Cousteau Soc'y, Inc. v. Cousteau, Civil No. 3:19-cv-1106(AWT)

• Decision Date: 08 October 2020
• Docket Number: Civil No. 3:19-cv-1106(AWT)
• Citation: 498 F.Supp.3d 287
• Parties: THE COUSTEAU SOCIETY, INC., Plaintiff, v. Celine COUSTEAU ; CauseCentric Productions, Inc. ; and The Celine Cousteau Film Fellowship Inc. a/k/a The Outdoor Film Fellowship, Defendants.
• Court: U.S. District Court — District of Connecticut

498 F.Supp.3d 287

THE COUSTEAU SOCIETY, INC., Plaintiff,

v.Celine COUSTEAU ; CauseCentric Productions, Inc. ; and The Celine Cousteau Film Fellowship Inc. a/k/a The Outdoor Film Fellowship, Defendants.

Civil No. 3:19-cv-1106(AWT)

United States District Court, D. Connecticut.

Signed October 8, 2020

James E. Rosini, Jeremy Boczko, Sherli M. Furst, Hunton Andrews Kurth LLP, Jennifer Insley-Pruitt, Dechert, LLP, New York, NY, Robert C. Heim, Dechert LLP, Philadelphia, PA, Steven J. Stafstrom, Jr., Pullman & Comley, Thomas S. Lambert, Pullman & Comley, LLC, Bridgeport, CT, for Plaintiff.

Brian A. Coleman, Tore DeBella, II, Faegre Drinker Biddle & Reath LLP, Washington, DC, Michael A. Valerio, Faegre Drinker Biddle & Reath LLP, Hartford, CT, for Defendants.

RULING ON MOTION TO DISMISS

Alvin W. Thompson, United States District Judge

Plaintiff The Cousteau Society, Inc. ("TCS") brings this action against defendants Celine Cousteau, CauseCentric Productions, Inc. ("CPI"), and The Celine Cousteau Film Fellowship Inc. a/k/a The Outdoor Film Fellowship ("CCFF"), claiming Lanham Act trademark infringement and false association (Counts I, II, and III), violations of Connecticut common-law trademark and unfair competition law (Count IV), and violations of the right of publicity under French or Connecticut law (Counts V and VI). The defendants move to dismiss for lack of personal jurisdiction or, in the alternative, failure to state a claim. For the reasons set forth below, their motion is being granted in part and denied in part.

I. FACTUAL ALLEGATIONS

Plaintiff TCS is a New York not-for-profit corporation with its principal place of business in Virginia. It was established in 1973 to promote and protect the legacy of Jacques-Yves Cousteau, a French oceanic explorer, documentarian, and marine conservationist who died in 1997. In the 1940s, Jacques-Yves Cousteau began filming underwater after co-developing the aqualung and underwater camera. He explored and researched the world's oceans, seas, and rivers for nearly half a century aboard his ship, the Calypso. He produced more than 120 television series and specials, documentaries, and films, and authored more than fifty books based on his explorations aboard the Calypso and other vessels. He also led efforts at marine conservation and sought to raise awareness about the consequences of pollution and human behavior on the environment.

Prior to his death, Jacques-Yves Cousteau transferred the exclusive rights to his worldwide intellectual property portfolio to TCS. The intellectual property portfolio includes registered and unregistered trademarks, as well as Jacques-Yves Cousteau's personality rights, such as his right of publicity. TCS has registered trademarks including "THE JOURNEY CONTINUES," "JACQUES-YVES COUSTEAU," "COUSTEAU," and "CALYPSO." TCS also alleges that Jacques-Yves Cousteau's red cap has gained distinctiveness and notoriety and is entitled to trademark protection, although it is not registered. Additionally, TCS owns the exclusive rights to use Jacques-Yves Cousteau's name, image, signature, voice, photograph, and likeness.

Defendant Celine Cousteau is an estranged granddaughter of Jacques-Yves Cousteau. CPI and CCFF are the same entity. CPI simply changed its name in 2015. Celine Cousteau is the founder and executive director, and a board member, of defendant CPI/CCFF, which produces and distributes multimedia content with an emphasis on short films concerning environmental and socio-cultural issues.¹ Neither of the defendants is or has been associated with TCS.

Celine Cousteau produced, narrated, and appeared in a not-yet-released documentary entitled Celine Cousteau, The Adventure Continues (the "Documentary"). The Documentary "retraces [Jacuqes-Yves Cousteau's] steps, exploring how the planet has changed since his epic adventures." (First Am. Compl. ("FAC"), Ex. L, at 2, ECF No. 24.) The Documentary is being shot in multiple locations around the world, including Patagonia and the Red Sea. (See id. at 2-3.) TCS alleges that the Documentary and its related promotional materials infringe on TCS's intellectual property. TCS alleges that the title of the Documentary is confusingly similar to its mark THE JOURNEY CONTINUES. TCS also alleges that Celine Cousteau used images of Jacques-Yves Cousteau, used the mark JACQUES-YVES COUSTEAU, and traded off Jacques-Yves Cousteau's legacy to market and promote the Documentary through a promotional teaser video, which was uploaded to YouTube. The defendants also use an image of Jacques-Yves Cousteau wearing his trademarked red cap and the mark JACQUES-YVES COUSTEAU in a press kit for the Documentary, which they have distributed to TCS's business partners. The promotional materials for the Documentary note that "[i]n the first few minutes [of the Documentary], Celine [Cousteau] reminisces about her grandfather and his time in the region." (FAC, Ex. K, at 10.) Those materials also refer to Jacques-Yves Cousteau's past work, stating:

To gain a better understand of [the whale], Jacques-Yves Cousteau sailed to the southern seas to observe whales in their own kingdom. That was back in 1972, the year Celine [Cousteau] was born.... 45 years later, Celine [Cousteau] takes off from Chiole, the gateway to Patagonia ....

(Id. at 14.) They also state that Jacques-Yves Cousteau "took [Celine Cousteau] on a trip to the Amazon when she was nine, on board his research boat. Her destiny to follow the legacy came right away." (FAC, Ex. L, at 3.)

Celine Cousteau also directed and co-wrote a film entitled Tribes on the Edge (the "Film"), which was produced by CPI. She also appears in and narrates the Film. The Film explores environmental threats and health crises of indigenous peoples in the Brazilian Amazon River Basin. TCS alleges that the Film and its related promotional materials infringe on TCS's intellectual property. The Film gratuitously uses images and pictures of Jacques-Yves Cousteau and exploits his name. In promoting the Film on CPI's website, the defendants exploited Jacques-Yves Cousteau's name and likeness in various posts. On CPI's website, a post about the Film by Celine Cousteau says: "Twenty-five years after joining my grandfather and his Calypso crew on his expedition in the Amazon, here I was again, this time with my father ..." (FAC ¶ 93.) Celine Cousteau also promoted the Film on CPI's website by offering a giveaway of one of Jacques-Yves Cousteau's books. There is also a post on CPI's website which contains the tag "jacques-yves cousteau" even though Jacques-Yves Cousteau is not mentioned in the post. In the defendants’ promotional teaser for the Film, Celine Cousteau narrates and references Jacques-Yves Cousteau and her trip with him to the Amazon, and "invokes Jacques-Yves Cousteau's likeness by referring to him and superimposing a picture of herself in front of the Calypso." (Id. ¶ 96.) The Film was promotionally screened to a live crowd in Connecticut on July 19, 2019.

TCS also alleges that the defendants infringe on TCS's intellectual property through various activities which are designed to attract donors and funding for CCFF. For example, Celine Cousteau posted on CCFF's website: "I am excited to announce, on my grandfather's birthday ... the launch of The Celine Cousteau Film Fellowship." (Id. ¶ 100.) Further, on CCFF's website, "Celine Cousteau used to purposefully provide a picture of what appear to be ‘fellows’ and ‘mentors’ in Jacques-Yves Cousteau's trademarked red cap." (Id. ¶ 101.) In another post, Celine Cousteau writes about her grandfather as the "great inspiration for me personally as I set out to launch my own organization," and she includes a photograph of Jacques-Yves Cousteau hugging a young Celine Cousteau. (Id. ¶ 102.) TCS alleges that the defendants use and trade off TCS's intellectual property to create the false impression that Jacques-Yves Cousteau is associated with or supports the defendants.

II. LEGAL STANDARDS

A. Personal Jurisdiction -- Federal Rule of Civil Procedure 12(b)(2)

On a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction, "[t]he plaintiff bears the burden of establishing that the court has jurisdiction over the defendant ...." Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 208 (2d Cir. 2001). Where a defendant challenges "only the sufficiency of the plaintiff's factual allegation, in effect demurring by filing a Rule 12(b)(2) motion, the plaintiff need persuade the court only that its factual allegations constitute a prima facie showing of jurisdiction." Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir. 1990) ; see also id. at 197 (noting that a Rule 12(b)(2) motion "assumes the truth of the plaintiff's factual allegations for purposes of the motion and challenges their sufficiency"). " ‘[W]hen a motion to dismiss for lack of jurisdiction is decided on the basis of affidavits and other written materials .... [t]he allegations in the complaint must be taken as true to the extent they are uncontroverted by the defendant's affidavits.’ " Seetransport Wiking Trader Schiffarhtsgesellschaft MBH & Co., Kommanditgesellschaft v. Navimpex Centrala Navala, 989 F.2d 572, 580 (2d Cir. 1993) (quoting Taylor v. Phelan, 912 F.2d 429, 431 (10th Cir. 1990) (per curiam)). Thus, " ‘[i]f the parties present conflicting affidavits, all factual disputes are resolved in the plaintiff's favor, and the plaintiff's prima facie showing is sufficient notwithstanding the contrary presentation by the moving party.’ " Id. Finally, "the amenability of a foreign corporation to suit in a federal court in a diversity action is determined in accordance with the law of the state where the court sits," and thus Connecticut law is applied. Arrowsmith v. United Press Int'l, 320 F.2d 219, 223 (2d Cir. 1963).

B. Failure to State a Claim -- Federal Rule of Civil Procedure 12(b)(6)

When deciding a motion to dismiss under Rule 12(b)(6), the court must accept as true all factual allegations...