemplar advertisements describing those products are attached as Exhibit C. 17. Defendants' advertising and Defendants' dolls and plates all prominently feature Princess Diana's name and likeness. Further, Defendants' advertising attempts to benefit from the goodwill associated with Princess Diana's identity and to conceal their own motive to benefit from her death by falsely and misleadingly implying an endorsement, association or affiliation with Princess Diana, her Estate, and the Fund. Defendants do this through (a) their use of the name and likeness of Princess Diana, (b) their attempts to mischaracterize the purchase of their unauthorized products as a way to "honor," "commemorate," or "celebrate" Princess Diana, (c) their references to Princess Diana's charitable activities and mischaracterization of themselves as carrying on those activities, (d) their offering of a "certificate of authenticity" with their merchandise, and (e) their misleading statements that "100% of the ... price [of their products] will be donated to Diana, Princess of Wales' charities," their "pledge" of payments "to charity in tribute to the beloved Princess Diana," and their references to "joining" with a charitable organization of which Princess Diana was for a period president. In fact, Defendants have never donated a penny to the Fund, and Defendants any arrangements they have entered into with another charity grants them no right to commercially exploit Princess Diana's name and likeness. 18. The Estate has filed formal Letters of Protest with the Assistant Commissioner for Trademarks objecting to Defendants' trademark applications and requesting that the applications be rejected on the grounds that the marks comprise matter which falsely suggests a connection with (and which may disparage) Princess Diana. The Patent and Trademark Office Examining Attorney has issued non-final office action letters to Defendants rejecting their various trademark applications in part because the marks falsely suggest a connection with Princess Diana. 19. Defendants' wrongful conduct causes Plaintiffs to suffer irreparable injuries, including infringement of their trademarks, rights of publicity, injury to reputation and the dilution of the distinction quality of their trademarks and publicity rights, for all of which they have no adequate remedy at law.
(False Designation of Origin and False Endorsement Under The Lanham Act Against All Defendants)
20. Plaintiffs repeat and reallege Paragraphs 1 through 20 herein. 21. By reason of the foregoing, Plaintiffs assert a claim against Defendants for injunctive and monetary relief, destruction of infringing articles, treble damages, costs and attorney's fees pursuant to 15 U.S.C. Sections 1125(a), 1116 and 1117.
(Federal Trademark Dilution Against All Defendants) 22. Plaintiffs repeat and reallege Paragraphs 1 through 22 herein. 23. Plaintiffs' mark is inherently distinctive and has acquired distinction from its past use for charitable activities. 24. Princess Diana's name and image have been intensively and extensively advertised and promoted throughout the world in connection with her charitable activities, and as a result of this advertising and promotion, the name and image have come to mean and are recognized in world wide trading areas and channels of trade as distinctive marks which identify the source of the charitable activities of Diana, Princess of Wales. 25. Plaintiffs' marks including "Diana Princess of Wales" and "Diana Princess of Wales Memorial Fund" are famous and distinctive within the meaning of 15 U.S.C. Sections 1125(c)(1) and 1127. 26. Defendants' activities complained of in this complaint constitute unauthorized use in California and in interstate commerce of Plaintiffs' marks. Defendants' activities were conducted with full recognition of Plaintiffs' use of the mark in world wide trading areas and channels of trade, and commenced after the mark had become famous. Such activities have and will continue to cause dilution of the distinctive quality of the marks by lessening its capacity to identify and distinguish Plaintiffs' charitable services to the damage and harm of Plaintiffs in violation of the Federal Trademark Dilution Act of 1995, 15 U.S.C. Section 1125(c)(1). 27. The activities of Defendants as alleged above have caused and will cause irreparable harm to Plaintiffs for which Plaintiffs have no adequate remedy at law in that (i) if the wrongful conduct continues, Plaintiffs' mark risks further dilution; and (ii) Defendants' wrongful conduct, and the damages resulting to Plaintiffs, is continuing. Accordingly, Plaintiffs are entitled to preliminary and permanent injunctive relief pursuant to 15 U.S.C. Section 1125(c)(2). 28. Plaintiffs are informed and believe, and on that basis allege, that Defendants have committed the acts alleged above: (i) with previous knowledge of Plaintiffs' prior right to and use of the marks; (ii) with the willful intent to trade on Plaintiff's good will and reputation; and (iii) with the willful intent to cause dilution of the marks. As a result, Plaintiffs have been damaged in an as yet unascertained amount. In addition, Plaintiffs are entitled to treble damages pursuant to 15 U.S.C. Section 1117. 29. Plaintiffs are also entitled to recover their attorney's fees and costs pursuant to 15 U.S.C. Section 1117.
(Infringement of Statutory Right of Publicity Against All Defendants) 31. Defendants have misappropriated Plaintiffs' rights in the name, likeness and image of Diana, Princess of Wales as provided under California Civil Code Section 990. 32. In exploiting Plaintiffs' exclusive publicity rights as described above, Defendants have damaged and are continuing to damage Plaintiffs' publicity rights by, among other things, permitting them to be distorted and trivialized, thus diminishing their value for future licensing. Further, Defendants have injured and continue to injure Plaintiffs by purporting to exercise their publicity rights without Plaintiffs retaining control thereof or receiving monies properly owing to them as the sole owners of Princess Diana's right to publicity. 33. Defendants' wrongful actions as described above are causing Plaintiffs irreparable harm, and have damaged and continue to damage Plaintiffs in an amount yet to be determined. 34. Defendants did not engage in the above-described wrongful actions out of any sincere or proper motive, but did so knowingly, willfully and oppressively, intending to appropriate to themselves without compensation what they knew to be Plaintiffs' valuable rights. Said misconduct was also fraudulent, in that the public was led to believe falsely that Plaintiffs consented to such commercial use of Princess Diana's name and likeness, and were associated with and approved of said products.
(False Advertising Under the Lanham Act Against All Defendants) 36. Defendants have carried out in California and in interstate commerce a large scale program of deceptive advertising in which specific advertisements change constantly, but all follow a pattern of making in one form or another certain misleading and deceptive representations concerning the use of the proceeds from the sale of Defendants' products. Among the false and misleading representations made by Defendants are, inter alia, that "100% of the ... price [of Defendants' dolls and plates] will be donated to Diana, Princess of Wales' charities" and that "all proceeds to go to Diana, Princess of Wales' Charities" (collectively, the "representations"). 37. Defendants' representations are false in that Defendants have never donated a penny to the Fund. 38. As a result of Defendants' representations, members of the public are inducted to purchase Defendants' dolls and plates in the mistaken belief that Defendants' products are endorsed by and/or associated or affiliated with Princess Diana, her Estate, and/or the Fund. 39. Plaintiffs have been and will continue to be damaged by Defendants' false and misleading advertisements in that Defendants' advertising attempts to benefit from the goodwill associated with Princess Diana's identity. 40. By reason of the foregoing, Plaintiffs assert a claim against Defendants for injunctive and monetary relief, treble damages, costs and attorneys' fees pursuant to 15 U.S.C. Sections 1116, 1117 and 1125(a).
(Unfair Competition and False and Misleading Advertising Under Cal. Bus. & Prof. Code Sections 17200 and 17500 et seq. Against All Defendants) 41. Plaintiffs repeat and reallege Paragraphs 1 through 41 herein. 42. Beginning in or around September 1997 and continuing to the present time, Defendants have engaged in advertisements disseminated to and received by the public in California for Defendants' dolls and plates which advertisements change constantly, but all follow a patter of making in one form or another certain misleading and deceptive representation concerning the use of the proceeds from the sale of Defendants' products. Among the false and misleading representations made by Defendants are, inter alia, that "100% of the ... price [of their products] will be donated to Diana, Princess of Wales' charities" and that "all proceeds go to the Diana, Princess of Wales' Charities" (collectively, the "representations"). 43. Defendants have engaged in the advertising herein alleged with the intent to directly or indirectly induce the public to purchase Defendants' dolls and plates. 44. Defendants' representations are untrue and misleading and are likely to deceive the public in that Defendants have never donated a penny to the Fund. 45. In making and disseminating the representations herein alleged, Defendants knew, or by the exercise of reasonable care should have known, that the representations were untrue and misleading. 46. Defendants' false and misleading advertising, as alleged above, constitutes unfair competition in violation of Section 17200 of the Business and Professions Code and is in further violation of Section 17500 of the Business and Professions Code. 47. Unless restrained by this Court, Defendants will continue to engage in the false and misleading advertising, as alleged above. By reason of the foregoing, Plaintiffs assert a claim against Defendants for injunctive relief pursuant to Cal. Bus. & Prof. Code Sections 17200 and 17500 et seq.
WHEREFORE, Plaintiffs demand judgment in their favor and against Defendants as follows: 1. Preliminary and permanently enjoining Defendants and all persons acting in active concert or participation with them from using the name, likeness or image of Princess Diana in connection with any products or in connection with the marketing, distribution or advertising of any products, including but not limited to any Franklin Mint plates, dolls or jewelry, including but not limited to the products described in Exhibits "B" and "C"; 2. Preliminarily and permanently enjoining Defendants and all those acting in active concert with them from using any of Plaintiffs' common law trademarks or any trademarks confusingly similar thereto for the purpose of the sale, distribution, marketing, advertising and licensing of unauthorized goods or services in the United States and its possessions or territories; 3. Requiring Defendants to deliver all advertising, merchandise, promotional materials, magazines and any other things bearing any or all of the trademarks, names, photographs, likenesses of Princess Diana and all other items which are confusingly similar to Plaintiffs' trademarks for the name, likeness for image of Princess Diana, as well as all material used to create such advertising, promotional materials, magazines, and things to Plaintiffs for destruction or other disposition by Plaintiffs; 4. Ordering the Commissioner of Patents and Trademarks to strike and/or cancel all of Defendants' applications for federal trademark registration relating to Princess Diana, include but not limited to the applications of Defendants filed August 8, 1997, Serial No. 75/337,987 for "Diana, Forever a Princess;" filed September 4, 1997, Serial No. 75/351,468 for "Diana, Queen of Hearts;" filed September 4, 1997, Serial No. 75/351,469 for "Diana, Queen of Our Hearts;" filed September 4, 1997, Serial No. 75/351,470 for "Diana, Angel of Mercy;" filed September 4, 1997, Serial No. 75/351,472 for "Diana, the People's Princess;" filed September 19, 1997, Serial No. 75/359,701 for "Design of Diana Wearing Tiara;" filed September 19, 1997, Serial No. 75/359,702 for "Design of Head of Diana Wearing Ribbon;" filed September 19, 1997, Serial No. 75/359,703 for "Design of Princess Diana Wearing a Tiara and Princess Diana;" and filed September 19, 1997, Serial No. 75/359,704 for "Design of Princess Diana Wearing Ribbon and Princess Diana;" 5. That Defendants be made to account to Plaintiffs for all sales of Princess Diana related merchandise from the inception of said sales to the date of judgment herein; 6. That Plaintiffs have and recover a money judgment reflecting their compensatory and general damages at trial; 7. For punitive damages against Defendants for their oppressive, fraudulent, and malicious conduct; 8. That Plaintiffs be ordered their costs, including reasonable attorney's fees; and 9. That Plaintiffs receive such other and further relief as the Court deems just and proper. Dated: May 18, 1998 MANATT, PHELPS & PHILLIPS
MARK S. LEE
By:/s/
THE DIANA, PRINCESS OF WALES
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