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IP/Entertainment Case Law Updates

The Cousteau Society, Inc. v. Cousteau

District court holds granddaughter of renowned oceanic explorer Jacques-Yves Cousteau cannot escape trademark infringement, false association and right of publicity claims based on her allegedly unauthorized use of Cousteau’s trademarks, name, image and likeness in film projects and promotional materials.

Plaintiff The Cousteau Society Inc., a nonprofit New York corporation, is the exclusive owner of the worldwide intellectual property rights, including trademarks and rights of publicity, of legendary French oceanic explorer, documentarian and marine conservationist Jacques-Yves Cousteau. In the 1940s, Cousteau developed the aqualung and underwater camera and began filming underwater. For nearly half a century, he circumnavigated the world’s oceans, seas and rivers aboard his ship, the Calypso. As a result of his exploration and research, Cousteau produced more than 120 television series, documentaries and films, and authored more than 50 books. Prior to his death in 1997, Cousteau transferred his trademarks and rights of publicity to plaintiff. 

Plaintiff sued Cousteau’s estranged granddaughter Celine Cousteau and her organization, The Celine Cousteau Film Fellowship Inc., asserting claims for trademark infringement and false association under the Lanham Act, violations of Connecticut common law trademark and unfair competition law, and violations of the right of publicity under French law. Plaintiff claimed that defendants used, without authorization, various registered trademarks, including THE JOURNEY CONTINUES, an unregistered trademark in Cousteau’s famous red cap, and Cousteau’s name, image and likeness in an unreleased documentary film titled Celine Cousteau, The Adventure Continues, a separate film titled Tribes on the Edge, which had screened in Connecticut in July 2019, and promotional materials for both films.

Defendants moved to dismiss for failure to state a claim. After determining that defendants were subject to personal jurisdiction under Connecticut’s long-arm statute, the district court denied the motion in substantial part.

Defendants first argued that plaintiff’s claims were barred by the First Amendment pursuant to the two-pronged test set forth in Rogers v. Grimaldi. Under the Rogers test, trademark claims cannot be maintained where the use of a plaintiff’s mark (1) has some “artistic relevance” to the defendant’s expressive work and (2) does not “explicitly mislead” as to the source or content of the work. If both factors are satisfied, then “the danger of restricting artistic expression” is deemed to outweigh consumers’ potential likelihood of confusion.

Applying the first prong, which has a low threshold, the district court found that each of the alleged infringements had artistic relevance to the underlying works. Among other things, the documentary’s title, The Adventure Continues, referred to Celine’s travels that were at the heart of the documentary, and the use of her grandfather’s name and likeness in the works explained a significant aspect of her personal story, which was presented as context in both films. With respect to the second prong, however, the court held that plaintiff plausibly alleged that defendants’ use of Cousteau’s marks and publicity rights would mislead consumers into believing that plaintiff endorsed defendants’ works. The court found particularly relevant the similarity in the missions of defendants and Cousteau; defendants’ consistent use of Cousteau’s name, image and likeness in the films; and the prevalence of the emphasis on the familial relationship between Celine and her grandfather.

Having dispensed with defendants’ First Amendment argument, the district court next considered defendants’ argument that plaintiff failed to adequately plead that (1) the documentary The Adventure Continues and its promotional materials were used “in commerce,” as required by the Lanham Act, and (2) the film Tribes on the Edge and its promotional materials actually used any of plaintiffs’ trademarks. As to The Adventure Continues, the court agreed that plaintiff failed to allege that the film and its promotional materials were distributed in commerce in the United States—as opposed to in France—and failed to allege that defendants’ acts were committed in or targeted at the United States. For example, the complaint was silent as to whether defendants control the French company that allegedly posted the YouTube video promoting defendants’ documentary. Accordingly, the court dismissed the Lanham Act claims to the extent they were based on The Adventure Continues.

As to Tribes on the Edge, the court agreed with defendants that none of the alleged facts—including defendants’ use of Cousteau’s name in promoting the film on their website and their reference of Cousteau in a promotional teaser that superimposed Celine’s image over the Calypso—supported the conclusion that neither the film nor any of its marketing materials used plaintiff’s registered trademarks. Similarly, the court agreed that plaintiff did not adequately plead that the film or its marketing materials used any images of Cousteau’s red cap. Accordingly, the court dismissed the Lanham Act infringement claim to the extent it was based on Tribes on the Edge

The court denied defendants’ motion to dismiss the false association claim, however, holding that plaintiff plausibly alleged that Cousteau has a sufficiently high level of consumer recognition to support a claim that defendants falsely implied his endorsement of the film. The court also denied defendants’ motion to dismiss the Lanham Act claims to the extent they were based on defendants’ alleged use of the marks at issue to attract donors to Celine’s foundation, pointing to allegations regarding various fundraising announcements using the marks.

As for plaintiff’s trademark and unfair competition claims under Connecticut common law, the court rejected defendants’ argument that plaintiff failed to allege any infringing activity occurring in Connecticut, and denied the motion as to those claims. Plaintiff’s allegations that defendants screened Tribes on the Edge in Connecticut and both advertised the film and solicited donations via a website that was directed to Connecticut residents were sufficient, the court held.

Finally, the court denied the motion as to plaintiff’s right of publicity claim, which the parties agreed was governed by French law. Defendants argued principally that French law does not recognize a postmortem right of publicity. As between the parties’ competing declarations from French attorneys on the issue, the court found the declarations submitted by plaintiff’s expert more persuasive “in light of the scholarship that documents the increased recognition of the two aspects of the right of publicity under French law”—namely, the right to a private life and image (analogous to U.S. privacy laws) and the right to protect one’s image as a marketable asset (analogous to U.S. right of publicity laws), the latter of which may pass to a decedent’s estate. The court concluded that because Cousteau transferred his publicity rights to plaintiff before his death, those rights survived and remained enforceable by plaintiff under French law. 

Summary prepared by Frank D’Angelo and Mary Jean Kim.