[Editor's Note: "This action, filed Aug. 6, 1996, arises out of the defendants' apparent unauthorized creation, distribution and selling of "Jungle Heat," a pornographic movie allegedly based on the plaintiff's world famous Tarzan and Jane characters. The 'defendants' Jungle Heat film is nothing more than a lewd, vulgar and highly offensive film[,] . . . " according to the heirs of the creator of "Tarzan, the Ape Man."] WEISS DAWID FROSS ZELNICK & LEHRMAN, P.C. Roger L. Zissu (RLZ 0973) Georges Nahitchevansky (GN 7750) Gregory Gulia (GG 4215) 633 Third Avenue New York, New York 10017 (212) 953-9090 Attorneys for Plaintiff UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK EDGAR RICE BURROUGHS, INC., Plaintiff, - against - ULTIMATE VIDEO d/b/a ULTIMATE PICTURES, ULTIMATE EURO FILMS, and ULTIMATE INTERACTIVE; ANTHONY PINKOWSKI; NICK PINKOWSKI; EXCALIBUR ENTERTAINMENT INC. d/b/a EXCALIBUR FILMS; THORN, INC. d/b/a PRINCE DISTRIBUTORS; and JOE D'AMATO, Defendants. Civil Action No. 96 CIV5962 COMPLAINT Plaintiff, by its attorneys, Weiss Dawid Fross Zelnick & Lehrman, P.C., alleges: NATURE OF THE ACTION 1. This is an action brought by Edgar Rice Burroughs, Inc., the family-owned successor-in-interest to Edgar Rice Burroughs, the creator of the world-famous and celebrated TARZAN characters, for unfair competition and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a), for dilution under Section 43(c)(1) of the Lanham Act, 15 U.S.C. Section 1125(c)(1), and for substantial and related claims of unfair competition and dilution arising under state laws including those of the State of New York. Plaintiff seeks injunctive relief and an accounting of any profits of defendants flowing from their infringement. 2. This action arises out of defendants' unauthorized creation, distribution and selling of a hard core pornographic feature length motion picture entitled "JUNGLE HEAT" which is based on and features plaintiff's world famous trademarks and characters TARZAN and JANE as well as the powerful symbols of origin uniquely identified and associated with the TARZAN character. Defendants' JUNGLE HEAT film is nothing more than a lewd, vulgar and highly offensive film that depicts the TARZAN and JANE characters engaged in numerous scenes of sexual intercourse, fellatio, sodomy and group sex. JURISDICTION AND VENUE 3. The Court has jurisdiction under Section Section 39 of the Trademark Act, 15 U.S.C. Section 1121, under Sections 1331, 1338(a) and 1338(b) of the Judicial Code, 28 U.S.C. Sections 1331, 1338(a) and (b), and under principles of pendent jurisdiction. The claims asserted in this Complaint arose in this judicial district and defendants have substantial contacts with and may be found in this district. Venue is accordingly proper under Sections 1391(b), (c) and (d) of the Judicial Code, 28 U.S.C. Section 1391(b), (c) and (d). THE PARTIES 4. Plaintiff Edgar Rice Burroughs, Inc. is a corporation duly organized and existing under the laws of the State of California, having its principal place of business at 18354 Ventura Boulevard, Tarzana, California. 5. Upon information and belief, defendant Ultimate Video d/b/a Ultimate Pictures, Ultimate Euro Films and Ultimate Interactive ("Ultimate") is a California partnership with a place of business at 9537 Cozycroft, Chatsworth, California 91311. Ultimate produces, advertises, distributes and sells films, videos and interactive CD-Roms nationwide, including in this district, under the labels Ultimate Pictures, Ultimate Euro Films and Ultimate Interactive. 6. Upon information and belief, defendant Anthony Pinkowski is a citizen and resident of the State of California, is a partner of Ultimate and has directed and/or participated in the acts of trademark dilution and unfair competition complained of herein. 7. Upon information and belief, defendant Nick Pinkowski is a citizen and resident of the State of California, is a partner of Ultimate and has directed and/or participated in the acts of trademark dilution and unfair competition complained of herein. 8. Upon information and belief, defendant Excalibur Entertainment Inc. d/b/a Excalibur Films ("Excalibur") is a corporation duly organized and existing under the laws of the State of California, having a place of business at 3621 W. Commonwealth, Fullerton, California 92633. Excalibur advertises and sells films, videos and interactive CD-Roms nationwide, including in this district, through the Internet and through mail order catalogs. 9. Upon information and belief, defendant Thorn, Inc. d/b/a Prince Distributors ("Prince") is a corporation duly organized and existing under the laws of the State of New York, having a place of business at 40 Oser Avenue, Happauge, New York 11788. Prince advertises, distributes and sells films, videos and interactive CD-Roms throughout the New York area, including in this district. 10. Upon information and belief, defendant Joe D'Amato is a citizen and resident of Italy, and is the producer and/or director of the pornographic motion picture JUNGLE HEAT. FACTS COMMON TO ALL CLAIMS FOR RELIEF 11. Plaintiff, whose owners are all descendants of Edgar Rice Burroughs, is the owner and successor in interest to all rights, titles and interests in and to the series of literary works authored by the late Edgar Rice Burroughs. For over 70 years, plaintiff has been engaged in the business of promoting, publicizing and licensing literary works authored by the late Edgar Rice Burroughs as well as a wide variety of other products and services utilizing the names, physical appearances and other physical characteristics of the characters depicted therein. Plaintiff has incurred great expense and exercised great care and skill in the manner of marketing and promotion of said works and characters, in selecting licensees and in supervising the exercise by said licensees of their respective rights. 12. By reason of such expenditure, care and skill, plaintiff has developed a substantial business, an excellent reputation and enormously valuable goodwill in the publishing, entertainment and related merchandising fields with respect to the characters forming the basis of plaintiff's licensing business. 13. Among the most successful properties created by Edgar Rice Burroughs and promoted, publicized and licensed by plaintiff have been works and products in which the principal element has been the character identified as TARZAN. The TARZAN books and stories and other products and services utilizing the characters depicted therein have also included and featured other characters and character delineations, such as that of TARZAN's wife JANE, their son and their animal friends. TARZAN and the other TARZAN characters and their characterizations have appeared in more than 26 different Edgar Rice Burroughs books in addition to innumerable versions which have appeared in authorized comic books, magazine forms and, since 1931, in comic strips in daily and Sunday newspapers. 14. The original TARZAN books and stories have been and continue to be widely and extensively distributed, sold and marketed in various forms of print media, including books, magazines, periodicals and newspapers, and have also been adapted for and produced, distributed and exhibited as feature motion picture films and serials and other dramatic and entertainment productions, throughout the United States and the world. The associated distribution, sales, exhibition, performance, display, advertising, and publicity, all as TARZAN products and services, has been widespread and massive. 15. Plaintiff's foregoing exploitation has included not only the sale of hundreds of millions of copies of the TARZAN series of hard and soft cover books, comic books and magazines over the past 70 years in over 52 countries, but also the production and release of some 46 feature length motion pictures since 1918 which have been exhibited in over 113 different countries. These have included, for example, such well known feature length motion pictures as MOM's 1931, 1959 and 1981 versions of TARZAN THE APE MAN. Many of the feature length motion pictures are also being distributed for home video viewing today and/or are still being shown television in the United States and elsewhere. 16. In recent years, plaintiff has licensed the use of the TARZAN stories and characters for the Warner Brothers motion picture GREYSTOKE: THE LEGEND OF TARZAN, LORD OF THE APES, which was released in 1984 to excellent reviews and a highly successful theater run. In addition, the Walt Disney Company has recently announced its plans to proceed with the licensed production of a major new animated TARZAN theatrical motion picture, and a new licensed live action TARZAN theatrical motion picture is currently in pre-production at Village Road Show. 17. To date, there have also been over 150 licensed TARZAN television shows shown in 72 different countries, including the United States. For example, in the last 5 years a live action, family-oriented television series entitled TARZAN: THE SERIES, produced under license from plaintiff, has been nationally televised in this country and televised extensively in Europe. In addition, filming of the initial two one-hour segments of a new licensed live action television series, TARZAN: THE EPIC ADVENTURES, was recently completed at Disney-MGM Studios in Florida. 18. Over the years, plaintiff has also selectively, and carefully, licensed the TARZAN character and its characteristics, attributes and physical appearance to a variety of commercial businesses for use in connection with the promotion, including through television commercials, of those businesses' products and services. Among the companies which have, under license from plaintiff, featured TARZAN in advertisements to promote their products are Borden Dairy, Toyota, PepsiCo and KFC. 19. Plaintiff and its licensees have spent many millions of dollars to develop and promote the above and other licensed uses of the TARZAN characters, including JANE, and to exploit the associated rights granted to them. 20. This promotion and exploitation of the TARZAN stories and characters, including JANE, and all related sales, advertising and promotional activities, have generated, and continue to generate, enormous interest and excitement in the minds of the public throughout the world. As a result, the character names TARZAN and JANE, as well as the physical appearances of said characters, have acquired, and now have, an especially strong secondary meaning and significance throughout the United States and other areas of the world as distinctively referring to and identifying only the TARZAN and JANE characters and characterizations emanating from the creations of Edgar Rice Burroughs and exclusively exploited and licensed for many years by the plaintiff, Edgar Rice Burroughs, Inc. The TARZAN Symbols of Origin 21. Through plaintiff's efforts, not only have the names TARZAN and JANE and the other names by which TARZAN is repeatedly referred to become instantly recognizable in the public mind, but also the TARZAN character's attributes, characteristics and physical appearance have come to symbolize and be universally, and uniquely, identified with the character and plaintiff. 22. TARZAN is also known as the APEMAN, LORD OF THE JUNGLE and KING OF THE JUNGLE. 23. Among the most famous of such symbols of origin of the TARZAN character is the distinctive TARZAN yell, which was first described and portrayed by Edgar Rice Burroughs in TARZAN OF THE APES and which is prominently featured in most TARZAN works including the TARZAN movies and the former CBS network television series "TARZAN, LORD OF THE JUNGLE." 24. In addition, the various licensed works in which the TARZAN character has appeared have consistently and prominently featured pictorial and/or graphic representations of the following TARZAN physical attributes and characteristics: the most famous is TARZAN's ability and practice of swinging from vine to vine, for example, to rescue his companion JANE from various perils of the jungle; the TARZAN loin cloth and knife symbolizing his human origin; TARZAN's athletic physique and prowess; and TARZAN's special ability to communicate with and dominate the animals in his jungle environment. 25. Through the promotional efforts of plaintiff, the foregoing names, attributes and characteristics have, alone or in combination, come to be uniquely identified as symbols and indicia of origin of the TARZAN character, and the creations of Edgar Rice Burroughs, and have been exploited and licensed for many years by plaintiff (hereinafter, the "TARZAN Symbols of Origin"). Defendants' Unlawful Activities 26. Defendants, who lack any authorization or consent from plaintiff, have produced and, upon information and belief, have very recently begun to market, distribute and sell in the United States a feature length hard core pornographic film entitled JUNGLE HEAT which makes extensive unauthorized use in its title, packaging, promotion and content of the TARZAN Symbols of Origin and is entirely based on the TARZAN stories and characters. Upon information and belief, the JUNGLE HEAT film is currently available in both video cassette and interactive CD-Rom format. 27. Plaintiff recently became aware of defendants' JUNGLE HEAT film following an investigation and judicial seizure in France of copies of the identical film bearing the title "DARD'ZAN" and/or "DARD'ZAN: The Humiliation of Jane." The defendants' JUNGLE HEAT film is nothing more than the English version of the DARD'ZAN film, which has been expressly promoted in France as the "TARZAN film" through a photographic feature depicting scenes from the film in the French version that appeared in the French edition of Penthouse magazine. A copy of the jacket cover for the video version of the DARD'ZAN film is annexed hereto as Exhibit A; relevant portions of the French Penthouse magazine which featured photographic still reproductions of scenes from the DARD'ZAN film are annexed hereto as Exhibit B. These scenes all also appear in defendants' English language JUNGLE HEAT version of DARD'ZAN which is identical to DARD'ZAN. 28. Defendants' JUNGLE HEAT film purports to depict the erotic side of JANE's relationship with a TARZAN like character known as APE-MAN. That viewers are to associate APE- MAN, a name already uniquely identified with TARZAN, with the TARZAN character is evident from at least one reference in the film to APE-MAN as TARZAN and its pervasive use of virtually every TARZAN Symbol of Origin in depicting the APE-MAN character both on its packaging and throughout the film. For example, APE-MAN wears a loin cloth and carries a knife, he lives in the jungle and repeatedly emits the famous and unique TARZAN yell, he swings from vine to vine in the jungle, he rescues JANE from peril and he is accompanied by his animal friend CHEETA. In order to further heighten the film's connection to the TARZAN stories and characters, defendants have also created and used a jacket cover for the video version of the JUNGLE HEAT film which includes a photograph of a naked man with a knife sheath clutching a naked woman in a jungle setting with written text prominently stating: "There was more to the legend than even JANE knew," and "director Joe D'Amato explores in exhausting detail the steaming passion that blazed between Jane and her jungle king!" A copy of the video jacket for the JUNGLE HEAT film is annexed hereto as Exhibit C. 29. The JUNGLE HEAT film consists of numerous lewd, vulgar and highly offensive sequences of the TARZAN and JANE characters engaged in sexual intercourse, fellatio and sodomy in a jungle setting. The film also portrays the TARZAN character participating in group sex acts. Representative examples of the scenes depicted in the JUNGLE HEAT film can be seen in the pages from the French Penthouse magazine, annexed hereto as Exhibit B, which featured scenes from the DARD'ZAN film, which, as noted above, is visually identical to the JUNGLE HEAT film. 30. During his long career as an author, Edgar Rice Burroughs maintained high moral standards for his heroes and heroines who were imbued with admirable traits of character and clean and attractive appearances. These traits are particularly evident in TARZAN and the other TARZAN characters, such as JANE. Thus, among other things: TARZAN is handsome, strong, intelligent, resourceful, courageous and honest; and JANE is beautiful, faithful and brave. 31. Because of the wide audience for the TARZAN stories, and particularly the many TARZAN fans who are children, both Edgar Rice Burroughs and plaintiff have striven successfully for over 80 years to maintain the good, wholesome and attractive image of TARZAN, of the TARZAN stories and of the other TARZAN characters, including JANE, in all of the forms and media in which these have appeared. 32. The portrayals of TARZAN and JANE in defendants' JUNGLE HEAT film are the antithesis to the good, wholesome and attractive images of TARZAN and JANE which have been cultivated, developed and maintained by Edgar Rice Burroughs and plaintiff over the course of 80 years. 33. Defendants' JUNGLE HEAT film is a lewd, vulgar, offensive, degrading and distasteful motion picture, with which plaintiff has no connection and over which plaintiff has no control. FIRST CLAIM FOR RELIEF FOR FEDERAL UNFAIR COMPETITION 34. Plaintiff repeats and realleges each of the allegations set forth in paragraphs 1-33 above. 35. Defendants' above-described actions constitute the use in connection with goods and services of unauthorized and false descriptions and representations with respect to the origin of the JUNGLE HEAT film, by suggesting that the defendants lewd and vulgar JUNGLE HEAT film is connected or associated with or authorized, approved or sponsored by plaintiff and its predecessor-in-interest Edgar Rice Burroughs. 36. Defendants' aforesaid actions are in violation of Section 43(a) of the Trademark Act, 15 U.S.C. Section 1125(a), and have already irreparably damaged plaintiff and will, unless immediately restrained, continue to so damage the plaintiff, its good will, business reputation, and its entire licensing program, for all of which there is no adequate remedy at law. SECOND CLAIM FOR RELIEF FOR COMMON LAW UNFAIR COMPETITION 37. Plaintiff repeats and realleges each of the allegations set forth in paragraphs 1-36 above. 38. Defendants' aforesaid actions constitute unfair competition in violation of plaintiff's rights and infringement of plaintiff's common law trademark rights: on information and belief, by being calculated to represent and suggest and imply falsely that the JUNGLE HEAT film is based on the TARZAN characters and literary efforts of Edgar Rice Burroughs or that the JUNGLE HEAT film has been sponsored, authorized or connected with plaintiff; by confusing the defendants' customers and the public into believing that the JUNGLE HEAT film emanates from or is authorized by plaintiff; by palming off the JUNGLE HEAT film as authorized by plaintiff; by diluting the distinctive quality of plaintiff's TARZAN characters and TARZAN products and services by reason of this unauthorized use; by thereby interfering with the advantageous relations which plaintiff enjoys and can reasonably anticipate having with its licensees and by thereby unlawfully interfering with plaintiff's entire licensing program for its TARZAN products and services in all media; and by wrongfully infringing and misappropriating plaintiff's property and trademark rights under the laws of the State of New York and common law in the marks TARZAN and JANE, as well as the TARZAN and JANE characters and the TARZAN Symbols of Origin. 39. Defendants' aforesaid acts of unfair competition have already caused plaintiff irreparable injury and will, unless restrained, continue to so damage plaintiff, all of which cannot be adequately remedied at law. THIRD CLAIM FOR RELIEF FOR DILUTION 40. Plaintiff repeats and realleges each of the allegations set forth in paragraphs 1-39 above. 41. Defendants' above-described actions have injured and continue to injure plaintiff's business reputation and have diluted and tarnished and will continue to dilute the distinctive quality of plaintiff's famous trademarks and the positive associations represented by such trademarks. 42. Defendants' aforesaid actions are in violation of Section 43(c)(1) of the Trademark Act, 15 U.S.C. Section 1125(c)(1), and Section 368-d of N.Y. General Business Law, and have already caused plaintiff irreparable damage and will, unless restrained, continue to so damage plaintiff, all of which cannot be adequately remedied at law. WHEREFORE, plaintiff demands judgment against the defendants as follows: 1. That defendants, and each of them, their officers, directors, agents and employees and any and all persons in active concert or participation with them be enjoined during the pendency of this action and permanently thereafter from: a. infringing plaintiff's TARZAN and JANE trademarks, and common law trademarks in the TARZAN Symbols of Origin and from employing the names or words TARZAN or JANE alone, or the names TARZAN and JANE in combination, or the names APE MAN, LORD OF THE JUNGLE and KING OF THE JUNGLE and/or the other TARZAN Symbols of Origin, in any manner in the JUNGLE HEAT film or in any manner in connection with the distribution, sale and/or promotion of defendants' products that is likely to cause confusion, or to cause mistake or to deceive defendants' customers or the public with respect to any possible connection between plaintiff and such products or services or that is likely to create the impression that defendants or their products or services originate with, are sponsored by or are in any way connected with the plaintiff. b. falsely describing or representing the origin of defendants' products and services, including the JUNGLE HEAT film complained of herein, and from misrepresenting and deceiving defendants' customers and the public with respect to the existence of any connection between plaintiff and defendants' products and services and the JUNGLE HEAT film; c. unfairly competing with the plaintiff by diluting, tarnishing, debasing and disparaging the plaintiff's TARZAN and JANE trademarks and characters and the TARZAN Symbols of origin and from illegally appropriating plaintiff's rights in and to the same. 2. That defendants, and each of them, be ordered to immediately cease the distribution, dissemination and exhibition of the JUNGLE HEAT film, in any format, and any and all other motion pictures, videos and/or CD-Roms using the TARZAN and JANE characters or any or all of the TARZAN Symbols of Origin; 3. That defendants, and each of them, be ordered to recall immediately any and all copies of the JUNGLE HEAT film, in any format, which are currently in the possession of distributors, retail or wholesale establishments, video stores and book stores, and to direct immediately all such distributors, retail or wholesale establishments, video stores and book stores to cease forthwith the distribution and/or sale of the JUNGLE HEAT film, in any format, and to immediately remove it from public access. 4. That defendants be ordered to deliver up for destruction all copies of the JUNGLE HEAT film, in any format, and any infringing promotional and advertising materials and packaging for such, including any materials that include, repeat, depict, constitute, or bear any variation, reproduction, counterfeit, copy, or colorable imitation of plaintiff's TARZAN and JANE trademarks and the TARZAN Symbols of Origin. 5. That defendants, and each of them, be ordered to pay plaintiff such damages as plaintiff has sustained in consequence of the above described violations of plaintiff's rights in a total amount to be determined at trial; 6. That defendants be ordered to account to plaintiff for all the gains, profits, savings, and advantages realized by defendants from their acts of unfair competition, false designations of origin, false descriptions and representations, and dilution described above; 7. That defendants pay plaintiff such punitive damages as the Court finds appropriate; 8. That plaintiff have and recover from defendants its costs of suit and reasonable attorney's fees incurred in connection with this action; and 9. That plaintiff be granted such other and further relief as may be equitable and just. Dated: New York, New York August 6, 1996 WEISS DAWID FROSS ZELNICK & LERHMAN, P.C. By: /s/ Roger L. Zissu (RLZ 0973) Georges Nahitchevansky Attorneys for Plaintiff 633 Third Avenue New York, New York 10017 (212) 953-9090 *==== Menu: LIBRARY ====* - Hot Docs