Case 1:15-cv-00325-M-PAS Document 1 Filed 07/31/15 Page 1 of 16 PageID #: 1

UNITED STATES DISTRICT COURT

DISTRICT OF RHODE ISLAND

MICHAEL LOMBARDI,
Plaintiff,
C.A. No. 2015v.

THE AMERIC AN MUSEUM

OF NATURAL HISTORY,
Defendant.

VERIFIED COMPLAINT
NATURE OF THE ACTION
1.

This action is brought pursuant to the Federal Trademark Act, 15 U.S.C. 1051,

et seq., to prevent The American Museum of Natural History, operator of a museum in New
York, New York, from illegally and unlawfully using and diluting Lombardi's name, image,
likeness, and service mark. Plaintiff also seeks to recover from Defendant damages from the
unauthorized use of his intellectual property. This action is also brought pursuant to Rhode
Island statutory law related to Defendant's Unfair and Deceptive Trade Practices and violation of
Plaintiffs Right to Privacy by Defendant's continued unauthorized use of Plaintiff s name,
image, and likeness. Finally, Plaintiff seeks damages for Defendant's refusal to complete its
portion of the contract, which led to the cancellation of the Expedition.
PARTIES
2.

Plaintiff Michael Lombardi ("Lombardi") is a resident of the State of Rhode

Island. Lombardi is the owner of the service mark, "Michael Lombardi" and associated
goodwill.

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3.

Defendant The American Museum of Natural History (the "Museum" or

"Defendant") is a domestic not-for-profit New York corporation with a principle place of

business in New York, New York. The Museum owns, operates, or directly controls a history
museum located at Central Park West and 79th Street, New York, New York. The Museum has
sufficient minimum contacts with Rhode Island to be subject to the jurisdiction of this Court.
JURISDICTION AND VENUE
4.

This case arises under federal law relating to trademarks, 15 U.S.C. 1051, et

seq. Accordingly, the Court has original jurisdiction pursuant to 28 U.S.C. 1338. Under
principles of pendent jurisdiction, the Court also has jurisdiction of all claims against Defendant
arising solely under state law.
5.

Complete diversity of jurisdiction exists among the parties.

6.

Venue is proper under 28 U.S.C. 1391 because a substantial part of the events or

omissions giving rise to Lombardi's claims occurred and continue to occur in this judicial
district. Specifically, Defendant is improperly using and diluting Lombardi's registered
trademark, image, name, and likeness in connection with the marketing of a now canceled and
defunct undersea exploration, the principle effects of which are felt by Lombard! in this judicial
district.
FACTS
A.

THE LOMBARDI MARK

7.

Michael Lombards8' is a well-respected professional in the field of ocean

exploration, education, and discovery with ties throughout the underwater industry.
8.

Lombardi is deeply involved in the use of diving technology to explore new

regions of the ocean. Due to his knowledge, skill, and reputation in underwater exploration.

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Lombardi was recruited by J.F. White Contracting Company to play a crucial role in the Stephen
J. Barlow Bluewater Expedition ("Expedition").
9.

The Expedition was made possible, in large part, due to Lombardi's expertise and

his ability to leverage his relationships with various organizations and collaborators, as well as
his commitment of funds and resources to execute portions of the expedition.
10.

Lombardi's service mark (the "Lombardi Mark") is on the principal register of the

United States Patent and Trademark Office. Lombardi has the exclusive right to use and to
license the Lombardi Mark and derivations thereof, which is used in product design and
development in the field of ocean or underwater exploration. Lombardi has continuously used
the Lombardi Mark since the date of its registration.
11.

The registration is in full force and effect, unrevoked, and uncancelled.

12.

Lombardi has given notice to the public of the registration of his service mark as

provided in 15 U.S.C. 1111.

13.

Lombardi uses or has used the Lombardi Mark in association with his brand

14.

Lombardi and his affiliated entities market, promote, and engage in underwater

name.

exploration and discovery services as well as utilize the Lombardi Mark in association with these
activities.
15.

Lombardi has invested substantial effort over a long period of time, including the

expenditure of several tens of thousands of dollars, to develop goodwill in his trade name and
trademark to cause consumers throughout the United States to recognize the Lombardi Mark as
distinctly designating Lombardi's services, including undersea and ocean exploration.

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16.

The value of the goodwill developed in the Lombardi Mark does not admit of

precise monetary calculation, but because Michael Lombardi is widely known as a provider of
ocean exploration, education, and discovery throughout the underwater industry, the value of
Lombardi's goodwill is in excess of hundreds of thousands of dollars.
17.

The Lombardi Mark is indisputably among the most famous trademarks in the

underwater industry in both the United States and worldwide.

B.

DEFENDANT'S UNAUTHORIZED USE AND DISPLAY OF THE LOMBARDI

MARK NAME. IMAGE. AND LIKENESS IN COMMERCE
18.

In December 2013, Lombardi introduced Dr. Vincent Pieribone of Yale

University and a Research Associate of American Museum of Natural History to Jim Clark and
Peter White of J.F. White Contracting Company.
19.

'

During that meeting Dr. Pieribone and Peter White discussed deepwater work on

bio-luminescent probes for brain and cancer research. At that time Peter White pledged J.F.
White Contracting Company's support for the Stephen J. Barlow Bluewater Expedition.
20.

The Stephen J. Barlow Bluewater Expedition would be conducted off the New

England Coastline in mid-summer 2014, to allow researchers from the John B. Pierce Laboratory
at Yale University, Baruch College, City University of New York, and the American Museum of
Natural History to observe and collect bio-luminescent marine organisms from their natural
deepwater environment.
21.

The deepwater exploration would be accomplished by use of an Exosuit

Atmospheric Diving System ("Exosuit"), produced by Nuytco Research Ltd. The Exosuit is a
one-of-a-kind atmosphere manned vehicle certified by Lloyd's Register with an operating depth
of 1000 fsw.

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22.

Lombardi would act as the Undersea Specialist to the Expedition and operate the

Exosuit.
23.

In February 2014, a Media and Publicity Agreement ("MPA") was signed

between Yale University, The American Museum of Natural History, I.E. White Contracting
Company, and Lombardi. A copy of the MPA is attached as Exhibit A.
24.

The MPA embodied the agreement among the parties regarding publicity and

media usage specifically associated with the Expedition.

25.

Unfortunately, after great personal expense of time and money by Lombardi, the

Expedition was postponed and then cancelled.

26.

The Museum agreed to provide financial, technical, and promotional support to

the Expedition. However, the Museum failed to fulfill all of its responsibilities to the
Expedition.
27.

Based on the Museum's representations of support, Lombardi spent considerable

time and money training and otherwise preparing for the Expedition.
28.

In the summer of 2014, as a result of the Museum's failure to complete its

responsibilities for the Expedition, J.F. White Contracting Company announced it was
postponing the Expedition and subsequently sold the Exosuit making the Expedition impossible
to accomplish. A copy of the letter is attached as Exhibit B.
29.

Despite the cancellation of the Expedition, multiple parties to the MPA including

the Museum continued to promote and market the Expedition on their respective websites to the
detriment of Lombardi's reputation in the academic and exploration communities.
30.

On June 23, 2015, Lombardi sent a letter formally terminating the MPA to all

parties to the MPA and demanding that all parties cease and desist future dissemination of the

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Lombardi Mark, name, image, or likeness in relation to the Expedition. A copy of the letter is
attached as Exhibit C.
31.

Through this letter Lombardi put all parties on notice that any further use of his

name, image, likeness, or the Lombardi Mark would be unauthorized in association with any and
all further marketing or promotion of the Expedition.
32.

Other parties to the MPA quickly responded to the letter by removing the

infringing material from their respective websites.

33.

After receiving no response from the Museum, on July 10, 2015, Lombardi sent a

follow up cease and desist letter specifically to the Museum attaching specific examples of the
infringing activities. A copy of the letter is attached as Exhibit D.
34.

On July 17, 2015, Lombardi sent another good faith letter to the Museum in order

to come to an amicable resolution with the Museum and avoid costly and unnecessary litigation.
A copy of the letter is attached as Exhibit E.
35.

The July 17, 2015 letter includes specific citations to internet links to the

infringing material and requests that the Museum immediately remove this content.
36.

To date, the Museum has failed to comply with Lombardi's requests.

37.

The Museum publicly represents that it understands the importance of protecting

one's intellectual property rights as evidenced by its website, which states "[a]11 text, images, and
software code on this website are copyright property of the American Museum of Natural
History and its programmers unless otherwise noted. They may be used for the personal
education of website visitors. They may not be placed in the public domain. Any commercial
reproduction, redistribution, publication, or other use by electronic means or otherwise is
prohibited unless pursuant to a written license signed by the Museum."

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38.

The Museum's unauthorized use of Lombardi's Mark, name, image, and likeness

is in complete contradiction with what the Museum represents to the general public regarding use
of its own intellectual property.
39.

The infringing material, which depicts Lombardi's name, image, likeness, and the

Lombardi Mark in association with the promotion and marketing of the Expedition, remains
easily accessible on the Museum's website and has been widely distributed in the public domain.
40.

As demonstrated by the continued presence of the infringing material on the

Museum's website, the Museum, without authorization or license, continually uses the Lombardi
Mark, image, name, and likeness in connection with their continued promotion and marketing of
the Expedition.
41.

The Museum's unauthorized use of Lombardi's Mark, name, image, and likeness

in association with the marketing and promotion of the Expedition is continuing and there is no
indication that such activity will cease without judicial intervention.
COUNT I
VIOLATION OF THE LANHAM ACT
42.

Lombardi realleges paragraphs 1 through 41 above.

43.

Section 32 of the Lanham Act, 15 U.S.C. 1114(l)(a), provides in pertinent part

that "[ajny person who shall, without the consent of the registrant use in commerce any
reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to deceive .. . shall be
liable in a civil action by the registrant. .. ."
44.

The Museum has marketed and promoted and continues to market and promote

the Expedition on its website through the unauthorized use of the Lombardi Mark, and such use
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has caused and is likely to continue to cause confusion or mistake among prospective or actual
customers, in violation of Section 32 of the Lanham Act.
45.

Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), provides in pertinent part

that "[a]ny person who, on or in connection with any goods or services . . . uses in commerce any
word, term, name, symbol... or any false designation of origin, 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 affiliation . . . or as to the origin, sponsorship, or approval o f . . .
goods [or] services . .. shall be liable in a civil action . . . ."
46.

The Museum's acts of marketing and promoting the Exploration, through and

with the Lombardi Mark, constitutes:

(a) a false designation of origin;
(b) a false and misleading description of fact; and
(c) a false and misleading representation of fact;
that has caused and is likely to continue to cause confusion, or to cause mistake, or deception, as
to the affiliation of the Exploration with Lombardi, and to cause confusion, or to cause mistake,
or deception, to the effect that Lombardi sponsors or approves of the Museum's continued
marketing of the Expedition, all in violation of Section 43(a) of the Lanham Act.
47.

Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c), provides in pertinent part

that "[t]he owner of a famous mark shall be entitled, subject to the principles of equity and upon
such terms as the court deems reasonable, to an injunction against another person's commercial
use in commerce of a mark or trade name, if such use begins after the mark has become famous
and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is
provided in this subsection."

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48.

The Museum's use of the Lombardi Mark in connection with the operation of the

Expedition, after the Lombardi Mark became famous, has caused and will continue to cause
dilution and disparagement of the distinctive quality of the Lombardi Mark, and has lessened and
will continue to lessen the capacity of the Lombardi Mark to identify and distinguish the goods
and services of Lombardi, all in violation of Section 43(c) of the Lanham Act.
49.

The Museum's on-going acts of infringement in violation of Sections 32, 43(a),

and 43(c) of the Lanham Act are malicious, fraudulent, willful, and deliberate.
50.

The Museum's on-going acts of infringement in violation of Sections 32, 43(a),

and 43(c) of the Lanham Act have inflicted and continue to inflict irreparable harm on Lombardi.
51.

Lombardi has no adequate remedy at law.

52.

No previous injunctive relief has been awarded with respect to this matter in this

case or any other case.

WHEREFORE, pursuant to 15 U.S.C. 1114, and 1125(a) and (c), Lombardi requests
the following judgment against The American Museum of Natural History:
a.

Temporarily, preliminarily, and permanently restrain and enjoin The American

Museum of Natural History, its affiliates, subsidiaries, officers, agents, servants, employees and
attorneys, and all those who act in concert or participation with them, from using and/or
displaying the Lombardi Mark and associated trade names, service marks, and trademarks in
violation of the Lanham Act;
b.

Temporarily, preliminarily, and permanently restrain and enjoin The American

Museum of Natural History, its affiliates, subsidiaries, officers, agents, servants, employees and
attorneys, and all those who act in concert or participation with them, from marketing

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Lombardi's services, including, without limitation, Lombardi's connection with the Expedition;
and
c.

Order that The American Museum of Natural History, its affiliates, subsidiaries,

officers, agents, servants, employees and attorneys, and all those who act in concert or
participation with them, account to Lombardi for any and all funds derived as a result of
marketing or promoting goods or services at the Infringing Location or elsewhere through and
with the Lombardi Mark; and
d.

Grant compensatory damages, treble damages, attorneys' fees, prejudgment

interest, cost of suit, and such other and further relief as this Court shall deem just and proper.
COUNT II
UNJUST ENRICHMENT
53.

Lombardi realleges paragraphs 1 through 52 above.

54.

The Museum has benefited from its wrongful use of the Lombardi Mark and has

paid no Royalty Fees or other fees to Lombardi in return for this benefit.
55.

Under the circumstances, as set forth above, it would be inequitable for the

Museum to retain the benefit of the Lombardi Mark without payment of the value thereof.
56.

Therefore, Defendant's failure to compensate Lombardi constitutes unjust

enrichment and has damaged Lombardi.

WHEREFORE, Lombardi demands judgment against The American Museum of
Natural History for damages to compensate Lombardi for the period during which The American
Museum of Natural History has misused the Lombardi Mark and was thereby unjustly enriched,
together with interest and costs.

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COUNT HI
RHODE ISLAND DECEPTIVE TRADE PRACTICES ACT
57.

Lombardi realleges paragraphs 1 through 56 above.

58.

R.I. Gen. Laws 6-13.1-2 states "[ujnfair methods of competition and unfair or

deceptive acts or practices in the conduct of any trade or commerce are declared unlawful."
59.

"Unfair methods of competition and unfair or deceptive acts or practices" are

defined in pertinent part as: "[c]ausing likelihood of confusion or of misunderstanding as to the

source, sponsorship, approval, or certification of goods or services" and "[c]ausing likelihood of
confusion or of misunderstanding as to affiliation, connection, or association with, or
certification by, another" R.I. Gen. Laws 6-13.1-l(6)(ii-iii).
60.

Defendant has marketed and promoted and continues to market and promote the

Expedition through the unauthorized use of the Lombardi's Mark, name, image, and likeness.
These actions, explained in detail above, constitute unfair or deceptive acts or trade practices in
violation of the Rhode Island Deceptive Trade Practices Act, codified at R.I. Gen. Laws 6
13.1-1, et seq.
WHEREFORE, pursuant to the Rhode Island Deceptive Trade Practices Act, Lombardi
demands judgment against The American Museum of Natural History:
a.

Temporarily, preliminarily, and permanently restrain and enjoin The American

Museum of Natural History, its affiliates, subsidiaries, officers, agents, servants, employees and
attorneys, and all those who act in concert or participation with them, from using and/or
displaying the Lombardi Mark and associated trade names, service marks, and trademarks in
violation of the Rhode Island Deceptive Trade Practices Act;
b.

Temporarily, preliminarily, and permanently restrain and enjoin The American

Museum of Natural History, its affiliates, subsidiaries, officers, agents, servants, employees and
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attorneys, and all those who act in concert or participation with them, from marketing
Lombardi's services, including, without limitation, Lombardi's association with the Exploration;
and
c.

Order that The American Museum of Natural History, its affiliates, subsidiaries,

officers, agents, servants, employees and attorneys, and all those who act in concert or
participation with them, account to Lombardi for any and all funds derived as a result of
marketing or promoting services with the Exploration or elsewhere through and with Lombardi's
Mark, name, image, or likeness; and
d.

Grant compensatory damages, punitive damages, attorneys' fees, prejudgment

interest, cost of suit, and such other and further relief as this Court shall deem just and proper.
COUNT IV
VIOLATION OF LOMBARDUS RIGHT TO PRIVACY
61.

Lombardi realleges paragraphs 1 through 60 above.

62.

It is the policy of the State of Rhode Island that every person in this state shall

have a right to privacy which shall be defined to include the right to be secure form an
appropriation of one's name or likeness. R.I. Gen. Laws 9-1-28.1(a)(2).
63.

Pursuant to 9-1-28.1 (a)(2), in order to recover for violation of this right, it must

be established that: "(A) the act was done without permission of the claimant" and "(B) the act is
of a benefit to someone other than the claimant." R.I. Gen. Laws 9-l-28.1(a)(2)(i)(A-B).
64.

The Museum has used Lombardi's, name, image, and likeness without his

permission and for the benefit of persons or entities other than Lombardi.
65.

The Museum through its continued refusal to comply with Lombardi's multiple

requests has violated Lombardi's Right to Privacy, codified at R.I. Gen. Laws 9-1-28.1(a)(2).

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WHEREFORE, pursuant to the Rhode Island Right to Privacy Statute, Lombardi

demands judgment against The American Museum of Natural History:
a.

Temporarily, preliminarily, and permanently restrain and enjoin The American

Museum of Natural History, its affiliates, subsidiaries, officers, agents, servants, employees and
attorneys, and all those who act in concert or participation with them, from using and/or
displaying Lombardi's name, image, or likeness in violation of the Rhode Island Right to Privacy
Statute;
b.

Temporarily, preliminarily, and permanently restrain and enjoin The American

Museum of Natural History, its affiliates, subsidiaries, officers, agents, servants, employees and
attorneys, and all those who act in concert or participation with them, from marketing
Lombardi's services, including, without limitation, Lombardi's association with the Exploration;
and
c.

Order that The American Museum of Natural History, its affiliates, subsidiaries,

officers, agents, servants, employees and attorneys, and all those who act in concert or
participation with them, account to Lombardi for any and all profits derived as a result of
marketing or promoting services with the Exploration or elsewhere through and with the use of
Lombardi's name, image, and likeness; and
d.

Grant compensatory damages, punitive damages, attorneys' fees, prejudgment

interest, cost of suit, and such other and further relief as this Court shall deem just and proper.

COUNT V
BREACH OF CONTRACT
66.

Lombardi realleges paragraphs 1 through 65 above.

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67.

The Museum contractually agreed with Lombardi to supply various resources to

the Expedition.
68.

In exchange, Lombardi agreed to participate in the Expedition as an Undersea

Specialist and spent considerable personal time and money preparing for his role on the
Expedition. To date, the value of Lombardi's resources expended is approximately $48,000.
69.

The Museum failed or otherwise refused to comply with its contractual agreement

to supply various resources for the Expedition.

70.

The Museum has breached its contract with Lombardi.

71.

Lombardi complied with his contractual obligation to the Museum and for the

Expedition.
72.

As a direct and proximate result of the Museum's breach of contract, Lombardi

Plaintiff has been damaged.

WHEREFORE, Lombardi requests compensatory damages, prejudgment interest, costs,
attorneys' fees, and such other and further relief as this Court shall deem just and proper.
COUNT VI
PROMISSORY ESTOPPEL
73.

Lombardi realleges paragraphs 1 through 72 above.

74.

The Museum agreed with Lombardi to supply various resources to the Expedition.

75.

In exchange, Lombardi agreed to participate in the Expedition as an Undersea

Specialist.
76.

Lombardi spent considerable personal time and money preparing for his role on

the Expedition.
77.

The Museum failed or otherwise refused to comply with its commitment to the

Expedition.
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78.

Lombardi relied to his detriment on the Museum's assertions regarding the

Expedition and expended approximately $48,000 in preparation for performing his portion of the
agreement.
79.

As a direct and proximate result of the Museum's breach of contract, Lombardi

Plaintiff has been damaged.

80.

WHEREFORE, Lombardi requests compensatory damages, prejudgment

interest, costs, attorneys' fees, and such other and further relief as this Court shall deem just and
proper.

Plaintiff,
MICHAEL LOMBARDI
By his attorneys,

Dated: July 31, 2015

/s/ Jeffrey S. Brenner

/s/ William H. Wynne IV
Jeffrey S. Brenner (#4369)
William H. Wynne, IV (#9020)
NIXON PEABODY LLP
One Citizens Plaza, Suite 500
Providence, RI 02903
Tel: (401)454-1000
Fax: (401)454-1030
E-mail: JBrenner@nixonpeabodv.com
WWvnne-@nixonpeabodv.com

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VERIFICATION
L Michael Lombardi, hereby state on this 3/ day of July, 2015, that I have read the
foregoing Verified Complaint and am familiar with the contents thereof, and that the facts set
forth therein are true by my own personal knowledge except those facts set forth on information
and belief, and that as to those allegations, I believe them to be true. I declare under penalty of
perjury that the foregoing statements are true and correct.

Michael Lombardi
STATE OF RHODE ISLAND
COUNTY OF PRfWOTHCE
Subscribed and sworn to before me this

day of July, 2015.

Notary Public|Af
My commission expires:

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AY/A'/