Kenneth J. Montgomery, Esq. (KJM-8622) KENNETH J. MONTGOMERY, PLLC 55 Washington Street, Suite 451 Brooklyn, New York 11201 718.403.9261 Telephone 718.403.9593 Facsimile UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK BETHANN MANAGEMENT COMPANY, INC. ) and TYSON C. BECKFORD, INC., ) ) Plaintiffs, ) ) ) COMPLAINT FOR v. ) BREACH OF CONTRACT ) TRADEMARK INFRINGEMENT ) UNFAIR COMPETITION CHRISTIAN CASEY, LLC, SEAN JOHN ) AND RELATED CLAIMS CLOTHING, INC. and BAD BOY ) ENTERTAINMENT, INC., ) (Jury Trial Demanded) ) Defendants. ) 05 CV 7194 ) Plaintiffs, Bethann Management Company. Inc. (individually Bethann ), and Tyson C. Beckford, Inc. (individually Tyson )(collectively Plaintiffs ), by and through their attorneys, KENNETH J. MONTGOMERY, PLLC, for their Complaint against Defendants, Christian Casey, LLC, Sean John Clothing, Inc. and Bad Boy Entertainment, Inc., (collectively Defendants ) allege as follows: NATURE AND SUBSTANCE OF ACTION 1. Plaintiffs file this action against Defendants for Unfair Competition, Trademark Infringement, False Endorsement, False Association, and Dilution, arising under the
Lanham Act 43, 15 U.S.C. 1125(a) and (c), and related state claims, breach of contract and unjust enrichment, and violation of the Right of Publicity under New York Civil Rights Law 50. 2. This action is brought in response to the material breach of an endorsement contract (the Agreement ) and unjust enrichment for which Defendants are indebted to Plaintiffs in the amount of six hundred thousand ($600,000.00) dollars for professional services rendered to Defendants and readily accepted by Defendants. 3. Defendants breach of the Agreement has necessitated the on-going willful infringement of Tyson s trademarks, dilution of Tyson s trademarks and celebrity image, false endorsement, false advertising, false association, and violation of Tyson s right of publicity. 4. Specifically, Defendants have and continue to, with neither Plaintiffs authorization nor Plaintiffs consent, advertise, market and promote their goods bearing Tyson s photographs, images, likeness, and professional persona. In particular, Tyson s photographs, images and likeness have and continue to appear in magazines, on Defendants website and in major department stores advertising and endorsing Defendants Sean John brand apparel line (hereinafter Sean John ), causing Plaintiffs irreparable commercial harm. JURSIDICTION AND VENUE 5. This is a civil action seeking relief for Unfair Competition and the related claims of Trademark Infringement, False Endorsement, False Advertising, False Association, and 2
Dilution arising under 15 U.S.C. 1125(a) and related state claims, breach of contract and unjust enrichment, and violation of the Right of Publicity under New York Civil Rights Law 50-51. This Court has original jurisdiction of this action under 28 U.S.C. 1331, 1338(a) and (b), its supplemental jurisdiction, and under Rule 4 of the Federal Rules of Civil Procedure. 6. Venue is proper in this district under 28 U.S.C. 1391 in that Defendants or Defendants agents may be found in this district and Defendants transact business in this district. PARTIES 7. Plaintiff Bethann Management Company. Inc. is a corporation organized and existing under the laws of the State of New York, and at all times mentioned in this complaint has and continues to maintain a principle place of business located in the County and State of New York. 8. Plaintiff Tyson C. Beckford, Inc. is a corporation organized and existing under the laws of the State of New York, and at all times mentioned in this complaint has and continues to maintain a principle place of business located in the County and State of New York. 9. Upon information and belief, Defendant CHRISTIAN CASEY, LLC is now, and at all times mentioned in this complaint was, a limited liability company organized and existing under the laws of the State of New York, with a place of business at 525 Seventh Avenue, 10 th Floor, New York, New York 10018. 10. Upon information and belief, Defendant SEAN JOHN CLOTHING, INC. is now, and at all times mentioned in this complaint was, a corporation organized and existing under 3
the laws of the State of New York, with a place of business at 1710 Broadway, New York, New York 10019. 11. Upon information and belief, Defendant BAD BOY ENTERTAINMENT, INC. is now and at all times mentioned in this complaint was, a corporation organized and existing under the laws of the State of New York, with a place of business at 1440 Broadway, 16 th Floor, New York, New York 10018. 12. That upon information and belief and at all times hereinafter mentioned, Defendants conduct business in the State of New York and did conduct business in the State of New York and within the Southern District at, and prior to, the time of the Agreement. FACTS COMMON TO ALL CLAIMS 13. Plaintiff Bethann is engaged in the business of personal management for professionals in connection with the fashion and film industries, which entails in part, being the exclusive agent for, and managing the careers of, several highly publicized and successful individuals, one being Tyson Beckford ( Tyson ), an internationally known and recognized professional fashion model, actor and popular culture icon. 14. Plaintiff Tyson is an internationally known and recognized fashion model, actor and popular culture icon and has enjoyed tremendous success as the anchor male model for highly established brands such as Ralph Lauren s Polo Sport, Calvin Klein and has appeared a countless number of times in publications such as Gentlemen s Quarterly, the New York Times, Vogue, and Essence, in addition to appearing in films such as Ben Stiller s Zoolander and Biker Boyz aside Laurence Fishburne. 4
15. Plaintiff Tyson has enjoyed professional accolades such as being named VH-1 s Man of the Year in 1995 and being named to People Magazine s list of the Fifty Most Beautiful People in the World, to name a few. 16. On or about May 25, 2004, Plaintiffs and Defendants entered into a written Agreement in which Plaintiffs agreed to furnish the professional services of Tyson to endorse the Sean John brand apparel line and accessories by way of appearing in Defendants advertising, marketing and promotional campaigns in magazines and permitting Defendants to display photographs, images, the likeness and professional persona of Tyson in Defendants flagship store, on public billboards and on Defendants website. A copy of the Agreement is annexed hereto as Exhibit A. 17. In consideration and exchange for Plaintiffs services, Defendants agreed, in writing, to compensate Plaintiffs in the sum of one million two hundred thousand ($1, 200,000.00) dollars. (See Exhibit A) 18. Plaintiffs have and continue to fully and satisfactorily perform all services required under the Agreement, namely by appearing in magazines, on billboards, in Defendants flagship stores, and in department stores endorsing the Sean John brand apparel line and accessories. (Copies of Tyson endorsing Defendants Sean John brand apparel are annexed hereto as Exhibits B and C, respectively). 19. Defendants have and continue to readily accept Plaintiffs services, namely by advertising, promoting and marketing the Sean John brand apparel line using actual photographs, images, the likeness and professional persona of Tyson wearing Sean John brand apparel and using Sean John brand accessories. 5
20. Although Defendants have and continue to use Tyson s photographs, images, likeness, and professional persona to promote the Sean John brand apparel line, Defendants have failed and otherwise refused to fully compensate Plaintiffs for such services, thereby breaching the Agreement. AS AND FOR A FIRST CAUSE OF ACTION BREACH OF CONTRACT AS TO REMAINDER OF PAYMENTS DUE 21. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 20 of the Complaint as fully set forth herein. 22. Pursuant to the terms of the Agreement and in full consideration of Plaintiffs services therein, Defendants agreed to pay Plaintiffs the total sum of one million two hundred thousand ($1,200,000.00) dollars, with the first payment of three hundred thousand ($300,000.00) dollars to be received by Plaintiffs no later than May 28, 2004. (See Exhibit A) 23. Defendants partially complied with the terms of the Agreement and thus paid Plaintiffs the initial payment of three hundred thousand ($300,000.00) dollars on May 28, 2004, by way of HSBC Bank USA, account number 797035028, check number 001274, a copy of which is annexed hereto as Exhibit D. 24. Pursuant to the terms of the Agreement, Defendants agreed to pay Plaintiffs a second payment of three hundred thousand ($300,000.00) dollars during the month of November, 2004 (the November payment ). (See Exhibit A) 25. Defendants paid Plaintiffs a partial payment of one hundred fifty thousand ($150,000.00) dollars on or about November 30, 2004, by way of HSBC Bank USA, 6
account number 797035028, check number 003457, a copy of which is annexed hereto as Exhibit E. 26. Defendants paid Plaintiffs the remainder of the November payment on or about December 13, 2004 by way of HSBC Bank USA account number 797035028, check number 003640, a copy of which is annexed hereto as Exhibit F. 27. Plaintiffs have and continue to comply with each and every term of the Agreement by appearing for personal appearances, professional photo shoots, magazine advertisements, billboard advertisements, department store promotions such as Macy s Herald Square in New York and Robertson May Co. in Los Angeles, and on Defendants website (www.seanjohn.com), advertising, promoting and otherwise endorsing Sean John and Sean John accessories. (See Exhibits B, C, G, H and I, respectively.) 28. On or about April 7, 2005, Bethann was summoned to Defendants place of business at 1710 Broadway, New York, New York 10019, for the purpose of discussing the terms of the Agreement with Defendants agents, Todd Kahn and Byron Kirkland. 29. Upon information and belief, Todd Kahn unequivocally advised Bethann that Defendants would no longer honor the Agreement and as a result thereof, would not compensate Plaintiffs the remaining six hundred thousand ($600,000.00) dollars which remains due, thereby breaching the terms of the Agreement. 30. Upon information and belief Defendants unequivocally advised Bethann that Defendants would no longer use Tyson s photographs, images, likeness, and professional persona in Defendants advertising, marketing and promotion campaigns endorsing the Sean John brand apparel line and accessories. 7
31. Upon information and belief, despite Defendants agents advising Bethann that they would no loner use Tyson s photographs, images, likeness and professional persona in their advertising campaign, Tyson s photographs, images, likeness and professional persona continue to appear in Defendants print advertisements and billboard advertisement and on Defendants website at www.seanjohn.com, thereby breaching the terms of the Agreement. 32. Plaintiffs have made several attempts to cause Defendants to cure the breach by paying the remaining sum of six hundred thousand ($600,000) dollars, by telephone and by attempts to personally meet Defendants and their agents, all to no avail. 33. On or about June 7, 2005, Bethann briefly spoke with Defendants President and CEO, Sean Combs (hereinafter Combs ) in an unsuccessful attempt to cause Defendants to cure the breach. 34. Upon information and belief, Combs advised Bethann that he would contact her in the near future to discuss the terms of the Agreement however, neither Combs nor his agents have contacted Plaintiffs or cured the breach, therefore Defendants remain in breach of the Agreement. 35. Although Defendants remain in breach of the Agreement, Defendants knowingly and willfully continue to use Tyson s photographs, images, likeness, and professional persona in print and billboard advertisements, on their website (www.seanjohn.com), and in several other venues such as Macy s department store in Herald Square, New York and Robertson May Company in Los Angeles. (See Exhibits B, C, G, H, and I, respectively.) 8
36. As a result of the foregoing, Defendants are neither with just cause nor basis in material breach of the Agreement. 37. Moreover, by reason of the foregoing, Plaintiffs have suffered actual damages in the amount of six hundred thousand ($600,000.00) dollars. 38. Plaintiffs have no other remedy at law. AS AND FOR A SECOND CAUSE OF ACTION UNJUST ENRICHMENT 39. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 38 of the Complaint as fully set forth herein. 40. Defendants have and continue to use Tyson s photographs, images, likeness, professional persona in print and billboard advertisements, on their website (www.seanjohn.com), and in several other venues such as Macy s department store at Herald Square, New York and Robertson May Company in Los Angeles. (See Exhibits B, C, G, H and I, respectively.) 41. Defendants have and continue to enjoy the benefits of Plaintiffs services, namely Tyson s photographs, images, likeness, professional status and persona as a popular culture icon and the goodwill associated therewith, identified with and endorsing the Sean John apparel line and accessories, despite Defendants refusal to compensate Plaintiffs for these services. 42. As a result of the foregoing, Defendants have been and continue to be unjustly enriched through their unauthorized exploitation of Tyson s photographs, images, likeness, and professional persona in the amount of six hundred thousand ($600,000.00) dollars. 9
43. Plaintiffs have no other remedy at law. AS AND FOR A THIRD CAUSE OF ACTION UNFAIR COMPETITION IN VIOLATION OF THE LANHAM ACT 43 (15 U.S.C. 1025 et seq) 44. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 43 of the Complaint as fully set forth herein. 45. Tyson is the exclusive owner of the service mark TYSON C. BECKFORD, Registration Number 2461769 in International Class 016 as a fashion model for his photographs, images, likeness, and professional persona to be used in calendars. A copy of the United States Patent and Trademark Office TARR website evincing such ownership is annexed hereto as Exhibit J. 46. Tyson is the exclusive owner of the service mark TYSON BECKFORD, Registration Number 2461770 in International Class 016 as a fashion model for his photographs, images, likeness, professional persona to be used on posters. A copy of the United States Patent and Trademark Office TARR website evincing such ownership is annexed hereto as Exhibit K. 47. These registrations clearly identify Tyson Beckford, Inc. as the exclusive owner of the trademarks TYSON C. BECKFORD and TYSON BECKFORD. 48. Tyson s trademark registration for the trademarks TYSON C. BECKFORD and TYSON BECKFORD are valid and subsisting. 49. For over twelve (12) years Tyson has used and continues to use his photographs, images, likeness, and professional persona as a source identifier of his services as a 10
fashion model, actor, and popular culture icon, and also with various of his major endorsement and modeling campaigns. 50. Tyson s face constitutes a strong mark that has distinctive quality and has acquired a primary meaning to the international fashion industry and the general public. 51. Defendants have affixed Tyson s photographs, images, likeness, and professional persona to several advertising, marketing and promotional campaigns in connection with Defendants Sean John brand apparel line with neither Tyson s nor Bethann s consent, thus infringing Tyson s TYSON C. BECKFORD and TYSON BECKFORD service marks. 52. Defendants willfully infringing uses of Tyson s photographs, images, likeness, and professional persona as used in connection with the advertising and promotion of Defendants Sean John brand apparel line constitutes false advertising, false designation of origin, and false descriptions and representations that falsely associate Tyson with Defendants Sean John brand apparel line and is a false representation in interstate commerce in violation of 15 U.S.C. 1125(a). 53. Defendants have willfully infringed Tyson s trademarks with the intent to deceive, defraud and confuse the public as to the source of Tyson s endorsement services. 54. By reason of Defendants actions, Plaintiffs have been seriously and irreparably damaged, including monetary damages and unless Defendants are restrained, Plaintiffs will continue to be so damaged. 55. Plaintiffs are entitled to a permanent injunction restraining Defendants, its officers, agents, employees, and all persons acting in concert with Defendants from further engaging in any such acts that violate Tyson s federally registered trademarks. 11
56. Plaintiffs are further entitled to recover damages they have and will continue to sustain, and any gains, profits and advantages obtained by Defendants as a result of the acts of willful infringement alleged above as well as, attorney s fees. At present, Plaintiffs cannot fully ascertain the amount of such damages, gains, profits, and advantages. 57. Plaintiffs have no adequate remedy at law. AS AND FOR A FOURTH CAUSE OF ACTION FALSE ENDORSEMENT IN VIOLATION OF LANHAM ACT 43 (15 U.S.C. 1125 (a) 58. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 57 of the Complaint as fully set forth herein. 59. Defendants willful infringement of Tyson s trademarks in connection with their unauthorized use of Tyson s photographs, images, likeness, and professional persona in advertising, marketing and promoting Defendants Sean John brand apparel line improperly implies and falsely suggests that Tyson endorses Defendants Sean John brand apparel line. 60. Defendants willful infringement of Tyson s trademarks and unauthorized use of Tyson s photographs, images, likeness, and professional persona in advertising, marketing and promoting Defendants Sean John brand apparel line is a false or misleading representation of fact which is likely to confuse, cause mistake or mislead consumers into the belief that Tyson approves, sponsors, is affiliated with, or endorses the Sean John brand apparel line. 61. Defendants willful infringement of Tyson s trademarks and unauthorized use of Tyson s photographs, images, likeness, and professional persona in advertising, 12
marketing and promoting Defendants Sean John brand apparel line have deterred other successful apparel lines from engaging Plaintiffs to endorse their products based on Tyson s apparent association, endorsement and sponsorship of Defendants Sean John brand apparel line. 62. Plaintiffs have and continue to suffer irreparable commercial harm and injury and unless Defendants are permanently enjoined from committing the acts alleged in Paragraphs 59, 60 and 61 above, Plaintiffs will continue to suffer such harm. 63. Plaintiffs have no adequate remedy at law. AS AND FOR A FIFTH CAUSE OF ACTION DILUTION IN VIOLATION OF LANHAM ACT 43 (15 U.S.C. 1125 (a) 64. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 63 of the Complaint as fully set forth herein. 65. Defendants willful infringement of Tyson s trademarks and unauthorized use of Tyson s photographs, images, likeness, and professional persona in advertising, marketing and promoting Defendants Sean John brand apparel line has caused significant commercial harm by diluting Tyson s trademarks, professional identity and persona as well as, Tyson s photographs, images and likeness as a popular culture icon and the goodwill associated therewith. 66. Defendants willful infringement of Tyson s trademarks and unauthorized use of Tyson s photographs, images, likeness, and professional persona in advertising, marketing and promoting Defendants Sean John brand apparel line have deterred other successful apparel lines from engaging Plaintiffs to endorse their products based on 13
Tyson s apparent association, endorsement and sponsorship of Defendants Sean John brand apparel line. 67. By reasons of Defendants acts, Plaintiffs have and continue to suffer irreparable commercial harm and injury and unless Defendants are permanently enjoined from committing the acts alleged in Paragraphs 65 and 66 above, Plaintiffs will continue to suffer such harm. 68. Plaintiffs have no adequate remedy at law. AS AND FOR A SIXTH CAUSE OF ACTION COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 69. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 68 of the Complaint as fully set forth herein. 70. Defendants unauthorized use in commerce of Tyson s photographs, images, likeness and professional persona constitutes infringement of Tyson s common law trademark rights and unfair competition. 71. Defendants have infringed Tyson s trademarks as alleged herein with the intent to deceive, defraud and confuse the public as to the origin of Tyson s services, in addition to confuse, cause mistake or mislead consumers into the belief that Tyson approves, sponsors, is affiliated with, or endorses the Sean John brand apparel line. 72. Plaintiffs have been seriously and irreparably damaged and, unless Defendants are restrained, Plaintiffs will continue to be so damaged. 73. Plaintiffs have no adequate remedy at law. 14
AS AND FOR A SEVENTH CAUSE OF ACTION VIOLATION OF RIGHT OF PUBLICITY PURSUANT TO NEW YORK STATE CIVIL RIGHTS LAW 50 et seq. 74. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 73 of the Complaint as fully set forth herein. 75. Defendants have and continue to knowingly and willingly use Tyson s photographs, images, likeness and professional persona for the specific purposes of advertising, marketing and promoting their Sean John brand apparel line without having first obtained written or oral consent of Tyson or Bethann. 76. Defendants actions as described in Paragraph 75 above are a violation of Tyson s right of publicity contained in New York State Civil Rights Law 50, and such violation has and continues to cause Plaintiffs irreparable commercial injury and harm. 77. Unless Defendants are permanently enjoined from the actions as described in Paragraphs 75 and 76 above, Plaintiffs will continue to be commercially harmed and injured. 78. Plaintiffs have no adequate remedy at law. AS AND FOR AN EIGHTH CAUSE OF ACTION DILUTION IN VIOLATION OF NEW YORK STATE GENERAL BUSINESS LAW ARTICLE 24, SECTION 360-L 79. Plaintiffs reaffirm, reallege and incorporate by reference paragraphs 1 through 78 of the Complaint as fully set forth herein. 15
80. Upon information and belief, Defendants have and continue to be engaged in unfair and deceptive practices in violation of Article 24, Section 360-l of New York State General Business Law. 81. Defendants acts have seriously and irreparably injured Plaintiffs business reputations and diluted Tyson s trademarks and the goodwill associated therewith. 82. Unless Defendants are restrained and permanently enjoined, Plaintiffs will continue to suffer irreparable injury. 83. Plaintiffs have no adequate remedy at law. PRAYER FOR RELIEF WHEREFORE, Plaintiffs demand judgment against Defendants in the following: 1. In the First and Second Causes of Action, an amount of actual damages for no less than six hundred thousand ($600,000.00) dollars with interest thereon; 2a. (Injunctive Relief for Infringement under Federal Law for the Third, Fourth, Fifth, Six, and Eighth Causes of Action) A permanent injunction pursuant to 15 U.S.C. 1114, forever enjoining and restraining Defendants, their agents, assigns, and employees from directly or indirectly using photographs, images, the likeness, and/or professional persona of Tyson or any trademarks that may be similar to Tyson s registered trademarks or Tyson s photographs, images, likeness, and/or professional persona which is likely to cause confusion, mistake or deceive the public; Order that all advertisements, promotional photographs, signs, prints, packages, 16
wrappers, and receptacles in the possession of Defendants bearing Tyson s photographs, images, likeness, and professional persona and all negatives, and other means of making the same, shall be delivered to Plaintiffs and destroyed pursuant to 15 U.S.C. 1118; An accounting of all of Defendants profits derived from all advertisements, promotions and marketing campaigns containing the infringing photographs, images, likeness, and professional persona of Tyson; 2b. (Punitive Damages for Willful Infringement for the Third, Fourth, Fifth, Six, and Eighth Causes of Action pursuant to 15 U.S.C. 1117) That this Court award punitive damages and exemplary damages against Defendants and in favor of Plaintiffs in the sum of five million ($5,000,000.00) dollars by reason of Defendants willful, wanton and reckless disregard for Tyson s intellectual property rights. 3. (Injunctive Relief and Exemplary Damages for the Seventh Cause of Action pursuant to New York Civil Rights Law 51) That this Court issue an injunction permanently enjoining Defendants, their agents, assigns, and employees from directly or indirectly using photographs, images, the likeness, and/or professional persona of Tyson for advertising purposes or for any other purpose of trade. attorney fees. 4. That the costs of this Action be awarded to Plaintiffs. 5. That this is an exceptional case and that Plaintiffs be awarded their reasonable 6. That this Court grant such other and further relief as it shall deem just. Respectfully submitted, KENNETH J. MONTGOMERY, PLLC /Kenneth J. Montgomery/ Kenneth J. Montgomery (KJM-8622) 17
DATED: Brooklyn, New York Attorneys for Plaintiffs August 12, 2005 Bethann Management Company, Inc. and Tyson Beckford, Inc. Office & P.O. Address 55 Washington Street, Suite 451 Brooklyn, New York 11201 (718) 403-9261 Telephone (718) 403-9593 Facsimile TO: Christian Casey, LLC Sean John Clothing, Inc. 525 Seventh Avenue, 10 th Floor 1710 Broadway New York, New York 10018 New York, New York 10019 Bad Boy Entertainment, Inc. 1440 Broadway, 16 th Floor New York, New York 10018 18