Michael Lombardi v. Museum of Natural History - trademark publicity complaint.pdf

UNITED STATES DISTRICT COURT DISTRICT OF RHODE ISLAND

MICHAEL LOMBARDI,

Plaintiff,

v.

THE AMERIC AN MUSEUM OF NATURAL HISTORY,

Defendant.

C.A. No. 2015-

VERIFIED COMPLAINT

NATURE OF THE ACTION

1. This action is brought pursuant to the Federal Trademark Act, 15 U.S.C. § 1051,

et seq., to prevent The American Museum of Natural History, operator of a museum in New

York, New York, from illegally and unlawfully using and diluting Lombardi's name, image,

likeness, and service mark. Plaintiff also seeks to recover from Defendant damages from the

unauthorized use of his intellectual property. This action is also brought pursuant to Rhode

Island statutory law related to Defendant's Unfair and Deceptive Trade Practices and violation of

Plaintiffs Right to Privacy by Defendant's continued unauthorized use of Plaintiff s name,

image, and likeness. Finally, Plaintiff seeks damages for Defendant's refusal to complete its

portion of the contract, which led to the cancellation of the Expedition.

PARTIES

2. Plaintiff Michael Lombardi ("Lombardi") is a resident of the State of Rhode

Island. Lombardi is the owner of the service mark, "Michael Lombardi" and associated

goodwill.

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3. Defendant The American Museum of Natural History (the "Museum" or

"Defendant") is a domestic not-for-profit New York corporation with a principle place of

business in New York, New York. The Museum owns, operates, or directly controls a history

museum located at Central Park West and 79th Street, New York, New York. The Museum has

sufficient minimum contacts with Rhode Island to be subject to the jurisdiction of this Court.

JURISDICTION AND VENUE

4. This case arises under federal law relating to trademarks, 15 U.S.C. § 1051, et

seq. Accordingly, the Court has original jurisdiction pursuant to 28 U.S.C. § 1338. Under

principles of pendent jurisdiction, the Court also has jurisdiction of all claims against Defendant

arising solely under state law.

5. Complete diversity of jurisdiction exists among the parties.

6. Venue is proper under 28 U.S.C. § 1391 because a substantial part of the events or

omissions giving rise to Lombardi's claims occurred and continue to occur in this judicial

district. Specifically, Defendant is improperly using and diluting Lombardi's registered

trademark, image, name, and likeness in connection with the marketing of a now canceled and

defunct undersea exploration, the principle effects of which are felt by Lombard! in this judicial

district.

FACTS

A. THE LOMBARDI MARK

7. Michael Lombards8' is a well-respected professional in the field of ocean

exploration, education, and discovery with ties throughout the underwater industry.

8. Lombardi is deeply involved in the use of diving technology to explore new

regions of the ocean. Due to his knowledge, skill, and reputation in underwater exploration.

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Lombardi was recruited by J.F. White Contracting Company to play a crucial role in the Stephen

J. Barlow Bluewater Expedition ("Expedition").

9. The Expedition was made possible, in large part, due to Lombardi's expertise and

his ability to leverage his relationships with various organizations and collaborators, as well as

his commitment of funds and resources to execute portions of the expedition.

10. Lombardi's service mark (the "Lombardi Mark") is on the principal register of the

United States Patent and Trademark Office. Lombardi has the exclusive right to use and to

license the Lombardi Mark and derivations thereof, which is used in product design and

development in the field of ocean or underwater exploration. Lombardi has continuously used

the Lombardi Mark since the date of its registration.

11. The registration is in full force and effect, unrevoked, and uncancelled.

12. Lombardi has given notice to the public of the registration of his service mark as

provided in 15 U.S.C. §1111.

13. Lombardi uses or has used the Lombardi Mark in association with his brand

name.

14. Lombardi and his affiliated entities market, promote, and engage in underwater

exploration and discovery services as well as utilize the Lombardi Mark in association with these

activities.

15. Lombardi has invested substantial effort over a long period of time, including the

expenditure of several tens of thousands of dollars, to develop goodwill in his trade name and

trademark to cause consumers throughout the United States to recognize the Lombardi Mark as

distinctly designating Lombardi's services, including undersea and ocean exploration.

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16. The value of the goodwill developed in the Lombardi Mark does not admit of

precise monetary calculation, but because Michael Lombardi® is widely known as a provider of

ocean exploration, education, and discovery throughout the underwater industry, the value of

Lombardi's goodwill is in excess of hundreds of thousands of dollars.

17. The Lombardi Mark is indisputably among the most famous trademarks in the

underwater industry in both the United States and worldwide.

B. DEFENDANT'S UNAUTHORIZED USE AND DISPLAY OF THE LOMBARDI MARK NAME. IMAGE. AND LIKENESS IN COMMERCE

18. In December 2013, Lombardi introduced Dr. Vincent Pieribone of Yale

University and a Research Associate of American Museum of Natural History to Jim Clark and

Peter White of J.F. White Contracting Company. '

19. During that meeting Dr. Pieribone and Peter White discussed deepwater work on

bio-luminescent probes for brain and cancer research. At that time Peter White pledged J.F.

White Contracting Company's support for the Stephen J. Barlow Bluewater Expedition.

20. The Stephen J. Barlow Bluewater Expedition would be conducted off the New

England Coastline in mid-summer 2014, to allow researchers from the John B. Pierce Laboratory

at Yale University, Baruch College, City University of New York, and the American Museum of

Natural History to observe and collect bio-luminescent marine organisms from their natural

deepwater environment.

21. The deepwater exploration would be accomplished by use of an Exosuit

Atmospheric Diving System ("Exosuit"), produced by Nuytco Research Ltd. The Exosuit is a

one-of-a-kind atmosphere manned vehicle certified by Lloyd's Register with an operating depth

of 1000 fsw.

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22. Lombardi would act as the Undersea Specialist to the Expedition and operate the

Exosuit.

23. In February 2014, a Media and Publicity Agreement ("MPA") was signed

between Yale University, The American Museum of Natural History, I.E. White Contracting

Company, and Lombardi. A copy of the MPA is attached as Exhibit A.

24. The MPA embodied the agreement among the parties regarding publicity and

media usage specifically associated with the Expedition.

25. Unfortunately, after great personal expense of time and money by Lombardi, the

Expedition was postponed and then cancelled.

26. The Museum agreed to provide financial, technical, and promotional support to

the Expedition. However, the Museum failed to fulfill all of its responsibilities to the

Expedition.

27. Based on the Museum's representations of support, Lombardi spent considerable

time and money training and otherwise preparing for the Expedition.

28. In the summer of 2014, as a result of the Museum's failure to complete its

responsibilities for the Expedition, J.F. White Contracting Company announced it was

postponing the Expedition and subsequently sold the Exosuit making the Expedition impossible

to accomplish. A copy of the letter is attached as Exhibit B.

29. Despite the cancellation of the Expedition, multiple parties to the MPA including

the Museum continued to promote and market the Expedition on their respective websites to the

detriment of Lombardi's reputation in the academic and exploration communities.

30. On June 23, 2015, Lombardi sent a letter formally terminating the MPA to all

parties to the MPA and demanding that all parties cease and desist future dissemination of the

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Lombardi Mark, name, image, or likeness in relation to the Expedition. A copy of the letter is

attached as Exhibit C.

31. Through this letter Lombardi put all parties on notice that any further use of his

name, image, likeness, or the Lombardi Mark would be unauthorized in association with any and

all further marketing or promotion of the Expedition.

32. Other parties to the MPA quickly responded to the letter by removing the

infringing material from their respective websites.

33. After receiving no response from the Museum, on July 10, 2015, Lombardi sent a

follow up cease and desist letter specifically to the Museum attaching specific examples of the

infringing activities. A copy of the letter is attached as Exhibit D.

34. On July 17, 2015, Lombardi sent another good faith letter to the Museum in order

to come to an amicable resolution with the Museum and avoid costly and unnecessary litigation.

A copy of the letter is attached as Exhibit E.

35. The July 17, 2015 letter includes specific citations to internet links to the

infringing material and requests that the Museum immediately remove this content.

36. To date, the Museum has failed to comply with Lombardi's requests.

37. The Museum publicly represents that it understands the importance of protecting

one's intellectual property rights as evidenced by its website, which states "[a] 11 text, images, and

software code on this website are copyright property of the American Museum of Natural

History and its programmers unless otherwise noted. They may be used for the personal

education of website visitors. They may not be placed in the public domain. Any commercial

reproduction, redistribution, publication, or other use by electronic means or otherwise is

prohibited unless pursuant to a written license signed by the Museum."

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38. The Museum's unauthorized use of Lombardi's Mark, name, image, and likeness

is in complete contradiction with what the Museum represents to the general public regarding use

of its own intellectual property.

39. The infringing material, which depicts Lombardi's name, image, likeness, and the

Lombardi Mark in association with the promotion and marketing of the Expedition, remains

easily accessible on the Museum's website and has been widely distributed in the public domain.

40. As demonstrated by the continued presence of the infringing material on the

Museum's website, the Museum, without authorization or license, continually uses the Lombardi

Mark, image, name, and likeness in connection with their continued promotion and marketing of

the Expedition.

41. The Museum's unauthorized use of Lombardi's Mark, name, image, and likeness

in association with the marketing and promotion of the Expedition is continuing and there is no

indication that such activity will cease without judicial intervention.

COUNT I VIOLATION OF THE LANHAM ACT

42. Lombardi realleges paragraphs 1 through 41 above.

43. Section 32 of the Lanham Act, 15 U.S.C. § 1114(l)(a), provides in pertinent part

that "[ajny person who shall, without the consent of the registrant — use in commerce any

reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the

sale, offering for sale, distribution, or advertising of any goods or services on or in connection

with which such use is likely to cause confusion, or to cause mistake, or to deceive .. . shall be

liable in a civil action by the registrant. .. ."

44. The Museum has marketed and promoted and continues to market and promote

the Expedition on its website through the unauthorized use of the Lombardi Mark, and such use

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has caused and is likely to continue to cause confusion or mistake among prospective or actual

customers, in violation of Section 32 of the Lanham Act.

45. Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides in pertinent part

that "[a]ny person who, on or in connection with any goods or services . . . uses in commerce any

word, term, name, symbol... or any false designation of origin, false or misleading description of

fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause

m i s t a k e , o r t o d e c e i v e a s t o a f f i l i a t i o n . . . o r a s t o t h e o r i g i n , s p o n s o r s h i p , o r a p p r o v a l o f . . .

goods [or] services . .. shall be liable in a civil action . . . ."

46. The Museum's acts of marketing and promoting the Exploration, through and

with the Lombardi Mark, constitutes:

(a) a false designation of origin;

(b) a false and misleading description of fact; and

(c) a false and misleading representation of fact;

that has caused and is likely to continue to cause confusion, or to cause mistake, or deception, as

to the affiliation of the Exploration with Lombardi, and to cause confusion, or to cause mistake,

or deception, to the effect that Lombardi sponsors or approves of the Museum's continued

marketing of the Expedition, all in violation of Section 43(a) of the Lanham Act.

47. Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), provides in pertinent part

that "[t]he owner of a famous mark shall be entitled, subject to the principles of equity and upon

such terms as the court deems reasonable, to an injunction against another person's commercial

use in commerce of a mark or trade name, if such use begins after the mark has become famous

and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is

provided in this subsection."

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48. The Museum's use of the Lombardi Mark in connection with the operation of the

Expedition, after the Lombardi Mark became famous, has caused and will continue to cause

dilution and disparagement of the distinctive quality of the Lombardi Mark, and has lessened and

will continue to lessen the capacity of the Lombardi Mark to identify and distinguish the goods

and services of Lombardi, all in violation of Section 43(c) of the Lanham Act.

49. The Museum's on-going acts of infringement in violation of Sections 32, 43(a),

and 43(c) of the Lanham Act are malicious, fraudulent, willful, and deliberate.

50. The Museum's on-going acts of infringement in violation of Sections 32, 43(a),

and 43(c) of the Lanham Act have inflicted and continue to inflict irreparable harm on Lombardi.

51. Lombardi has no adequate remedy at law.

52. No previous injunctive relief has been awarded with respect to this matter in this

case or any other case.

WHEREFORE, pursuant to 15 U.S.C. §§ 1114, and 1125(a) and (c), Lombardi requests

the following judgment against The American Museum of Natural History:

a. Temporarily, preliminarily, and permanently restrain and enjoin The American

Museum of Natural History, its affiliates, subsidiaries, officers, agents, servants, employees and

attorneys, and all those who act in concert or participation with them, from using and/or

displaying the Lombardi Mark and associated trade names, service marks, and trademarks in

violation of the Lanham Act;

b. Temporarily, preliminarily, and permanently restrain and enjoin The American


attorneys, and all those who act in concert or participation with them, from marketing

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Lombardi's services, including, without limitation, Lombardi's connection with the Expedition;

and

c. Order that The American Museum of Natural History, its affiliates, subsidiaries,

officers, agents, servants, employees and attorneys, and all those who act in concert or

participation with them, account to Lombardi for any and all funds derived as a result of

marketing or promoting goods or services at the Infringing Location or elsewhere through and

with the Lombardi Mark; and

d. Grant compensatory damages, treble damages, attorneys' fees, prejudgment

interest, cost of suit, and such other and further relief as this Court shall deem just and proper.

COUNT II UNJUST ENRICHMENT


54. The Museum has benefited from its wrongful use of the Lombardi Mark and has

paid no Royalty Fees or other fees to Lombardi in return for this benefit.

55. Under the circumstances, as set forth above, it would be inequitable for the

Museum to retain the benefit of the Lombardi Mark without payment of the value thereof.

56. Therefore, Defendant's failure to compensate Lombardi constitutes unjust

enrichment and has damaged Lombardi.

WHEREFORE, Lombardi demands judgment against The American Museum of

Natural History for damages to compensate Lombardi for the period during which The American

Museum of Natural History has misused the Lombardi Mark and was thereby unjustly enriched,

together with interest and costs.

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COUNT HI RHODE ISLAND DECEPTIVE TRADE PRACTICES ACT


58. R.I. Gen. Laws § 6-13.1-2 states "[ujnfair methods of competition and unfair or

deceptive acts or practices in the conduct of any trade or commerce are declared unlawful."

59. "Unfair methods of competition and unfair or deceptive acts or practices" are

defined in pertinent part as: "[c]ausing likelihood of confusion or of misunderstanding as to the

source, sponsorship, approval, or certification of goods or services" and "[c]ausing likelihood of

confusion or of misunderstanding as to affiliation, connection, or association with, or

certification by, another" R.I. Gen. Laws § 6-13.1-l(6)(ii-iii).

60. Defendant has marketed and promoted and continues to market and promote the

Expedition through the unauthorized use of the Lombardi's Mark, name, image, and likeness.

These actions, explained in detail above, constitute unfair or deceptive acts or trade practices in

violation of the Rhode Island Deceptive Trade Practices Act, codified at R.I. Gen. Laws §§ 6

13.1-1, et seq.

WHEREFORE, pursuant to the Rhode Island Deceptive Trade Practices Act, Lombardi

demands judgment against The American Museum of Natural History:




displaying the Lombardi Mark and associated trade names, service marks, and trademarks in

violation of the Rhode Island Deceptive Trade Practices Act;



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Lombardi's services, including, without limitation, Lombardi's association with the Exploration;

and



participation with them, account to Lombardi for any and all funds derived as a result of

marketing or promoting services with the Exploration or elsewhere through and with Lombardi's

Mark, name, image, or likeness; and

d. Grant compensatory damages, punitive damages, attorneys' fees, prejudgment


COUNT IV VIOLATION OF LOMBARDUS RIGHT TO PRIVACY


62. It is the policy of the State of Rhode Island that every person in this state shall

have a right to privacy which shall be defined to include the right to be secure form an

appropriation of one's name or likeness. R.I. Gen. Laws § 9-1-28.1(a)(2).

63. Pursuant to § 9-1-28.1 (a)(2), in order to recover for violation of this right, it must

be established that: "(A) the act was done without permission of the claimant" and "(B) the act is

of a benefit to someone other than the claimant." R.I. Gen. Laws § 9-l-28.1(a)(2)(i)(A-B).

64. The Museum has used Lombardi's, name, image, and likeness without his

permission and for the benefit of persons or entities other than Lombardi.

65. The Museum through its continued refusal to comply with Lombardi's multiple

requests has violated Lombardi's Right to Privacy, codified at R.I. Gen. Laws § 9-1-28.1(a)(2).

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WHEREFORE, pursuant to the Rhode Island Right to Privacy Statute, Lombardi

demands judgment against The American Museum of Natural History:




displaying Lombardi's name, image, or likeness in violation of the Rhode Island Right to Privacy

Statute;




Lombardi's services, including, without limitation, Lombardi's association with the Exploration;

and



participation with them, account to Lombardi for any and all profits derived as a result of

marketing or promoting services with the Exploration or elsewhere through and with the use of

Lombardi's name, image, and likeness; and

d. Grant compensatory damages, punitive damages, attorneys' fees, prejudgment


COUNT V BREACH OF CONTRACT


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67. The Museum contractually agreed with Lombardi to supply various resources to

the Expedition.

68. In exchange, Lombardi agreed to participate in the Expedition as an Undersea

Specialist and spent considerable personal time and money preparing for his role on the

Expedition. To date, the value of Lombardi's resources expended is approximately $48,000.

69. The Museum failed or otherwise refused to comply with its contractual agreement

to supply various resources for the Expedition.

70. The Museum has breached its contract with Lombardi.

71. Lombardi complied with his contractual obligation to the Museum and for the

Expedition.

72. As a direct and proximate result of the Museum's breach of contract, Lombardi

Plaintiff has been damaged.

WHEREFORE, Lombardi requests compensatory damages, prejudgment interest, costs,

attorneys' fees, and such other and further relief as this Court shall deem just and proper.

COUNT VI PROMISSORY ESTOPPEL


74. The Museum agreed with Lombardi to supply various resources to the Expedition.

75. In exchange, Lombardi agreed to participate in the Expedition as an Undersea

Specialist.

76. Lombardi spent considerable personal time and money preparing for his role on

the Expedition.

77. The Museum failed or otherwise refused to comply with its commitment to the

Expedition.

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78. Lombardi relied to his detriment on the Museum's assertions regarding the

Expedition and expended approximately $48,000 in preparation for performing his portion of the

agreement.

79. As a direct and proximate result of the Museum's breach of contract, Lombardi

Plaintiff has been damaged.

80. WHEREFORE, Lombardi requests compensatory damages, prejudgment

interest, costs, attorneys' fees, and such other and further relief as this Court shall deem just and

proper.

Plaintiff, MICHAEL LOMBARDI By his attorneys,

/s/ Jeffrey S. Brenner /s/ William H. Wynne IV Jeffrey S. Brenner (#4369) William H. Wynne, IV (#9020) NIXON PEABODY LLP One Citizens Plaza, Suite 500 Providence, RI 02903 Tel: (401)454-1000 Fax: (401)454-1030

Dated: July 31, 2015 E-mail: [email protected] [email protected]

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VERIFICATION

L Michael Lombardi, hereby state on this 3/ day of July, 2015, that I have read the foregoing Verified Complaint and am familiar with the contents thereof, and that the facts set forth therein are true by my own personal knowledge except those facts set forth on information and belief, and that as to those allegations, I believe them to be true. I declare under penalty of perjury that the foregoing statements are true and correct.

Michael Lombardi

STATE OF RHODE ISLAND COUNTY OF PRfWOTHCE

Subscribed and sworn to before me this day of July, 2015.

Notary Public|Af My commission expires: AY/A'/

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Documents

Michael Lombardi v. Museum of Natural History - trademark publicity complaint.pdf