Caesars World, Inc. v. Milanian, CV-S-02-1287-RLH RJJ.

• Decision Date: 19 February 2003
• Docket Number: No. CV-S-02-1287-RLH RJJ.,CV-S-02-1287-RLH RJJ.
• Citation: 247 F.Supp.2d 1171
• Parties: CAESARS WORLD, INC. and Park Place Entertainment Corporation, Plaintiffs, v. Cyrus MILANIAN and the New Las Vegas Development Company, LLC, Defendants.
• Court: U.S. District Court — District of Nevada

247 F.Supp.2d 1171

CAESARS WORLD, INC. and Park Place Entertainment Corporation, Plaintiffs, v. Cyrus MILANIAN and the New Las Vegas Development Company, LLC, Defendants.

No. CV-S-02-1287-RLH RJJ.

United States District Court, D. Nevada.

February 19, 2003.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Pitney, Hardin, Kipp & Szuch, by Stephen W. Feingold, Richard H. Brown, New York, NY, for the Plaintiffs.

Melvin K. Silverman, Ft. Lauderdale, FL, Andras F. Babero, Law Office of Andras Babero, Las Vegas, NV, C. Hunterton, Hunterton & Associates, Las Vegas, NV, Gregory Buhyoff, Law Office of Gregory F. Buhyoff, Las Vegas, NV, Samuel

Benham, Hunterton & Associates, Las Vegas, NV, for the Defendants.

FINDINGS OF FACT, CONCLUSIONS OF LAW AND JUDGMENT

HUNT, District Judge.

This matter having come on for trial before the bench on January 21-23, 2003, and the Court having heard the testimony of witnesses and received evidence, the Court makes the following Findings of Fact, and Conclusions of Law, and enters Judgment thereon as follows:

FINDINGS OF FACT

A. The Parties

1. Plaintiff Caesars World, Inc. ("CWI") is a Florida corporation, with its principal place of business at 3930 Howard Hughes Parkway, Las Vegas, Nevada 89109.

2. Plaintiff Park Place Entertainment Corporation ("PPE") is a Delaware corporation, with its principal place of business at 3930 Howard Hughes Parkway, Las Vegas, Nevada 89109. CWI is a wholly owned subsidiary of PPE.

3. Defendant Cyrus Milanian is an individual domiciled in New Jersey who transacts business in the State of Nevada.

4. Defendant The New Las Vegas Development Company, LLC, is a Nevada limited liability corporation.

B. Plaintiffs Claims For Relief

5. Plaintiffs' initial complaint included five causes of action. Count One seeks declaratory judgment that Plaintiffs are not infringing any rights of Defendants by virtue of their use of the mark COLOSSEUM for a new entertainment venue at Caesars Palace in Las Vegas.

6. Count Two alleges that Defendants are infringing Plaintiffs' rights in their COLOSSEUM common law trademark in violation of the Lanham Act.

7. Count Three alleges that Defendants are infringing Plaintiffs' rights in their COLOSSEUM common law trademark in violation of the Nevada law.

8. Count Four alleges that Defendants are violating Plaintiffs' rights in their EMPIRE family of marks, in violation of the Lanham Act.

9. Count Five alleges that Defendants are violating Plaintiffs' rights in their EMPIRE family of marks, in violation of Nevada law.

10. At the conclusion of Plaintiffs' case the Court granted Plaintiffs' motion to amend the Complaint to conform to the evidence under Rule 15(b) of the Federal Rules of Civil Procedure. (Tr. 473-474). Plaintiffs are filing an Amended Complaint, which adds Count Six seeking a declaratory judgment that Plaintiffs have not violated any claims Defendant Milanian may have either for breach of contract, theft of trade secret, misappropriation or conversion, based on Milanian's purported 1996 proposal to CWI with respect to the construction at Caesars Palace of a replica of the ancient Roman Coliseum. While the Amended Complaint still includes the claims against NLVD (Counts 1-5), NLVD has been dismissed from this action.

C. The Plaintiffs

11. PPE is the world's largest gaming company owning, managing or having an interest in 27 properties operating under various trademarks including the famous CAESARS, BALLY'S, GRAND CASINO, PARIS, and FLAMINGO brands. (Tr. 49). In 1999, PPE acquired CWI in a transaction that included Caesars Palace, located in Las Vegas, Nevada, CWI's trademarks, and other CWI assets. (Tr. 51). In addition to gaming services, both PPE and CWI provide hotel and restaurant services, convention facilities and servies sporting events, concerts, and other entertainment to the public. (Tr. 66).

12. Plaintiffs' premiere property is Caesars Palace in Las Vegas, Nevada, which opened on August 6, 1966. (Tr. 49, 51). Caesars Palace has an opulent Roman-Grecian theme, with marble statuary, and stylized designs that reflect the theme, and facilities that bear the names associated with ancient Rome and Greece. (Tr. 51).

13. CWI is the owner of several marks registered with the United States Patent and Trademark Office ("USPTO"), relating to this Roman-Grecian theme, including, but not limited to: CAESARS (Reg. No. 0954684-incontestable (Ex. 463-K); Reg. No. 0983525-incontestable (Ex. 463-N); Reg. No. 1527770-incontestable (Ex. 463-AL); Reg. No. 1988107-incontestable (Ex. 463-BB)), CAESARS (stylized) (Reg. No. 1001363-incontestable (Ex. 463-0); Reg. No. 0954637-incontestable (Ex. 463-AC); Reg. No. 1527771-incontestable (Ex. 463-AM)), CAESARS PALACE (Reg. No. 0907693-incontestable (Ex. 463-A), Reg. No. 0951262-incontestable (463-T); Reg. No. 0963820-incontestable (Ex. 463-R); Reg. No. 0963656-incontestable (Ex. 463-U); Reg. No. 1091551-incontestable (Ex. 463-AR)), CAESARS PALACE (stylized) (Reg. No. 0907696-incontestable (Ex. 463-D); Reg. No. 0968212-incontestable (Ex. 463-V); Reg. No. 1090494-incontestable (Ex. 463-F); Reg. No. 1004058-incontestable (Ex. 463-S); Reg. No. 1158035-incontestable (Ex. 463-AG)), I, CAESAR (Reg. No. 0907694-incontestable (Ex. 463-B); Reg. No. 0966734-incontestable (Ex. 463-W)), CIRCUS MAXIMUS (Reg. No. 0965251-incontestable (Ex. 463-E)), THE PALACE (Reg. No. 1096310—incontestable (Ex. 463-G); Reg. No. 1128428-incontestable (Ex. 463-M)), A CAESARS WORLD RESORT (Reg. No. 1063525— incontestable (Ex. 463-H)), Roman Edging Paper Design (Reg. No. 0947706-incon-testable (Ex. 463-1); Reg. No. 1194868incontestable (Ex. 463-AJ)), CAESARS WORLD (Reg. No. 0995419-incontestable (Ex. 463-Y)), CAESARS WORLD (stylized) (Reg. No. 0995418-incontestable (Ex. 463-X)), THE PALACE COURT (Reg. No. 1128000-incontestable (Ex. 463-AD)), CLEOPATRA'S BARGE (Reg. No. 0979106-incontestable (Ex. 463-P); Reg. No. 1138113-incontestable (Ex. 463-AF)), SPANISH STEPS (Reg. No. 1146922-incontestable (Ex. 463-AH)), CAESARS TAHOE (Reg. No. 1263220-incontestable (Ex. 463-AK); Reg. No. 1191413-incontestable (Ex. 463-AW)), CAESARS TAHOE (stylized) (Reg. No. 1186958-incontestable (Ex. 463-AU); Reg. No. 1201555-incontestable (Ex. 463-AV); Reg. No. 1201511-incontestable (Ex. 463-AX)), CAESARS WOMAN (Reg. No. 1532553-incontestable (Ex. 463-AQ)), CAESARS WOMAN (stylized) (Reg. No. 1531548—incontestable (Ex. 463-AN)), CAESARS MAN (Reg. No. 1531549—incontestable (Ex. 463-AO)), CAESARS MAN (stylized) (Reg. No. 1538771—incontestable (Ex. 463-AP)), CAESARS PALACE LAS VEGAS—NEVADA with Grape Girl Design (Reg. No. 1168663—incontestable (Ex. 463-AS)), TOGA TEDDY (Reg. No. 1676542—incontestable (Ex. 463-AT)), CAESARS MAGICAL EMPIRE (Reg. No. 2630525 (Ex. 463-AY)), EMPERORS CLUB (Reg. No. 1743663—incontestable (Ex. 463-AZ)), FERENTINA (Reg. No. 2022361—incontestable (Ex. 463-BA)), EMPERORS EVERYDAY GIVEAWAY (Reg. No. 1837096—incontestable (Ex. 463-BC)), THE FORUM SHOPS AT CAESARS (Reg. No. 1829004—incontestable (Ex. 463-BD)) LA PIAZZA (Reg. No. 1649800—incontestable (Ex. 463-BE)), and CAESARS PALACE AT SEA (Reg. No. 1663829—incontestable (Ex. 463-BF)), Grape Girl Design (Reg. No. 0884317— incontestable (Ex. 463-Q), PALACE RESERVE (Reg. No. 1644190-incontestable (Ex. 463-AB)).

14. These registered trademarks are used in interstate commerce, are valid and all but one, CAESARS MAGICAL EMPIRE, is incontestable. (Tr. 264). Because of CWFs outstanding reputation in the hospitality industry and the millions of dollars dedicated to its promotion, the CAESARS name is among the most famous in the industry and is world-renowned. (Tr. 119).

D. CWI's COLOSSEUM Mark

15. When it opened in August 1966, CAESARS PALACE included 680 guest rooms, a 980-seat showroom branded as CIRCUS MAXIMUS, a GARDEN OF THE GODS pool-spa complex, and a 35,000 square foot convention center called THE COLOSSEUM Convention Complex. (Tr. 51). Newspaper articles describing the opening of CAESARS PALACE property included references to THE COLOSSEUM convention center. (Tr. 54). At the time of the opening, Caesars Palace produced and distributed brochures and press releases that identified THE COLOSSEUM convention center. The materials use the same stylistic devices to distinguish THE COLOSSEUM (e.g. Italics or all caps) as used to distinguish designations such as CAESARS PALACE or CIRCUS MAXIMUS that would become federally registered. (Tr. 60-61, 73-74, Ex. 124, 126). Those brochures and press releases were circulated in interstate commerce. This COLOSSEUM convention center in no way resembled the ancient Roman Coliseum. It did not have elevated seating and was rectangular in shape. (Tr. 51-53; Ex. 115)

16. THE COLOSSEUM has been used to designate many different services offered in relation to the convention center at Caesars Palace. (Ex. 124). Based on the testimony and exhibits admitted at trial, it is clear that these services include entertainment services such as headliner acts, televised events, live boxing and other sports events. (Tr. 99-103). THE COLOSSEUM was also used in connection with casino and gaming services such as annual slot tournaments and sports betting services. (Tr. 98-101, 105-108, Ex. 118, 442-M, 442-N, 442-L).

17. For instance, Exhibit 121 and 122 are examples of a ticket and invitation sent to select people on CWI's mailing list promoting its Super Bowl party. Such Super Bowl parties were held, with perhaps one or two exceptions, each year in THE COLOSSEUM facility and featured gaming services. (Tr. 98-100, Ex. 121, 122). In order to comply with Nevada State gaming regulations, one portion of THE COLOSSEUM facility was specially remodeled to include overhead cameras and other security to comply with Nevada gaming regulations. (Tr. 98). THE COLOSSEUM brand was also used in connection with food and banquet services. (Tr. 96-102, Tr. 104-108 Ex. 121, 122, 442-A, 118, 442-L, 442-M, 442-N). Since August of 2001, Plaintiffs have also offered...