UNITED STATES DISTRICT COURT - Counterfeit Chiccounterfeitchic.com/Cases/cic/8june/winston.pdfThere are few names more famous and renowned in the world of fine jewelry than Harry Winston,

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO

EASTERN DIVISION

HARRY WINSTON, INC. ) 718 Fifth Avenue ) New York, NY 10019, ) Case No.: 2:08-CV-536 ) and ) ) HARRY WINSTON, SA ) 8, chemin du Tourbillon ) CP 159 -1228 Plan-Les-Ouates ) Judge: Geneva, Switzerland, ) ) Plaintiffs, ) ) v. ) ) CHARLES WINSTON LUXURY GROUP, LLC ) 3301 North 29th Avenue ) Hollywood, FL 33020 ) ) and ) ) THE LP WATCH GROUP ) 3301 North 29th Avenue ) Hollywood, FL 33020 ) ) Defendants. ) ________________________________________________)

COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, PASSING OFF AND FALSE ADVERTISING

Plaintiffs Harry Winston, Inc. and Harry Winston S.A. (hereinafter collectively referred

to as either "Harry Winston" or "Plaintiffs"), by and through undersigned counsel, for their

Complaint against Defendants Charles Winston Luxury Group, LLC, and The LP Watch Group

(hereinafter collectively referred to as either "Charles Winston" or "Defendants"), state as

follows:

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Case 2:08-cv-00536-JDH-NMK Document 1 Filed 06/03/2008 Page 1 of 17

1. This is an action for trademark infringement under the Lanham Act, 15 U.S.C. §

1114, unfair competition, passing off, false advertising and false designation of origin under the

Lanham Act, 15 U.S.C. § 1125(a), arising from Defendants' unauthorized use of Plaintiffs'

world-famous trademarks Winston and Harry Winston, and Defendants’ ongoing deceptive

marketing scheme that plays off the well known and longstanding reputation of Harry Winston

as the “Jeweler to the Stars”.

Parties

2. Plaintiff Harry Winston, Inc. (“HWI”) is a New York corporation with a principal

place of business at 718 Fifth Avenue, New York, New York. For close to a century, HWI has

been engaged in the business of design, manufacture, distribution and sale of fine jewelry of

exceptional quality and workmanship.

3. Plaintiff Harry Winston S.A. (“HWSA”) is a Swiss corporation located at 8,

chemin du Tourbillon, CP 159-1228 Plan-es-Ouates, Geneva, Switzerland, and is engaged in the

business of design, manufacture, distribution and sale of fine time pieces, including watches.

HWSA is related to and controlled by Harry Winston, Inc.

4. Upon information and belief, Defendant Charles Winston Luxury Group, LLC is

a Florida Limited Liability Company, which conducts business throughout the United States and

has offered for sale and sold Charles Winston jewelry and timepieces in this District.

5. Upon information and belief, Defendant The LP Watch Group, is a Florida

corporation and is the managing member/manager of Defendant Charles Winston Luxury Group,

LLC. Defendant LP Watch Group conducts business throughout the United States and has

offered for sale and sold Charles Winston jewelry, watches and timepieces in this District.

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Jurisdiction and Venue

6. This Court has jurisdiction over the subject matter of this action pursuant to 15

U.S.C. § 1121 and 28 U.S.C. § 1338(a) and (b). Personal jurisdiction in this District is proper

inasmuch as Defendants have solicited and conducted business within the State of Ohio. Venue

is proper in this District pursuant to 28 U.S.C. § 1391 (b)(2).

Facts The Fame of Harry Winston and the WINSTON Trademarks

7. There are few names more famous and renowned in the world of fine jewelry than

Harry Winston, and few trademarks more widely-recognized for jewelry than the Winston and

Harry Winston trademarks. Founded by Harry Winston in 1932, Harry Winston, Inc. invented

modern couture jewelry as it exists today. The Winston reputation was built on unparalleled

quality and exquisite design that emphasized the beauty of the stones and fine craftsmanship.

Ronald Winston, the late Harry Winston's son, represented his family's third generation in the

jewelry business. In 2006, Harry Winston, Inc., was acquired by Aber Diamond Corporation,

which has changed its name to Harry Winston Diamond Corporation, a publicly traded company.

8. Over the years, Harry Winston became known as the "Jeweler to the Stars," and

was renowned for doing business with royalty, famous families (such as the Rockefellers) and

countless Hollywood stars. Although the prices of some original and one-of-a-kind Harry

Winston jewelry creations often range in the millions of dollars, the Winston name has become

well-known to the general public through its promotions at functions such as the annual

Academy Awards of Motion Picture Arts and Sciences ("Oscars"), where for many years Harry

Winston, Inc. has loaned millions of dollars worth of jewels to the celebrity attendees. See

Exhibits A through E hereto, which are articles describing the various pieces of Harry Winston

jewelry worn by actors attending the 1999 Oscars.

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9. As far back as 1953, Marilyn Monroe immortalized the Harry Winston trademark

in the movie "Gentlemen Prefer Blondes" by singing the lyrics "Talk to me Harry Winston, Tell

Me All About It," in the song "Diamonds Are A Girl's Best Friend." See Exhibit F hereto which

contains the lyrics to the song "Diamonds Are A Girl's Best Friend."

10. In addition to the design and manufacture of fine jewelry, Harry Winston was also

well-known for acquiring important stones. Over the years, the House of Harry Winston has

held more of the world's most famous jewels than any entity other than the British Crown,

including the 337-carat Catherine the Great sapphire and the 95-carat Star of the East diamond.

In 1949, Harry Winston acquired the most famous gem in the world, the 46-carat Hope diamond.

In 1958, he donated the Hope diamond to the Smithsonian Institution, where it remains today.

See Exhibit G hereto, which is the Smithsonian Institution web-site which describes the history

of the Hope diamond.

11. In 1989, Harry Winston, Inc. expanded its business into watches. In 1986, Harry

Winston, Inc. established Harry Winston Ultimate Timepiece S.A. (“HWUT”), a Swiss

subsidiary corporation in order to design, produce and sell quality timepieces made with Swiss

movements. HWUT was merged into HWSA in 2006. Harry Winston watches are renowned as

a unique combination of exquisite jewelry with innovative, hand assembled Swiss watch

movements.

12. Plaintiffs are the owners of the trademarks "Winston" and "Harry Winston," all

common law rights relating to the use of those marks, the United States Trademark Registrations

thereof, and the goodwill symbolized by the trademarks and the registrations thereof for a variety

of goods and services, including the following:

a. WINSTON - Registration No. 848,629, Registered May 7, 1968, jewelry and polished diamonds;

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b. HARRY WINSTON - Registration No. 3,355,622, Registered December 18, 2007,

jewelry and watches, namely, bracelets, earrings, rings, brooches, pendants, polished diamonds, precious and semiprecious gemstones, wrist-watches, pocket-watches, clocks, watch-bracelets, bracelets-fasteners, watch-cases and watch-movements;

c. HARRY WINSTON AVENUE C - Registration No. 3,079,120, Registered January

17, 2006, luxury jewelry composed of precious gemstones or precious metals; luxury chronometric instruments, namely, luxury watches and clocks composed of precious gemstones or precious metals; luxury watch bracelets, bracelet fasteners and watch cases composed of precious gemstones or precious metals, and luxury chronometers composed of precious gemstones or precious metals;

d. HW HARRY WINSTON - Registration No. 1,747,040, Registered January 19, 1993,

jewelry, [sic] namely, crowns, necklaces, sets of jewels, brooches, bracelets, rings, earrings, cufflinks; horological and chronometric instruments; namely, write-watches, pocket watches, table watches, clocks, alarm-clocks, watch bracelets, bracelet fasteners, watch cases; jewel cases in precious metals, precious and semi-precious stones;

e. JEWELER TO THE STARS – Registration No. 2,200,587, registered October 27,

1998, retail store services in the field of diamonds and jewelry.

(All of the above, including the common law rights therein, are collectively referred to as

the "Winston Marks.") A photocopy of registration numbers 848,629, 3,355,622, 3,079,120,

1,747,040, and 2,200,587 are attached as Exhibits H through L hereto.

13. The registrations identified in paragraph 13 are valid and subsisting and record

title is in Plaintiffs; the Certificates of Registration are prima facie evidence of the validity of the

registrations, the Plaintiffs' ownership of the Winston Marks, and of the Plaintiffs' exclusive right

to use the Winston Marks in commerce in connection with the goods and services specified in

the Certificates of Registration under the provisions of 15 U.S.C. § 1057(b) and constructive

notice of the Plaintiffs' claim of ownership under 15 U.S.C. § 1072. Registration Nos. 848,629;

1,747,040 and 2,200,587 are incontestable, which provides conclusive evidence of the validity of

the registrations, the Plaintiffs' ownership of the Winston Marks, and of the Plaintiffs' exclusive

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right to use the Winston Marks in commerce in connection with the goods and services specified

in the Certificates of Registration under the provisions of 15 U.S.C. § 1115(b).

14. The Winston Marks have been extensively and continually used, promoted and

advertised by Plaintiffs within the United States and worldwide for more than seventy (70) years

for fine jewelry and related products.

15. Substantial amounts of time, effort and money have been expended over those

years in ensuring that the general public associates such marks exclusively with Plaintiffs and

their products. During fiscal year 2008 alone, Plaintiffs expended in excess of $30 million

dollars in marketing, advertising and promoting goods and services using their trademarks.

16. The Winston Marks on fine jewelry and timepieces have acquired a worldwide

recognition by virtue of Plaintiffs' use and efforts to promote and expand the use of the Winston

Marks, and through Plaintiffs' vigilance in policing the use of the Winston Marks.

17. The Winston Marks have acquired an extraordinary degree of consumer

recognition in the minds of the public, and are now famous and serve uniquely to identify

products and services provided by Harry Winston.

The Increasing Availability of Luxury-Type Products and "Popular" Designer Lines

18. Luxury items have always been part of the American Dream, in part because of

their inaccessibility. Greater media promotion of luxury lifestyles has made traditional luxury

brands more widely known to the general public, and more widely desired. To answer this

greater demand, many well-known purveyors of luxury products have begun promoting and

selling "popular" lines: less expensive versions of their famous designs. For example, several

luxury automobile manufacturers sell relatively inexpensive ($35,000 and under) "entry-level"

models, such as the C-class Mercedes, the X-type Jaguar and the 3-series BMW. Couture

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clothing designers such as Anne Klein and Donna Karan have ready-to-wear versions of their

runway designs that sell in department stores for thousands of dollars less. The venerable

Waterford Crystal has come out with its less-expensive "Marquis by Waterford" line. Indeed,

HWI has begun producing, marketing and selling certain types of jewelry that are in the retail

price range of $5,000.00.

19. In a similar phenomenon, other well-known designers and personalities are

promoting lines of clothing and other products that are sold in discount stores. For example,

Martha Stewart's "Everyday" line of household goods is one of K-Mart's best selling lines, while

Isaac Mizrahi, Cynthia Rowley and Michael Graves are among the designers who sell less

expensive versions of their design lines at Target.

20. As a result of the increasing availability of "popular" line designer goods to the

general public, the average consumer is not surprised when a luxury product that was formerly

out of their reach becomes available in a less-expensive version. However, a large part of the

appeal of these products is their designer label and connection with a well-known luxury

product.

Defendants' Expanding Use of the Winston Marks

21. Defendants Charles Winston Luxury Group and LP Watch Group sell jewelry and

watches under the brand names "Charles Winston", "Charles Winston Collection," and "Charles

Winston Couture".

22. When Defendant’s predecessor, Charles Winston Enterprises, first began selling

jewelry, the items were marketed on cable shopping channels such as shopnbc.com, and on

various websites such as www.emitations.com and www.replicasdirect.com. Like other items

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sold on these sites, jewelry bearing the Charles Winston name was cheap costume jewelry made

to resemble high priced, designer jewelry. See Exhibits M through P.

23. At this time, most of the Winston brand jewelry sold by Defendants retailed for

less than $100.00 and did not contain genuine stones or jewels. However, many of the jewelry

designs were highly reminiscent of “classic” Harry Winston pieces. Compare Exhibits Q and R.

24. Charles Winston is a distant relative of Plaintiffs’ founder, Harry Winston.

Defendants’ business first came to Plaintiffs’ attention in late 1998 where Plaintiffs learned that

Charles Winston was selling costume jewelry products on shopnbc.com’s predecessor, Value

Vision, by trading on his family connections with Harry Winston and by designing products that

evoked Winston designs.

25. In January 1999, Plaintiffs' attorneys wrote to Value Vision, and objected to

Charles Winston's use of the Plaintiffs' trademark and passing himself and his products off as

being sponsored, endorsed, affiliated or connected with Harry Winston. See Exhibit S hereto,

which is a true and accurate copy of the January 20, 1999 letter.

26. On January 25, 1999, David T. Quinby, of Value Vision wrote back to Plaintiffs'

counsel and advised that Value Vision would require Charles Winston to cease any activity

suggesting a connection between himself and Plaintiffs. See Exhibit T hereto, which is a true

and accurate copy of the January 25, 1999 letter.

27. Nevertheless, Defendants continued to make use of the Winston brand and

suggest a connection with Plaintiffs' businesses and the Winston Marks in advertising,

marketing, promoting and sale of jewelry products to the public.

28. In 2002, Defendants put up an internet website at www.charleswinston.com.

Early versions of Defendants’ website made explicit reference to Harry Winston. In the earliest

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http://www.charleswinston.com/

web pages available from the Internet Archives “Wayback Machine”, dated July 21, 2002,

Charles Winston stated that he was “great nephew to the legendary Harry Winston”, that he was

“taught the jewelry business from the ground up” and that “one of the first pieces of jewelry [he]

helped create sold for over $5,000,000.”

29. Not only are these statements blatant attempts to trade off the good will and fame

of the Harry Winston name, they are not true. Charles Winston was not trained in the jewelry

business by anyone associated with Harry Winston, nor did he “help create” any Harry Winston

jewelry, much less any items that sold for $5 million. Nor did Charles Winston sell jewelry for

HWI in the early 1970’s (or at any time).

30. Following complaints from Plaintiffs, Defendants removed the more egregious

direct references to Harry Winston in late 2003. This was the beginning of Defendants’ pattern

of seeing how far it could push its efforts to trade off of the good will and fame of the Harry

Winston name before Defendants would draw protest from Plaintiffs. At the time HWI was still

being run, and was partly owned, by Harry Winston’s son and there was a reluctance to sue a

relative, albeit a distant one. However, Plaintiff’s counsel advised Defendants’ counsel of the

continuing objection to the Defendants’ activities.

31. In 2005, Defendants’ predecessor Charles Winston Enterprises attempted to

register the mark “Celebrity Style by Charles Winston.” Plaintiffs opposed the application in a

proceeding before the Trademark Trial and Appeal Board (No. 91164571) and received a

judgment from the Board refusing registration of the mark.

32. During this time period, Defendants’ activities were primarily confined to selling

cheap costume jewelry on line and in a few retail outlets. However, at some point in 2006,

Defendants began to promote a “Charles Winston Couture” collection – jewelry items using

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diamonds set in 14k gold. Upon information and belief, these pieces are priced in the thousands

of dollars and are sold in select brick-and-mortar jewelry stores. See Exhibit U hereto.

33. Charles Winston expanded his use, and misuse, of the Winston name and heritage

again in late 2006, when Defendant LP Watch Group made a significant investment in Charles

Winston Enterprises. The company was renamed Charles Winston Luxury Group, and began

promoting and selling watches under the Winston name. Defendant LP Watch Group is

marketing Charles Winston watches as one of its brands, and is also selling Charles Winston

jewelry items on its website at www.lpwatchgroup.com. It is not a coincidence that Defendants

recently entered the watch business after seeing the investment of substantial time and money

and ultimate success of Plaintiff developing the Harry Winston watch business over the past

eighteen years. It is one more example of Defendants’ seeking a free ride off of Plaintiff’s good

name and investment.

34. Defendants' use in commerce of the Winston Marks to attempt to associate

himself and the Defendants' business with Harry Winston and trade off of the goodwill and value

of those trademarks first on jewelry and very recently on watches, is likely to cause confusion, to

cause mistake or to deceive members of the public into believing that Plaintiffs have sponsored

or endorsed Defendants' use of the Winston Marks.

Defendants’ Acts of Unfair Competition

35. In addition to its misuse and infringement of the Winston marks, Defendants have

also engaged in unfair competition in their marketing and promotion of jewelry and timepieces

by playing off of the fame of Harry Winston as the “Jeweler to the Stars.”

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http://www.lpwatchgroup.com/

36. Defendants have made widespread use of the taglines “Jewelry for the Celebrity

in You” and “Celebrity Style” – taglines clearly intended to evoke Harry Winston’s well known

association with celebrities.

37. In August 2007, Defendant Charles Winston Luxury Group, Inc. filed two (2)

new trademark applications with the U.S. Patent & Trademark Office for the terms “Jewelry for

the Celebrity in You” (Serial No. 77/249,728) and “Celebrity Style” (Serial No. 77/249,742) to

be used in conjunction with the Charles Winston name and play off of the Harry Winston

heritage of its jewelry being sold to and worn by celebrities and movie stars.

38. In recent years, Defendants have taken this marketing scheme a step further and

have begun lending their jewelry and timepieces to celebrities to wear at the Academy of

Television Arts & Sciences annual Emmy Awards presentation. These items have subsequently

appeared at charity auctions. Charles Winston has also appeared on the daytime soap opera Days

of Our Lives to promote his jewelry.

39. The press release announcing LP Watch Group’s partnership with Charles

Winston describes Defendants’ increasing focus on marketing fine jewelry and timepieces with a

celebrity angle:

Over the years, Charles Winston found success in wooing high-end clients and celebrities alike, and has since focused his mission on creating a new category of affordable fine jewelry. The brand uses sterling silver, rhodium plating, and simulated and created gems to produce “jewelry for the celebrity in you,” as described in his tag line.

40. Defendants’ willful use of the Winston marks and celebrity marketing scheme on

“entry level” fine jewelry and timepieces has (1) affected interstate commerce by deceiving or

confusing the public throughout the nation; (2) constitutes a false designation of the Defendants'

goods and services by passing them off as being associated with Plaintiffs; (3) suggests

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connection with Plaintiffs which is of course non-existent; (4) suggests that Plaintiffs have

sponsored, licensed or approved of Defendants' goods, services, or businesses; and/or (5)

unfairly trades off of the fame and goodwill of Harry Winston as the “Jeweler to the Stars”.

First Cause Of Action

Federal Trademark Infringement

41. Plaintiffs reallege and incorporate by reference herein the allegations contained in

paragraphs 1 through 40 of the Complaint.

42. Defendants' aforementioned acts constitute trademark infringement in violation of

the Lanham Act, 15 U.S.C. § 1114.

43. Plaintiffs' federal registrations on the Principal Register for the marks WINSTON

- Registration No. 848,629; HW HARRY WINSTON – Registration No. 1,747,040; and

JEWELER TO THE STARS – Registration No. 2,200,587, are incontestable, which provides

conclusive evidence of the validity of the registrations, the Plaintiffs' ownership of the Winston

Marks, and of the Plaintiffs' exclusive right to use the Winston Marks in commerce in connection

with the goods and services specified in the Certificates of Registration under the provisions of

15 U.S.C. §1115(b)).

44. Defendants' wrongful use of the Winston Marks and passing off Charles Winston

as being associated with Harry Winston and indicating that Charles Winston employs methods

used by Harry Winston to create custom jewelry is likely to cause confusion as to sponsorship or

authorization by Plaintiffs. Defendants' actions constitute trademark infringement in violation of

section 32(a) of the Lanham Act, 15 U.S.C. § 1114.

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45. As a proximate result of Defendants' actions, Plaintiffs have suffered and will

continue to suffer great damage to their business, goodwill, reputation, profits and the strength of

the Winston Marks. The injury to Plaintiffs is and continues to be ongoing and irreparable. An

award of monetary damages alone cannot fully compensate Plaintiffs for their injuries and

Plaintiffs lack an adequate remedy at law.

46. The foregoing acts of infringement have been and continue to be deliberate,

willful and wanton, making this an exceptional case within the meaning of 15 U.S.C. § 1117.

47. Plaintiffs are entitled to a permanent injunction against Defendants, as well as all

other remedies available under the Lanham Act, including, but not limited to, compensatory

damages; treble damages; disgorgement of profits; and costs and attorneys' fees.

Second Cause of Action

Federal Unfair Competition, False Designation of Origin, Passing Off and False Advertising

48. Plaintiffs reallege and incorporate by reference herein the allegations contained in

paragraphs 1 through 47 of the Complaint.

49. Because of Defendants’ increasing reliance on an advertising scheme that plays

off the well-known longstanding association of Harry Winston with celebrities, its wrongful use

of the Winston Marks, and Charles Winston's misleading representation that he and/or his

products are approved by, connected with or produced using methods of Harry Winston, Inc.,

consumers are falsely led to believe that Defendants’ jewelry and timepieces are associated with,

endorsed by or are sponsored, or otherwise approved by Plaintiffs, in violation of section 43(a)

of the Lanham Act, 15 U.S.C. § 1125(a).

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50. The foregoing acts and conduct by Defendants constitute false designation of

origin, passing off and false advertising in connection with products and services distributed in

interstate commerce, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

51. Defendants' acts, as set forth above, have caused irreparable injury to Plaintiffs'

goodwill and reputation. The injury to Plaintiffs is and continues to be ongoing and irreparable.

An award of monetary damages alone cannot fully compensate Plaintiffs for their injuries and

Plaintiffs lack an adequate remedy at law.

52. Plaintiffs are entitled to a permanent injunction against all Defendants, as well as

all other remedies available under the Lanham Act, including, but not limited to, compensatory

damages; treble damages; disgorgement of profits; and costs and attorneys' fees.

Third Cause of Action

Dilution of Famous Marks (Tarnishment) Under 15 U.S.C. § 1125(c)

53. Plaintiffs’ reallage and incorporate by reference herein the allegations contained

in paragraphs 1 through 52 of the Complaint.

54. The Winston Marks are famous in the field of fine jewelry and have been widely

used for many years as indicators of Harry Winston products. There is a high degree of

recognition among potential purchasers of Harry Winston jewelry, and among the general public,

of the Winston Marks. Consumers associate the Winston Marks with jewelry of the highest

quality.

55. Defendants’ manufacturing, advertising, promotion, distribution and sale of lower

quality “fine” jewelry, jewelry using synthetic gemstones, and jewelry and watches designed to

resemble classic Harry Winston pieces, and their use of and dissemination of materials bearing

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the Winston Marks has and is tarnishing and causing injury to Plaintiffs’ business reputation and

is harming the reputation of the famous Winston Marks.

56. Defendants’ willful, wrongful conduct constitutes an extreme threat to the

distinctiveness of the Winston Marks which Plaintiffs have expended great efforts to develop and

maintain through their strict quality control over the fine jewelry products that Plaintiffs

themselves produce and sell to the public under the Winston Marks.

57. The distinctive nature of the Winston Marks is of enormous value, and Plaintiffs

are suffering and will continue to suffer irreparable harm and tarnishment of the Winston Marks

if Defendants’ wrongful conduct is allowed to continue.

58. Defendants’ manufacturing, advertising, promotion, distribution and sale of lower

quality “fine” jewelry, jewelry using synthetic gemstones, and jewelry and watches designed to

resemble classic Harry Winston pieces and their use of and dissemination of materials bearing

the Winston Marks will likely continue unless enjoined by the Court.

59. Plaintiffs are entitled to permanent injunction against all Defendants, as well as all

other remedies available at law.

WHEREFORE, Plaintiffs pray for judgment against Defendants as follows:

(1) that Defendants, their officers, agents, servants, employees, and attorneys, and

those persons in active concert or participation with Defendants who receive actual notice of the

court's order by personal service or otherwise, be permanently enjoined from:

(a) registering or using any of the Winston Marks, or any variation of the word "Winston" specifically including, but not limited to, any term that includes "Winston" or a misspelling of Winston as a trademark, trade name, corporate name or domain name; (b) doing any other act or thing likely to induce the belief that Defendants' businesses, services or products are in any way connected with, sponsored, affiliated, licensed, or endorsed by Plaintiffs;

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(c) selling any watches or fine jewelry items under the name “Winston” or “Charles Winston”; (d) using any of the Winston Marks for goods or services, or on the internet, or as domain names, email addresses, meta tags, invisible data, or otherwise engaging in acts or conduct that would cause confusion as to the source, sponsorship or affiliation of Defendants with Plaintiffs. (e) engaging in any marketing, advertising, or promotional activities that suggest that Charles Winston is a celebrity jeweler or words to that effect

(2) that Defendants, in accordance with 15 U.S.C. § 1116(a), be directed to file with

this Court and serve upon Plaintiffs within thirty (30) days after service of the permanent

injunction a report in writing, under oath, setting forth in detail the manner and form in which

Defendants have complied with the permanent injunction;

(3) that Plaintiffs recover their actual damages sustained as a result of Defendants'

wrongful actions;

(4) that Plaintiffs recover Defendants' profits made as a result of Defendants'

wrongful actions;

(5) that Plaintiffs recover three (3) times Defendants' profits made as a result of

Defendants' wrongful actions or three (3) times Plaintiffs' damages, whichever is greater;

(6) that this Court issue an Order to the Commissioner of Patents and Trademarks

ordering the Commissioner to deny trademark registration of Serial No. 77/249,728 for the

trademark “Jewelry for the Celebrity in You” and Serial No. 77/249,742 for the trademark

“Celebrity Style”, pursuant to 15 U.S.C. §1119;

(7) that this case be deemed an exceptional case under 15 U.S.C. §§ 1117(a) and (b)

and that Defendants be deemed liable for and ordered to reimburse Plaintiffs for their reasonable

attorneys' fees;

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(8) that Plaintiffs be awarded exemplary damages for Defendants' willful and

intentional acts;

(9) that Plaintiffs recover their costs of court; and

(10) that Plaintiffs recover such further relief to which they may be entitled.

Dated: June 3, 2008 Respectfully submitted,

Joseph R. Dreitler Mary R. True BRICKER & ECKLER LLP 100 S. Third Street Columbus, OH 43215 Telephone: (614) 227-2300 Facsimile: (614) 227-2390

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Case 2:08-cv-00536-JDH-NMK Document 1-2 Filed 06/03/2008 Page 1 of 2


:; ~ ~ •• -:. I •• 1 ; -:.E ~ _ . - :;. r .., , _ .:::1 ~ - - ...-; ':: -=\ ;, -3 ~ ... . : ;: I' J.'

EXHIBIT THE SPARKLE

SCREE GEM~ A

When David O. Selznick asked his very

dear friend and jeweler Harry Winston to

loan best actress nominee Jennifer Jones

something pretty to wear to the 1943

Academy Awards~ the producer of Gone

With the Wind and other great movies had

no idea his "favor" would evolve into a

multi-million dollar marketing idea.

ince the diamond-dripping Jones took her stroll on the red carpet-and later bounded on stage to accept her golden statuette for the title role in Song of Bel11adetre- \\ 1I1~"'11

,lI1d d":l'Ib III "till' I JCCh kr'> h,1\" 1,1/.;c'1l ,I,ll ,111l1~" \,1 Ill.: pLlhItUI~ . .Il1d III "\'111,' L.I,\" ~,t1l'~ n:,\h:lll Ir\'11l 11';\l1illg IL\hll\ III Idill ~loll

With a worldwide television audience of more than 1 billion and newspapers and magazines filled ,'lith photographs for months afterwards, the Academy Awards has become a public relations bonanza for those patient and skilled enough to negotiate their

d<\!lIin r the Ill'l:k ",us, \ rist· and tin "I''' of f10lb (I l's

1110 t glamoroll , R d ( arpcl jC\\ fry ha more m:l~lIi lhl

than the Great \ l1itl' \ "ay. [e.ft: Mr', lames oourn ill Da"id Orgel!. At right. left to rig 1/. L nn l<.edgra\c III i\ prt:); j\'!t' I ~tr,

in fred Leigh on,

way through a celebrity'S cadre of rrum...1ger, agent, publicist, stylist and couturier.

By now, Ibrr \\ 1Il~l<)1l Van Cleef & Arpel. Marti.n Katz and Neil Lane are veterans a playing the Oscar jewelry shufEle. But with spoils enough for everyone, more and more players have gotten into the act, including Bulgari, Graff, Fred Leighton, Asprey, David Orgell and Loree Radian.

Vv'hy do jewelers Tend to stars when most of the actors can alford to buy? The above mentioned Jennifer Jones, who was married to millionaire Norton Simon, could have bought the Hope Diamond (which Hany

THE ACADEMY AWARDS PREVIEW HW-4154

56


,~.' ,

r~portedly mailed to th~ Smithsonian). But .105 ~U~)

h.llih \.hid·ll\arkcllll~1111 I(\.-rll r\..I1I\ c dII(TII'r for

\\ Ilbl<111 1','IIIlS <'lll ",\11 lIill1,m,lIlI I'I"U: ,I inl 'Iry b n~ \ II .\11 'll\pul,c hUI, Y"ll Il",·t! It' I.lII In lL,y\: "il h 11 .lIld -'Vl' II \llIh II'ul 11,lrclrllhc ,lIld 11\1\1 II IllS

1111" \IIUI" hi,"') k Such loans olten result In sales. Loans are more commonplace when there is an opportunity 10 generJte nJme recognition or publicily for the jeweler Jnd few opportunities equal the Oscars.

"The Academy Awards is the eqUivalent of the suci:tl Olympics," says Korosh Soltmi of the family that v vns David OrgeU, The Rodeo Drive ",tore has adorned do=ens of stars over the last decade. When the late James Coburn won for best supporting actor, "the camera focused on his ....rife Paula. who was wearing one of our pieces. for 40 seconds uf air time (not to m~ntion aU the pictures that followed which adds more credibility to us 35 a jeweler" states Soltani. A spukesperson for Asprey agrees, AA 30-second spot on the Oscars is worth aboul $1 million and if you get a star to mention your piece, you can't buy that kind of publicity. It5 invaluable." Asprey should know all about publicity, The London-based jeweler has supplied jewelrf for nearly all the James Bond films. And in an industry coup in '97. the firm was commissioned by director James Cameron to create the Coua de I

;"Iel; a fancy blue diamond necklace that was a the hear I' his Oscar-winning film, Titanic, The movie necklace was a $20.000 studio prop whic , coincidentally, disappeared after the filming (no doubt to fetch mil ions at auction years from now), However. Asprey created an authentic version, made from a rare 170-carat sapphire. for singer Celine Dian to wear uring her Oscar-winning song performance on the

'98 show. The pre- and post-pub icily am the mOvie and the Oscar telecast gained enough written verbiage about Asprey t ~ fill thr e telephone books, The company was able to ride the publicity bandwagon even

iJi 3 -second spo 011

the Oscars' is Jvorth abollt $1 I1til ion ... "

furthe when the same necklace was ,;old for :!i2.2 million at the Princess Ball, a charity aucthm benefiting the Diana, Princess of Wales Memorial Fund and a Los geles-based AIDS charity -alled Aid for AlDS.

I h, h"lI'" III II.m ~ \\ 111-.lllll ,,[, <'ur ' h,I' 'nll\111 .1h, lit

1'1Ihh'lly f"l I ',I\k~ II <11111 did tlh <llllll';\11\ IllIr"dull' Ih 1. ••111 1'1,1,1 l ',llIl.11 II Lt'lill d.l \ 111-1\'11 til'" 111111'.'

\\'I.-hllil '''Illll~ hl (I," 'h.1II .111 lllh'l Il\\LkT \Illlld,

II Ilk 111 I <lllll. \) .11 h"-.I \\ II " I" \ ;"I,lh 'I,~ .d"lh I, Ie 1\1"1\ Ih.1I1 ~\11l1l1l1t1l1 II "rI h III \\ il1-.ltll1 I'·\I'!. Ihl"lllll!,lhllll

hn 111. n~ \ )-'l',lr l'h.11ll!,C~ \11,'lb. I 1c:,11r1I,.1111 1",111 \\,\-. \11'-.1"11 "11,,1 t1(11 dl.IIll.'nd h"ll., I III l'"}IIl'lh I'I1Irll\\l

II hl'l1 Ill' "I I", h'l ,lll1\'. li 1<:1 1.1l1111 tilt' 1.1l\. 1111' ~

1',dll"I\ I'llI' h,l ," I til' 11'" 1..1.1 ' 1,,1' IWI rlll'1 \:11'<1-.\ Ih~

I<:\\\.kl ILI"'Ill'lIl} ~l\l nt' II' ;-11 ,til h"11I 1'( "1'1, .11i, r 111-.>. "lwI' , h,' 1.1111<:.1 \<\ pili h.I' .1 l1\.\.kl.1t l -.111111.11 I" hl'I.,.

57

HW-4155


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I,

THE SCHEDULE

35 AY HE LI E 0 o EE

SU DAY TUESDAY 'EDNESDA( THURSDA,

31 2 3 4 W~ke Up.lI i3 ok Gunn~r Call Dr Ronald Stan c1res.:; search Sam to he~r Pelerson for Mo)' fur Titan with Philip or noms -I-week personal re;.llmem Rachel...EI~

'-end llowers LO lr.lining c31u./9-f.i-l22l .-aab, Os<:ar,Hire extra olher four noms: Valentino,personal Empty Vase Vintage at Lily.assistant c31tJ 27/j.1~881

5 6 Walk the Conferen<:e call labradoodle with .'\ng re: script down Robertson C:J.ll Vidoria BuilL-.we~ring re: psychic readingPaige Denim 131O.-f5-1.85 I0) Coffee with Jake @Unh. >pm

12 13 Guest ;.Ippe:lr:mce! A.-\ Ltmcheon Closing Night

Drinks with Sant;.l Barbara Owen@ TeddySi Film Festival Hollywood Roosevelt

19 20 Watch BAHA 2nd uttlng Awards at Kate's with Eli

Bring tea from Re,serve Tea Garden Music h'Press Herbal Emporium \1.S00.255.+Hl 13JJ.205.t1li.Hl

Cindys +Oth B-day party

I See reps for I I.l\ I) \\'in~·()n.

Loree Rudkin. Beaudry.

14 Send 'v\oodh ux choculates to Valentines (800.:166.3168>

eiman..-.lre. rrersurL.1.lt::ed ragr:mc~

21 Teeth Whitening: Dr. Zweig l31O.2/H09:2J

W rkon acceptance speech

8 Grammys wilh]ack

15 David Orgell. Barbara \Vestood. Fred Leighton

l,t>gUC interview @ lpm

22 Brows: .-\nasl:lsia (310.273.31351

Brian/CA.\. re: Broadway role

9 First filling @EUel;

Pkk shoes: Cluistian, Manolo. Jimm., lUan?

16 Drink more E"i:m.

Buy 'pacia handbaa I

laxfidJs 13Jt._i-f.S.stJU

23 Haircut.: Sally H-snag S1me Shaggl; IJ2J. 653.-fLl-kJ)

10 11 VanitY fair Brian/CAAlre: cover shoot appearances on vilh An11le The Viav, Today.

GlvL4.. Oprah.Dinner/5<:ar etl Elkn, L.'TlO,@Ciu::en -milh L::tt,mnan

17 18 :3.tm Jep: dpm ret: AE:\ FIt. .--\EX FIt. to Lo\ to As n

24 25 Hail'.:olvr: l.ln<:er GIllw Loui~iswss 13Ju.278S-f+fl extensions '3IJ.2-f7. 8551

26 27 28 1 2 3 4 Final nUing Spinal :ldjusunent: Dinnerl Air brush l;.ln At\. rehearS;! Get OPl LiSlen La Tibetan @Elies Franco Columb' Stephani & @ Peninsula Spa Sweetheart fo M..Ist(r Chants by

Eyelash13/0.nJ .lloOI Jordan's @ Spm rJ/Ll.551.2d88) :VlanVPedi 'th l.J.ma TashiUnder G's extensiuns Usa POStmafor lingerie Re:.td new scnpt Go to bed early' w/Angeb Nice Meditatedk.Hi.SJJ()13/ .27333331 13 lu.21'3.1.J511 \

5 6 Hair: Fredenc Est:lte planning: (31t.71/.8iOOI, Leah B15hop at Make-up: Valerie O'Melveny. . (311.).27-1.13-+8) P/u for Kodak @ 3:15. Walk down the regal red...and imile!!

THE ACADEMY AWARDS PREVIEW

54


81:;:,-' ~ -1)~E ~:3- ~':,r"'_r; "..~, ,Jr?i=:;~ .3~iT S 2?-':)"I-''''3 ":;i' ,::t a::~~

3:;~"'~ ~JoE ~~~ ~ r...;\, :5.:S- -;''3' I L 3·Jn::; Ni..1 r ~:;3r A..,:1., .... T='- 0'-' S~ I~'-~r 3:::.3

Not ;ill those inquiries produced a sale, but 10 to l5 did.

Most publicistj agree that the Oscars can be more than just J matter of attracting

publicity The number in tem1S of convergence is 20%, a reference to the percentJge of sales a jeweler can expect following the

Academy Awards~ broadcast. Shoppers may not purchase what they see on the screen, but the

pUblicity generated from this event drives them

Gena Davis wore Loree Rodkin's de igns imilar to thoo;c lhose at left. ( lit I. I It I I I i, '.,),

'j 1,.1 111. I 1 (1"1/1 ',,{It) ,I I I"" I t

r/NtI " (,lin III p Hillin \i1 I.

into the store or creates enough interest among wea thy out-of-towners that they call in their inquiries. \11 ILlL\u. "ilL' ~uLh dlelll :1<!\lll.'t1l1W ~I j 11111llon blue dl;1I11<lnd neLld,l\.<: madc Iw 11,1T!'\ \\'111'-1"11 ,lJlel W\lm

hy hl.''''l ,-upp,'rllng :lLlI\·..." 1l,'lllll1l'C c,I,'lu SI\l,IIt ',I \';lrI;lll"ll ,,( \~prcy<: ( ,'/1<'1' .I,' /" \ 1.',-1 "Ilout;h 1\1

l'llk 'II' Ih l'h"lll'. I iI,,\' ,"'l ,I "til til 111,"111 t11 lite ,m,lre!" ... hll\1 h"!ll ~llmllll1,' \111(\ \1,II1II'd III "'l:l: Ihe

PICl' .\hh"Ugh ~l'nll'll\ "'ll,cllh f""hld Ihl' jl'\lckr l!'lllll ....1) Ing Id1l'Ihcr lh, hL'111 pUll h,ISl'd till' Ill.:l!,

1.1U'. the pi"c i" Ill' I,,",~cr 111 Ih" \\ II) 1"11 1\l\,'I1I'"y

Most jewelers say all visibility is good public relations. "When my vendors see one of my pieces on a celebrity at the Oscars or in a maga;:ine, often times they request a similar piece for their store,~ notes jewelry deSigner Loree Rodkin whose deganrjewelry sells

trom :li5,OOO t $350,000 and has graced the necks and limbs of Madonna, Cher and Geem n;lvi~ 11,11'1 I'

\\ IIbh)lI~ fccl.:; lill' '-;ll1h \\'.11 '11'g \1'\\"11'1 k,', p us ;l"pil,lllllll.ll .:;malll'll'll·" kL' p lb I'd.. \ ,1111 .1 I'"kc. pi I

.,,'(1.,Lill''' I{l' '1ll1) ,f LU"'I\'l1hT \I"nh Ill"l" Ih,\I) ':-2 >1I 111111i"11 ',11111' 111 I,' till' [(\1' \\lIh 111'" I\lit' Idll1 JII"'L

\1',11111'\1 ,I (1.111 "I lli.llll<'nd ... lud... She wasn't comfortable wearing lots of gems. When she is comfortable, they hope she'll come back and buy a necklace, and then a bracelel and a watch. Educating the customer means sometimes doing it in steps.

The first step is seeing it. And what better place to do that than having it beamed into hving rooms and me ia rooms straight off the red carpet at Oscar time? AAP

HW-4157 58


















































Documents

UNITED STATES DISTRICT COURT - Counterfeit Chiccounterfeitchic.com/Cases/cic/8june/winston.pdfThere are few names more famous and renowned in the world of fine jewelry than Harry Winston,