Case 2:08-cv-00536-JDH-NMK Document 1 Filed 06/03/2008 Page 1 of 17
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO EASTERN DIVISION
HARRY WINSTON, INC. ) 718 Fifth Avenue ) New York, NY 10019, ) Case No.: 2:08-CV-536 ) and ) ) HARRY WINSTON, SA ) 8, chemin du Tourbillon ) CP 159 -1228 Plan-Les-Ouates ) Judge: Geneva, Switzerland, ) ) Plaintiffs, ) ) v. ) ) CHARLES WINSTON LUXURY GROUP, LLC ) 3301 North 29th Avenue ) Hollywood, FL 33020 ) ) and ) ) THE LP WATCH GROUP ) 3301 North 29th Avenue ) Hollywood, FL 33020 ) ) Defendants. ) ______)
COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, PASSING OFF AND FALSE ADVERTISING
Plaintiffs Harry Winston, Inc. and Harry Winston S.A. (hereinafter collectively referred
to as either "Harry Winston" or "Plaintiffs"), by and through undersigned counsel, for their
Complaint against Defendants Charles Winston Luxury Group, LLC, and The LP Watch Group
(hereinafter collectively referred to as either "Charles Winston" or "Defendants"), state as
follows:
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1. This is an action for trademark infringement under the Lanham Act, 15 U.S.C. §
1114, unfair competition, passing off, false advertising and false designation of origin under the
Lanham Act, 15 U.S.C. § 1125(a), arising from Defendants' unauthorized use of Plaintiffs'
world-famous trademarks Winston and Harry Winston, and Defendants’ ongoing deceptive
marketing scheme that plays off the well known and longstanding reputation of Harry Winston
as the “Jeweler to the Stars”.
Parties
2. Plaintiff Harry Winston, Inc. (“HWI”) is a New York corporation with a principal
place of business at 718 Fifth Avenue, New York, New York. For close to a century, HWI has
been engaged in the business of design, manufacture, distribution and sale of fine jewelry of
exceptional quality and workmanship.
3. Plaintiff Harry Winston S.A. (“HWSA”) is a Swiss corporation located at 8,
chemin du Tourbillon, CP 159-1228 Plan-es-Ouates, Geneva, Switzerland, and is engaged in the
business of design, manufacture, distribution and sale of fine time pieces, including watches.
HWSA is related to and controlled by Harry Winston, Inc.
4. Upon information and belief, Defendant Charles Winston Luxury Group, LLC is
a Florida Limited Liability Company, which conducts business throughout the United States and
has offered for sale and sold Charles Winston jewelry and timepieces in this District.
5. Upon information and belief, Defendant The LP Watch Group, is a Florida
corporation and is the managing member/manager of Defendant Charles Winston Luxury Group,
LLC. Defendant LP Watch Group conducts business throughout the United States and has
offered for sale and sold Charles Winston jewelry, watches and timepieces in this District.
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Jurisdiction and Venue
6. This Court has jurisdiction over the subject matter of this action pursuant to 15
U.S.C. § 1121 and 28 U.S.C. § 1338(a) and (b). Personal jurisdiction in this District is proper
inasmuch as Defendants have solicited and conducted business within the State of Ohio. Venue
is proper in this District pursuant to 28 U.S.C. § 1391 (b)(2).
Facts The Fame of Harry Winston and the WINSTON Trademarks
7. There are few names more famous and renowned in the world of fine jewelry than
Harry Winston, and few trademarks more widely-recognized for jewelry than the Winston and
Harry Winston trademarks. Founded by Harry Winston in 1932, Harry Winston, Inc. invented
modern couture jewelry as it exists today. The Winston reputation was built on unparalleled
quality and exquisite design that emphasized the beauty of the stones and fine craftsmanship.
Ronald Winston, the late Harry Winston's son, represented his family's third generation in the
jewelry business. In 2006, Harry Winston, Inc., was acquired by Aber Diamond Corporation,
which has changed its name to Harry Winston Diamond Corporation, a publicly traded company.
8. Over the years, Harry Winston became known as the "Jeweler to the Stars," and
was renowned for doing business with royalty, famous families (such as the Rockefellers) and
countless Hollywood stars. Although the prices of some original and one-of-a-kind Harry
Winston jewelry creations often range in the millions of dollars, the Winston name has become
well-known to the general public through its promotions at functions such as the annual
Academy Awards of Motion Picture Arts and Sciences ("Oscars"), where for many years Harry
Winston, Inc. has loaned millions of dollars worth of jewels to the celebrity attendees. See
Exhibits A through E hereto, which are articles describing the various pieces of Harry Winston
jewelry worn by actors attending the 1999 Oscars.
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9. As far back as 1953, Marilyn Monroe immortalized the Harry Winston trademark
in the movie "Gentlemen Prefer Blondes" by singing the lyrics "Talk to me Harry Winston, Tell
Me All About It," in the song "Diamonds Are A Girl's Best Friend." See Exhibit F hereto which
contains the lyrics to the song "Diamonds Are A Girl's Best Friend."
10. In addition to the design and manufacture of fine jewelry, Harry Winston was also
well-known for acquiring important stones. Over the years, the House of Harry Winston has
held more of the world's most famous jewels than any entity other than the British Crown,
including the 337-carat Catherine the Great sapphire and the 95-carat Star of the East diamond.
In 1949, Harry Winston acquired the most famous gem in the world, the 46-carat Hope diamond.
In 1958, he donated the Hope diamond to the Smithsonian Institution, where it remains today.
See Exhibit G hereto, which is the Smithsonian Institution web-site which describes the history
of the Hope diamond.
11. In 1989, Harry Winston, Inc. expanded its business into watches. In 1986, Harry
Winston, Inc. established Harry Winston Ultimate Timepiece S.A. (“HWUT”), a Swiss
subsidiary corporation in order to design, produce and sell quality timepieces made with Swiss
movements. HWUT was merged into HWSA in 2006. Harry Winston watches are renowned as
a unique combination of exquisite jewelry with innovative, hand assembled Swiss watch
movements.
12. Plaintiffs are the owners of the trademarks "Winston" and "Harry Winston," all
common law rights relating to the use of those marks, the United States Trademark Registrations
thereof, and the goodwill symbolized by the trademarks and the registrations thereof for a variety
of goods and services, including the following:
a. WINSTON - Registration No. 848,629, Registered May 7, 1968, jewelry and polished diamonds;
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b. HARRY WINSTON - Registration No. 3,355,622, Registered December 18, 2007, jewelry and watches, namely, bracelets, earrings, rings, brooches, pendants, polished diamonds, precious and semiprecious gemstones, wrist-watches, pocket-watches, clocks, watch-bracelets, bracelets-fasteners, watch-cases and watch-movements;
c. HARRY WINSTON AVENUE C - Registration No. 3,079,120, Registered January 17, 2006, luxury jewelry composed of precious gemstones or precious metals; luxury chronometric instruments, namely, luxury watches and clocks composed of precious gemstones or precious metals; luxury watch bracelets, bracelet fasteners and watch cases composed of precious gemstones or precious metals, and luxury chronometers composed of precious gemstones or precious metals;
d. HW HARRY WINSTON - Registration No. 1,747,040, Registered January 19, 1993, jewelry, [sic] namely, crowns, necklaces, sets of jewels, brooches, bracelets, rings, earrings, cufflinks; horological and chronometric instruments; namely, write-watches, pocket watches, table watches, clocks, alarm-clocks, watch bracelets, bracelet fasteners, watch cases; jewel cases in precious metals, precious and semi-precious stones;
e. JEWELER TO THE STARS – Registration No. 2,200,587, registered October 27, 1998, retail store services in the field of diamonds and jewelry.
(All of the above, including the common law rights therein, are collectively referred to as
the "Winston Marks.") A photocopy of registration numbers 848,629, 3,355,622, 3,079,120,
1,747,040, and 2,200,587 are attached as Exhibits H through L hereto.
13. The registrations identified in paragraph 13 are valid and subsisting and record
title is in Plaintiffs; the Certificates of Registration are prima facie evidence of the validity of the
registrations, the Plaintiffs' ownership of the Winston Marks, and of the Plaintiffs' exclusive right
to use the Winston Marks in commerce in connection with the goods and services specified in
the Certificates of Registration under the provisions of 15 U.S.C. § 1057(b) and constructive
notice of the Plaintiffs' claim of ownership under 15 U.S.C. § 1072. Registration Nos. 848,629;
1,747,040 and 2,200,587 are incontestable, which provides conclusive evidence of the validity of
the registrations, the Plaintiffs' ownership of the Winston Marks, and of the Plaintiffs' exclusive
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right to use the Winston Marks in commerce in connection with the goods and services specified
in the Certificates of Registration under the provisions of 15 U.S.C. § 1115(b).
14. The Winston Marks have been extensively and continually used, promoted and
advertised by Plaintiffs within the United States and worldwide for more than seventy (70) years
for fine jewelry and related products.
15. Substantial amounts of time, effort and money have been expended over those
years in ensuring that the general public associates such marks exclusively with Plaintiffs and
their products. During fiscal year 2008 alone, Plaintiffs expended in excess of $30 million
dollars in marketing, advertising and promoting goods and services using their trademarks.
16. The Winston Marks on fine jewelry and timepieces have acquired a worldwide
recognition by virtue of Plaintiffs' use and efforts to promote and expand the use of the Winston
Marks, and through Plaintiffs' vigilance in policing the use of the Winston Marks.
17. The Winston Marks have acquired an extraordinary degree of consumer
recognition in the minds of the public, and are now famous and serve uniquely to identify
products and services provided by Harry Winston.
The Increasing Availability of Luxury-Type Products and "Popular" Designer Lines
18. Luxury items have always been part of the American Dream, in part because of
their inaccessibility. Greater media promotion of luxury lifestyles has made traditional luxury
brands more widely known to the general public, and more widely desired. To answer this
greater demand, many well-known purveyors of luxury products have begun promoting and
selling "popular" lines: less expensive versions of their famous designs. For example, several
luxury automobile manufacturers sell relatively inexpensive ($35,000 and under) "entry-level"
models, such as the C-class Mercedes, the X-type Jaguar and the 3-series BMW. Couture
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clothing designers such as Anne Klein and Donna Karan have ready-to-wear versions of their
runway designs that sell in department stores for thousands of dollars less. The venerable
Waterford Crystal has come out with its less-expensive "Marquis by Waterford" line. Indeed,
HWI has begun producing, marketing and selling certain types of jewelry that are in the retail
price range of $5,000.00.
19. In a similar phenomenon, other well-known designers and personalities are
promoting lines of clothing and other products that are sold in discount stores. For example,
Martha Stewart's "Everyday" line of household goods is one of K-Mart's best selling lines, while
Isaac Mizrahi, Cynthia Rowley and Michael Graves are among the designers who sell less
expensive versions of their design lines at Target.
20. As a result of the increasing availability of "popular" line designer goods to the
general public, the average consumer is not surprised when a luxury product that was formerly
out of their reach becomes available in a less-expensive version. However, a large part of the
appeal of these products is their designer label and connection with a well-known luxury
product.
Defendants' Expanding Use of the Winston Marks
21. Defendants Charles Winston Luxury Group and LP Watch Group sell jewelry and
watches under the brand names "Charles Winston", "Charles Winston Collection," and "Charles
Winston Couture".
22. When Defendant’s predecessor, Charles Winston Enterprises, first began selling
jewelry, the items were marketed on cable shopping channels such as shopnbc.com, and on
various websites such as www.emitations.com and www.replicasdirect.com. Like other items
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sold on these sites, jewelry bearing the Charles Winston name was cheap costume jewelry made
to resemble high priced, designer jewelry. See Exhibits M through P.
23. At this time, most of the Winston brand jewelry sold by Defendants retailed for
less than $100.00 and did not contain genuine stones or jewels. However, many of the jewelry
designs were highly reminiscent of “classic” Harry Winston pieces. Compare Exhibits Q and R.
24. Charles Winston is a distant relative of Plaintiffs’ founder, Harry Winston.
Defendants’ business first came to Plaintiffs’ attention in late 1998 where Plaintiffs learned that
Charles Winston was selling costume jewelry products on shopnbc.com’s predecessor, Value
Vision, by trading on his family connections with Harry Winston and by designing products that
evoked Winston designs.
25. In January 1999, Plaintiffs' attorneys wrote to Value Vision, and objected to
Charles Winston's use of the Plaintiffs' trademark and passing himself and his products off as
being sponsored, endorsed, affiliated or connected with Harry Winston. See Exhibit S hereto,
which is a true and accurate copy of the January 20, 1999 letter.
26. On January 25, 1999, David T. Quinby, of Value Vision wrote back to Plaintiffs'
counsel and advised that Value Vision would require Charles Winston to cease any activity
suggesting a connection between himself and Plaintiffs. See Exhibit T hereto, which is a true
and accurate copy of the January 25, 1999 letter.
27. Nevertheless, Defendants continued to make use of the Winston brand and
suggest a connection with Plaintiffs' businesses and the Winston Marks in advertising,
marketing, promoting and sale of jewelry products to the public.
28. In 2002, Defendants put up an internet website at www.charleswinston.com.
Early versions of Defendants’ website made explicit reference to Harry Winston. In the earliest
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web pages available from the Internet Archives “Wayback Machine”, dated July 21, 2002,
Charles Winston stated that he was “great nephew to the legendary Harry Winston”, that he was
“taught the jewelry business from the ground up” and that “one of the first pieces of jewelry [he]
helped create sold for over $5,000,000.”
29. Not only are these statements blatant attempts to trade off the good will and fame
of the Harry Winston name, they are not true. Charles Winston was not trained in the jewelry
business by anyone associated with Harry Winston, nor did he “help create” any Harry Winston
jewelry, much less any items that sold for $5 million. Nor did Charles Winston sell jewelry for
HWI in the early 1970’s (or at any time).
30. Following complaints from Plaintiffs, Defendants removed the more egregious
direct references to Harry Winston in late 2003. This was the beginning of Defendants’ pattern
of seeing how far it could push its efforts to trade off of the good will and fame of the Harry
Winston name before Defendants would draw protest from Plaintiffs. At the time HWI was still
being run, and was partly owned, by Harry Winston’s son and there was a reluctance to sue a
relative, albeit a distant one. However, Plaintiff’s counsel advised Defendants’ counsel of the
continuing objection to the Defendants’ activities.
31. In 2005, Defendants’ predecessor Charles Winston Enterprises attempted to
register the mark “Celebrity Style by Charles Winston.” Plaintiffs opposed the application in a
proceeding before the Trademark Trial and Appeal Board (No. 91164571) and received a
judgment from the Board refusing registration of the mark.
32. During this time period, Defendants’ activities were primarily confined to selling
cheap costume jewelry on line and in a few retail outlets. However, at some point in 2006,
Defendants began to promote a “Charles Winston Couture” collection – jewelry items using
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diamonds set in 14k gold. Upon information and belief, these pieces are priced in the thousands
of dollars and are sold in select brick-and-mortar jewelry stores. See Exhibit U hereto.
33. Charles Winston expanded his use, and misuse, of the Winston name and heritage
again in late 2006, when Defendant LP Watch Group made a significant investment in Charles
Winston Enterprises. The company was renamed Charles Winston Luxury Group, and began
promoting and selling watches under the Winston name. Defendant LP Watch Group is
marketing Charles Winston watches as one of its brands, and is also selling Charles Winston
jewelry items on its website at www.lpwatchgroup.com. It is not a coincidence that Defendants
recently entered the watch business after seeing the investment of substantial time and money
and ultimate success of Plaintiff developing the Harry Winston watch business over the past
eighteen years. It is one more example of Defendants’ seeking a free ride off of Plaintiff’s good
name and investment.
34. Defendants' use in commerce of the Winston Marks to attempt to associate
himself and the Defendants' business with Harry Winston and trade off of the goodwill and value
of those trademarks first on jewelry and very recently on watches, is likely to cause confusion, to
cause mistake or to deceive members of the public into believing that Plaintiffs have sponsored
or endorsed Defendants' use of the Winston Marks.
Defendants’ Acts of Unfair Competition
35. In addition to its misuse and infringement of the Winston marks, Defendants have
also engaged in unfair competition in their marketing and promotion of jewelry and timepieces
by playing off of the fame of Harry Winston as the “Jeweler to the Stars.”
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36. Defendants have made widespread use of the taglines “Jewelry for the Celebrity
in You” and “Celebrity Style” – taglines clearly intended to evoke Harry Winston’s well known
association with celebrities.
37. In August 2007, Defendant Charles Winston Luxury Group, Inc. filed two (2)
new trademark applications with the U.S. Patent & Trademark Office for the terms “Jewelry for
the Celebrity in You” (Serial No. 77/249,728) and “Celebrity Style” (Serial No. 77/249,742) to
be used in conjunction with the Charles Winston name and play off of the Harry Winston
heritage of its jewelry being sold to and worn by celebrities and movie stars.
38. In recent years, Defendants have taken this marketing scheme a step further and
have begun lending their jewelry and timepieces to celebrities to wear at the Academy of
Television Arts & Sciences annual Emmy Awards presentation. These items have subsequently
appeared at charity auctions. Charles Winston has also appeared on the daytime soap opera Days
of Our Lives to promote his jewelry.
39. The press release announcing LP Watch Group’s partnership with Charles
Winston describes Defendants’ increasing focus on marketing fine jewelry and timepieces with a
celebrity angle:
Over the years, Charles Winston found success in wooing high-end clients and celebrities alike, and has since focused his mission on creating a new category of affordable fine jewelry. The brand uses sterling silver, rhodium plating, and simulated and created gems to produce “jewelry for the celebrity in you,” as described in his tag line.
40. Defendants’ willful use of the Winston marks and celebrity marketing scheme on
“entry level” fine jewelry and timepieces has (1) affected interstate commerce by deceiving or
confusing the public throughout the nation; (2) constitutes a false designation of the Defendants'
goods and services by passing them off as being associated with Plaintiffs; (3) suggests
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connection with Plaintiffs which is of course non-existent; (4) suggests that Plaintiffs have
sponsored, licensed or approved of Defendants' goods, services, or businesses; and/or (5)
unfairly trades off of the fame and goodwill of Harry Winston as the “Jeweler to the Stars”.
First Cause Of Action
Federal Trademark Infringement
41. Plaintiffs reallege and incorporate by reference herein the allegations contained in
paragraphs 1 through 40 of the Complaint.
42. Defendants' aforementioned acts constitute trademark infringement in violation of
the Lanham Act, 15 U.S.C. § 1114.
43. Plaintiffs' federal registrations on the Principal Register for the marks WINSTON
- Registration No. 848,629; HW HARRY WINSTON – Registration No. 1,747,040; and
JEWELER TO THE STARS – Registration No. 2,200,587, are incontestable, which provides
conclusive evidence of the validity of the registrations, the Plaintiffs' ownership of the Winston
Marks, and of the Plaintiffs' exclusive right to use the Winston Marks in commerce in connection
with the goods and services specified in the Certificates of Registration under the provisions of
15 U.S.C. §1115(b)).
44. Defendants' wrongful use of the Winston Marks and passing off Charles Winston
as being associated with Harry Winston and indicating that Charles Winston employs methods
used by Harry Winston to create custom jewelry is likely to cause confusion as to sponsorship or
authorization by Plaintiffs. Defendants' actions constitute trademark infringement in violation of
section 32(a) of the Lanham Act, 15 U.S.C. § 1114.
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45. As a proximate result of Defendants' actions, Plaintiffs have suffered and will
continue to suffer great damage to their business, goodwill, reputation, profits and the strength of
the Winston Marks. The injury to Plaintiffs is and continues to be ongoing and irreparable. An
award of monetary damages alone cannot fully compensate Plaintiffs for their injuries and
Plaintiffs lack an adequate remedy at law.
46. The foregoing acts of infringement have been and continue to be deliberate,
willful and wanton, making this an exceptional case within the meaning of 15 U.S.C. § 1117.
47. Plaintiffs are entitled to a permanent injunction against Defendants, as well as all
other remedies available under the Lanham Act, including, but not limited to, compensatory
damages; treble damages; disgorgement of profits; and costs and attorneys' fees.
Second Cause of Action
Federal Unfair Competition, False Designation of Origin, Passing Off and False Advertising
48. Plaintiffs reallege and incorporate by reference herein the allegations contained in
paragraphs 1 through 47 of the Complaint.
49. Because of Defendants’ increasing reliance on an advertising scheme that plays
off the well-known longstanding association of Harry Winston with celebrities, its wrongful use
of the Winston Marks, and Charles Winston's misleading representation that he and/or his
products are approved by, connected with or produced using methods of Harry Winston, Inc.,
consumers are falsely led to believe that Defendants’ jewelry and timepieces are associated with,
endorsed by or are sponsored, or otherwise approved by Plaintiffs, in violation of section 43(a)
of the Lanham Act, 15 U.S.C. § 1125(a).
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50. The foregoing acts and conduct by Defendants constitute false designation of
origin, passing off and false advertising in connection with products and services distributed in
interstate commerce, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
51. Defendants' acts, as set forth above, have caused irreparable injury to Plaintiffs'
goodwill and reputation. The injury to Plaintiffs is and continues to be ongoing and irreparable.
An award of monetary damages alone cannot fully compensate Plaintiffs for their injuries and
Plaintiffs lack an adequate remedy at law.
52. Plaintiffs are entitled to a permanent injunction against all Defendants, as well as
all other remedies available under the Lanham Act, including, but not limited to, compensatory
damages; treble damages; disgorgement of profits; and costs and attorneys' fees.
Third Cause of Action
Dilution of Famous Marks (Tarnishment) Under 15 U.S.C. § 1125(c)
53. Plaintiffs’ reallage and incorporate by reference herein the allegations contained
in paragraphs 1 through 52 of the Complaint.
54. The Winston Marks are famous in the field of fine jewelry and have been widely
used for many years as indicators of Harry Winston products. There is a high degree of
recognition among potential purchasers of Harry Winston jewelry, and among the general public,
of the Winston Marks. Consumers associate the Winston Marks with jewelry of the highest
quality.
55. Defendants’ manufacturing, advertising, promotion, distribution and sale of lower
quality “fine” jewelry, jewelry using synthetic gemstones, and jewelry and watches designed to
resemble classic Harry Winston pieces, and their use of and dissemination of materials bearing
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the Winston Marks has and is tarnishing and causing injury to Plaintiffs’ business reputation and
is harming the reputation of the famous Winston Marks.
56. Defendants’ willful, wrongful conduct constitutes an extreme threat to the
distinctiveness of the Winston Marks which Plaintiffs have expended great efforts to develop and
maintain through their strict quality control over the fine jewelry products that Plaintiffs
themselves produce and sell to the public under the Winston Marks.
57. The distinctive nature of the Winston Marks is of enormous value, and Plaintiffs
are suffering and will continue to suffer irreparable harm and tarnishment of the Winston Marks
if Defendants’ wrongful conduct is allowed to continue.
58. Defendants’ manufacturing, advertising, promotion, distribution and sale of lower
quality “fine” jewelry, jewelry using synthetic gemstones, and jewelry and watches designed to
resemble classic Harry Winston pieces and their use of and dissemination of materials bearing
the Winston Marks will likely continue unless enjoined by the Court.
59. Plaintiffs are entitled to permanent injunction against all Defendants, as well as all
other remedies available at law.
WHEREFORE, Plaintiffs pray for judgment against Defendants as follows:
(1) that Defendants, their officers, agents, servants, employees, and attorneys, and
those persons in active concert or participation with Defendants who receive actual notice of the
court's order by personal service or otherwise, be permanently enjoined from:
(a) registering or using any of the Winston Marks, or any variation of the word "Winston" specifically including, but not limited to, any term that includes "Winston" or a misspelling of Winston as a trademark, trade name, corporate name or domain name;
(b) doing any other act or thing likely to induce the belief that Defendants' businesses, services or products are in any way connected with, sponsored, affiliated, licensed, or endorsed by Plaintiffs;
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(c) selling any watches or fine jewelry items under the name “Winston” or “Charles Winston”;
(d) using any of the Winston Marks for goods or services, or on the internet, or as domain names, email addresses, meta tags, invisible data, or otherwise engaging in acts or conduct that would cause confusion as to the source, sponsorship or affiliation of Defendants with Plaintiffs.
(e) engaging in any marketing, advertising, or promotional activities that suggest that Charles Winston is a celebrity jeweler or words to that effect
(2) that Defendants, in accordance with 15 U.S.C. § 1116(a), be directed to file with
this Court and serve upon Plaintiffs within thirty (30) days after service of the permanent
injunction a report in writing, under oath, setting forth in detail the manner and form in which
Defendants have complied with the permanent injunction;
(3) that Plaintiffs recover their actual damages sustained as a result of Defendants'
wrongful actions;
(4) that Plaintiffs recover Defendants' profits made as a result of Defendants'
wrongful actions;
(5) that Plaintiffs recover three (3) times Defendants' profits made as a result of
Defendants' wrongful actions or three (3) times Plaintiffs' damages, whichever is greater;
(6) that this Court issue an Order to the Commissioner of Patents and Trademarks
ordering the Commissioner to deny trademark registration of Serial No. 77/249,728 for the
trademark “Jewelry for the Celebrity in You” and Serial No. 77/249,742 for the trademark
“Celebrity Style”, pursuant to 15 U.S.C. §1119;
(7) that this case be deemed an exceptional case under 15 U.S.C. §§ 1117(a) and (b)
and that Defendants be deemed liable for and ordered to reimburse Plaintiffs for their reasonable
attorneys' fees;
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(8) that Plaintiffs be awarded exemplary damages for Defendants' willful and
intentional acts;
(9) that Plaintiffs recover their costs of court; and
(10) that Plaintiffs recover such further relief to which they may be entitled.
Dated: June 3, 2008 Respectfully submitted,
Joseph R. Dreitler Mary R. True BRICKER & ECKLER LLP 100 S. Third Street Columbus, OH 43215 Telephone: (614) 227-2300 Facsimile: (614) 227-2390
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When David O. Selznick asked his very dear friend and jeweler Harry Winston to loan best actress nominee Jennifer Jones something pretty to wear to the 1943
Academy Awards~ the producer of Gone
With the Wind and other great movies had no idea his "favor" would evolve into a multi-million dollar marketing idea.
ince the diamond-dripping Jones took her way through a celebrity'S cadre of rrum...1ger, agent, stroll on the red carpet-and later bounded publicist, stylist and couturier. on stage to accept her golden statuette for By now, Ibrr \\ 1Il~l<)1l Van Cleef & Arpel. Marti.n the title role in Song of Bel11adetre-\\ 1I1~"'11 Katz and Neil Lane are veterans a playing the Oscar ,lI1d d":l'Ib III "till' I JCCh kr'> h,1\" 1,1/.;c'1l ,I,ll ,111l1~" \,1 jewelry shufEle. But with spoils enough for everyone, Ill.: pLlhItUI~ . .Il1d III "\'111,' L.I,\" ~,t1l'~ n:,\h:lll Ir\'11l more and more players have gotten into the act, 11';\l1illg IL\hll\ III Idill ~loll including Bulgari, Graff, Fred Leighton, Asprey, David With a worldwide television audience of more than Orgell and Loree Radian. 1 billion and newspapers and magazines filled ,'lith Vv'hy do jewelers Tend to stars when most of the actors photographs for months afterwards, the Academy can alford to buy? The above mentioned Jennifer Awards has become a public relations bonanza for Jones, who was married to millionaire Norton Simon, those patient and skilled enough to negotiate their could have bought the Hope Diamond (which Hany
56 THE ACADEMY AWARDS PREVIEW HW-4154 Case 2:08-cv-00536-JDH-NMK Document 1-3 Filed 06/03/2008 Page 2 of 4
,~ .' ,
r~portedly mailed to th~ Smithsonian). But .105 ~U~) h.llih \.hid·ll\arkcllll~1111 I(\.-rll r\..I1I\ c dII(TII'r for \\ Ilbl<111 1','IIIlS <'lll ",\11 lIill1,m,lIlI I'I"U: ,I inl 'Iry b n~ \ II .\11 'll\pul,c hUI, Y"ll Il",·t! It' I.lII In lL,y\: "il h 11 .lIld -'Vl' II \llIh II'ul 11,lrclrllhc ,lIld 11\1\1 II IllS 1111" \IIUI" hi,"') k Such loans olten result In sales. Loans are more commonplace when there is an opportunity 10 generJte nJme recognition or publicily '98 show. The pre- and post-pub icily am the mOvie for the jeweler Jnd few opportunities equal the Oscars. and the Oscar telecast gained enough written verbiage "The Academy Awards is the eqUivalent of the about Asprey t ~ fill thr e telephone books, The com suci:tl Olympics," says Korosh Soltmi of the family pany was able to ride the publicity bandwagon even that v vns David OrgeU, The Rodeo Drive ",tore has adorned do=ens of stars over the last decade. When iJi 3 -second spo 011 the late James Coburn won for best supporting actor, "the camera focused on his ....rife Paula. who was wear the Oscars' is Jvorth ing one of our pieces. for 40 seconds uf air time (not to m~ntion aU the pictures that followed which adds abollt $1 I1til ion ... " more credibility to us 35 a jeweler" states Soltani. A spukesperson for Asprey agrees, AA 30-second spot on furthe when the same necklace was ,;old for :!i2.2 million at the Oscars is worth aboul $1 million and if you get a the Princess Ball, a charity aucthm benefiting the Diana, star to mention your piece, you can't buy that kind of Princess of Wales Memorial Fund and a Los geles-based publicity. It5 invaluable." Asprey should know all AIDS charity -alled Aid for AlDS. about publicity, The London-based jeweler has sup I h, h"lI'" III II.m ~ \\ 111-.lllll ,,[, <'ur ' h,I' 'nll\111 .1h, lit plied jewelrf for nearly all the James Bond films. And 1'1Ihh'lly f"l I ',I\k~ II <11111 did tlh
57 HW-4155 Case 2:08-cv-00536-JDH-NMK Document 1-3 Filed 06/03/2008 Page 3 of 4
: ~ ~ .- 3 ::·5 .; - ~ ~ - 0 - , - - ~ ;3 ; I :; -- l - I < -. THE SCHEDULE 35 AY HE LI E 0 o EE
SU DAY TUESDAY 'EDNESDA( THURSDA, 31 2 3 4 W~ke Up.lI i3 ok Gunn~r Call Dr Ronald Stan c1res.:; search Sam to he~r Pelerson for Mo)' fur Titan with Philip or noms -I-week personal re;.llmem Rachel...EI~ '-end llowers LO lr.lining c31u./9-f.i-l22l .-aab, Os<:ar, Hire extra olher four noms: Valentino, personal Empty Vase Vintage at Lily. assistant c31tJ 27/j.1~881
5 6 I 8 9 10 11 Walk the Conferen<:e call See reps for Grammys First filling VanitY fair Brian/CAAlre: labradoodle with .'\ng re: script I I.l\ I) \\'in~·()n. wilh]ack @EUel; cover shoot appearances on down Robertson Loree Rudkin. vilh An11le The Viav, Today. C:J.ll Vidoria BuilL-. Pkk shoes: we~ring Beaudry. GlvL4.. Oprah. re: psychic reading Cluistian, Manolo. Dinner/5<:ar etl Paige Denim Elkn, L.'TlO, 131O.-f5-1.85 I0) Jimm., lUan? @Ciu::en -milh L::tt,mnan Coffee with Jake @Unh. >pm
12 13 14 15 16 17 18 Guest ;.Ippe:lr:mce! A.-\ Ltmcheon Send 'v\oodh ux David Orgell. Drink more :3.tm Jep: dpm ret: Closing Night choculates to Barbara \Vestood. AE:\ FIt. .--\EX FIt. to Lo\ Drinks with E"i:m. Sant;.l Barbara Valentines Fred Leighton to As n Film Festival Owen@ TeddySi (800.:166.3168> Buy 'pacia Hollywood l,t>gUC interview handbaa I Roosevelt eiman..-.lre. @ lpm laxfidJs rrersurL.1.lt::ed 13Jt._i-f.S.stJU ragr:mc~
19 20 21 22 23 24 25 Watch BAHA 2nd uttlng Teeth Whitening: Brows: .-\nasl:lsia Haircut.: Sally H- Hail'.:olvr: l.ln<:er GIllw Awards at Kate's with Eli Dr. Zweig (310.273.31351 snag S1me Loui~iswss 13Ju.278S-f+fl l31O.2/H09:2J Shaggl; extensions Re,serve Brian/CA.\. re: Bring tea from IJ2J. 653.-fLl-kJ) '3IJ.2-f7. 8551 Tea Garden Music h'Press W rkon Broadway role Herbal Emporium \1.S00.255.+Hl acceptance 13JJ.205.t1li.Hl speech Cindys +Oth B-day party
26 27 28 1 2 3 4 Final nUing Spinal :ldjusunent: Dinnerl Air brush l;.ln At\. rehearS;! Get OPl LiSlen La Tibetan @Elies Franco Columb' Stephani & @ Peninsula Spa Sweetheart fo M..Ist(r Chants by Eyelash 13/0.nJ .lloOI Jordan's @ Spm rJ/Ll.551.2d88) :VlanVPedi 'th l.J.ma Tashi Under G's extensiuns Usa POStma for lingerie Re:.td new scnpt Go to bed early' w/Angeb Nice dk.Hi.SJJ() Meditate 13/ .27333331 13 lu.21'3.1.J511 \
5 6 Hair: Fredenc Est:lte planning: (31t.71/.8iOOI, Leah B15hop at Make-up: Valerie O'Melveny. . (311.).27-1.13-+8) P/u for Kodak @ 3:15. Walk down the regal red...and imile!!
THE ACADEMY AWARDS PREVIEW
54 Case 2:08-cv-00536-JDH-NMK Document 1-3 Filed 06/03/2008 Page 4 of 4
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Not ;ill those inquiries produced a sale, but 10 to l5 did. Most publicistj agree that the Oscars can be more than just J matter of attracting publicity The number in tem1S of conver gence is 20%, a reference to the percentJge of sales a jeweler can expect following the Academy Awards~ broadcast. Shoppers may not purchase what they see on the screen, but the pUblicity generated from this event drives them
Gena Davis wore Loree Rodkin's de igns imilar to thoo;c lhose at left. ( lit I. I It I I I i, '.,),
'j 1,.1 111. I 1 (1"1/1 ',,{It) ,I I I"" I t
r/NtI " (,lin III p Hillin \i1 I.
into the store or creates enough interest among wea thy out-of-towners that they call in their inquiries. \11 ILlL\u. "ilL' ~uLh dlelll :11I ,m,lre!" ... hll\1 h"!ll ~llmllll1,' \111(\ \1,II1II'd III "'l:l: Ihe 111111i"11 ',11111' 111 I,' till' [(\1' \\lIh 111'" I\lit' Idll1 JII"'L PICl' .\hh"Ugh ~l'nll'll\ "'ll,cllh f""hld Ihl' jl'\lckr \1',11111'\1 ,I (1.111 "I lli.llll<'nd ... lud... She wasn't comfort l!'lllll .... 1) Ing Id1l'Ihcr lh, hL'111 pUll h,ISl'd till' Ill.:l!, able wearing lots of gems. When she is comfortable,
1.1U'. the pi"c i" Ill' I,,",~cr 111 Ih" \\ II) 1"11 1\l\,'I1I'"y they hope she'll come back and buy a necklace, and Most jewelers say all visibility is good public rela then a bracelel and a watch. Educating the customer tions. "When my vendors see one of my pieces on a means sometimes doing it in steps. celebrity at the Oscars or in a maga;:ine, often times The first step is seeing it. And what better place to do they request a similar piece for their store,~ notes jew that than having it beamed into hving rooms and me ia elry deSigner Loree Rodkin whose deganrjewelry sells rooms straight off the red carpet at Oscar time? AAP
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