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Dennis Rodman's 5/96 Unfair Competition And Invasion Of Right Of Publicity Complaint
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UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
FANATIX APPAREL, INC., MICKEY GOLDSCHMIDT, JMJ INTERNATIONAL, MHK
PRODUCTS, INC., JAY ENIS and JOHN DOES 10,
FIRST AMENDED COMPLAINT FOR INJUNCTIVE RELIEF: FALSE DESIGNATION OF ORIGIN and INVASION OF RIGHT OF PUBLICITY
Plaintiff Dennis Rodman, by his attorneys Jules D. Zalon and Rutan & Tucker, hereby respectfully alleges on knowledge as to plaintiff's own acts and on information and belief as to all other matters, the following for his complaint against the defendants:
A. Plaintiff Dennis Rodman is a citizen and resident of the state of Texas.
B. Defendant Fanatix Apparel, Inc. is a New Jersey Corporation whose principal place of business is at 729 Washburn Street, Teaneck, New Jersey 07666.
C. Defendant Goldschmidt is the president of Fanatix and has caused it to commit the acts herein complained of.
D. Defendant JMJ International is a business entity whose formal organization is not known, but whose principal place of business is at 130 Gamewell Street, Hackensack, New Jersey.
E. Defendant MHK Products, inc. is a New Jersey Corporation whose principal place of business is at 130 Gamewell Street, Hackensack, New Jersey.
F. Defendant Jay Enis is a principal of both defendants JMJ International, and MHK Products, Inc., and has caused each of them to commit the acts herein complained of.
G. Defendants John Does 1-10 are partners of, or are otherwise associated with, one or another of the named defendants in their production, sale or distribution of unauthorized Dennis Rodman T-shirts, and are either residents of or regularly do business in the State of New Jersey.
H. The identities of the individuals described as John Does are not presently known; the complaint will be amended to include their true names when identified. The counts herein set forth arise out of their actions within the State of New Jersey.
I. The separate counts set forth herein arise under the trademark laws of the United States, Title 15 U.S.C. 1051, et seq. as well as the common law of this state, and jurisdiction and venue are founded upon Title 15 U.S.c. 1051 et seq. Title 28 U.S.C. 1331, 1338, 1391, 2201 and 2202. The matter in controversy exceeds, exclusive of interest and costs, the sum of Fifty Thousand Dollars ($50,000) and is between citizen of different states.
AS AND FOR A FIRST COUNT FOR VIOLATION OF 15 U.S.C. 1125(a)
Plaintiff Dennis Rodman is a well known, extremely successful and hugely popular professional basketball player. Mr. Rodman's exploits on the court are legendary: he has led the entire National Basketball Association in rebounds for five years in a row, a record that no other player has ever come close to matching; he was named the NBA defensive Player of the Year; he has been an NBA All-Star, and a member of the NBA All Defensive Team.
2. As a result of this popularity, plaintiff has regularly received financially lucrative offers to license use of his name and likeness on a wide variety of products. However, he has been careful to limit such merchandising activities only to products of the highest quality and pursuant to arrangements by which he maintains complete control over the manner in which such name and likeness is used, such that he maintains and fosters an image in keeping with the high regard in which he is held throughout the sports world. Presently plaintiff has authorized Today's Trendz and NIKE, Inc. to produce T-shirts bearing plaintiff's name and likeness. Both these agreement are carefully and constantly monitored for quality control purposes, and require the licensees to submit all licensed articles to plaintiff for his approval. The agreements also require the application of specific trademark and copyright information on all such articles.
3. During the course of his remarkable career, plaintiff has at various times arranged with different tattoo artists to apply tattoos to his (plaintiff's) body. Each tattoo was carefully chosen by plaintiff; several were in fact designed by the plaintiff. One of the tattoos is a meticulously accurate likeness of plaintiff's young daughter, Alexis.
4. Plaintiff caused each of these tattoos to be produced, in part, for the purpose of identifying and associating them with himself, solely.
5. The said tattoos are extremely recognizable and identifiable as being "Dennis Rodman's tattoos." They are often referred to in published articles and television and other media segments, always being identified with the plaintiff alone. As an indication of this identifiability of the tattoos with plaintiff, McDonalds and Carl's Jr., two nationwide food chains, recently filmed television commercials featuring plaintiff's tattoos. Moreover, one of plaintiff's nicknames throughout the sports world is "Tattoo Man."
6. As a result of plaintiff's great public visibility and the public's association of plaintiff with these tattoos, the tattoos have attained and now possess a secondary and distinctive trademark meaning to the general public, particularly to sports fans.
7. The defendants were, until restrained by this Court, producing and distributing a long-sleeved T-shirt bearing colorable replications of ten of plaintiff's body tattoos, including the tattoo of plaintiff's daughter, Alexis; each such tattoo is placed on the shirt in the same place as the actual tattoo is found on plaintiff's body.
8. The accused shirts are extremely expensive to produce, and were therefore, until restrained by this Court, being sold at premium prices throughout the country. Nevertheless, they were being sold in large numbers by major chain stores and supermarkets, particularly in the Chicagoland area.
9. The only reason why these shirts could have commanded such premium prices was their identification with plaintiff, being widely described as "Dennis Rodman Tattoo T- Shirts." In fact, the shirts would have had no commercial value but for their association with the plaintiff.
10. In advertising and promotional materials issued by or authorized by the defendants to sell their spurious shirt, the defendants have regularly and prominently used the plaintiff's name, generally referring to the shirt as their "Dennis Rodman Tattoo T-Shirt," and have otherwise represented to the public and the trade that the shirt was authorized by the plaintiff, which is clearly false.
11. Reproduced here is a copy of one such display, from the Omni SuperStore in Bridgeview, Illinois:
[An actual photograph of such display is annexed to the original complaint filed herein.]
12. These shirts are universally recognized as being associated with plaintiff even absent accompanying use of his name on the shirt itself by the defendants. This recognition is a direct and natural consequence of the defendants' own identification of the shirt as the "Dennis Rodman Tattoo T-Shirt," and their like representations to their sales reps and their customers. In addition, the arrangement of these ten replications of plaintiff's body tattoos on the defendants' infringing shirt would be -- and are -- clearly recognized as identifying the plaintiff. For example, newspaper articles, television segments and Internet "pages" have regularly and prominently identified the shirt as the "Dennis Rodman Tattoo T-Shirt."
13. Defendants' said merchandise is of the same general nature, type and description as merchandise licensed by the plaintiff and manufactured and distributed by plaintiff's various licensees, and defendants' said shirts and plaintiff's authorized merchandise are so related that the defendants' use is likely to cause confusion among purchasers. The use of the said tattoos by each of the defendants is without the permission or authority of plaintiff and said use by the defendants is likely to cause confusion, to cause mistake and to deceive.
14. The said infringing merchandise of the defendants being of inferior quality, the sale thereof will be damaging to the reputation which plaintiff has developed in connection with his licensing of authentic merchandise.
15. The unauthorized sale of such bootleg merchandise is likely to create confusion and/or misunderstanding by the purchasers as to the source and sponsorship of such merchandise.
16. The defendants are selling their imitation merchandise without the permission or agreement of the plaintiff and have not obtained any license to manufacture, distribute or sell the same. On the contrary, plaintiff has formally demanded that they desist from selling such infringing shirts, but the defendants have ignored such demands and refuse to cease such acts.
17. The defendants, and each of them, have been transacting and continue to transact business in this state and elsewhere in interstate commerce, and have been and continue to infringe plaintiff's right of publicity in this state and elsewhere in interstate commerce, and regularly have been and now do business and solicit business and derive substantial revenue from goods sold, used and consumed in this state and elsewhere in interstate commerce, including the accused merchandise as aforesaid. The defendants, and each of them, expected or should have reasonably expected their acts, including the aforementioned acts and those set forth hereinbelow, to have consequence in this state.
18. The defendants, and each of them, have and at all times relevant to the acts set forth hereinabove had actual and constructive knowledge of the rights of plaintiff but have proceeded in complete disregard thereof.
19. Unless the defendants are restrained and enjoined from selling their unauthorized merchandise, their conduct will deprive plaintiff of a substantial portion of the income he expects to receive from the sale of licensed personality merchandise.
20. The defendants' prominent identification of the shirt as the "Dennis Rodman Tattoo T-shirt" as well as their appropriation and use of these tattoos as aforesaid are each false descriptions and representations that said goods are made, sponsored or approved by, or are otherwise affiliated with the plaintiff. Said acts are in violation of 15 U.S.C. 1125(a) in that defendants are using in connection with goods false designations of origin and false or misleading descriptions of fact, which are likely to cause confusion or to deceive as to affiliation, connection or association, or as to sponsorship or approval, and have caused such goods to enter into or affect interstate commerce. Plaintiff believes that he is and is likely to be, damaged by such false descriptions and representations by reason of the likelihood that purchasers will be confused as to the true source, sponsorship or affiliation of said goods.
AS AND FOR A SECOND COUNT FOR VIOLATION OF 15 U.S.C. 1125(a)
21. Plaintiff hereby realleges, as if fully set forth, the allegations of Paragraphs 1 through 20 herein.
22. As a result of the widespread identification of the shirt by the defendants, their agents and representatives (including sales reps) as being the "Dennis Rodman Tattoo T-shirt," the defendants' customers, mostly retail stores, have themselves prominently identified and described the shirt in like manner, thus exploiting the shirt's association and identity with the plaintiff in all their promotional and sales activities.
23. It was reasonable -- in fact, it was virtually certain -- that these (retail store) customers would themselves so identify the shirt as the "Dennis Rodman Tattoo T-shirt."
24. At the time that they advertised, offered for sale and sold their infringing shirt, the defendants and each of them must have expected and, plaintiff avers, certainly did expect that their said customers would so identify and describe the shirt.
25. The said identification of the shirt as aforesaid by the defendants' customers, the retail stores, is a false description and representation that said goods are made, sponsored or approved by, or are otherwise affiliated with, the plaintiff. Said acts are in violation of 15 U.S.C. 1125(a) in that such retail stores are using in connection with goods false designations of origin and false or misleading descriptions of fact, which are likely to cause confusion or to deceive as to affiliation, connection or association, or as to sponsorship or approval, and have caused such goods to enter into or affect interstate commerce. The defendants are liable for such false designations as contributory infringers. Plaintiff believes that he is and is likely to be, damaged by such false descriptions and representations by reason of the likelihood that purchasers will be confused as to the true source, sponsorship or affiliation of said goods.
AS AND FOR A THIRD COUNT FOR MISAPPROPRIATION OF PLAINTIFFS' RIGHTS OF PUBLICITY
26. Plaintiff hereby realleges, as if fully set forth, the allegations of Paragraphs 1 through 25 herein.
27. Due to the investment of substantial money, time and energy in advertising, publicizing and promoting the accomplishments and excellence of plaintiff, plaintiff has developed and now possesses a separate right of publicity.
28. The said identification of the plaintiff in association with the promotion, advertising and sale of the defendants' infringing shirt use of such tattoos on the defendants' infringing shirts constitutes a willful infringement of the plaintiff's separate right of publicity.
AS AND FOR A FOURTH COUNT FOR INTERFERENCE WITH CONTRACTUAL RELATIONS
29. Plaintiffs hereby reallege, as if fully set forth, the allegations of Paragraphs 1 through 28 herein.
30. The unauthorized and unlawful activities of the defendants as described hereinabove will wrongfully impair the value of the contracts referred to in Paragraph 2 herein.
AS AND FOR A FIFTH COUNT FOR UNFAIR COMPETITION
31. Plaintiffs hereby reallege, as if fully set forth, the allegations of Paragraphs 1 through 31 herein.
32. The aforesaid acts of the defendants have been and will be committed willfully and with full knowledge of the rights of plaintiff and with the intention of deceiving and misleading the public and of wrongfully misappropriating and trading upon the nationally recognized value of the good will and reputation of the plaintiff and of benefiting from and depriving plaintiff of the benefits arising from his said reputation and goodwill inhering therein.
33. The defendants' said misappropriation and unfair competition will interfere with the plaintiff's rights and ability to exploit the commercial value of his name and likeness.
34. Defendants will receive substantial profits from their unauthorized use and misappropriation of plaintiff's great reputation, and defendants will become unjustly enriched thereby. The defendants' aforementioned willful and unauthorized misappropriation of plaintiff's reputation will cause substantial and irreparable damage, injury and loss to the plaintiff and constitute unfair competition.
DAMAGE TO PLAINTIFF
35. By reason of the defendants' acts alleged herein, plaintiff has suffered and will continue to suffer damage to his reputation and goodwill, and has lost sales and profits he would have made but for the defendants' acts.
36. Unless the defendants' acts of misappropriation and unfair competition are immediately restrained and enjoined, the plaintiff will suffer irreparable injury in that defendants' actions will:
(a) lessen and dilute the value of the plaintiff's merchandising rights;
(b) interfere with his ability to exploit, market, and license such rights;
(c) create confusion in the marketplace as to the duly authorized source of Dennis Rodman merchandise; and
(d) deprive plaintiff of his just revenues based upon his legal exploitation of his name and likeness.
37. It will be impossible to ascertain the amount of compensation which could afford plaintiff adequate relief for such threatened continuing acts, and a multiplicity of judicial proceedings would be required. Moreover, the remedies at law are not adequate in any event to compensate plaintiff for injuries suffered and threatened.
PRAYER FOR RELIEF
WHEREFORE, plaintiff prays:
1. That defendants, their agents, servants, employees, officers, attorneys, successors and assigns and all persons acting under the defendants or on their behalf, be enjoined pendente lite and permanently from:
(a) manufacturing, distributing, selling, offering for sale, holding for sale or advertising any T-shirt or other product bearing the name or likeness of the plaintiff, or bearing any of plaintiff's body tattoos, or any colorable variation thereof;
(b) representing that any article of merchandise manufactured, distributed, sold, held for sale or advertised by them is sponsored or authorized by the plaintiff;
(c) applying the plaintiff's name or likeness, of any of his body tattoos, or any reproduction, counterfeit, copy or colorable imitation thereof, to labels,-signs, prints, packages, wrappers, receptacles or advertisements intended to be used or capable of being used, or used in connection with the sale, offering for sale, distribution or advertising of goods or services or in connection with which such use is likely to cause confusion or to cause mistake or to deceive;
(d) using plaintiff's name, likeness or identity in association with the sale, offering for sale, distribution or advertising of goods or services in any manner;
(e) making, having made for them, selling, distributing or disposing of in any manner any advertisements or promotional material including ad mats, point of sale devises, catalogs, letters, posters or brochures using the plaintiff's name or likenesses, or using any of plaintiff's body tattoos;
(f) filling any order for merchandise associated with plaintiff;
(g) engaging in any unfair trade practices or unfair competition against the plaintiff;
(h) aiding, abetting, encouraging or inducing another to do any of the acts herein enjoined.
2. That defendants, and each of them, be required to account and pay over to the plaintiff all gains, profits and advantages derived by each of them from their adjudged unfair competition with the plaintiff; from their violation of Section 43 (a) of the Lanham Act; and from their infringement of the plaintiff's right of publicity; as well as the damages which the plaintiff has sustained by reason of the defendants' said acts.
3. That because of the willful nature of their violation of Section 43 (a) of the Lanham Act, the Court enter judgment for the plaintiff for three times the amount of said damages.
4. That the Court award punitive and exemplary damages against the defendants and in favor of the plaintiff in such sum as it determined at trial by reason of the said defendants' fraud in using the plaintiff's identity and body tattoos.
7. That the defendants and each of them be required to pay to the plaintiff the costs of this action, and reasonable attorneys' fees to be allowed by the Court.
8. That the defendants be required to deliver up to the plaintiff all merchandise and material in their possession or under their control which is subject to the injunctive order of this Court, including all negatives, positives, plates, molds, matrices, film positives and negatives, screens, and any other materials for making the same, for the purpose of destruction or other disposition.
9. That the defendants be required to withdraw from their customers, retailers and all others all of the material specified in Paragraphs 1(a) through 1(d) hereof, including offering reimbursement for same, and delivering up the same to the plaintiff for destruction or disposition.
10. That plaintiff have such other and further relief as the Court deems just and proper.
Jules D. Zalon
Jules D. Zalon, P.C.
226 Oakland Road
Maplewood, New Jersey 07040
Tel: (201) 762-8400
Richard K. Howell, Anthony J. McCusker,
Rutan & Tucker, LLP
611 Anton Blvd., Suite 1400
Cosa Mesa, California 92628-1950
Tel: (714) 641-5100
Attorneys for Plaintiff
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