498 F.Supp.3d 287
D. Conn.2020Background
- Plaintiff The Cousteau Society, Inc. (TCS) owns worldwide intellectual property and publicity rights transferred by Jacques‑Yves Cousteau, including registered marks (e.g., THE JOURNEY CONTINUES, JACQUES‑YVES COUSTEAU) and an asserted unregistered mark in his red cap.
- Defendants: Celine Cousteau (granddaughter) and The Celine Cousteau Film Fellowship, Inc. (CCFF; formerly CauseCentric Productions, Inc.), which produces/distributes environment‑themed films and maintains interactive websites soliciting donations and promoting screenings.
- TCS alleges defendants used Jacques‑Yves Cousteau’s name, image, red cap, and similar titles to promote a not‑yet‑released Documentary (Celine Cousteau: The Adventure Continues), a Film (Tribes on the Edge), and fundraising—creating likelihood of consumer confusion and false endorsement under the Lanham Act and state law, and violating Cousteau’s right of publicity.
- Defendants moved to dismiss for lack of personal jurisdiction and for failure to state claims; the court denied jurisdictional dismissal as to Celine (personal service) and CCFF (interactive website + Connecticut screening), and dismissed in part on merits/pleading grounds.
- Key holdings: (1) personal jurisdiction exists over Celine and CCFF; (2) Rogers First Amendment defense did not require dismissal at this stage because TCS plausibly alleged likelihood of confusion; (3) Lanham Act counts based on the Documentary/promos were dismissed for failure to allege use in commerce in the U.S.; Lanham I & II as to the Film/promos were dismissed; Lanham claims based on website/fundraising and some promotional uses survive; (4) French law governs the right‑of‑publicity claim and TCS may enforce a patrimonial (transferable) image right if it was transferred before death; Connecticut right‑of‑publicity claim dismissed without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over Celine (individual) | TCS relied on service in Connecticut and Celine’s promotional activities; service suffices. | Celine argued Connecticut long‑arm must authorize jurisdiction; contested presence. | Court: personal service (transient jurisdiction) permits in personam jurisdiction; Rule 12(b)(2) denied as to Celine. |
| Personal jurisdiction over CCFF (foreign nonprofit) | CCFF transacted business in CT via interactive websites soliciting donations, promoted/hosted a CT screening; claims arise from those affairs. | CCFF argued it lacked sufficient Connecticut contacts and may not exist (name changed). | Court: CCFF (formerly CPI) transacts business in CT under Conn. Gen. Stat. §33‑1219(e); interactive donation functionality + CT screening establish specific jurisdiction; motion denied as to CCFF. |
| First Amendment/Rogers defense to Lanham claims | TCS: uses lack artistic relevance and instead exploit trademark for notoriety; confusion risk outweighs expression. | Defendants: Rogers protects artistic use; slight endorsement risk cannot trump free expression. | Court: Rogers test satisfied the artistic‑relevance threshold (low), but TCS plausibly alleged a compelling likelihood of confusion on the pleadings; First Amendment defense did not mandate dismissal. |
| Lanham Act "use in commerce" & likelihood of confusion for Documentary/Film/promos | TCS: defendants used marks and likeness in promotional materials, websites, and at a CT screening—constitutes use in commerce and causes confusion. | Defendants: no facts alleging distribution/use in U.S. commerce for Documentary promos; no mark use in Film/promos to support Lanham I/II. | Court: Dismissed Lanham counts (I–III) insofar as they rest on the Documentary/promos for lack of alleged U.S. use in commerce; dismissed Counts I & II re: Film/promos (no registered/unregistered mark use alleged); denied dismissal for Lanham claims based on website fundraising/promotional activity and false association claims tied to the Film. |
| Right of publicity: applicable law and survivability of post‑mortem image rights | TCS: French law applies and recognizes a patrimonial (transferable) right to exploit image if transferred before death; TCS holds those rights. | Defendants: French law does not recognize a post‑mortem/right transferable image right; claim should be litigated in France (forum non conveniens). | Court: Applied Restatement §145—French law governs. Rejected forum non conveniens and found persuasive authority that patrimonial image rights may survive/transfer if conveyed prior to death; Count V (French law claim) survives; Connecticut claim (Count VI) dismissed without prejudice. |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (establishes two‑part First Amendment test for artistic use of trademarks)
- International Shoe Co. v. Washington, 326 U.S. 310 (1945) (minimum contacts standard for personal jurisdiction)
- Burnham v. Superior Court of California, 495 U.S. 604 (1990) (transient/personal service permits in personam jurisdiction)
- Bristol‑Myers Squibb Co. v. Superior Court, 137 S. Ct. 1773 (2017) (specific jurisdiction requires affiliation between forum and the underlying controversy)
- Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) (website interactivity sliding scale for jurisdictional analysis)
- 1‑800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005) (elements of Lanham Act trademark claims; "use in commerce" analysis)
- Lombard Bros., Inc. v. General Asset Mgmt. Co., 190 Conn. 245 (Conn. 1983) (Connecticut long‑arm requires transacting business and the cause arising from those affairs)
- Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Grp., Inc., 886 F.2d 490 (2d Cir. 1989) (balance public interest in free expression against avoiding consumer confusion under Lanham Act)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (pleading plausibility standard)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (application of Twombly plausibility standard)