Lewis v. Marriott Intern., Inc.
| Decision Date | 19 December 2007 |
| Docket Number | Civil Action No. 07-3701. |
| Citation | 527 F.Supp.2d 422 |
| Parties | Carl LEWIS, Plaintiff, v. MARRIOTT INTERNATIONAL, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Todd M. Mosser, Ruben Honik, Golomb & Honik, PC, Philadelphia, PA, for Plaintiff.
Darius C. Gambino, DLA Piper Rudnick Gray Cary U.S., L.L.P., James J. Gross, DLA Piper U.S., L.L.P., Philadelphia, PA, for Defendant.
Plaintiff Carl Lewis brings this suit against Defendant Marriott International, Inc. ("Marriott") for false advertising under the Lanham Act and unauthorized use of his name under Pennsylvania statutory and common law. Lewis was the executive chef at the Downtown Courtyard by Marriott in Philadelphia until he left in 2005 to start a private catering business. Lewis alleges that after his departure, and contrary to his expressed intent, Marriott continued to use his name in materials used to sell wedding packages. Lewis seeks compensatory and punitive damages, injunctive relief, and attorney's fees. Before the Court is Marriott's motion to dismiss the complaint.
Lewis challenges Marriott's use of his name with four causes of action: 1) false advertising in violation of the Lanham Act, 15 U.S.C. § 1125; 2) unauthorized use of name in violation of 42 Pa. Cons. Stat. § 8316; 3) misappropriation of right of publicity; and 4) invasion of privacy by misappropriation of name. Marriott moves to dismiss all four counts.
In deciding a motion to dismiss for failure to state a claim upon which relief can be granted, the Court must "accept as true all allegations in the complaint and all reasonable inferences that can be drawn therefrom, and view them in the light most favorable to the non-moving party." De-Benedictis v. Merrill Lynch & Co., Inc., 492 F.3d 209, 216 (3d Cir.2007) (quotation omitted). The Court need not, however, "credit either bald assertions or legal conclusions in a complaint when deciding a motion to dismiss." Id. (quotation omitted). Viewing the complaint in this manner, the Court must dismiss the complaint if it fails to state a claim upon which relief can be granted.1
The Lanham Act creates a federal cause of action for certain types of false representations:
Any person who, on or in connection with any goods or services ... uses in commerce any ... name ... or ... false or misleading description of fact, or false or misleading representation of fact which ... is likely to cause confusion, or to cause mistake, or to deceive as to the ... association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or ... in commercial advertising or promotion, misrepresents the nature, characteristics, [or] qualities ... of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1). Marriott challenges Lewis's Lanham Act claim for lack of subject matter jurisdiction and failure to state a claim.
The Lanham Act's grant of jurisdiction is limited to claims alleging false or misleading representations that are used "in commerce." 15 U.S.C. § 1125(a)(1); see also id. § 1127 (); Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer, 290 F.3d 578, 586 (3d Cir.2002) (). It is well established that "[t]he commerce requirement has been broadly interpreted." U.S. Healthcare, Inc. v. Blue Cross, 898 F.2d 914, 922 (3d Cir.1990); Highmark, Inc. v. UPMC Health Plan, Inc., 276 F.3d 160, 165 (3d Cir.2001) .
Here, Lewis claims that Marriott's continued use after his resignation of marketing materials representing that its wedding packages are catered by "our Chef Carl Lewis" is a false representation in violation of the Lanham Act. Lewis alleges that Marriott "is a worldwide operator and franchisor of over 2,800 hotels and related facilities," and that the Marriott hotel where he was formerly employed is located in Philadelphia. Id. 114. Lewis further alleges that his renown as a manager and chef extends to the greater Philadelphia area, id. ¶ ¶ 8, 13, and that his wedding packages were sought after by the public due to his reputation, id. ¶ 17.
Although Lewis's jurisdictional allegations are general, drawing reasonable inferences in his favor at this stage,2 the complaint sufficiently alleges that Marriott used false representations "in commerce." It is reasonable to infer that customers from the greater Philadelphia area—including New Jersey and Delaware—would plan a wedding at a prominent hotel in Philadelphia, especially given the alleged extent of Lewis's renown. Accord S & C Rest. Corp. v. Sofia's Diner Rest., Inc., No. 98-5972, 1999 WL 627914, at *1 (E.D.Pa. Aug. 18, 1999) (). Therefore, the motion to dismiss for lack of subject matter jurisdiction will be denied.3
Marriott next argues that the Lanham Act claim should be dismissed for failure to state a claim. Marriott argues that the complaint fails to allege an essential element of a false advertising claim under the Lanham Act: that the improperly used name is a "mark" that is "valid and legally protectable.4 Tillery v. Leonard & Sciolla, LLP, 437 F.Supp.2d 312, 320 (E.D.Pa.2006) (citing Opticians Ass'n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 192 (3d Cir.1990)).
Lewis premises his Lanham Act claim on the improper use of his name. "Personal names can serve as a trademark," but they "require a showing of `secondary meaning' in order to be protectable." Id. at 321.
A personal name acquires secondary meaning as a mark `when the name and the business become synonymous in the public mind and the secondary meaning submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business.
Id. (quotations omitted). Secondary meaning must exist "at the time and place that defendant began use of the mark." Commerce Nat. Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir.2000). In short, Lewis must allege that the name "Carl Lewis" was synonymous with event planning and catering at the time Marriott began to improperly use it.
Although there is "not yet a consensus as to [the] specific elements" of secondary meaning, the Third Circuit has enumerated certain factors to guide a court's inquiry:
(1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers, and (11) actual confusion.
Commerce, 214 F.3d at 438. The factors enumerated above are "[a] non-exclusive list," id., and thus the absence of any particular factor does not necessarily require dismissal.
Here, the complaint contains several allegations relating to secondary meaning and is sufficient to state a claim for false advertising under the Lanham Act. Lewis alleges that he "is a well' known chef caterer, and event planner in the Philadelphia area, whose excellent reputation in the food and beverage and event planning industry has been cultivated by a string of successful endeavors in the Philadelphia region as far back as the early 1980's [sic]." (Compl. ¶ 10.) Lewis goes on to catalogue his years of experience and success in the industry, describing with particularity his success within the Marriott organization. Id. ¶¶ 11-19. Importantly, Lewis alleges that the success of Marriott's wedding packages was due to reliance on his "dynamic personality to market and sell these packages to potential clients" and his "interaction with customers, which, in turn, resulted in [him] gaining significant name recognition in the industry." Id. ¶ 17. Lewis alleges that Marriott generated over $2 million in revenue from his wedding packages in 1999, his first year as executive chef, and over $4 million in 2005. Id. ¶ ¶ 19-20. Finally, Lewis alleges that, after his resignation, Marriott copied his name without permission and "customers were misled and will continue to be misled into believing that Carl Lewis is the Executive Chef' for Marriott, id. ¶ ¶ 23, 25 & Ex A.
The complaint thus alleges a substantial "length of use"—from at least 1999 through 2005—of Lewis's name and a great "extent of sales and advertising leading to buyer association" of his name with event planning and catering, leading in turn to a large "number of sales." Moreover, Lewis alleges "the fact of copying" and "actual confusion" resulting therefrom. Therefore, Lewis alleges facts sufficient to show that his name had acquired a secondary meaning by at least 2005, which was before Marriott's allegedly improper use of the name in the summer of 2006. See Commerce, 214 F.3d at 438.
Marriott argues that the complaint should be dismissed because Lewis "has failed to plead the necessary factors," has relied on "his own subjective opinion that his name is entitled...
To continue reading
Request your trial
-
Brown & Brown Inc. v. Cola
...that, in the light most favorable to [plaintiff], demonstrate the existence of a secondary meaning.” Lewis v. Marriott Int'l, Inc., 527 F.Supp.2d 422, 427 (E.D.Pa.2007). In the case at bar, Defendants argue that the name “Doyle” was not a distinctive mark that Plaintiffs purchased in 2004 w......
-
Cornette v. Graver
...when the chef had extensively detailed his efforts at building a reputation in the catering industry. Lewis v. Marriott Int'l, Inc. , 527 F. Supp. 2d 422, 428 (E.D. Pa. 2007).Here, Cornette has presented sufficient evidence to demonstrate a likelihood that he will be able to show that his n......
-
Diodato v. Wells Fargo Ins. Servs., USA, Inc.
...banking issues, and that she had “extensive experience” and “generated substantial annual sales”); see also Lewis v. Marriott Int'l, Inc., 527 F.Supp.2d 422, 428 (E.D.Pa.2007) (at Rule 12(b)(6) stage, allegations that plaintiff invested time in creating a reputation from the early 1980s, in......
-
Afl Philadelphia LLC v. Krause
...(1st Cir.2004)). "Secondary meaning must exist `at the time and place that defendant began use of the mark.'" Lewis v. Marriott Int'l., Inc., 527 F.Supp.2d 422, 426 (E.D.Pa.2007) (quoting Commerce Nat. Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d There is not yet a......