Case 1:12-cv-05106-UA Document 1

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

WORLDWIDE HOME PRODUCTS, INC., -cvPlaintiff,

v.
THREESIXTY SOURCING, LLC, D/B/A 360 SOURCING, Defendant.

COMPLAINT JURY TRIAL DEMANDED

The Parties
1. Plaintiff is a New York Corporation with offices at 70 I Koehler Avenue, Suite,

Ronkonkoma, NY 11779 ("Worldwide"). 2. Upon information and belief, Defendant is a Delaware limited liability corporation

with a place of business at 19511 Pauling, Foothill Ranch, CA 92610-2619.

Nature ofthe Action

3. This action is brought for patent infringement under 35 U.S .C. 271.

Jurisdiction and Venue

4. 5. Jurisdiction is proper under 28 U.S.C. 1331 and 1338. Venue is proper under 28 U.S.C. 1391 (b)(2) and 28 U.S.C. 1391 (c).

Facts
6. On July 7, 2008, Worldwide filed patent application serial number 12/ 182,3 51 for

a Nestable Hanger with Integrated Cascade Hook (the '" 351 Application"). 7. On July 7, 2008, Worldwide filed patent application serial number 12/ 182,35 1 for

a Nestable Hanger with Integrated Cascade Hook (the '"351 Application").

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Facts 7. Bette Davis Eyes is a pop song written by Donna Weiss and Jackie

DeShannon in or about 1974. 8. In 1981, pop singer Kim Carnes released a recording of Bette Davis

Eyes. The recording spent nine non-consecutive weeks on top of the U.S. Billboard Hot 100 ranking of recordings. The recording was Billboard Magazine's number one single of 1981. The recording won the Grammy Awards for Song of the Year and Record of the Year in 1981. 9. To this day, Ms. Carnes recording of Bette Davis Eyes is played

regularly on radio stations of various formats. 10. 11. The lyrics of Bette Davis Eyes refer to actress Bette Davis. Neither Bette Davis while living nor the Estate of Bette Davis after her

death had any affiliation with Ms. Weiss, Ms. DeShannon or Ms. Carnes. Ms. Davis was not involved in the writing, recording or performance of the song Bette Davis Eyes. 12. Neither Bette Davis while living nor the Estate of Bette Davis after her

death ever objected to the title of the song Bette Davis Eyes nor the promotion of Ms. Carnes recording of it. 13. Bette Davis current, postmortem fame and notoriety with those who

reached adulthood late in her life or after her death is due substantially because of the popularity of Ms. Carnes recording of Bette Davis Eyes.

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14.

Upon information and belief, Ms. Davis acknowledged that, but for the

popularity of Ms. Carnes recording of Bette Davis Eyes, Ms. Davis would not be a part of modern times. 15. Upon information and belief, consumers first associate the phrase Bette

Davis Eyes with the Kim Carnes recording of the song Bette Davis Eyes. 16. 17. Plaintiff is a designer and distributor of jewelry. In or about late 2010, Plaintiff designed a line of jewelry that Plaintiff

named the Bette Davis Eyes collection. Plaintiff named the collection Bette Davis Eyes after the song as recorded by Ms. Carnes. Plaintiff selected this because, while brainstorming names for the jewelry line, a radio played Ms. Carnes recording. 18. Upon information and belief, but for the popularity of Ms. Carnes

recording of Bette Davis Eyes, consumers of Plaintiffs jewelry would be completely unfamiliar with Ms. Davis. 19. Upon information and belief, despite the popularity of Ms. Carnes

recording of Bette Davis Eyes, the majority of consumers of Plaintiffs jewelry are unaware of who Ms. Davis was. 20. likeness. 21. In promoting the line of jewelry, Plaintiff has never suggested that Ms. In promoting the line of jewelry, Plaintiff has never used Ms. Davis

Davis or her estate are in any way affiliated with Plaintiff or the line of jewelry, nor that Ms. Davis or her estate in any way endorse Plaintiff's jewelry.

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22.

The use of the phrase Bette Davis Eyes in connection with Plaintiffs

jewelry clearly refers to the song, and in particular conjures in the relevant consumers minds Ms. Carnes recording of it. 23. The use of the phrase Bette Davis Eyes in connection with Plaintiffs

jewelry does not conjure in the relevant consumers minds Ms. Davis. 24. By letter dated September 13, 2011, Defendants notified Plaintiff that

Defendants believed that Erickson Beamon is utilizing the Bette Davis name in association with its jewelry collection. Be advised that such unauthorized use is in contravention to [Defendants] rights and will not be tolerated. ... Moreover, your companys unauthorized use of the name our client in connection with your jewelry is a violation of United States Federal law, specifically, section 43(a) of the Lanham Act, 15 USC 1125(a). Such usage necessarily implies a misleading designation of source origin, endorsement, sponsorship, or approval by our clients of your merchandise. Under the Lanham Act, persons are prohibited from exploiting another's image and likeness for commercial purposes without authorization. 25. Based on these beliefs, Defendants demanded not only that Plaintiff

refrain from use of the name Bette Davis, but also that Plaintiff pay a fee to CMG to absolve Plaintiff of its alleged wrongdoing: Accordingly, this letter represents a formal demand that Erickson Beamon, as well as any and all affiliates, and advertisers, immediately cease and desist from any and all unauthorized use of our client. Be advised that a fee will be required to absolve you for the unauthorized use of our client that has already occurred.

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26.

Defendants made their demands under threat of legal action, stating: Should you fail to comply with our request, please be advised that our client is prepared to utilize all legal avenues available to ensure that all such unauthorized use ceases and that our client is fairly compensated for such past unauthorized use.

27.

Upon information and belief, Defendants made the foregoing statements

and demands fully aware that Plaintiffs jewelry line was not called Bette Davis, but instead called Bette Davis Eyes. 28. From September 13, 2011 until the present, Defendants have repeated

their demands for payment of fees and threatened legal action if such fees were not paid. 29. Upon information and belief, Defendants were aware at all times of the

existence of the song Bette Davis Eyes and of Ms. Carnes recording of it. 30. Defendants threats against Plaintiff directly threaten the loss of a New

York customer by Plaintiff, namely, Barneys New York. Such loss would result in injury to Plaintiff in New York without regard to where Plaintiff is located. First Count Declaratory Judgment Of Non-Infringement of Trademark Rights 31. Plaintiff repeats the allegations set forth in paragraphs 1 through 30 as if

set forth fully herein. 32. Davis. Defendants have no subsisting trademark rights in the name Bette

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33.

To the extent that Defendants assert any trademark rights in the name

Bette Davis, Plaintiffs use of the name Bette Davis Eyes for its jewelry collection does not infringe such rights.33. 34. Defendants baseless allegations of trademark infringement and threats of

litigation have and continue to interfere with Plaintiffs ability to conduct its business. 35. 36. 37. Plaintiff has been and continues to be harmed by Defendants actions. Plaintiff and Defendants have adverse legal interests. Defendants actions create a substantial controversy, between Plaintiff and

Defendants of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. Second Count Declaratory Judgment Of Non-Violation of Section 43(a) Of The Lanham Act, 15 U.S.C. 1125(a) 38. Plaintiff repeats the allegations set forth in paragraphs 1 through 30 as if

set forth fully herein. 39. Plaintiffs use of the name Bette Davis Eyes is not likely to cause

confusion among consumers as to any designation of source origin, endorsement, sponsorship, or approval by Defendants. 40. Defendants baseless allegations of violation of Section 43(a) of the

Lanham Act, 15 U.S.C. 1125(a) and threats of litigation have and continue to interfere with Plaintiffs ability to conduct its business. 41. 42. Plaintiff has been and continues to be harmed by Defendants actions. Plaintiff and Defendants have adverse legal interests.

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43.

Defendants actions create a substantial controversy, between Plaintiff and

Defendants of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. Third Count Declaratory Judgment Of Non-Infringement of Rights Of Publicity 44. Plaintiff repeats the allegations set forth in paragraphs 1 through 30 as if

set forth fully herein. 45. Plaintiffs use of the name Bette Davis Eyes does not misappropriate

Ms. Davis name, portrait, picture or voice in violation of any subsisting rights of publicity. 46. To the extent that Defendants contend that Plaintiffs use of the name

Bette Davis Eyes does misappropriate Ms. Davis name, portrait, picture or voice in violation of subsisting rights of publicity, Defendants have acquiesced and/or are estopped from asserting such rights based on Defendants failure to enforce such rights in connection with the song Bette Davis Eyes for more than 30 years. 47. Defendants baseless allegations of infringement of Ms. Davis rights of

publicity and threats of litigation have and continue to interfere with Plaintiffs ability to conduct its business. 48. 49. Plaintiff has been and continues to be harmed by Defendants actions. Plaintiff and Defendants have adverse legal interests.

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50.

Defendants actions create a substantial controversy, between Plaintiff and

Defendants of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. Prayer For Relief WHEREFORE, Plaintiff respectfully requests that the Court enter judgment in its favor as follows: A. Declaring that Plaintiffs use of Bette Davis Eyes does not infringe any valid,

subsisting trademark rights of Defendants; B. Declaring that Plaintiffs use of Bette Davis Eyes does not violate Section 43(a)

of the Lanham Act, 15 U.S.C. 1125(a); C. Declaring that Plaintiffs use of Bette Davis Eyes does not violate any rights of

publicity of Defendants; D. Preliminarily and permanently enjoining Defendants from asserting asserting to

any party that Plaintiffs use of Bette Davis Eyes violates any of the foregoing rights or infringes any trademarks of Defendants; E. Ordering Defendants to pay Plaintiffs attorneys fees, costs and other expenses

incurred as a result of this controversy; and

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