Planet Hollywood (Region IV), Inc. v. Hollywood Casino Corp.

FINDINGS OF FACT AND CONCLUSIONS OF LAW PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 52

SCHENKIER, United States Magistrate Judge.

Introduction

As a nation, we long have extolled the virtues of free and vigorous competition, and frequently have cited our devotion to competition as a principal reason for our nation’s unparalleled economic success. At the same time, we hold no less dear the right of individuals and corporations to control and use their own property, including intellectual property such as trademarks. Protection of trademark rights has been a part of our common law since the inception of this nation and has been expressed in federal legislation dating back to 1870.

However, the boundaries of these respective rights of competition and protection often are not clear, and often come into conflict. Is one party merely seeking to compete freely and fairly, or is it attempting to unfairly usurp the intellectual property of another? Is one party merely attempting to protect its legitimate right to control and use its intellectual property, or is it seeking to unfairly expand its intellectual property rights beyond their proper scope? Questions such as these typically lie at the core of intellectual property litigation, and this lawsuit is no exception.

On July 29, 1996, Planet Hollywood (Region IV), Inc. and Planet Hollywood International, Inc. (collectively, “Planet Hollywood”) initiated this lawsuit against Hollywood Casino Corporation and related corporations and individuals (collectively, “Hollywood Casino”). Hollywood Casino operates casinos in Aurora, Illinois and Tunica, Mississippi, and is in the process of establishing a third casino in Shreveport, Louisiana. As now amended, Planet Hollywood’s complaint alleges that Hollywood Casino is guilty of false designation of origin and trade dress infringement, in violation of the Lanham Act, 15 U.S.C. § 1125 and common law (Count I); has infringed Planet Hollywood’s design marks, in violation of the Lanham Act, 15 U.S.C. § 1114 and the common law (Count II); has violated the Lanham Act, 15 U.S.C. § 1125 (c) and the Illinois Anti-Dilution Act, 765 ILCS 1035/15, by diluting the distinctive quality of Planet Hollywood’s design marks (Count III); has

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committed the common law tort of unfair competition (Count IV); and has violated the Illinois Deceptive Business Practices Act, 815 ILCS 505/1,

et seq.

(Count V). In addition, Planet Hollywood seeks a declaratory judgment that Planet Hollywood would not infringe any trademark rights of Hollywood Casino were Planet Hollywood to use its design mark for casinos or hotels, an injunction barring defendants from asserting a claim of infringement or unfair competition based on Planet Hollywood’s future use of its design mark for those purposes, and an order canceling all of Hollywood Casino’s registered trademarks for casino services (Count VI).

Hollywood Casino has.responded by denying any infringement, asserting an array of affirmative defenses attacking the scope and validity of Planet Hollywood’s trademarks and trade dress, and pleading its own counterclaim for infringement and declaratory relief against Planet Hollywood (and, to boot, joining two senior Planet Hollywood officers as parties to that claim). Hollywood Casino’s counterclaim, as amended, asserts that by placing certain of its restaurants in buildings that also house casino operations run by others, Planet Hollywood already has infringed Hollywood Casino’s trademark and trade name and committed false designation of origin in violation of the Lanham Act, 15 U.S.C. §§ 1114 , 1125(a), and 1126 (Counts I and II); has committed common law unfair competition (Count III); has diluted Hollywood Casino’s trademark and trade name in violation of the Lanham Act, 15 U.S.C. § 1125 (c), and the Illinois Anti-Dilution Act, 765 ILCS 1035/15 (Count IV); and has violated the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/2 (Count V) and the Nevada Deceptive Business Trade Practices Act, N.R.S. 598.0915(1)-(3) (Count VIII). Hollywood Casino alleges that Planet Hollywood has unjustly enriched itself by virtue of those alleged violations (Count VI), and pleads a separate count for damages allegedly due and owing for the violations of law alleged in Counts' I through VI in connection with the Planet Hollywood restaurant located at Caesar’s Tahoe in- Stateline, Nevada (Count VII).

Hollywood Casino’s amended counterclaim also asserts a declaratory judgment count based on Planet Hollywood’s possible future use of its mark for casino services. Hollywood Casino claims that if Planet Hollywood in fact embarks upon the use of its trademark name for casino services, this would constitute trademark and trade name infringement and dilution of the Hollywood Casino mark in violation of the Lanham Act and applicable state statutes, common law unfair competition, deceptive trade practices in violation of applicable state statutes, and unjust enrichment. As a mirror image to Planet Hollywood’s declaratory judgment claim, Hollywood Casino seeks not only that declaration but, in addition, a declaration that Hollywood Casino’s marks are valid and neither generic nor descriptive, and an injunction barring Planet Hollywood from using its mark in the future for casino services (Count IX).

This case originally came before the Court on five summary judgment motions filed by the parties, which raised a number of issues concerning the validity and alleged infringement of Planet Hollywood’s trademark and trade dress, and Hollywood Casino’s trademark.

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During a pretrial conference on June 1, 1999, the Court denied all summary judgment motions as moot, in view of an agreement by the parties to convert the motions for summary judgment into a bench trial on the papers, pursuant to Federal Rule of Civil Procedure 52 (doc. # 148-1). At the June 1 pretrial conference, the Court also ruled that the trial of this matter would be bifurcated, and the Rule 52 proceeding that is the subject of this opinion would only address issues of liability; that ruling was

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further confirmed in a subsequent order dated June 7,1999 (doc. # 149-1).

The parties agreed that the declarations, documents and other evidentiary materials submitted in connection with the summary judgment motions would constitute the evi-dentiary record for the Court to consider in this Rule 52 proceeding, that the fact statements submitted in connection with the summary judgment motions would be treated as proposed findings of fact, and that the summary judgment briefs would be considered as trial briefs. At the parties’ request, the Court also accepted certain supplementations to that record. Each party submitted additional exhibits, the admissibility of which was ruled on at a pretrial conference held on June 25, 1999 (doc. # 156-1). At Hollywood Casino’s request, and with the agreement of all parties, the Court also conducted site visits of the Hard Rock Café and Planet Hollywood restaurants located in Chicago, Illinois on July 1, 1999, and of the Hollywood Casino located in Aurora, Illinois on July 8, 1999. By agreement of the parties, those site visits were conducted without the presence of counsel or the parties, and without the dates of the visits being disclosed to the employees of the respective facilities. In addition, at the request of Hollywood Casino, the Court convened an evidentiary proceeding for a four-day period from July 19 through 22, 1999, at which time in-court testimony was received from four witnesses called by Hollywood Casino. Planet Hollywood also examined each of the witnesses, but elected to call no witnesses affirmatively.

The Court then heard closing argument from each side on July 26, 1999, and allowed the parties to submit additional proposed findings of fact to take into account the full evidentiary record, including what had transpired during the evidentiary hearing. Those findings of fact were submitted on August 17, 1999: Hollywood Casino submitted 403 proposed findings of fact, spanning 79 pages; Planet Hollywood submitted 257 proposed findings of fact, spanning 52 pages (not surprisingly, those proposed findings substantially overlapped with the fact statements previously submitted on summary judgment).

During closing argument, the Court raised,

sua sponte,

the issue of subject matter jurisdiction of the parties’ respective declaratory judgment counts: that is, whether Planet Hollywood has sufficiently progressed with concrete steps to use its name for a casino so as to create a justicia-ble controversy at this time. Planet Hollywood argued that the Court possessed subject matter jurisdiction, and Hollywood Casino did not argue to the contrary. Neither side addressed that issue further in the proposed findings submitted on August 17, 1999. However, after the submission of proposed findings, Hollywood Casino moved to dismiss all declaratory judgment claims in the Amended Complaint and Amended Counterclaim for lack of subject matter jurisdiction (doc. # 179-1). Planet Hollywood opposes the motion, but asserts that if it is granted, attorneys’ fees and costs should be assessed against Hollywood Casino under 28 U.S.C. § 1927 for vexatiously litigating the declaratory judgment issues for several years, and thus saddling Planet Hollywood with unnecessary litigation expenses.

Since the filing of these motions, the case has taken a few more twists and turns.

First,

on October 12, 1999, Planet Hollywood (Region IV) and Planet Hollywood International, Inc. filed petitions in the bankruptcy court in Delaware seeking protection under Chapter 11 of the Bankruptcy Code. Although that filing triggered an automatic stay of all plenary litigation against Planet Hollywood and thus normally would have barred further consideration of the Amended Counterclaim (but not Planet Hollywood’s Amended Complaint) at this time, Planet Hollywood and Hollywood Casino jointly asked the bankruptcy court to lift the stay for purposes of this lawsuit, a request that was granted on November 19, 1999. The pending bankruptcy action, therefore, does not affect this Court’s authority to address the entire case before it. However, the

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parties have argued about the impact of this bankruptcy filing- — and certain comments attributed to one of the individual plaintiffs about it — on the Court’s consideration as to whether there is a sufficiently concrete case or controversy to vest jurisdiction over the declaratory judgment actions, and the parties have submitted further written argument on that issue.

Second,

on October 21, 1999, Hollywood Casino filed a motion under Fed.R.Civ.P. 15(b) to further amend its Amended Counterclaim to conform to the evidence (doc. # 181-1). In substance, that motion seeks to excise Counts I-VIII from Hollywood Casino’s Amended Counterclaim — that is, all claims asserting violations based on Planet Hollywood’s past and current uses of its marks. Planet Hollywood resists that motion, and that matter also is presently before the Court.

The Court has carefully considered the evidence and arguments submitted by the parties in this Rule 52 proceeding. The Court’s rulings are as follows:

1. Hollywood Casino’s motion to dismiss the declaratory judgment claims for lack of subject matter jurisdiction (doc. # 179-1) is granted. The Court therefore dismisses without prejudice Count VI of the Amended Complaint and Count IX of the Amended Counterclaim. Planet Hollywood’s request for an assessment of fees and costs against Hollywood Casino under 28 U.S.C. § 1927 is denied.

2. Final judgment is hereby entered for defendants, and against plaintiffs, on Counts I through V of the Amended Complaint (which are all remaining claims in the Amended Complaint after dismissal of the declaratory judgment claim in Count VI).

3. Hollywood Casino’s motion to conform the pleadings to the proof by deleting Counts I through VIII of the Amended Counterclaim (doc. # 181-1) is denied. Turning to the merits of those claims, final judgment is hereby entered for the counterdefendants, and against the counterplaintiffs, on Counts I through VIII of the Amended Counterclaim (which are all the remaining claims in the Amended Counterclaim after dismissal of the declaratory judgment claim in Count IX).

Set forth below are the findings of fact and conclusions of law that form the basis for the Court’s rulings, as required by Rule 52(a). To the extent that any finding of fact constitutes a conclusion of law, the Court hereby adopts it as such, and to the extent that any conclusion of law constitutes in whole or in part a finding of fact, the Court adopts it as such.

See Miller v. Fenton,

474 U.S. 104, 113-14 , 106 S.Ct. 445 , 88 L.Ed.2d 405 (1985) (discussing the methodology for distinguishing questions of fact from questions of law). The various subheadings that appear throughout this opinion are not themselves findings or conclusions, but are merely inserted for the convenience of the reader.

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FINDINGS OF FACT

I. THE GENESIS OF THE PLANET HOLLYWOOD CONCEPT.

1. Plaintiffi’Counterdefendant Planet Hollywood (Region IV), Inc. (“PH-Region IV”) is a Minnesota corporation, with its principal place of business in Orlando, Florida. PH-Region IV currently owns the rights in the alleged “Planet Holly

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wood” trademarks and trade dress that are the subject matter of the Amended Complaint. Plaintif/Counterdefendant Planet Hollywood International, Inc. (“PHI”), a Delaware corporation with its principal place of business in Orlando, Florida, is the parent of PH-Region IV.

2. Counterdefendant Keith Barish is a former Chairman of the Board and principal shareholder of PHI. In late 1988 or 1989, Mr. Barish began to develop the concept of a restaurant that would pay tribute to Hollywood by featuring memorabilia, merchandise and movie footage. The initial name that Mr. Barish considered for this concept was “Café Hollywood.”

3. Counterdefendant Robert Earl is the Chief Executive Officer of PHI, a member of its Board of Directors, and one of its principal shareholders. He is also the Chief Executive Officer of PH-Region IV. Mr. Earl’s responsibilities have involved the day-to-day management of the Planet Hollywood operations. By contrast, Mr. Barish’s responsibility has principally been to preside at PHI’s board meetings; he has not been involved in day-to-day operations

(Id.).

4. Mr. Earl first met with Mr. Barish concerning the then “Café Hollywood” concept in about 1989. Beginning early in the development of this concept, Messrs. Barish and Earl envisioned the enterprise as not being limited solely to restaurants, but as potentially expanding into a variety of entertainment and leisure services. The Court finds credible the testimony of Mr. Earl that the decision to change the name of the concept from “Café Hollywood” to “Planet Hollywood” reflected that intent to apply the concept to a variety of entertainment functions (Trial Tr. 799-801).

5. The first Planet Hollywood restaurant opened in New York City, New York, on or about October 21, 1991. As of August 1998, there were eighty-eight Planet Hollywood restaurants located in thirty-five countries on virtually every continent. Thirty-three of those restaurants were located in the United States. Four of the restaurants in the United States are located in hotels which also house separate casino operations: Harrah’s Casino Hotel in Reno, Nevada; Caesar’s Palace Resort in Las Vegas, Nevada; and Caesar’s Casino Hotels in Lake Tahoe, Nevada, and Atlantic City, New Jersey.

6. In addition, Planet Hollywood has offered a number of goods and services under the Planet Hollywood trademarks or trade dress other than restaurant services, including night club and bar services, movie screenings, and the sale of apparel and toys. As of 1998, Planet Hollywood also had a hotel under construction in New York City. However, Planet Hollywood has never offered casino services under its name; nor does Planet Hollywood presently have any concrete plans to do so.

II. PLANET HOLLYWOOD’S TRADEMARKS.

7. From the beginning of its operations in 1991, Planet Hollywood has used trademarks and service marks comprised of the words “Planet Hollywood,” both standing alone and superimposed over a stylized star and globe symbol. Those trademarks and service marks have been duly registered with the United States Patent and Trademark Office as follows:

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Mark Registration No. Registration Bate Services/Goods

“Planet Hollywood” (word mark only) 1,776,944 06/15/93 Jewelry, namely decorative tie pins of non-precious metal; clothing, namely tee-shirts, shirts, sweatshirts, polo shirts, sport shirts, shorts, jackets, caps, bolo ties; restaurant, bar, night club and restaurant takeout services (first use in commerce 10/22/91).

[[Image here]]

“Planet Hollywood” (curved, stylized word mark) 1,788,712 08/17/93 Jewelry, namely decorative tie pins and lapel pins of non-precious metal (first use in commerce 10/22/91); printed matter, namely menus, stationery, notecards and postcards (first use in commerce 10/22/91); clothing, namely tee shirts, shirts, sweatshirts, polo shirts, sport shirts, shorts, jackets, caps and bolo ties (first use in commerce 10/22/91); toys, namely plush stuffed animals (first use in commerce 11/20/92); entertainment services, namely conducting exhibition services in the nature of festivals and movie screenings, the presentation of live and recorded music and film exhibitions (first use in commerce 10/22/91); restaurant, bar, night club and restaurant takeout services (first use in commerce 10/22/91).

[[Image here]]

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“Planet Hollywood” (curved, stylized wood mark superimposed over globe and star symbol) 1,798,442 10/12/93 Jewelry, namely decorative tie pins and lapel pins of non-precious metal (first use in commerce 10/22/91); printed matter, namely menus, stationery, notecards and postcards (first use in commerce 10/22/91); clothing, namely tee shirts, shirts, sweat shirts, polo shirts, sport shirts, shorts, jackets, caps and bolo ties (first use in commerce 10/22/91); toys, namely plush

stuffed

animals (first use in commerce 11/20/92); entertainment services, namely, conducting exhibition services in the nature of festivals and movie screenings, the presentation of live and recorded music and film exhibitions (first use in commerce 10/22/91); restaurant, bar, night club and restaurant takeout services (first use in commerce 10/22/91).

[[Image here]]

“Planet Hollywood” (curved, stylized wood mark superimposed over globe and star symbol) 1,83 9,216 06/14/94 Metal key chains (first use in commerce 10/21/91); watches (first use in commerce 10/0/92).

[[Image here]]

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"Planet Hollywood” (word mark only) 1,890,377 04/18/95 Lapel pins of non-precious metal (first use in commerce 10/22/91); stationery, notecards and writing paper (first use in commerce 2/1/93); toys, namely plush stuffed animals (first use in commerce 11/20/22); conduction of exhibition services in the nature of festivals and movie screenings (first use in commerce 10/22/91).

[[Image here]]

“Planet Hollywood” (curved, stylized wood mark superimposed over globe and star symbol) 1,918,766 09/12/95 Sunglasses (first use in commerce 08/0/93).

[[Image here]]

(PH App. Vol. 1. Ex. 4 A).

8. As to each of these registered marks, Planet Hollywood has disclaimed any “exclusive right to use ‘Hollywood,’ apart from the mark as shown.” In addition, Planet Hollywood has admitted that particular colors or color combinations are not an element of the registered marks.

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9. There is no dispute that the Planet Hollywood trademarks are extremely well known, both the stand-alone word marks and the word marks superimposed over the globe and star symbol (hereinafter referred to as Planet Hollywood’s “globe mark”). The record is replete with statements attesting to the extraordinary notoriety that has attached to the Planet Hollywood marks. For example, Mr. Barish attributed to the Chairman of Coca Cola the observation that Planet Hollywood “is

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the most famous and well-known brand created in the last thirty years” — an assessment with which Mr. Barish wholeheartedly agreed. While not going quite so far, a number of representatives of the defendants likewise have acknowledged that the Planet Hollywood mark is “well known” (Trial Tr. at 200); “well-recognized” (PH App. Vol. 2 Ex. 8 (Riviera-Soto Dep.) at 35), and “widely known” (PH App. Vol. 2, Ex. 12 (Thompson Dep.) at 114). Testimony by non-parties confirms this assessment

(see, e.g.,

PH App. Vol. 2 Ex. 9, at 74; Ex. 10, at 103; Ex. 11, at 24). Indeed, defendants have admitted in their proposed findings that “[t]he Planet Hollywood mark is extremely famous” (Defendants’ and Counterclaim-Plaintiffs’ Proposed Findings of Fact in Support of Infringement, at 3, ¶ 14). Based on this and other substantial evidence offered during this proceeding, the Court finds that the Planet Hollywood trademarks identified in Finding No.7, above, are famous marks throughout the United States, and have substantial strength in identifying the source of goods and services provided.

10.However, the Court finds that Planet Hollywood has not proven the contention- — found in its proposed findings— that the word “Planet” is the dominant component of the mark. The Court has considered Mr. Earl’s testimony that the word “Planet” is dominant, as well as the evidence that Planet Hollywood is sometimes called “The Planet.” However, there is other evidence indicating that the word “Planet” is no more dominant in the mark than the word “Hollywood.” While Planet Hollywood has generally disclaimed the exclusive right to the word “Hollywood,” it has not done so with respect to the marks as shown. While Planet Hollywood’s globe mark does convey a “planetary” message, it does so in conjunction with “Hollywood,” a word that also is emblazoned across the globe. The stars on the Planet Hollywood mark are consistent with both a planetary and a Hollywood theme. And, the Court notes that Planet Hollywood’s current attempt to downplay the importance of the word “Hollywood” in its mark is in tension with Planet Hollywood’s earlier statement, in opposing summary judgment, that the word “Hollywood” is a “significant element[ ] of Planet Hollywood’s design mark” (Planet Hollywood’s Memorandum in Opposition to Hollywood Casino’s Motion for Summary Judgment on Planet Hollywood’s Design Mark Infringement, 9/14/98, at 11). This evidence suggests the words “Planet” and “Hollywood” have comparable emphasis in the marks.

11. Moreover, there is also evidence indicating that the word “Hollywood” is the dominant part of the mark. For example, the word “Hollywood” is the only word that has survived as the name evolved from “Café Hollywood” to “Planet Hollywood.” Planet Hollywood has acknowledged that “Planet Hollywood” was intended to be the definitive tribute to Hollywood, and as a result, it was deemed essential to include the word “Hollywood” in the name. In a suit against an alleged infringer named “Planet Hoboken,” Planet Hollywood agreed as part of a settlement that the establishment could go by the name “The Planet” (Trial Tr. 849; HC Tr. Ex. 500)- — -which would tend to suggest that Planet Hollywood does not consider “Planet” to be the dominant component of its mark. In sum, the Court finds that the evidence does not support a finding that “Planet” is the dominant component of the mark (whether that word is equal or subordinate to the word “Hollywood” as a component of the marks is a question the Court need not and does not decide).

III. PLANET HOLLYWOOD’S TRADE DRESS.

12. The Planet Hollywood restaurants are a part of what has been referred to by some as the “eatertainment” industry, which is made up of themed restaurants that provide both food and an entertaining environment. Restaurants in the “eater-tainment” industry include Planet Hollywood, The Hard Rock Café, Rainforest

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Café, Harley-Davidson Café and Country Star Café.

13. Based on the Court’s site visit to Hard Rock Café and Planet Hollywood in Chicago, as well as the Court’s review of videotapes submitted by Hollywood Casino displaying the interiors of many of these other restaurants, the Court finds that Planet Hollywood has developed a look and feel, or “total image,” that distinguishes Planet Hollywood establishments from others in the eatertainment industry.

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The Court finds that the following combination of elements make up this distinctive image of Planet Hollywood restaurants.

A.

An Emphasis on Celebrity Ownership.

14. One of the defining characteristics of Planet Hollywood restaurants is the strong presence of, and association with, the three leading celebrity investors in the enterprise: Arnold Schwarzenegger, Sil-vester Stallone and Bruce Willis. There is no dispute that Planet Hollywood benefits from its association with those three individuals, whose action movies are among the most popular in the world (as measured by box office receipts). Indeed, Hollywood Casino itself submitted a proposed finding of fact acknowledging this point (Hollywood Casino Proposed Findings of Fact in Support of Infringement, at 3, ¶ 17). The presence of those three celebrity owners is conveyed not only by their personal appearances at various Planet Hollywood restaurants and functions, but in the decor of Planet Hollywood restaurants. Planet Hollywood tends to cluster together displays and memorabilia of all three of the lead celebrity owners near the entrances to their restaurants. Thus, immediately upon entering Planet Hollywood restaurants, the consumer sees displays of posters and memorabilia from these individuals emphasizing their association with Planet Hollywood. In addition, those celebrity owners are highlighted in the Hollywood Hills dioramas that are found in all Planet Hollywood restaurants

(see

Finding No. 18, infra).

15. While Planet Hollywood’s distinctive image also includes other elements, which the Court will describe below, the Court finds that this association with Messrs. Schwarzenegger, Stallone and Willis, and the emphasis of those celebrities in the decor of the Planet Hollywood restaurants, is the single most important element contributing to the Planet Hollywood image.

B.

Display of Hollywood Memorabilia.

16. The Court finds that the display of memorabilia from famous Hollywood movies is also an important part of the distinctive look and feel of Planet Hollywood restaurants. Although there is a focus on the action movies involving the three lead celebrity owners, the Court finds that the overall image of Planet Hollywood is not limited to the presentation of memorabilia from those movies: Planet Hollywood presents memorabilia from Hollywood movies spanning a variety of genres and generations. However, contrary to Planet Hollywood’s assertion, the Court finds that the fact that the memorabilia is displayed in plexiglass display cases is not a distinctive part of Planet Hollywood’s presentation of memorabilia. The Court is mindful of Mr. Earl’s testimony that he devised the idea of a “clear modern look” for the display cases to make them distinctive to Planet Hollywood (Trial Tr. 768-769). However, as Mr. Earl further conceded, the use of display cases employing plexiglass is not unique, and may be found in many places — such as the Smithsonian Institute (Trial Tr. 771-72). Based on a consideration of all the evidence presented, including the Court’s site visits to Planet Hollywood and Hollywood Casino, the Court finds that the design of the display cases is not sufficiently unique, or suffi

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ciently identifiable to Planet Hollywood, to be a distinctive part of the Planet Hollywood image.

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C.

The Use of Video Clips.

17. Planet Hollywood restaurants use monitors to display video clips of movies and earlier Planet Hollywood restaurant openings. Those video clips contain a limited amount of material, and then recycle and continuously repeat throughout the hours of Planet Hollywood’s operations. The same video clips are used at all Planet Hollywood restaurants at any given time (although they are, of course, changed over time). Thus, individuals in Planet Hollywood restaurants in Chicago, New York and Orlando at a particular point in time would see the same video clips being displayed. The Court finds that this presentation of video clips is part of the distinctive look and feel of Planet Hollywood restaurants.

D.

The Display of Dioramas Featuring the Hollywood Hills.

18. All Planet Hollywood restaurants prominently display a diorama of the Hollywood Hills. Some of the items depicted in the diorama may vary from one Planet Hollywood restaurant to the next, but certain stylized elements remain constant: such as, cutouts of the three lead celebrity owners (as well as other celebrities) prominently displayed, and a depiction of city lights of Hollywood as viewed from a balcony that uses fiber optics to recreate the lighting. The Court finds that those dioramas, which further underscore the celebrity ownership of Planet Hollywood, contribute to the distinctive image of Planet Hollywood restaurants.

E.

Themed Rooms.

19. Planet Hollywood restaurants typically have a series of three distinct rooms, each of which has a different theme: Hollywood Hills, science fiction, and adventure. While some Planet Hollywood restaurants also may have additional rooms that promote other themes that resonate with customers in a particular location

(e.g.,

a “gangster room” in Chicago), all Planet Hollywood restaurants have as their lead concepts rooms promoting the same three themes. The Court finds that those theme rooms are part of the distinctive image of the Planet Hollywood restaurants, which Planet Hollywood uses to distinguish itself from other theme restaurants.

F.

The Planet Hollywood Marks.

20. Planet Hollywood restaurants conspicuously display the famous Planet Hollywood registered trademarks identified above. The admittedly famous marks help to uniquely identify the Planet Hollywood restaurants and are a distinctive part of the image conveyed by Planet Hollywood.

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G. Celebrity Handprints.

21. All Planet Hollywood restaurants feature a display of celebrity handprints, located just outside the front door. The handprints are obtained from a variety of celebrities (not just the owners), and the same sets of handprints are displayed in

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the same manner at Planet Hollywood restaurants. The Court is aware that other enterprises also use celebrity handprints: Grauman’s Theater in California is famous for it, and indeed, located just a few blocks from the Planet Hollywood location in Chicago is a sporting goods store that also displays on the exterior walls celebrity handprints (albeit mainly from sports figures). However, the Court finds that the manner of presentation of the handprints by Planet Hollywood, and the consistent use of this presentation across Planet Hollywood restaurants, is one element of the distinctive look and feel that is associated with Planet Hollywood restaurants.

H.

Art Deco Look.

22. Planet Hollywood has attempted to create an “art deco” look, which it describes as “reminiscent of Southern California and the Beverly Hills Hotel, with an emphasis on the colors pink, green, with shades of blue and purple, and palm trees throughout” (Planet Hollywood’s Proposed Findings of Fact, at 7, ¶¶ 25(7)(8)). Hollywood Casino has quarreled with Planet Hollywood’s attempt to label the Planet Hollywood decor as “art deco.” However, Samuel G. Bocchicchio, Hollywood Casino’s Vice President of Design and the person responsible for all creative design for the Hollywood Casino facilities, acknowledged that there is no single form that art deco takes: “[W]hen you say to define art deco, you can define it, but [what] it means to an artist, it’s a different look, different to different artists” (Trial Tr. 357). Based on the Court’s review of the evidence, including its visit to the Planet Hollywood restaurant in Chicago, the Court finds that the decor fits with the definition proposed by Planet Hollywood. Furthermore, the Court finds that this decor, in combination with the other elements set forth above, is part of the look and feel of Planet Hollywood restaurants that makes them distinctive.

I.

Items Not Included In Planet Hollywood’s Trade Dress.

23. There are certain additional items that Planet Hollywood claims as part of its trade dress, which the Court finds are not part of the distinctive image of Planet Hollywood restaurants:

a. Hollywood Icons.

Planet Hollywood asserts that its trade dress includes “the use of Hollywood icons brought to life in an attempt to make patrons feel that they have stepped right into the movies” (Planet Hollywood’s Proposed Findings of Fact, at 7, ¶ 25(3)). At most, this statement is an attempt to encapsulize the image that is created by the elements of trade dress described above. The Court finds that this statement is far too amorphous to identify a separate element of Planet Hollywood’s distinctive image.

b. The Sale of Retail Merchandise.

Planet Hollywood asserts as a part of its trade dress “the sale of retail merchandise including ‘Hollywood’ merchandise and merchandise bearing the word ‘Planet Hollywood’ logo, sold in a studio store” (Planet Hollywood’s Proposed Findings of Fact at 7, ¶ 25(6)). The fact that the Planet Hollywood marks are prominently displayed in the store helps identify the facility as “Planet Hollywood” — but that is due to the appearance of the marks, and not from the fact of merchandise being sold. The evidence presented shows that it is typical for “eatertainment” restaurants (such as, for example, Hard Rock Café) to sell merchandise in a store that is adjacent to the restaurant. The Court finds that neither the manner of selling the retail merchandise, nor the fact that it is “Hollywood” merchandise, is sufficiently distinctive or unique to distinguish Planet Hollywood.

c. Hawaiian Shirts.

Planet Hollywood asserts as a part of its trade dress “the sale and use of Hawaiian-type JAM shirts using black, pinks and yellows” (Planet Hollywood’s Proposed Findings of Fact, at 7, ¶ 25(12)). Those shirts were designed by one of the celebrity owners, Mr. Schwarzenegger, who frequently

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wears the shirt during personal appearances promoting Planet Hollywood. However, suffice it to say that Hawaiian-style shirts using those colors are not uncommon. Planet Hollywood has not offered evidence sufficient to establish that the Hawaiian shirts using that color scheme are unique to Planet Hollywood, or are uniquely associated by consumers with Planet Hollywood. The Court finds that those shirts are not part of Planet Hollywood’s trade dress.

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24. The Court’s findings that the items described in Finding Nos. 14-22 above constitute elements of the distinctive look and feel of Planet Hollywood restaurants are limited by two considerations in particular.

First,

the Court does not find that any single element, alone, constitutes Planet Hollywood’s trade dress. While certain of these elements (for example, the celebrity ownership) are plainly more important than others in creating the distinctive image of Planet Hollywood, it is the combination of all of those elements together that the Court finds creates the distinctive look and feel of Planet Hollywood restaurants' — a point that Planet Hollywood concedes (Trial Tr. 792).

Second,

the Court emphasizes that it does not generally find that any and all types of presentations of “video clips,” or “Hollywood memorabilia,” or an “art deco look reminiscent of Southern California,” or “dioramas featuring the Hollywood Hills” are unique to Planet Hollywood. Those are broad labels, which are a shorthand way to describe the visual and mental image created by the

specific manner

in which Planet Hollywood restaurants have implemented those elements. Plainly, a number of those broadly described elements could be, have been, and are now implemented by others in ways different than the manner of implementation chosen by Planet Hollywood. Planet Hollywood concedes as much: Planet Hollywood asserts, for example, that its trade dress is not merely in the fact that Planet Hollywood displays Hollywood memorabilia, but rather in the type of memorabilia and the manner of its display. Thus, the Court’s findings as to the elements that make up the distinctive Planet Hollywood image are limited to the specific manner in which Planet Hollywood has implemented those combination of elements.

25. Unlike the case with Planet Hollywood’s marks, which Hollywood Casino concedes are famous, Hollywood Casino disputes that Planet Hollywood’s trade dress is even protectable at all, much less famous. Hollywood Casino points to statements made by Planet Hollywood in an earlier lawsuit with Hard Rock Café as establishing that the elements Planet Hollywood now claims as its trade dress are not, in fact, unique to Planet Hollywood or protectable. As noted above, the Hard Rock Café is a part of the “eatertainment” industry. Several years before this lawsuit, the owners of the Hard Rock Café filed suit against Planet Hollywood in federal court in California alleging, among other things, that Planet Hollywood’s display of themed memorabilia infringed Hard Rock Café’s trade dress. In defending that lawsuit, Planet Hollywood asserted that the Hard Rock “motif’ was not entitled to trade dress protection because it was functional, was not inherently distinctive, and had no secondary meaning. In aid of that defense, Planet Hollywood argued that “the successful concept of combining an entertainment-themed restaurant in a museum-like setting is functional and therefore cannot be permanently appropriated for the exclusive use of any single competitor” (HC Ex.: Seidel Dec., Ex. 5, at 4-5). Planet Hollywood

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argued that “[functional elements that are part of ‘the actual benefit that the customer wishes to purchase’ are not limited to only the item actually purchased, but include the atmosphere that the customer enjoys with a meal”

(Id.,

Ex. 5, at 10-11). Planet Hollywood asserted that “it would not be possible to retain the basic appeal of an entertainment industry oriented restaurant without utilizing memorabilia”

(Id.,

Ex. 5 at 9), and that “[t]he glamour of the entertainment industry, the feature of Planet Hollywood that Morton objects to, is lawfully available for copying because of the customer’s interest in and desire for that feature in a particular class of restaurants”

(Id.,

Ex. 5 at 11).

26. The Court takes judicial notice that Planet Hollywood’s motion to dismiss the trade dress infringement claim was denied in

Morton v. Rank America, Inc.,

812 F.Supp. 1062 (C.D.Cal.1993). Thus, Planet Hollywood’s trade dress arguments did not persuade that court to dismiss the case. Before there was any final ruling on the merits of the trade dress infringement claim by Hard Rock or on Planet Hollywood’s defenses, the parties entered into a settlement agreement resolving that litigation. Neither party has offered into evidence a copy of the settlement agreement or proof of its terms, and the Court will not infer that the settlement agreement contains any admissions or other statements that would indicate that either party prevailed on the trade dress argument. On the evidence submitted, the Court does not find that Planet Hollywood prevailed in the Hard Rock litigation.

27. Hollywood Casino also argues that the items Planet Hollywood claims for its trade dress are used by many restaurants in the “eatertainment” business. There is no dispute that restaurants other than Planet Hollywood display entertainment-related memorabilia in a themed decor, and that such restaurants existed prior to Planet Hollywood (Trial Tr. 565-66). In its proposed findings of fact, Hollywood Casino has provided a chart identifying nine other “well known eatertainment industry restaurants” (including the Hard Rock Café), many of which feature, as does Planet Hollywood, loud music, video displays, merchandise bearing logos, and memorabilia (Defendants’ and Counterclaim Plaintiffs’ Proposed Findings of Fact in Support of Non-Infringement, at 17-18, ¶ 70).

28. The Court has considered the evidence on this subject, including the videos submitted by Hollywood Casino showing the interiors of those other restaurants. The Court finds that the look and feel of Planet Hollywood is distinct from the look and feel created by these other restaurants, which typically promote themes other than “Hollywood” (such as country, rock music, blues, or sports). The Court finds that although those other restaurants share with Planet Hollywood certain elements that can be generally labeled as “loud music, video displays, merchandise bearing logos, and memorabilia,” those other restaurants do not implement the elements in the same way as does Planet Hollywood. In addition, the Court finds that Planet Hollywood claims (and, in fact, Planet Hollywood restaurants possess) certain distinctive elements that are not in evidence at the other restaurants cited by Hollywood Casino: such as, the Planet Hollywood marks, the association with the celebrity owners Schwarzenegger, Stallone and Willis, and the distinctive Hollywood Hills diorama. The Court finds that the fact that those other restaurants possess elements that meet the same broad general description as certain elements of Planet Hollywood’s image does not eliminate or diminish the ability of the specific combination of elements implemented by Planet Hollywood from serving as a designator of source.

29. The Court finds that the Planet Hollywood trade dress (as found by this Court) is a strong signifier of source. Planet Hollywood has offered no surveys or other studies to attempt to establish the strength of its trade dress. However, the evidence shows that the plaintiffs have engaged in extensive marketing and promotional activities to create consumer rec

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ognition both of the Planet Hollywood trademark and the distinctive elements of Planet Hollywood’s appearance. Since 1991, Planet Hollywood has spent more than $45 million on marketing and promotion (although some of that has been for promotion outside the United States). Various elements of Planet Hollywood’s distinctive look and feel have received substantial press coverage (such as the celebrity ownership), as a result of Planet Hollywood’s connection to the Hollywood movie industry. In 1997, defendants sold more than $195 million in merchandise bearing the Planet Hollywood marks, which was nearly forty percent of the annual direct gross revenues from the Planet Hollywood establishments. This level of sales persuades the Court both that the Planet Hollywood marks (which are admittedly famous, and are a part of its trade dress) have wide circulation among the consuming public, and that a large number of people have visited the Planet Hollywood restaurants throughout the country and thus have been exposed to the distinctive elements of their appearance.

IV. THE DEFENDANTS/COUNTER-PLAINTIFFS.

30. Hollywood Casino Corporation is a Delaware corporation, with its principal place of business in Dallas, Texas. Hollywood Casino owns and operates two gaming facilities, which are also parties to the Amended Complaint and Amended Counterclaim: Hollywood Casino Aurora, Inc., an Illinois corporation with its principal place of business in Aurora, Illinois, and Hollywood Casino Tunica, Inc., a Mississippi corporation with its principal place of business in Robinsonville, Mississippi. A third casino operation is currently under construction in Shreveport, Louisiana.

31. Until recently, Hollywood Casino also owned and operated the Sands Hotel and Casino (the “Sands”) in Atlantic City, New Jersey, by and through a separate wholly-owned subsidiary or division of Pratt Hotel Corporation. Edward T. Pratt, III, who is a defendant but not a counterclaim plaintiff, is a principal, president and chief executive officer of all three of the Hollywood Casino corporations involved in this lawsuit. Greate Bay Casino Corporation (“Greate Bay”), a Delaware corporation with its principal place of business in Dallas, Texas, is also a defendant and a counterclaim plaintiff. Greate Bay is the parent of Greate Bay Hotel and Casino, Inc., which presently owns and operates the Sands. During the 1980s and up until December 18, 1996, the Pratt Hotel Corporation owned and operated the Sands. Effective January 1, 1997, the Pratt Hotel Corporation changed its name to Greate Bay.

32. At all relevant times, the Pratt family has owned or directly controlled Hollywood Casino Corporation, Pratt Hotel Corporation, Greate Bay Casino Corporation, Hollywood Casino-Aurora, Inc., and Hollywood Casino-Tunica, Inc.

33. The Hollywood Casino facility in Aurora, Illinois, opened on June 17, 1993, although it was publicly dedicated one month earlier. The Hollywood Casino in Tunica opened in August 1994. Tunica and Chicago are the third and fourth largest gaming markets in the country, respectively (behind Las Vegas and Atlantic City). It is conceded that the opening of the Hollywood Casino in Aurora marked the first actual use of the term “Hollywood Casino” by defendants for the operation of a casino (Trial Tr. 187).

V. HOLLYWOOD CASINO’S MARKS.

34. Hollywood Casino Corporation owns the following federal trademark registrations for the use of the term “Hollywood Casino”:

*841

Mark Registration No. Registration Date Services/Goods

“Hollywood Casino” (stylized word mark) 1,849,650 08/09/94 Casino services (first use in commerce 06/17/93).

[[Image here]]

“Hollywood Casino” (word mark) 1,851,759 08/30/94 Casino services (first use in commerce 06/17/93).

[[Image here]]

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“Hollywood Casino” (word mark”) 1,903,858 07/04/95 Hotel services (first use in commerce 09/09/94).

HOLLYWOOD CASINO

“Hollywood Casino” (stylized word mark) 1,949,319 01/16/96 Hotel services (first use in commerce 09/09/94).

[[Image here]]

“Hollywood Casino” (stylized word mark with “film strip” background) 2,256,306 06/29/99 Casinos; restaurant and bar services; hotel services (first use in commerce 07/29/96).

[[Image here]]

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“Hollywood Casino” (stylized word mark with “film strip” background) 2,256,307 06/29/99 . Casinos; restaurant and bar services; hotel services (first use in commerce 07/31/96).

[[Image here]]

35. None of these six registrations asserts any color component as a protected element of the marks. In addition, each of these registrations specifically disclaims any exclusive right to use the word “casino” apart from the trademark as shown.

36. When Hollywood Casino opened the Aurora facility in June 1993, the only stylized version of the word “Hollywood Casino” that was used is the one registered as No. ’650, which appears as follows:

[[Image here]]

This version of the Hollywood Casino mark bears no resemblance to any of the Planet Hollywood marks. Thereafter, Hollywood Casino began using a different stylized version of the same word mark, which is registered as No. ’319 and which appears as follows:

[[Image here]]

This version of the Hollywood Casino mark bears no resemblance to any of the Planet Hollywood marks. At some point thereafter (the date is not clear), Hollywood Casino began using an unregistered version of this word mark, which was encircled with stars and which appears as follows:

*844

[[Image here]]

The testimony established that the development of this latter stylized version was intended to give the mark a “more Hollywood” appearance (e.g., PH App. Vol. 4, Ex. 33 at 115). This version, which was used principally on merchandise sold by Hollywood Casino, does not bear any resemblance to any of the Planet Hollywood marks.

37.In 1996, Hollywood Casino began using another presentation of the Hollywood Casino mark, which is registered under number ’306 and which appears as follows:

[[Image here]]

This particular mark (which will be referred to as the “film strip mark”) is widely used by the Hollywood Casino on brochures, direct marketing, billboards, and within the casinos themselves. Although the testimony did not reveal when this mark was first used, the trademark registration identifies July 29, 1996 as the date of its first use in commerce (see Finding No. 34). Hollywood Casino currently uses both the film strip mark and the word mark (without background graphics).

38.The Court finds that there are a number of differences between the trademark names “Planet Hollywood” and “Hollywood Casino.” Although the two names share the word “Hollywood,” that word appears in a different sequence in each of the marks. The name “Planet Hollywood” has five syllables, and the name “Hollywood Casino” has six. When viewed, the word marks do not look the same (the differences in the words used are further emphasized by the use of different fonts and type styles). When spoken, the word marks do not rhyme or otherwise sound the same. The Court finds that the word marks are sufficiently different that consumers confronting the name “Hollywood Casino” in the marketplace would not likely be confused, or associate that name with Planet Hollywood.

39.The Court also finds that there are substantial differences between the Planet Hollywood mark that features the stylized globe, and the Hollywood Casino film strip mark:

A. The Planet Hollywood mark consists of a globe designed to replicate the Planet Earth, with a number of five-pointed stars embedded in it and one five-pointed star shooting from it. By contrast, although the backdrop of the Hollywood Casino film strip mark is circular, it is in no way suggestive of the Planet

*845

Earth. And, while there has been substantial dispute about whether the circular back drop of the Hollywood Casino logo is a sphere or a flat disk, the Court finds credible the testimony of Mr. Bocchicchio that it was intended to — and does — portray a flat disk (Trial Tr. 394 — 95).

8

The Court believes that this interpretation is supported not only by the way the word “casino” casts a shadow over the circular backdrop (suggesting lack of multiple dimension in the circle), but also by the border around the entire perimeter of the circle which, to the Court’s eye, suggests that the circle is flat — as is a disk.

B. Moreover, unlike the case with the Planet Hollywood globe mark, there are no stars embedded in the disk on the Hollywood Casino film strip mark, and no stars shooting from it. Planet Hollywood characterizes the eight-pointed stylized figure that dots the “i” in the word “Casino” as a star, while Hollywood Casino calls it “scintillation” (which Webster defines as a sparkle or flash of light). Whatever the proper characterization, the Court finds that the eight-sided object on the Hollywood Casino mark clearly is intended as punctuation, and does not resemble the five-pointed star that is shooting from the globe in the Planet Hollywood mark.

C. In the Hollywood Casino film strip mark, the word “Hollywood” is superimposed over a depiction of a strip of film, which itself is superimposed on top of the circular background. The Planet Hollywood mark uses nothing similar to this film strip. Indeed, prior to adopting its stylized globe mark, Planet Hollywood reviewed a number of designs, one of which used a strip of film (HC Ex.: Seidel Dec., Ex. 12, 142-43). Planet Hollywood did not adopt that particular design.

D. The type style used for the words on the respective marks is different, as is the placement of the words on the backdrops. In the Planet Hollywood mark both words appear in capital letters, one word on top of the other. The words appear on the lower center portion of the globe with the first letters of each word aligned vertically, and with the word “Hollywood” thus extending beyond the word “Planet.” By contrast, in the Hollywood Casino film strip mark, the word “Hollywood” appears in all capital letters, but in a different style type than used in the Planet Hollywood mark. The word “Casino” appears in a stylized script, with only the first letter capitalized. Unlike the Planet Hollywood mark, in which the word “Hollywood” extends to the right of the word “Planet,” the word “Casino” in the Hollywood Casino mark is centered directly under the word “Hollywood.”

E. In addition, while Planet Hollywood disclaims that color is a part of the logo, the Court notes that the samples of the Planet Hollywood mark that have been offered into evidence all use a globe of a sky blue color, with the words Planet Hollywood in the red letters with white borders. The Hollywood Casino film strip mark does not use those same red and blue colors

(Compare

HC Tr. Ex.: 318A

with

HC Tr. Ex. 318D).

40. The Court notes that Planet Hollywood has offered no survey or other consumer evidence to indicate any actual confusion when people see the Hollywood Casino film strip mark. Based on the evidence submitted, the Court finds that the marks used by Hollywood Casino are not so similar as to be likely to create in the mind of consumers confusion with the

*846

Planet Hollywood marks, or any association between Hollywood Casino and Planet Hollywood.

41. Planet Hollywood also has asserted that Hollywood Casino has used a variation of the film strip mark, in which a five-pointed star appears immediately above it, as shown below:

[[Image here]]

(Planet Hollywood Proposed Findings of Fact, at 18-19, ¶ 80). The Court finds that the above graphic does not accurately represent Hollywood Casino’s use of the film strip mark. In its print advertising, Hollywood Casino typically uses a border shell that includes depiction of lights with a star at the top. In a few of those ads, the film strip mark appears directly under the star

(e.g.,

HC Tr. Ex. 128, at H007130). The depiction by Planet Hollywood crops out the rest of the border shell, and thus does not convey the mark as it is seen by consumers who read those ads. Moreover, the Court finds that even in the inaccurate manner portrayed by Planet Hollywood, the film strip mark with the star over it is distinct from the Planet Hollywood globe mark in virtually all of the ways described in Finding No. 39,

supra,

and would not be likely to create confusion or an association with Planet Hollywood.

42. The Court also finds that Planet Hollywood has failed to establish that in adopting the film strip mark, it was the intent of Hollywood Casino to create a mark confusingly similar to that of Planet Hollywood. In making that finding, the Court is mindful of the August 3, 1995 memorandum from Richard Knight (then the executive vice president for operations of Hollywood Casino Corporation), in which he referenced two sample tee shirts, one with the then current Hollywood Casino logo and the other, with an older Hollywood Casino logo design that was being “revamped with the addition of a circular design ala Planet Hollywood” (PH App. Vol. 5, Ex. 35dd). No evidence has been offered as to the appearance of the particular proposed “revamped” mark to which Mr. Knight referred (Trial Tr. 895), or how it compares to the film strip mark actually adopted by Hollywood Casino. The Court has considered Mr. Knight’s testimony that he was not involved in the creation of that revamped design and did not know where it came from; that his statement was a reflection of the use of a circular background; and that he could have just as easily said “ala Hard Rock” as “ala Planet Hollywood” (PH App. Vol. 4, Ex. 33, at 118, 143-44). In this latter regard, the Court notes that in fact a number of restaurants other than Planet Hollywood do use circular backdrops for their logos

(see, e.g.,

Trial Ex. 318B; Trial Tr. 735). The Court has also considered the testimony of Mr. Bocchicchio, who designed the film strip mark, that he wanted to create a look that represented the Hollywood industry, and after attempting several variations, arrived at this depiction which used the film strip and the flat disk which was intended to represent the end of a film canister (Trial Tr. 394).

*847

43. The Court finds credible Mr. Boc-chicehio’s explanation of how he derived the Hollywood Casino film strip mark. Thus, the Court finds not only that the film strip mark is not confusingly similar to the Planet Hollywood mark, but also that it was not Hollywood Casino’s intent to create a mark that was confusingly similar to the Planet Hollywood mark.

YI. THE NATURE OF THE CASINOS OPERATED BY HOLLYWOOD CASINO.

44. The casinos operated by Hollywood Casinos in Aurora and Tunica are both “dockside” casinos, as is necessary due to applicable laws in Mississippi and Illinois that allow casino gambling to take place only on structures resting on water. Hollywood Casino is in the process of developing a third location, this one in Shreveport, Louisiana, which will also be a dockside casino. However, the fact that these are dockside locations does not affect the games offered by these casinos, which are not materially different from the complement of games offered by land-based full service casinos.

45. A “full service” casino is one that offers games of chance that are banked by the house. Full service casinos offer a complete range of casino games, including roulette, craps, slot machines and black jack. The evidence establishes that the Hollywood Casinos in Aurora and Tunica fit the definition of “full service” casinos.

VII. THE LEVEL OF SOPHISTICATION OF CASINO CUSTOMERS.

46. Saul Leonard, an expert witness retained by Hollywood Casino with certain expertise in the hospitality and gaming industries, testified that “[a]ny time any person makes a determination to go to a casino or any similar type of facility, they have provided a reasonable amount of care as to the reason why they are going there, especially if they have an alternative between that facility and another one” (PH App. Vol. 2, Ex. 18, at 64-65). The Court finds that this testimony is supported by other evidence and is credible.

47. Mr. Leonard also opined that the typical casino customer does not “risk[ ] a great deal of money on the gambling budget” (Trial Tr. 626). However, the evidence established that with respect to casinos in the greater Chicago area (which would include Hollywood Casino in Aurora), the casino’s average “win per admission”' — or put another way, the average amount lost by each patron who gambles— is $58.40 (Tr. Ex. 201, at 47). That figure is higher for individuals who frequent casinos in Las Vegas and Atlantic City (Trial Tr. 677-78). The Court finds that this kind of expenditure, which does not include any amounts spent for food, beverage or merchandise purchases, indicates that patrons of a casino have made a purposeful (and not impulsive) decision to spend their entertainment dollars on a casino visit. Indeed, during closing argument, counsel for Hollywood Casino admitted that individuals who frequent casinos are making deliberate and not impulsive purchases: “They know which casino they are going to and why they want to go there” (Trial Tr. 919).

48. Hollywood Casino has argued (and offered opinion testimony) that many individuals who frequent casinos are not sophisticated about the nuances of gambling itself

(see

Hollywood Casino’s Proposed Findings of Fact in Support of Infringement, at 23-24, ¶¶ 134-136). There has been no evidence to controvert the opinion testimony offered by Hollywood Casino on this point, which the Court finds credible. However, the Court finds that any lack of sophistication that casino patrons have about

how

to gamble (e.g., whether the odds favor standing pat or taking another card in a particular game of Blackjack) does not establish a lack of “sophistication” (or purposefulness) about deciding

whether

or

where

to gamble. The Court finds that individuals who frequent casinos are likely to have made a purposeful decision to do so — a point which Hollywood Casino concedes (Trial Tr. 919). That decision becomes no less rational or purposeful mere

*848

ly because the person making it may not be skillful in the art of gambling.

VIII. THE SERVICES OFFERED BY THE PARTIES.

49. Planet Hollywood restaurants offer both food and bar services, as well as the retail sale of merchandise. Although none of the Planet Hollywood restaurants themselves offer any casino services at the present time, Planet Hollywood operates four restaurants in hotels that independently house casinos: Harrah’s Casino Hotel in Reno, Nevada; Caesar’s Casino Hotel in Lake Tahoe (Stateline), Nevada; Caesar’s Casino Hotel in Atlantic City, New Jersey; and Caesar’s Palace Resort in Las Vegas, Nevada. No other Planet Hollywood restaurants in the United States — including the ones closest to the Hollywood Casinos in Aurora or Tunica— are located in facilities that also offer casino services.

50. In addition to offering full-service casinos, the Hollywood Casinos in Aurora and Tunica each have several restaurants. At the Aurora facility, Hollywood Casino offers two “fine dining” restaurants: Café Harlow and Fairbanks Steak House. The price for a meal at these restaurants averages $40 or more. These restaurants feature memorabilia from the Golden Era of Hollywood and include displays from actors of that era, including the individuals from whom the names of the restaurants are taken: Douglas Fairbanks and Jean Harlow.

51. The Hollywood Casino in Aurora also has two more casual, lower priced restaurants. One is the Epic Hollywood Buffet, which offers “all-you-ean-eat buffets” for one fixed price. The Epic Hollywood Buffet conveys an art deco and Hollywood movie theme, which the Court finds shares a number of characteristics that had been planned for the food court that was to be part of the failed Sands project in the late 1980s. The remaining restaurant at the Aurora facility is named “Louie Dombrowski’s,” and is a restaurant that offers “diner” fare in a setting that attempts to convey a 1950s theme.

9

52. Hollywood Casino has offered undisputed testimony that food and beverage service is a necessary complement to any gaming operation. The Court finds that testimony credible. No doubt it is the goal of any casino operation to maximize the amount of time — and money — that patrons will spend gambling at the facility. It is common sense that offering restaurant and bar services, which allow patrons to eat and drink without leaving the facility, will tend to encourage longer stays at the casino, and more betting.

53. Planet Hollywood has offered no evidence that the restaurants at the Hollywood Casinos in Aurora or Tunica compete in any way with the Planet Hollywood restaurants. There is no dispute that Hollywood Casinos’ restaurants, like Planet Hollywood’s restaurants, are available to persons of any age. But Planet Hollywood concedes that people principally visit a Hollywood Casino in order to gamble, and that the “principal draw for the restaurants certainly has to be their gamblers” (Trial Tr. 890). Planet Hollywood has offered no evidence that there is significant patronage (or indeed, any patronage at all) of Hollywood Casino restaurants by individuals who are not otherwise coming to the facility for gambling purposes. From the opening of the Hollywood Casino in Aurora in June 1993 through August 1998, Hollywood Casino derived more than twelve times the amount of revenue from casino services as it did from the sale of food and beverage; similarly, from the opening of the Tunica facility in August 1994 through August 1998, Hollywood Casino derived seven times the amount of revenue from casino services as it did from the sale of food and beverage. People plainly are coming to Hollywood Casino

*849

principally to gamble, and not because they are choosing to patronize a Hollywood Casino restaurant rather than a Planet Hollywood or some other restaurant. The Court finds that the restaurant and bar services offered by Hollywood Casino are ancillary to the overriding purpose for which the casinos exist: that is, to offer games of chance.

54. Further support for the proposition that Hollywood Casino’s restaurants do not compete with Planet Hollywood is found in testimony by Planet Hollywood witnesses. Elizabeth Harrington, Planet Hollywood’s brand positioning expert, testified that the choice a consumer makes to go to a gambling facility is different than the choice of going out to a restaurant: “I’m going to go out to eat or I’m going to go to a Casino. So there is [no] confusion based on Planet Hollywood as it currently exists as a restaurant versus Hollywood Casino as a gambling establishment” (HC Ex.: Seidel Dec., Ex. 8, at 67).

10

Moreover, in testimony in a prior lawsuit, Mr. Earl acknowledged that casinos and restaurants are different channels of business (HC Ex.: Seidel Dec., Ex. 11, 6002383-84).

55. The location and nature of the Planet Hollywood restaurants and the Hollywood Casino restaurants further confirms that they do not compete with one another. Before Planet Hollywood closed its Chicagoland restaurants, the Hollywood Casino in Aurora was located nearly 43 miles from the nearest Planet Hollywood restaurant; the Tunica, Mississippi facility is currently located nearly 246 miles from the nearest Planet Hollywood restaurant in Nashville, Tennessee. While some of the food and beverage offered at the Hollywood Casino restaurants is of the same type offered by Planet Hollywood, the restaurants themselves are markedly different in various respects. To begin with, the names of the Hollywood Casino restaurants all differ from the name “Planet Hollywood” (the Epic Hollywood Buffet shares one word of the Planet Hollywood name, but is not otherwise similar). Planet Hollywood has offered no evidence that someone eating at the Epic Hollywood Buffet, or Louie Dombrowski, or Harlow, or Fairbanks would likely be confused into thinking they were associated with Planet Hollywood. Moreover, the food offerings at the Harlow and Fairbanks restaurants are significantly more expensive than those at Planet Hollywood; the 1950s diner theme of the Louie Dombrowski restaurant is decidedly different than the theme offered at Planet Hollywood restaurants; and the Epic Hollywood Buffet offers an “all-you-ean-eat buffet” that is not available at Planet Hollywood restaurants. Planet Hollywood has offered no evidence that in making a choice concerning where to eat, consumers in Chicago, for example, would consider as an alternative to the Planet Hollywood restaurants downtown or in Gurnee, Illinois, the restaurants offered at Hollywood Casino in Aurora (which is 43 or more miles away) or in Tunica (which is some 246 miles away from the nearest Planet Hollywood in Nashville).

56.The Court therefore finds that the Hollywood Casinos in Aurora and Tunica do not compete with Planet Hollywood restaurants.

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IX. THE STRENGTH OF THE HOLLYWOOD CASINO NAME.

57. Hollywood Casino has made a substantial financial investment in the development of its casinos. The cost of each of the facilities in Aurora and Tunica is in excess of $100 million, and the planned casino in Shreveport will have a cost of approximately $230 million. In addition, during the five years after its opening in 1993, Hollywood Casino in Aurora spent approximately $124 million in what it characterizes as “marketing expenses.” However, the vast majority of that amount is attributable to the cost of “comps” (providing free benefits to gamblers) and special events. Approximately $20 million of this amount is attributable to direct mail, print, electronic and billboard advertising. Similarly, during the first four years after it opened, the Hollywood Casino in Tunica spent approximately $60 million in what it characterizes as “advertising”; again, the vast majority of that sum was attributable to special events. Still, not an insubstantial amount — $13.6 million — was attributable to direct mail, electronic and billboard advertising.

58. Hollywood Casino has offered no direct consumer testimony or survey evidence to attempt to establish the geographic scope and strength of recognition of the Hollywood Casino name. Nor has Hollywood Casino offered any evidence as to the level of recognition of the name “Hollywood Casino” apart from its graphic marks: in particular, the film strip mark (Trial Tr. 928-29). Rather, Hollywood Casino seeks to establish that its mark is strong by relying principally on newspaper articles, the listing of Hollywood Casino in the “1998 America Casino Guide” (Trial Exhibit 207), the existence of telephone calls from all 50 states to Hollywood Casino in Aurora since it opened, and testimony by Messrs. Pratt and Leonard. The Court finds that the evidence offered by Hollywood Casino has not established that the name “Hollywood Casino” has a high level of recognition outside the Chicago and Tunica regions.

59. Based on the evidence submitted, the Court finds that the Hollywood Casinos principally focus on drawing from local and regional markets. Hollywood Casino’s internal manual states that the Aurora facility “draw[s] from the Chicagoland area,” and does not indicate any other source of patronage (PH Amended App. Vol. 9, Ex. 63, at 020). Mr. Leonard likewise testified that the market for the Aurora facility is local or regional, and extends to consumers within a couple hours drive from the Aurora location (PH App. Vol. 2, Ex.18, at 140-41). Mr. Knight testified that the Aurora facility has a regional market that principally draws from the Chicagoland and Northern Illinois area, and that the Hollywood Casino in Tunica likewise draws primarily from a regional market (PH App. Vol. 2, Ex. 15, at 54-56). And, during closing argument, Hollywood Casino’s counsel conceded that those casinos are patronized principally from people in the Chicago and Tunica areas, respectively (Trial Tr. 916-17).

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60. Consistent with this testimony, the weight of the evidence also establishes that Hollywood Casino’s principal advertising has been local rather than national. That is true both for the Aurora location and the Tunica facility (although the area of Tunica’s advertising is beginning to expand, advertising on a national scale has not been discussed). Moreover, the 1996 report on the gaming industry authored by Mr. Leonard characterized Tunica as becoming “[a] major regional gaming center [ ]” (HC Tr. Ex. 201 at 44) — not a national center.

61. The Court has considered Hollywood Casino’s testimony that it advertises

*851

and promotes on a national basis. Hollywood Casino offered evidence that it sends two million pieces of mail annually to people in. all fifty states, and maintains a computer data base identifying approximately 1.4 million customers who have visited its two casinos. However, Hollywood Casino offered no evidence as to how many of those mailings are to persons outside the states (or immediately surrounding states) in which the Aurora and Tunica casinos are located, and likewise offered no evidence as to how many of the 1.4 million customers in the computer database are from states outside those areas. The Court has also considered the fact that Hollywood Casino facilities appear in the 1998 American Casino Guide, which is available throughout the country. But the Court finds that the mere presence of the Hollywood Casinos in the American Casino Guide is not particularly compelling evidence that their operations are well known and recognized by consumers throughout the country. That Guide includes a number of very small operations — such as “Chicken Ranch Bingo” in Jamestown, California (HC Tr. Ex. 207, at 148), which offers only video machines and bingo— which Hollywood Casino would surely concede are not national in scope or consumer recognition.

62.The Court also has considered Hollywood Casino’s evidence of telephone calls made to the Hollywood Casino “800 number” for selected one-month periods in 1993, 1994, 1995, 1996 and 1997 (HC Tr. Ex. 23). Hollywood Casino offered this evidence to show the volume of calls received from different states throughout the country. The information for 1995 has not been helpful for this purpose, since Hollywood Casino did not provide the state of origin for the phone calls. For the time periods selected in 1993, 1994, and 1997, moreover, the great preponderance of calls came from within the State of Illinois: 96 percent in 1993, 97.8 percent on 1994, and 72 percent in 1997. In addition, in 1997, while there were calls from all 50 states, nearly 82 percent of the calls came from states within 300 miles of the Aurora location.

12

The Court finds that this evidence does not support the defendants’ assertion that the name “Hollywood Casino” has a pervasive nationwide presence. To begin with, this evidence shows only telephone calls to Hollywood Casino and not patronage of the casino; there is no indication of how many calls were received in error, or by the same individuals on repeat calls. Moreover, the great preponderance of calls in the last year that was measured (1997) came from inside Illinois or within states located within 300 miles of the Aurora casino — as was the case when the casino opened in 1993. This evidence supports the Court’s finding that any recognition of Hollywood Casino’s name is strongest within Illinois and the adjacent areas, and significantly diminishes as the distance from the casino increases.

63. The Court also has considered Mr. Leonard’s testimony that Hollywood Casino has achieved a national level of recognition. However, the Court does not find that opinion persuasive. Certain of the support Mr. Leonard cited (such as the Guide listing the Hollywood Casinos) has already been found by the Court to be flawed. Moreover, Mr. Leonard’s opinion is not based on any consumer studies or survey evidence, and it is, in fact, at odds with his deposition testimony that the market for the Aurora facility is local or regional (PH App. Vol. 2, Ex. 18 at 140-41).

64. The Court has also considered the circumstances involving other companies using the words “Hollywood” and “Casino” in names for casinos operated at great distance from Aurora or Tunica:

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A. In July 1993, Hollywood Casino filed a lawsuit against the Debbie Reynolds Hotel & Casino, Inc. in California (“Debbie Reynolds”), alleging that Debbie Reynolds infringed the Hollywood Casino mark by using the name “Debbie Reynolds Hollywood Hotel/Casino/Movie Museum” for a business that included casino services. As part of the settlement of that lawsuit in December 1993, Debbie Reynolds agreed to change the name of the hotel and casino to “Debbie Reynolds Hotel/Casino and Hollywood Movie Museum” (HC Tr. Ex. 25, ¶¶ 2, 6). While the settlement allowed Debbie Reynolds to continue to display the word “Hollywood” prominently inside the casino and on exterior signage, as a result of the settlement the words “Hollywood” and “Casino” could not appear in the same sequence as used by Hollywood Casino in its mark. Debbie Reynolds is currently bankrupt and out of business. Hollywood Casino concedes that there were no instances of actual confusion between Hollywood Casino and Debbie Reynolds, either before or after the lawsuit and settlement (Trial Tr. 136).

B. In January 1994, Hollywood Casino sued the MGM Grand Hotel, alleging that its Las Vegas hotel/casino and theme park in Las Vegas infringed the Hollywood Casino mark by using of a neon sign on the interior of the building that displayed the word “Hollywood” to designate an area of the casino. In February 1994, Hollywood Casino entered into a settlement agreement in which the parties agreed, among other things, that the MGM Grand could continue to use the sign so long as it was limited to describing the portion of a casino that was a portion of the larger facility (such as a hotel) (HC Tr. Ex. 26). Hollywood Casino admits it is not aware of any instances of actual confusion between the MGM Grand and Hollywood Casino, either before or after the lawsuit and settlement (Trial Tr. 137).

C. In October 1994, Hollywood Casino filed a lawsuit against Hollywood Park, Inc. and Hollywood Park Operating Co. in California (“Hollywood Park”), claiming that Hollywood Park had committed infringement by “aggressively advertising, marketing and promoting their casino under the mark ‘Hollywood Park Casino’ which is confusingly similar to plaintiffs’ Hollywood Casino marks” (PH App. Vol. 1, Ex. 4, Ex. I at ¶ 1). In August 1995, the parties entered into a settlement agreement which permitted Hollywood Park to describe and promote its casino as “Hollywood Park Casino,” so long as there was differentiation in the type style between the words “Hollywood Park” and “Casino,” and separation between the words “Hollywood” and “Casino” (HC Tr. Ex. 27). Hollywood Casino acknowledges that it is aware of no actual confusion that has occurred between “Hollywood Park Casino” and “Hollywood Casino,” either before or after the lawsuit and settlement (Trial Tr. 142).

13

D. Since July 1996, an Indian tribe has operated a casino in New Mexico under the name “San Filipe’s Casino Hollywood” (Trial Tr. 289). Although Hollywood Casino threatened a lawsuit against the Indian tribe alleging infringement, Hollywood Casino has not filed a lawsuit on the ground that the tribe has refused to waive sovereign immunity and that a lawsuit would thus be futile. As a result, the Indian tribe continues to operate the casino under the name “San Filipe’s Casino Hollywood” (PH App. Vol. 2, Ex. 21). No evidence has been offered of any actual confusion between that casino and any casinos operated by Hollywood Casino.

E. There is also an Internet casino with offshore ownership, which is accessible from the United States, named “Golden Hollywood Casino.” The registrant of the site is Advance Media Group (“AGM”) located in Santo Domingo; but the site can

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be accessed by a link to another Internet address which is registered to a company in Louisiana (Trial Tr. 314-17). Hollywood Casino has sent a cease and desist letter to AGM, but has not sent such a letter to the Louisiana entity and has not yet filed any legal actions. No evidence has been offered of any incidence of actual confusion between Hollywood Casino and Golden Hollywood Casino.

65.The Court finds that the evidence concerning Hollywood Casino’s actions with respect to these other entities that operate casinos under the name “Hollywood” demonstrates that Hollywood Casino has taken reasonable efforts to try to protect its interest in the name “Hollywood Casino.” In none of the lawsuit settlements did Hollywood Casino accede to a casino operating under the name “Hollywood Casino,” in which those two words appear together, in that sequence, without intervening words. The Court finds that none of the settlements demonstrates that Hollywood Casino believes, or has admitted, that a casino operating under the name “Planet Hollywood Casino” would not create a likelihood of confusion. Moreover, the fact that defendants have not filed lawsuits against every entity operating a casino under a name that includes the word “Hollywood” does not persuade the Court that Hollywood Casino has been lax in those efforts to protect its name. As Planet Hollywood’s counsel conceded and as the Court agrees, Hollywood Casino is not required to sue each and every Casino using the name “Hollywood” in its name in order to demonstrate its diligence.

66. However, the Court also finds that the absence of any actual confusion between Hollywood Casino and those other casinos located in California, Nevada, New Mexico or on the Internet does provide further support for the Court’s finding that Hollywood Casino’s mark has not achieved widespread recognition throughout the country. Based on its review of all the evidence, the Court finds that defendants have failed to show that the Hollywood Casino marks have a nationwide presence or level of recognition.

14

X. THE DEFENDANTS’ PRIOR EXPERIENCES WITH DEVELOPING OR PRESENTING HOLLYWOOD THEMES.

67. The first use of the Hollywood Casino name in connection with casinos oe-

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curred in June 1998. There was no continuous display of Hollywood memorabilia by a Pratt-operated hotel or casino until the Hollywood Casino in Aurora was opened in June 1993.

68. The Sands, which until recently was owned by Hollywood Casino

(see

Finding No. 31), has never had a Hollywood theme or trade dress. Rather, the Sands has a Carribean Island theme. The Sands has never displayed any permanent outside signage or logo bearing the Hollywood Casino name, or any other Hollywood theme or name. The theme at the Sands expanded slightly in about 1995, when the Sands Epic Buffet Restaurant incorporated displays from certain epic movies (such as Ben Hur, Spartaeus, and The Ten Commandments). However, this change did not convert the overall motif of the Sands into one of a Hollywood theme. While the Sands had plans to make that change, those plans were put on hold because of the Sands’ Chapter 11 Bankruptcy filing.

69. Hollywood Casino has nonetheless devoted substantial energy to attempting to establish that its trade dress is entitled to a date of protection substantially earlier than June 1993 — and, in particular, predating Planet Hollywood’s emergence on the scene in October 1991.

15

Hollywood Casino has attempted to support this assertion with evidence concerning certain temporary memorabilia displays at the Sands in the late 1980s (“100 Years of Hollywood” in 1987 and the “Universal Studios Exhibit” in 1988), and the attempt by the Pratt family to establish a Hollywood-themed casino in Atlantic City between approximately 1988 and 1990. The Court discusses below its findings with respect to those various activities.

16

A.

“100 Years of Hollywood.”

70. During approximately the summer of 1987, the Sands displayed a “100 Years of Hollywood” exhibit. This exhibit was not owned by the Sands, but was being displayed at a number of venues as part of a nationwide tour. The exhibit featured costumes and other memorabilia mainly from the era known as the “Golden Age of Hollywood” (covering the period roughly from the 1920s through the 1940s). This was the first time that Hollywood memorabilia had been displayed at the Sands. The Pratts were interested in customer reaction to a Hollywood-themed exhibit using memorabilia because they were considering development of a Hollywood-themed casino in Atlantic City, and they wanted to gauge consumer reaction to a Hollywood memorabilia theme before plunging ahead full tilt into such a development.

71. The 100 Years of Hollywood exhibit was dismantled and removed from the Sands in the early Fall of 1987. It was never again displayed at the Sands or at the Hollywood Casinos either in Aurora or Tunica. In creating the memorabilia displays and overall decor of Hollywood Casinos in Aurora and Tunica, the defendants did not draw from any experience gained in connection with the 100 Years of Hollywood exhibit.

17

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B.

The Universal Studios Exhibit.

72. After the 100 Hundred Years of Hollywood exhibit, Hollywood memorabilia were not displayed at the Sands until the arrival of the Universal Studios exhibit, which was on display from about June 1988 through the Fall of that year. The Universal Studios exhibit was a display of some twenty pieces of movie props and memorabilia from movies such “Jaws,” “Psycho,” “Airport,” “Conan,” “Somewhere In Time,” “The Mask,” and from television shows including “Miami Vice” and “Bat-tlestar Gallactiea.” After that display was removed in the Fall of 1988, it was never again displayed at the Sands, and none of the memorabilia from that display has ever been used at either Hollywood Casino location. The only other display of Hollywood memorabilia at the Sands between 1988 and 1995 occurred for a brief time in the early 1990s, when certain costumes worn by Cher were displayed in conjunction with her performance at the hotel.

73. Although the specific exhibits and decor from the Universal Studios Exhibit have not been replicated at the Hollywood Casinos in Aurora or Tunica, the Court finds credible Mr. Bocchicchio’s testimony that the display was a stepping stone in the Pratt family’s plan to develop a Hollywood-themed casino, which would combine an art deco theme with the use of authentic Hollywood memorabilia (Trial Tr. 374-75; HC Ex: App. Vol. 3 to Seidel Opp. Dec. (Bocchicchio Dep. 95-97, 100-01)). The Universal Studios exhibit conveyed a Hollywood theme, replete with palm trees, klieg lights, props suspended in air, and the “Hollywood Hills” sign. The techniques used to display memorabilia at the Universal Studios exhibit — using clear display cases with placards showing the origin of the memorabilia, movie posters, and video monitors showing clips of the movies from which the memorabilia was borrowed — are some of the same techniques used today by the Hollywood Casinos in Aurora and Tunica. The Universal Studios exhibit also helped Hollywood Casino establish connections for sources of memorabilia.

74. The Pratt family considered the Universal Studios Exhibit well-received by the public (based on increased foot traffic at the Sands and on conversations management had with customers), and concluded that the public viewed the exhibit as “interesting and appealing” (Trial Tr. 39-41). The Court finds that the display of the Universal Studios exhibit at the Sands is credible evidence that supports the assertion that the Pratt family wished to establish a Hollywood-themed casino for a number of years prior to June 1993. But the Court finds that the temporary display of the Universal Studios exhibit (like the 100 Years of Hollywood exhibit) was insufficient to create a public association between the Sands and .a casino having a Hollywood theme and displaying authentic movie memorabilia.

C.

A Hollywood-Themed Hotel and Casino in Atlantic City.

75. During the -second half of the 1980s, the Pratt family began to develop the concept for a new hotel and casino in Atlantic City that would have ah attractive theme. As the Court has found, one of the goals of the Sands management in the 100 Hundred Years of Hollywood and Universal Studios exhibitions in 1987 and 1988 was to “try out” a Hollywood memorabilia theme and to determine its attractiveness to consumers.

76. On March 29, 1988, the Sands issued a press release announcing plans to establish a “Hollywood Hotel and Casino” in Atlantic City (HC Tr. Ex. 7). Thereafter, the Sands prepared a draft joint venture investment proposal, dated January 5, 1989, for a project to develop the “Sands Hollywood Hotel and Casino” (HC Trial Ex. 5 — 1, at 1). Hollywood Casino did not offer evidence establishing to whom this draft proposal was circulated, or whether it was ever put into final (as opposed to draft) form.

77. The draft proposal stated that the new hotel and casino would have a “unique design to make it distinguishable” from

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other Atlantic City casinos and hotels, and that the exterior and interior would convey “an interpretation of the art deco style of the 1980s with a Hollywood motif’ (HC Trial Ex. 5-2, at 3). The draft proposal explained that the facility would have a movie-themed casino area, a separate area that would display continually changing exhibits of Hollywood memorabilia, themed restaurants, a food court with a film production motif, a piano bar named “Harlow’s” and various lounges (HC Trial Ex. 5-3). The draft proposal further stated that this theme had been “carefully selected,” and “successfully test marketed on a small scale at the Sands” (HC Trial Exhibit 5-1) — which appears to be a reference to the 100 Years of Hollywood and Universal Studios exhibitions. The draft proposal also contained pictures of a scale model of the exterior of the contemplated building that the Sands commissioned, which carried through with the planned art deco look (HC Tr. Ex. 5-2;

see also

Trial Tr. 30-31 and HC Trial Ex. 6, 11). The scale model included a sphere located near the top of the building as a part of its exterior design

(see

Trial Exs. 5-1 and 6).

78. On April 22,1988, the Sands sought registration of the service mark “Hollywood Hotel Casino/Atlantic City” (HC Tr. Ex. 1). That mark contained a stylized marquee with the word “Hollywood” prominently centered in a Broadway font, with the words “Hotel Casino/Atlantic City” centered under that word in much smaller and less prominent type. That trademark issued on January 24, 1989. Thereafter, on October 12, 1993, Hollywood Casino filed an application for cancellation of the registration, which was granted on January 10, 1995. It is undisputed that the reason for this cancellation was that there had been no use of that mark in commerce. The Court finds that this canceled mark bears no resemblance to any of the current Hollywood Casino marks.

79. The Sands’ plan for a Hollywood-themed casino in Atlantic City never reached fruition. As a result of opposition by Donald Trump and ensuing litigation, the Sands was unable to proceed with its Hollywood-themed casino in Atlantic City. The undisputed testimony is that the Sands spent some $50 million in attempting to establish a Hollywood-themed casino in Atlantic City, which included plans, specifications, design documents and other costs.

80. When it appeared that the planned casino in Atlantic City might be blocked, the Pratts began to look elsewhere for a place to establish a casino. In 1989 and 1990, Pratt Hotel Corporation pursued a possible site in Laughlin, Nevada, and between 1990 and 1992 pursued possible locations in Mississippi. In 1991, the Pratt Hotel Corporation obtained marketing information about Chicago as a possible casino location. In September 1992, Hollywood Casino Corporation commissioned a survey to determine consumer reaction to the name “Hollywood Casino” as opposed to the name “Sands Hollywood Casino,” and determined that the reaction to the name “Hollywood Casino” standing alone was sufficiently positive to allow defendants to go forth with the casino under that name.

81. The Court finds that despite the substantial expenditure of money and time by the Sands, there was never the creation of a public association either between the name “Hollywood Casino” and the particulars of the “Hollywood” image that the hotel and casino would have conveyed. The Court has reviewed the numerous press articles submitted by the defendants which reported on the efforts by the Sands to establish its Hollywood themed hotel and. casino in Atlantic City in the late 1980s (and, in particular, reported on the battle with Donald Trump in connection with those efforts). Those articles rarely referred to the name of the hotel and casino under consideration as “Hollywood Casino”: the articles referred to it variously as the “Sands/Hollywood Casino Hotel”; the “Sands/Hollywood Casino”; the “Sands Hollywood,” and the “Hollywood Hotel and Casino”

(see, e.g.,

HC Trial Ex. 10, at 19844, 19838, 19851 and 24737). The mod

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el commissioned by the Sands displayed in bold type on the marquee the single word “Hollywood,” without the word casino appearing anywhere on it; the only other word appearing on the exterior of the building in the models was the word “Sands” (see Trial Ex. 5-2). Moreover, the trademark that the Sands obtained for the planned venture was for the mark “Hollywood Hotel Casino/Atlantic City” (HC Tr. Ex. 1), not for the words “Hollywood Casino” as they appear in the later trademarks that Hollywood Casino sought and obtained. Indeed, the trial testimony indicated it was not until the 1992 survey that the Pratts decided to use the name “Hollywood Casino” standing alone.

82. While the draft joint venture investment proposal provided a general description of the theme and decor of the planned casino and hotel, the Court finds that few of the news articles provided even that general description — and they certainly did not go into detail about the particulars of the look that the interior of the hotel and casino would possess. The Court further finds that even had the draft joint venture proposal been publicly circulated (and there is no proof that it ever was), the description contained in that document was insufficient to create a particularized vision of what the interior of the facility would look like. Thus, while the Sands’ effort to establish a Hollywood-themed casino and hotel in Atlantic City shows that the Pratt family had attempted to establish a Hollywood-themed casino well before June 1993, the Court finds that this evidence fails to establish that there was created in the public mind an association between the name “Hollywood Casino” and a specific Hollywood-themed trade dress prior to June 1993, when Hollywood Casino opened the casino in Aurora.

XL THE APPEARANCE AND DECOR OF HOLLYWOOD CASINO.

83. The Hollywood Casino in Aurora is located at the bank of the Fox River. The exterior of the structure is quite different than the model for the hotel and casino envisioned for Atlantic City by the Sands

(compare, e.g.,

HC Trial Ex. 20 with HC Trial Ex. 5-2). The model structure for Atlantic City was vertical in its orientation, emphasized blue and red coloring, and prominently displayed the single word “Hollywood” in several locations on the exterior. By contrast, the Hollywood Casino in Aurora is more horizontal, and has the trademark name “Hollywood Casino” as well as the graphic mark prominently displayed in several locations — neither of which was included in the model structure for the Sands.

84. At the top of the exterior of the Hollywood Casino in Aurora sits a large glass-topped atrium that allows natural light to pass into the facility. The words “Hollywood Casino” appear at the base of the atrium top, as viewed from the vantage point of the Fox River. While Planet Hollywood seeks to characterize this atrium as a “globe,” in an attempt to establish similarity to the Planet Hollywood globe mark, the Court finds that this glass top atrium is not a globe. Rather, it is hemispherical in shape and, contrary to Planet Hollywood’s assertion, the Court finds that it is not the most prominent feature on the exterior of the Aurora facility when viewed from the vantage point of the River. It is no more prominent than the Hollywood Casino river boats that appear on either side of the atrium. The Court also notes that this hemispherical dome is less similar in appearance to the globe that is a part of the Planet Hollywood globe mark than are the globes that sit atop certain Hard Rock Cafés — at least one of which is emblazoned with the phrase “Save the Planet”

(see

HC Tr. Ex. 327).

85. Unlike the scale model for the Sands development in Atlantic City but like the Hollywood Casino in Aurora, the Hollywood Casino located in Tunica is also a horizontally-oriented structure. One side of the building has the word “Hollywood” superimposed over a back drop of the Hollywood Hills, which Hollywood Casino uses through a license arrangement with the Chamber of Commerce in Holly

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wood, California. On another side of the structure the stylized word mark “Hollywood Casino” appears prominently. None of this signage contains the word “Planet,” and the Court finds that none of it resembles the word or stylized trademarks of Planet Hollywood. The “Hollywood Hills” background that appears at the Tunica facility has no figures in it, or any other elements that comprise the Planet Hollywood dioramas of the Hollywood Hills. The exterior coloring of the Tunica facility bears some resemblance to the coloring of the awning of the Planet Hollywood in New York City

(compare

PH App. 6, Ex. 41A (Tunica facility)

with

HC Ex: Seidel Dec. Ex. 36 (incorporating Earl Dep. Ex. 7) (Planet Hollywood awning in New York City)), but is by no means identical to it.

86. Mr. Bocchicchio was responsible for all interior design for the Hollywood Casinos in Aurora and Tunica, which are intended to convey an art deco look. With respect to the facility in Aurora, Mr. Boc-chicchio took advantage of Hollywood Casino’s proximity to the Paramount Theater, an historic building with an art deco design that was recently'restored by the City of Aurora. The Court finds that the use of art deco in the Aurora and Tunica facilities is consistent with the general intent of the Pratts in the late 1980s to convey an art deco theme in the Sands hotel and casino project that was blocked by Donald Trump.

87. The Court has considered the appearance of the Hollywood Casino facilities with specific reference to the items that plaintiffs claim comprise the Planet Hollywood trade dress. The Court’s findings on that score are as follows.

A.

Emphasis on Celebrity Owners.

88. As the Court has found (Findings Nos. 14-16

supra),

one of the main elements that gives Planet Hollywood its distinctive image is the strong emphasis on the lead celebrity owners, Arnold Schwarzenegger, Sylvester Stallone, and Bruce Willis. Those three individuals are the main personalities that Planet Hollywood uses for promotion, and there is an expectation that at least one of those three individuals will attend each Planet Hollywood opening. Plaintiffs do not claim that Hollywood Casino has misappropriated Planet Hollywood’s celebrity ownership (6/25/99 Tr. 22), and indeed, the Court finds that Hollywood Casino does not promote any particular celebrity sponsorship or association. Although Hollywood Casino once developed lists of potential celebrity sponsors or owners, none of the Planet Hollywood’s celebrity owners were on that list; and, in any event, Hollywood Casino never followed through and obtained or promoted any celebrities as owners.

89.Moreover, the Court finds that the displays of memorabilia at the Aurora and Tunica facilities do not create a particularized association between Hollywood Casino and the lead celebrity owners of Planet Hollywood: Messrs. Schwarzenegger, Stallone and Willis. Plaintiffs have pointed out that the Aurora and Tunica facilities have more displays featuring memorabilia from movies involving those three individuals than any other single movie star. The movies involving those three celebrities for which there are displays of memorabilia include “Running Man,” “Conan the Barbarian,” “Red Sonja,” “Last Action Hero,” “True Lies,” “Terminator” and “Eraser” (all involving Mr. Schwarzenegger); “Rocky,” “Rambo” and “Judge Dredd” (involving Mr. Stallone); and “Die Hard” (involving Mr. Willis). However, the Court finds that the memorabilia from these movies and the associated reference to the three celebrities are displayed because they come from popular movies or are interesting- memorabilia, and not because Hollywood Casino seeks to create a particular association with the Planet Hollywood celebrity owners (in that regard, the Court notes that in the Universal Studio’s Exhibit displayed at the Sands in 1988, there was a display from the Arnold Schwarzenegger movie “Conan the Barbarian” — several years before Planet Hollywood opened).

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90. The evidence also establishes that memorabilia from movies involving those three celebrities comprise a relatively small percentage of all the memorabilia on display at the facilities: 10 out of 110 displays at Aurora, and six out of 70 displays at Tunica (HC Ex.: Cranmer Dec. ¶¶ 25-28). In light of the fact that those three Planet Hollywood celebrity owners have starred in 19 of the 166 movies that have grossed over $100 million (a reasonable barometer of popular success), the sheer number of exhibits on display at Hollywood Casino from their movies does not reflect a particular emphasis on those celebrities, or create a particular association between Hollywood Casino and those celebrities. Moreover, displaying the memorabilia with photographs and posters identifying the name and likeness of those celebrities is a natural way of identifying the memorabilia, and this manner of display is consistent with the manner in which Hollywood Casino generally displays memorabilia from all movies.

91. The Court appreciates that numbers alone do not always tell the full story, and thus has carefully considered Planet Hollywood’s assertion that Hollywood Casino emphasizes Planet Hollywood’s celebrity owners by prominently displaying their memorabilia where they can readily be viewed by patrons

(see

Planet Hollywood’s Proposed Findings of Fact, at 29-38, ¶¶ 130-163). However, based on the Court’s personal visit to the Hollywood Casino facility in Aurora, the Court finds that those memorabilia are not concentrated in prominent areas of the facility. Based on this and on the evidence submitted concerning the casinos in Aurora and Tunica, the Court finds that the memorabilia from the movies of Messrs. Schwarzenegger, Stallone and Willis are not particularly emphasized over memorabilia from other movies, and that they are not displayed in a way to suggest any particular association between Hollywood Casino and those celebrities.

B.

The Presentation of the Memorabilia.

92. Planet Hollywood asserts that Hollywood Casino has “progressively encroached” on Planet Hollywood’s trade dress by abandoning a Golden Era of Hollywood motif in favor of a more contemporary “Hollywood” theme akin to that of Planet Hollywood. When it opened in June 1993, the Hollywood Casino facility in Aurora had a motif that emphasized the Golden Era of Hollywood. At that time, there were no displays of memorabilia from movies featuring Messrs. Schwarzenegger, Stallone or Willis; memorabilia displays from their movies were added beginning in 1995 and 1996.

93. However, from the very beginning, the Aurora facility also displayed some memorabilia from more contemporary movies (for example, a catcher’s mitt from a Tom Hanks movie). Over time, the Aurora facility began to display a higher volume of contemporary memorabilia. Likewise, when it opened in August 1994, the Hollywood Casino in Tunica did not feature a Golden Era memorabilia theme, but had a broader mix of memorabilia — driven in part by what memorabilia were available to be obtained in the market. When it opened, the Tunica facility had among its large scale memorabilia items from the Schwarzenegger movies “True Lies” and “Terminator.”

94. The Court finds credible Mr. Boc-chicchio’s testimony that this shift away from a predominant emphasis on the Golden Age of Hollywood was the result of a desire to expand the appeal of Hollywood Casino’s theme to a broader age range of consumers, many of whom might be unfamiliar with movie stars or memorabilia from the earlier era (Trial Tr. 483). Moreover, the evidence establishes that it is an overstatement for Planet Hollywood to assert that Hollywood Casino “abandoned” an emphasis on memorabilia from older movies. Thirty-five out of the 110 displays at Aurora feature memorabilia from the Golden Era (HC Ex.: Cranmer Reply

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Dec., ¶ 8) — more than three times the number of displays at Aurora that feature memorabilia from the movies of Messrs. Schwarzenegger, Stallone and Willis. By contrast, no more than ten percent of Planet Hollywood’s memorabilia is from movies predating 1970 (HC Ex.: Seidel Dec. Ex. 15 (Earl Dep., 1/8/98, at 415)). Those numbers are consistent with what the Court observed during its site visits: that there is a noticeable presence of Golden Age movie memorabilia at Hollywood Casino, which contributes to an image that is noticeably different than that conveyed by Planet Hollywood.

95. Planet Hollywood also argues that Hollywood Casino has copied not only the type of memorabilia displayed by Planet Hollywood, but also the manner in which it is displayed. However, the Court finds that Hollywood Casino’s manner of displaying memorabilia is not so similar to that of Planet Hollywood that one visiting a Hollywood Casino would likely be confused, or would be likely to believe that there was some association with Planet Hollywood.

96. To begin with, the scale of the presentation in the Hollywood Casinos is much larger than at the Planet Hollywood restaurants. The Planet Hollywood restaurants range from 12,000 to 36,000 square feet in size. By contrast, the Hollywood Casinos in Aurora and Tunica have some 66,000 and 100,000 square feet of space, respectively. As a result of having this additional space, the Hollywood Casinos are able to display larger memorabilia than the Planet Hollywood restaurants: such as, full-sized cars from the “Great Race” and “Untouchables,” a life-sized model of the elephant from “Operation Dumbo Drop,” the Batmobile car and Bat-boat, a large scale display from “Alien,” a model of the stern of the “Titanic” used in the filming of the movie, and the full-sized jet and helicopter from the Schwarzenegger movie “True Lies.”

97. In addition to the different scale of many of the items of memorabilia, there are noticeable differences between the way that Planet Hollywood and the Hollywood Casinos display the memorabilia. Hollywood Casino uses separate video clips with each item of memorabilia, and the videos relate specifically to the item being displayed. This is a technique which Mr. Bocchicchio used in the Universal Studios exhibit for the Sands in 1988, and which from the outset has been adopted at the Hollywood Casinos. While Planet Hollywood also uses monitors to show video clips, Planet Hollywood — unlike Hollywood Casino — uses multiple monitors to simultaneously show the same video clips, which are not tailored to the specific items of memorabilia being displayed (Trial Tr. 780). The Planet Hollywood videos display the openings of Planet Hollywood restaurants — which is something that Hollywood Casino has never done.

98.Planet Hollywood asserts that the use of clear display cases by Hollywood Casino adopts an element of Planet Hollywood’s trade dress (Planet Hollywood’s Proposed Findings of Fact, at 6, ¶ 25(2)). As the Court already has found

(see

Finding No. 16,

supra),

Planet Hollywood’s display cases are not part of its trade dress. Moreover, the Court finds that it would be natural for valuable memorabilia to be displayed in an enclosure that would prevent theft or damage by the public, without unduly impairing the customers’ ability to view the memorabilia — which, of course, is the purpose for having the displays in the first place. Thus, it is natural that Hollywood Casino would use glass or plexiglass for the transparent portion of the display case, and Hollywood Casino uses both. In fact, the majority of the Hollywood Casino display cases use glass rather than plexiglass, which is a distinction from Planet Hollywood, which appears to use principally plexiglass. The display cases used by Hollywood Casino tend to have art deco bases and tops; some also have a pewter film-strip border which is patterned after the film strip in the Hollywood Casino mark, which is another distinction from the Planet Hollywood manner of display. In the Court’s view, whether the material for

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the display cases is plexiglass, glass or some other see-through material is of no moment: Hollywood Casino’s display cases are not sufficiently similar to those of Planet Hollywood to create any likelihood of confusion or association.

99. In addition, the Court finds that the mannequins used to display various memorabilia at Planet Hollywood often use the faces of movie stars. By contrast, Hollywood Casino typically uses mannequins that are headless or faceless and that therefore are not designed to — and in fact do not — resemble the faces of Hollywood personalities.

18

C.

Dioramas.

100. The exterior of the Hollywood Casino facility in Tunica has the word “Hollywood” emblazoned across the back drop of a silhouette of the Hollywood Hills. Hollywood Casino has obtained rights to use this depiction of the Hollywood Hills from the Hollywood, California Chamber of Commerce. Moreover, that back drop of the Hollywood Hills does not resemble the dioramas inside Planet Hollywood restaurants and, in the Court’s view, is not likely to create any confusion or association between Planet Hollywood and Hollywood Casino.

D.

Celebrity Handprints.

101. Although Planet Hollywood has asserted that Hollywood Casino has adopted Planet Hollywood’s use of celebrity handprints, the only evidence offered in support of that assertion was a

Chicago Sun Times

article showing the handprints of Jane Russell being cast in cement at the Hollywood Casino in Aurora. However, the uncontradicted trial testimony was that celebrity handprints are not displayed at the Hollywood Casinos in Aurora or Tuni-ca (Trial Tr. 150), and the Court’s personal viewing of the facility in Aurora confirms that to be the fact.

E.

Themed Areas.

102. A part of the Planet Hollywood distinctive look is that its restaurants have at least three distinct areas, devoted to the themes of “Hollywood,” “adventure,” and “science fiction.” Hollywood Casino’s facilities do not have these same three segmented theme areas.

F.

The Planet Hollywood Marks.

103. The Planet Hollywood trademarks are prominently displayed at the Planet Hollywood restaurants. Those marks are not displayed at the Hollywood Casino facilities; rather, Hollywood Casino’s marks are displayed. As the Court has already found (Findings Nos. 38-41,

supra),

the Hollywood Casino marks are not sufficiently similar to the Planet Hollywood marks to create a likelihood of confusion.

104. Planet Hollywood has pointed out that one of the restaurants at the Hollywood Casino in Aurora, the Epic Hollywood Buffet, displays a large globe with a ring around it, with the words “Daily Planet” across it (HC Tr. Ex. 133). The Court finds that this globe does not even remotely resemble the Planet Hollywood stylized globe trademark: the “Daily Planet” is the newspaper from the “Superman” cartoon, and the globe appears as part of a mural of the skyline of the fictional city of Metropolis. Suspended from the ceiling in front of this painting is a mannequin wearing an authentic Superman costume. The Court finds credible Mr. Bocchicchio’s testimony that this mural was intended to evoke the image of the “Superman” comic strip (Trial Tr. 390), and was not an effort to associate with Planet Hollywood. The Court finds

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that this globe is not likely to be confused or associated with Planet Hollywood.

105. Planet Hollywood also has pointed out that one of the walls inside the Hollywood Casino in Tunica has three globes placed in front of a diorama of the Hollywood Hills, which includes the word “Hollywood” in large type (HC Tr. Ex. 136). The Court finds that those globes do not resemble the Planet Hollywood stylized globe trademark: none of them looks like a globe of the earth, and none has any stars on them or shooting from them. Rather, the spheres are made of stained glass, and reflect colors that are different than the colors of the Planet Hollywood globe mark. The Court finds credible Mr. Bocchicchio’s testimony that the inspiration for these spheres was the use of similar types of lighting in theaters during the Golden Age of Hollywood (Trial Tr. 391-92). The Court finds that those spheres do not resemble the Planet Hollywood trademark, or create a risk of likely confusion or association with the Planet Hollywood trademark.

G.

Art Deco Look.

106. As the Court has found above (Finding No. 22,

supra),

Planet Hollywood has an art deco look. Based on the evidence presented, the Court finds that the Hollywood Casinos also have an art deco look. However, the Court also finds that the art deco look of the Hollywood Casinos is not confusingly similar to the art deco look of the Planet Hollywood restaurants, and it is not such that a consumer at a Hollywood Casino would believe it was associated with Planet Hollywood.

H.

Other Alleged Elements of Planet Hollywood’s Trade Dress.

107. The Court also has found that Planet Hollywood’s sale of retail merchandise bearing the “word ‘Planet Hollywood’ mark,” sold in a studio store, is not an element of the distinctive look and feel of Planet Hollywood restaurants (Finding No. 23(b),

supra).

The Court further finds that Hollywood Casino’s sale of merchandise is not conducted in a manner that is confusingly similar to that of Planet Hollywood. The Hollywood Casinos do not sell Planet Hollywood merchandise, but instead sell items bearing the Hollywood Casino name and/or its own stylized mark.

108. The Court has found that the sale and use of Hawaiian-type JAM shirts is not a part of the distinctive look and feel of Planet Hollywood restaurants (Finding No. 23(c),

supra).

However, the Court does find that the Hawaiian shirts developed for use and sale at Hollywood Casino are substantially similar in appearance to the Hawaiian shirts used by Planet Hollywood. The Court has reviewed exemplars of the shirts, and finds that they share the same dominant background color (black) as well as similar color patterns for the objects that are on the shirts. There are differences between the shirts: for example, the words “Hollywood Casino” appear on one shirt, and “Planet Hollywood” on another; in addition, there are different objects on each shirt. But, the Court finds that a casual view of the shirt — which is the type of view that a consumer is likely to make — likely would result in the similarities between the shirts outweighing the differences. Nonetheless, the Court further finds that even if the Hawaiian shirts were part of Planet Hollywood’s trade dress, Hollywood Casino’s adoption of the shirts would not likely create confusion given the findings above that Hollywood Casino has not adopted the other elements of the Planet Hollywood trade dress.

109. Moreover, based on the evidence submitted, the Court finds that while the shirts are similar, the Hollywood Casino shirt was not adopted in an effort to duplicate the shirts used by Planet Hollywood, or to create confusion or association with Planet Hollywood. The color scheme of the shirt is not unique. The person who developed the Hawaiian shirt for Hollywood Casino, Mr. Knight, envisioned its use for a summer promotion in 1995. The shirt was not required wear for Hollywood Casino employees, and it has not been consistently used by Hollywood Casino.

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Although Mr. Knight developed this idea after he visited a Planet Hollywood in early 1994 and saw the Planet Hollywood shirt being worn, the Court credits Mr. Knight’s testimony that the shirt was patterned after a shirt he himself owned.

I.

Hollywood Casino’s Intent in Adopting Its Theme and Decor.

110. Mr. Bocchicchio has been responsible for developing and implementing the theme and decor of the Hollywood Casinos in Aurora and Tunica. The Court finds credible Mr. Bocchieehio’s testimony that he did not copy the Hollywood Casino interior design from Planet Hollywood.

111. The Court finds that the art deco and memorabilia themes of the Hollywood Casinos in Aurora and Tunica have roots in the theme planned for the failed Sands Casino project in Atlantic City. The contemporaneous documents for the Sands project show that the plan was for the building to reflect inside and out “an interpretation of the art deco style of the 1930s with a Hollywood motif,” with a “striking blue and pink facade” (HC Tr. Ex. 5-2, at 3). One of the exhibits offered at trial (HC Trial Ex. 132), a rendering of a planned food court in the Sands project, reflected this intended style. Moreover, a number of elements of the planned food court for the Sands project are similar to the elements that are contained in the Epic Hollywood Buffet in Aurora (HC Tr. Ex. 133).

112. The Court also finds that it was part of the plan for the Sands project in Atlantic City to implement the “Hollywood motif’ not only with an art deco style, but also with “continually changing displays of Hollywood memorabilia, movie and TV displays and props” (HC Tr. Ex. 5-3, at 1). The draft joint venture plan for the Sands Hollywood in 1989 contemplated that the type of memorabilia being displayed in the Hollywood theme would not necessarily be limited to any specific time period: “the Hollywood theme was chosen because of its universal appeal to all market segments ..., its flexibility in adapting specific themes to specific target market segments

and its ability to be easily updated

” (HC Tr. Ex. 5-2, at 4 (emphasis added)). This is further evidence that Hollywood Casino’s use of memorabilia displays, and the evolution from a Golden Age of Hollywood theme to a broader Hollywood theme, were not driven by a desire to copy Planet Hollywood’s approach. The fact that the Hollywood Casinos in Aurora and Tunica indeed contain changing and evolving displays of Hollywood memorabilia is consistent with the plan the Pratts sought (but were unable) to implement in the late 1980s — well before the first Planet Hollywood restaurant opened in October 1991.

113. Planet Hollywood has correctly pointed out that prior to the opening of the first Hollywood Casino in Aurora in 1993, a number of high ranking executives of the defendants were familiar with Planet Hollywood restaurants, as well as their theme, motif and use of memorabilia. Mr. Pratt visited the Planet Hollywood restaurant in New York in 1991 and 1992, and the Planet Hollywood restaurants in Atlantic City and Dallas in 1994 and 1995. Mr. Weid-ner, formerly the president of Pratt Hotel Corporation had visited Planet Hollywood restaurants before the opening of the Hollywood Casino in 1993. In connection with the opening of the Aurora casino, Hollywood Casino also retained a consultant named Thomas Cantone, who had been employed by the Sands in 1980s; more recently, he had been employed by Planet Hollywood between the summer of 1991 and the summer of 1992, where his responsibilities involved obtaining celebrity appearances at the New York Planet Hollywood opening and generally developing awareness of Planet Hollywood. Mr. Boc-chicchio did not visit a Planet Hollywood restaurant until September 1993, which was after the opening of the Aurora facility — but he did visit Planet Hollywood restaurants several times thereafter.

114. The Court has not been persuaded that the defendants used their knowledge of Planet Hollywood to emulate its theme and manner of presentation. In drawing

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this conclusion, the Court has considered evidence that Planet Hollywood has offered to attempt to establish that Hollywood Casino intended to replicate Planet Hollywood’s distinctive image, including the following:

a. Mr. Weidner testified that Hollywood Casino used Planet Hollywood as a “benchmark” (PH App. Vol. 4, Ex. 32, at 118). Mr. Weidner explained that this meant Hollywood Casino was interested in how Planet Hollywood operated, because Planet Hollywood was “a very good and interesting restaurant concept”

(Id.).

The purpose of the “benchmarking” was not to copy Planet Hollywood, but to see if Hollywood Casino could do even better

(Id.).

The Court does not find it unusual (or necessarily suspicious) that Hollywood Casino would be interested in the success of another enterprise that used a Hollywood theme. Without more, the mere fact of “benchmarking” does not lead the Court to a finding of “copying.”

b. Planet Hollywood offered evidence that Hollywood Casino had a file folder labeled “Preopening-Planet Hollywood” (PH Amended App. Vol 8, Ex. 60;

see also

Trial Tr. 272-73). However, Planet Hollywood offered no evidence as to what information was included in the file, who kept the file, or why.

c. Hollywood Casino retained Mr. Can-tone to take advantage of certain knowledge he obtained while at Planet Hollywood. Mr. Cantone was paid $5,000 a month for his services, and Hollywood Casino wanted Mr. Cantone to create a public relations program similar to what he had done for Planet Hollywood. In addition, consistent with the consulting agreement that called for him to assist in securing movie clips and memorabilia from Hollywood studios and determining the kind of equipment needed for such presentations, Mr. Cantone provided Hollywood Casino with contacts for producers of video clips and sound systems and manufacturers of display cases and sources of memorabilia that were used by Planet Hollywood. However, as Planet Hollywood concedes (Trial Tr. 893), none of that information was proprietary to Planet Hollywood. Hollywood Casino obtains memorabilia from movie studios, auction houses and private collectors, and some of the sources of memorabilia identified by Mr. Cantone were ones that the Pratts had learned about in connection with the Universal Studio’s exhibit. Moreover, the Court finds that it is not surprising or suspicious that Hollywood Casino would be interested in contacting companies that manufactured display cases and that prepared video clips in a way that avoided copyright infringement claims.

d. Planet Hollywood also points to Mr. Cantone’s preparation of a marketing outline, in which Mr. Cantone suggested that Hollywood Casino incorporate in its operations certain features that Planet Hollywood asserts as part of its trade dress. However, as the Court found, some of those features (the display of video clips and movie memorabilia) reflect ideas that trace back to the failed Sands project and not to Planet Hollywood — and, in any event, are ideas implemented differently at Hollywood Casino than at Planet Hollywood. Other ideas suggested by Mr. Can-tone were never adopted by Hollywood Casino, such as the display of celebrity handprints and the presentation of memorabilia by celebrities; or were done only a few times, such as showing movie premiers.

e. Planet Hollywood also asserts that Mr. Cantone helped Hollywood Casino adopt Planet Hollywood’s approach to the sale of merchandise. The evidence established that Mr. Cantone urged that the sale of merchandise be a major part of the Hollywood Casino operations, and he projected that the sale of such merchandise could account for 25-40 percent of Hollywood Casino’s profits. The evidence also established that Mr. Cantone arranged for Hollywood Casino to interview a Planet Hollywood employee, Barbara Burns, who was knowledgeable about Planet Hollywood’s method for selling merchandise,

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and that he provided Hollywood Casino with a Planet Hollywood merchandise manual. However, the evidence also established that notwithstanding Mr. Can-tone’s urgings, Hollywood Casino did not contemplate that the sale of retail merchandise would be a significant part of the operation: and in fact, the sale of retail merchandise accounts for less than one percent of Hollywood Casino’s gross revenue, a far cry from what Mr. Cantone envisioned. By contrast, merchandise sales account for 30-40 percent of Planet Hollywood’s revenues, net of tax. The evidence also established that Planet Hollywood did not hire Ms. Burns for the very reason that Hollywood Casino did not consider retail to be a major part of the planned operation. And, there is no evidence that Hollywood Casino ever used the Planet Hollywood merchandise manual; to the contrary, Hollywood Casino uses outside firms to administer its merchandising. Planet Hollywood was unable to point to any specific information in that manual which was adopted by Hollywood Casino.

115. In short, the Court finds that many of the things that Mr. Cantone suggested already were part of Hollywood Casino’s plans, and that the bulk of the assistance he provided was in the implementation of those preexisting plans. Mr. Cantone did not contribute to the design used by any Hollywood Casino facility; that was the responsibility and work of Mr. Bocchicchio. The Court does believe that Mr. Cantone sought to carve out for himself a more prominent role, and to that end, made many suggestions that were not adopted by Hollywood Casino, and in some instances provided certain information (such as the merchandise manual) that he should not have provided. But the Court finds that the evidence fails to establish that Hollywood Casino used the information provided by Mr. Cantone to adopt or replicate Planet Hollywood’s theme or decor.

116. The Court also has considered Mr. Bocchicchio’s testimony, in response to a question asking whether he denied incorporating or using in his designs anything in the Planet Hollywood theme decor, that “that’s too broad spectrum. We’ve all used the same lighting effects. We all use videos. We all use all kinds of technical stuff, it’s like — it’s a very — you can’t — I can’t pinpoint that. I can’t answer that honestly” (Trial Tr. 482). While Planet Hollywood cites this as an admission that Mr. Bocchicchio copied the Planet Hollywood decor, the Court does not interpret the testimony in that fashion. The line of questioning that concluded with that testimony began with Mr. Bocchicchio acknowledging his earlier observation that “Egyptians were really the last people to come up with new ideas” because “they had no other outside influence” (Trial Tr. 480). The Court believes that Mr. Bocchicchio’s testimony is nothing more than a statement of his view that we are all influenced in subtle (and sometimes unknowable) ways by what we see and experience. However, to acknowledge that common human condition is a far cry from saying that any general elements that Planet Hollywood and Hollywood Casino have in common (which, as the Court has found, are in any event implemented differently) are the result of intentional copying. The Court declines to draw the inference from Mr. Boc-chicchio’s testimony that Planet Hollywood urges.

117. Based on the findings set forth above, and after consideration of all the evidence, the Court finds that Hollywood Casino did not intend to copy Planet Hollywood’s trade dress.

XII. ACTUAL CONFUSION.

118. Planet Hollywood has offered no evidence of any instances of confusion by consumers between any Planet Hollywood restaurants and the Hollywood Casino in Aurora, which has operated since June 1993, or in Tunica, which has operated since August 1994. The Planet Hollywood restaurants closest to the Hollywood Casino in Aurora operated in the Chicago area as far back as July 1993. The Planet Hollywood closest to Hollywood Casino in

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Tunica has operated in Nashville since June 1996.

119. Planet Hollywood has offered no survey evidence on the question of whether there would likely be any confusion by consumers between Planet Hollywood restaurants and Hollywood Casino’s operations in Aurora or Tunica (or the one being constructed in Shreveport).

120. Conversely, Hollywood Casino has offered no evidence that there exists any actual confusion between any Hollywood Casino facilities and the four Planet Hollywood restaurants in Reno, Lake Tahoe, Las Vegas and Atlantic City that are located in hotels that also offer casino services. As with Planet Hollywood, Hollywood Casino has offered no survey evidence indicating any likely confusion between the Hollywood Casinos in Aurora or Tunica and the Planet Hollywood restaurants that are located in hotels with casinos. The Court finds this lack of evidence of actual confusion significant, given that the Planet Hollywood restaurants in Reno and Lake Tahoe are located near the casino gaming floors; casino gaming chips depicting the “Planet Hollywood” mark were distributed; and Planet Hollywood has used its mark on the gaming floor of the Caesar’s casinos to advertise its restaurant since 1996, displaying the mark on slot machines, gaming tables and carpeting.

121. The Court also finds that Hollywood Casino has failed to establish that if there was any association between Hollywood Casino and the Planet Hollywood restaurants located within hotels that also house casinos, the association has been detrimental to Hollywood Casino. Hollywood Casino has failed to offer any persuasive evidence that the decline in Planet Hollywood’s financial fortunes has resulted in Planet Hollywood obtaining a pervasive negative image among consumers, or that such a negative image has rubbed off on Hollywood Casino. Indeed, Hollywood Casino has conceded that after several years of litigation, “[w]e don’t know of any damages” from Planet Hollywood’s operation of those restaurants in hotels with casinos (6/1/99 Tr. 46-47). The Court finds that the evidence offered by Hollywood Casino of some newspaper articles referencing criticisms of the quality of the food at Planet Hollywood is insufficient to support a broad finding that any association that might be drawn between Planet Hollywood and Hollywood Casino (or their respective marks) would diminish the reputation of Hollywood Casino, or tarnish its image.

XIII. PLANET HOLLYWOOD’S EFFORTS TO EXPAND INTO THE CASINO BUSINESS.

122.As the Court has previously found, the individuals who developed Planet Hollywood anticipated from the outset that the Planet Hollywood concept would not be limited to restaurant services. However, the documentary evidence offered at trial by Planet Hollywood did not establish any concrete acts in furtherance of an intent to expand into the casino business prior to March 1994, when Planet Hollywood filed a Federal Intent To Use Application to register the Planet Hollywood marks for casino and hotel services.

128. That application (Serial No. 74-500,307) sought registration of the Planet Hollywood name and the stylized globe mark for use in casino and hotel services. Thereafter, on August 5, 1996, Planet Hollywood filed two additional registrations (Serial Nos. 75-144,536 and 75-144,537), seeking registration of the Planet Hollywood name and globe mark for use in connection with, among other things, gaming chips. As with the prior registrations, Planet Hollywood disclaimed use of the word “Hollywood” apart from the mark as shown in these three applications. All applications were published by the United States Patent and Trademark Office for opposition. The fact that the Office chose to publish these applications reflected that the Office did not find them to be in conflict with any other registered mark (Trademark Manual of Examining Procedure, ¶ 1101). However, Hollywood Casi

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no filed oppositions to those applications; the Patent and Trademark Office has not issued any ruling on the applications, suspending consideration of the applications due to the pendency of civil litigation.

124. The Court has considered Mr. Earl’s testimony that prior to 1994 he had engaged in discussions with Bally to change that casino’s theme to a “Planet Hollywood” theme (Trial Tr. 798-99, 812-14). The Court credits Mr. Earl’s testimony that he envisioned the possibility of a Planet Hollywood casino as early as 1992, and he may have had preliminary discussions with others about that possibility. However, although Mr. Earl said that there must have been documents created in connection with those discussions (Trial Tr. 812-13, 824), Planet Hollywood has offered no documentary evidence of those discussions. The Court finds it credible that Mr. Earl discussed many possible uses of the Planet Hollywood name with many people at various times, including the use for casinos; but Planet Hollywood has failed to show that it moved from talk to action concerning a casino use prior to 1994.

125. Planet Hollywood has acknowledged, and Hollywood Casino does not dispute, that Planet Hollywood has not used its mark for casino services. As the Court previously found, Planet Hollywood has opened several restaurants in casino hotels in Reno, Lake Tahoe and Las Vegas, Nevada and in Atlantic City, New Jersey. However, the evidence establishes that Planet Hollywood has not operated these casinos, and that the casinos at these facilities continue to be operated under the names of Harrah’s and Caesar’s.

126. However, the Court finds that subsequent to seeking to register its mark for use with casinos in 1994, Planet Hollywood did make concrete efforts to expand into the casino business. In conjunction with ITT Sheraton, the owner of Caesar’s Palace, Planet Hollywood announced a planned opening of a Planet Hollywood casino in Las Vegas, Nevada, and held a publicized groundbreaking for the casino in December 1996. There is no dispute that this planned casino would have incorporated the theme implemented by the Planet Hollywood restaurants. However, as Planet Hollywood concedes (Planet Hollywood’s Proposed Findings of Fact, at 12, ¶ 54), that planned casino complex fell through due to a hostile takeover of ITT Sheraton and thus was never built. Although the planned opening received wide publicity, Hollywood Casino has offered no evidence of any actual confusion arising from the use of the name “Planet Hollywood” in connection with that planned casino.

127. The Court credits the trial testimony of Mr. Earl that despite the failure of the planned casino with ITT, it remains the desire of Planet Hollywood to use its name in a casino operation: either directly operated by Planet Hollywood, or through the licensing of the Planet Hollywood name. The Court further accepts that Planet Hollywood would like to use its name for a casino operation in Las Vegas or Atlantic City, and would seek to attract gaming customers from across the country. However, Mr. Earl acknowledged at trial that there is “nothing at this point on the drawing board with respect to a casino to be opened by Planet Hollywood,” and at this time Planet Hollywood is not “approved by any state authority that has to approve someone to go into the casino business” (Trial Tr. 825). The undisputed testimony established that governmental approval for the operation of the casino is a long and difficult process, with no guarantee of a successful outcome. This evidence alone indicates to the Court that it is far from certain that Planet Hollywood ever would be able to use its name for casinos.

128. The speculative nature of any future use of the Planet Hollywood name for casinos has been further underscored by post-trial developments involving Planet Hollywood’s financial situation. In August 1999, Planet Hollywood announced a plan to file for a bankruptcy reorganization. The Court has reviewed the plan generated at that time, and finds that it is silent as

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to the question of using the Planet Hollywood name for casinos. Thus, while it is true that nothing in that proposed reorganization plan would preclude Planet Hollywood from opening a casino (or licensing its name to another for use in a casino operation), nothing indicates that such a use is-part of Planet Hollywood’s immediate strategy for righting its financial ship.

129. Hollywood Casino has seized on the fact that some of the press coverage of the August 1999 proposed reorganization plan has attributed to Mr. Earl the comment that Planet Hollywood fell on hard times because it embarked on a variety of business concepts that was “too diverse,” and that a reorganized Planet Hollywood would focus on the “core” restaurant business (Defs.’ Motion to Dismiss Decl. Judgment Claims, 8/17/99, at 3). Hollywood Casino argues this shows that Planet Hollywood has no intention of going into the casino business; Mr. Earl, of course, continues to claim otherwise (Pls.’ Opposition to Motion to Dismiss Decl. Judgment Claims, 9/10/99, at Ex. B). The Court finds that taken together, those comments attributed to Mr. Earl and his explanation of them do not establish that a reorganized Planet Hollywood would

never

seek to use its mark for a casino; but they do further confirm that no such use is visible on the horizon. Even prior to the announcement of the planned bankruptcy, Mr. Earl’s trial testimony established that Planet Hollywood had “nothing on the drawing board” regarding a casino project. The announcement of a planned bankruptcy petition certainly did not make the prospect for a casino project more imminent than it was before.

130. On October 12,1999, Planet Hollywood (Region IV), Inc. and Planet Hollywood International, Inc. followed through on the previously-announced plan and filed voluntary petitions in the United States Bankruptcy Court for the District of Delaware, seeking protection under Chapter 11 of the Bankruptcy Code.

19

At the time of that filing, Planet Hollywood closed down a number of its restaurants, including the two restaurants in the Chicago area that were closest to the Hollywood Casino facility in Aurora. In connection with the bankruptcy filing, Mr. Earl has stated that Planet Hollywood hopes to come out of the bankruptcy as of the beginning of the year 2000 with “a new restructured company focused on restaurants, [and] only the restaurants that are profitable” (10/25/99 Tr. 20). The reorganization plan filed in the bankruptcy proceeding cites as one reason for Planet Hollywood’s financial decline losses from “major spin-off projects” outside the core restaurant business, and indicates Planet Hollywood’s intention to refocus its business around its core operations. Casino licensing is listed as one of a number of “[p]otential areas for expansion,” but the plan does not cite casinos as a priority area for expansion or give a time frame for pursuit of expansion into casinos.

131.In addition, certain of Mr. Earl’s comments to the press in the wake of that bankruptcy filing once again have provided fodder for the parties’ respective arguments concerning the prospects of Planet Hollywood using its mark for a casino operation. The reporter’s notes from one such interview indicate that Mr. Earl told him that with respect to a casino, Planet Hollywood has “[n]o plans now, but maybe [in the] future” (Stipulation Regarding Paul Bond, 11/2/99, ¶ 2). Mr. Earl, who apparently has been giving numerous interviews every day, does not recall making that statement, but says that he has told all reporters that while a casino operation is on the agenda, “that is not going to be the number one thing coming out of the box January 1 [2000]” (Stipulation Regarding Paul Bond, 11/2/99, ¶ 3

(citing

10/25/99

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Tr. 20)). Mr. Earl indicates that a Planet Hollywood employee has been assigned to look for a licensing partner, with the intent “to go into gaming as soon as they can find [one]”

(Id.).

Planet Hollywood provided no specifics about what efforts this employee is making to find a licensing partner. However, according to Mr. Earl, Planet Hollywood cannot find such a partner “as long as the cloud caused by this lawsuit is over their head”

(Id.).

132. The Court finds that Planet Hollywood has failed to establish that its inability to enter into the casino business (either itself or through a licensed partner) is the result of a “cloud” created by this lawsuit. Although Mr. Earl indicated that it was Planet Hollywood’s desire to enter into the casino business as far back as early 1992, it took several years for Planet Hollywood to enter into an arrangement with ITT in an attempt to do so. Moreover, the Court observes that this lawsuit already had been filed and was pending at the time that Planet Hollywood and ITT had the groundbreaking for the planned casino in December 1996 — the same “cloud” that Planet Hollywood points to now existed at that time, and did not prevent a groundbreaking for a casino. And Planet Hollywood admits that the ITT deal failed due to a hostile takeover of ITT Sheraton, and not as a result of any “cloud” created by this lawsuit.

133. Moreover, the evidence in this case has shown that even in the best of circumstances entering into the casino business is a complex endeavor fraught with uncertainty and risk of failure: as the Sands found out when it failed in its attempt to establish a casino in Atlantic City in the late 1980s, and as Planet Hollywood found out when its planned casino with ITT failed. The Court finds that on this record, it is equally (if not more likely) that any difficulty Planet Hollywood faces in breaking into the casino business is the result of factors apart from the disputes that have given rise to this litigation.

134.The Court further finds that the speculative nature of any future casino operated under the Planet Hollywood name has, in turn, resulted in the parties offering speculative evidence at best concerning what such a casino would be called and whether there would be any likelihood of confusion or association between such a casino and the Hollywood Casinos. Planet Hollywood says it wants the right to call a casino “Planet Hollywood Casino” (the name that would be most objectionable to Hollywood Casino), but also says it does not really know what name it would give to a casino — and denies that patrons would inevitably call such a casino “Planet Hollywood Casino” (Trial Tr. 866-66). Hollywood Casino says

any

use of the word “Hollywood” in the name of a casino operated by Planet Hollywood would violate Hollywood Casino’s rights (Trial Tr. 933). But neither side has offered any survey evidence or consumer studies to back up their competing contentions as to whether there would (or would not be) likely confusion or an association in the minds of casino customers between a casino operated by Planet Hollywood and a Hollywood Casino.

136. The Court has considered the opinion testimony offered by Mr. Leonard on behalf of Hollywood Casino, that operation of a casino under the name of “Planet Hollywood” would lead consumers to associate that casino with Hollywood Casino (Trial Tr. 659-60). The Court does not find that opinion persuasive.

136. In reaching his opinion, Mr. Leonard did not conduct any kind of consumer studies, and he did not conduct any interviews with casino customers. Rather, Mr. Leonard based his opinions solely on what he considered to be the similarity of the name “Planet Hollywood Casino” and “Hollywood Casino” — a comparison that we do not know is apt, since we do not know in fact what a casino operated by Planet Hollywood would be named.

20

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However, Mr. Leonard acknowledged that he is not an expert in consumer market research, and he has never conducted a survey of consumers in the casino industry. The Court also finds that Mr. Leonard’s opinion is not persuasive because it focuses solely on the names, without consideration of other factors that might affect whether any association might be drawn by consumers between the two entities, such as: (a) whether a Planet Hollywood casino would prominently display the Planet Hollywood stylized mark, which Hollywood Casino acknowledges (indeed, urges) is famous and significantly distinct from the Hollywood Casino film strip mark; (b) where the casino would be located (a Planet Hollywood casino near Chicago or Tunica, where recognition of Hollywood Casino is likely to be greatest, might present different issues than a Planet Hollywood casino in Las Vegas, where the Court has found Hollywood Casino does not have nearly the same level of recognition); or (c) the fact that consumers have not associated Planet Hollywood with Hollywood Casino as a result of Planet Hollywood operating restaurants within four different casino operations in Nevada and Atlantic City. With all due respect to Mr. Leonard, who undoubtedly possesses expertise in certain areas, the Court does not believe that Mr. Leonard possesses any special expertise — beyond that of the Court or any other fact finder — on the question of what casino customers might find confusing or what might cause them to associate one entity with another.

21

CONCLUSIONS OF LAW

I. JURISDICTION

1. The Court has subject matter jurisdiction, pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 , 1338(a) and (b) and 1367, to decide the claims presented in the Amended Complaint and Amended Coun

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terclaim concerning past and current conduct by the parties. Personal jurisdiction and venue are conceded by the parties. Moreover, in view of the order of the bankruptcy court lifting the automatic stay that became effective after Planet Hollywood International, Inc. and Planet Hollywood (Regional IV), Inc. filed their Chapter 11 bankruptcy petitions on October 12, 1999, the pendency of those bankruptcy proceedings does not affect this Court’s authority to address the claims raised by or against Planet Hollywood in this case.

2. The competing declaratory judgment claims in Count VI of the Amended Complaint and Count IX of the Amended Counterclaim, however, present a threshold question regarding the Court’s subject matter jurisdiction. After completion of the testimonial proceedings and the submission of proposed findings, Hollywood Casino moved to dismiss all declaratory judgment claims on the ground that any plans by Planet Hollywood to enter into the casino business (or to license its name for such a use) are insufficiently concrete to create the “actual controversy” required for subject matter jurisdiction under Article III to the Constitution.

3. While Hollywood Casino’s motion comes very late in the' day, that of course is not a bar to considering the question. Subject matter jurisdiction may not be conferred by agreement of the parties, and objections to lack of subject matter jurisdiction may not be waived.

Shaw v. Dow Brands, Inc.,

994 F.2d 364, 371-72 (7th Cir.1993). Thus, even if the matter is not raised by the parties, it is a court’s duty to dismiss a case on its own motion if subject matter jurisdiction does not exist at any point during the review of a case.

See O’Brien v. R.J. O’Brien & Assocs.,

998 F.2d 1394, 1399 (7th Cir.1993). For the reasons that follow, the Court is constrained to agree that it lacks subject matter jurisdiction over the declaratory judgment claims, and therefore dismisses Count VI of the Amended Complaint and Count IX of the Amended Counterclaim, pursuant to Fed.R.Civ.P. 12(b)(1).

A.

4. The Declaratory Judgment Act (“DJA”), 28 U.S.C. § 2201 (a), provides that:

in

a case of actual controversy

within its jurisdiction ... any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such

(emphasis added). The prerequisite of an “actual controversy” tracks the limitation of Article III, which extends federal jurisdiction only to “actual controversies” which arise “under the Constitution, laws or treaties of the United States.” U.S. Const. Art. III, § 2. It is well-settled that the DJA does not expand this jurisdiction.

Aetna Life Ins. Co. v. Haworth,

300 U.S. 227, 239-240 , 57 S.Ct. 461 , 81 L.Ed. 617 (1937) (explaining that the term “controversies” is distinguishable from “cases” only in that it is less comprehensive than the latter, but that the DJA is limited to “cases of actual controversy” and that the word “actual” is one of “emphasis” rather than “definition”).

See also International Harvester Co. v. Deere & Co.,

623 F.2d 1207, 1210 (7th Cir.1980);

Starter Corp. v. Converse, Inc.

84 F.3d 592, 594-595 (2d Cir.1996);

Spectronics Corp. v. H.B. Fuller Co., Inc.,

940 F.2d 631, 635 (Fed.Cir.1991);

Joint Stock Soc’y v. UDV North America, Inc.,

53 F.Supp.2d 692 701 (D.Del.1999).

5. The constitutional imperative against issuance of advisory opinions is unmistakable. Such opinions are prohibited because they “undermine the basic tenants of the Article III case or controversy requirement,”

Joint Stock Soc’y,

53 F.Supp.2d at 706 , and would be “beyond our constitutional power” to render.

Starter,

84 F.3d at 595

(citing Aetna Life Ins.,

300 U.S. at 241 , 57 S.Ct. 461 , 81

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L.Ed. 617); see

also Joint Stock Soc’y,

53 F.Supp.2d at 701 (noting that Congress imposed the Article III limitation on the exercise of jurisdiction under the DJA “to prevent the federal judiciary from imper-missibly expanding the scope of its mandate through the issuance of advisory opinions on hypothetical or abstract issues”). Advisory opinions “fly in the face of the clear constitutional mandate governing the functioning of the federal judiciary,” namely, that of resolving actual rather than hypothetical disputes.

Joint Stock Soc’y,

53 F.Supp.2d at 706 .

See also Windsurfing Int'l, Inc. v. AMF Inc.,

828 F.2d 755, 758 (Fed.Cir.1987) (an advisory opinion is “something a federal court may not give”).

6. One district court recently articulated the relevant concern in words strikingly appropriate here: a federal court is not allowed to express an advisory opinion about “the implications of some

possible

future course of action undertaken pursuant to a hypothetical business plan,” because if it did “[t]he door would open to unlimited efforts” by companies who want “to obtain an advisory opinion from a federal court in an effort to limit their potential liability” before incurring any costs which might prove to have been wastefully expended should the court find against them.

Joint Stock Soc’y,

53 F.Supp.2d at 705-706 (emphasis added).

E.

7. Planet Hollywood seeks a declaratory judgment, pursuant to Fed.R.Civ.P. 57 and 28 U.S.C. §§ 2201 and 2202, that it “may lawfully market casino services, hotel services, and other entertainment-related services under the mark PLANET HOLLYWOOD” (Am.Complt.¶ 38). For its part, Hollywood Casino seeks a declaration that its word mark “Hollywood Casino” is valid and neither generic nor descriptive, and that Planet Hollywood’s use of its name for a casino operation would infringe that mark (Am. Counterclaim ¶ 75).

8. In determining whether subject matter jurisdiction exists for these declaratory judgment claims, there are two inquiries that must be made: (1) whether a federal question exists; and (2) if so, whether there exists an “actual controversy.” In the trial court, the party seeking the declaratory judgment (which at this point is only Planet Hollywood) has the burden of establishing an actual controversy by a preponderance of the evidence.

Cardinal Chem. Co. v. Morton Int'l, Inc.,

508 U.S. 83, 95 , 113 S.Ct. 1967 , 124 L.Ed.2d 1 (1993);

see also Circuit City Stores, Inc. v. Speedy Car-X, Inc.,

35 U.S.P.Q.2d 1703 , 1705 (E.D.Va.1996).

9. Moreover, in a declaratory judgment action, subject matter jurisdiction must exist not only at the time the case is filed, but it must continue to exist as of the date judgment is rendered.

See Steffel v. Thompson,

415 U.S. 452 , 460 n. 10, 94 S.Ct. 1209 , 39 L.Ed.2d 505 (1974). In order to ensure that jurisdiction still exists before entering a judgment, “[i]t is proper to consider post-filing events in the evaluation of continuing jurisdiction.”

Thomas & Betts Corp. v. Panduit Corp.,

48 F.Supp.2d 1088, 1094 (N.D.Ill.1999)

(citing Spectronics Corp. v. H.B. Fuller Co.,

940 F.2d 631, 636 (Fed.Cir.1991)).

10. Although the declaratory judgment claim and counterclaim in this case surely present federal questions, they do not present an “actual controversy.” The Court will assume, without deciding, that an “actual controversy” existed at the time this case was filed by Planet Hollywood in July 1996. Subject matter jurisdiction, however, can be lost by. post-filing events, and this is a case where that is precisely what has occurred. The evidence establishes that in light of Planet Hollywood’s lack of any concrete plans for a casino endeavor, the declaratory judgment claims presently are nothing more than a “theoretical dispute between two companies that may, one day, find themselves competing with one another.”

Joint Stock Soc’y,

53 F.Supp.2d at 705 .

c.

11. In

Maryland Cas. Co. v. Pacific Coal & Oil Co.,

312 U.S. 270 , 61 S.Ct.

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510, 85 L.Ed. 826 (1941), the Supreme Court explained that:

[t]he difference between an abstract question and a “controversy” contemplated by the Declaratory Judgment Act is necessarily one of degree ... [but][b]asically, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

Id.

at 273 , 61 S.Ct. 510 . A declaratory judgment action is not justiciable under Article III when the claim involves “contingent future events that may not occur as anticipated, or indeed may not occur at all.”

Thomas v. Union Carbide Agric. Prods. Co.,

473 U.S. 568, 580-81 , 105 S.Ct. 3325 , 87 L.Ed.2d 409 (1985);

see also Chicago and North Western Transp. Co. v. Soo Line Railroad Co.,

739 F.Supp. 447, 449 (N.D.Ill.1990). Thus, “ripeness is peculiarly a question of timing.”

Thomas,

473 U.S. at 580 , 105 S.Ct. 3325 .

12. In a declaratory judgment action involving trademarks, the Seventh Circuit has applied a two-pronged test for determining whether an actual case or controversy exists: (1) whether the defendant’s conduct has created a real and reasonable apprehension of liability on the part of the plaintiff; and (2) whether the plaintiff has engaged in a course of conduct which has brought it into adversarial conflict with the defendant.

International Harvester,

623 F.2d at 1210 (applying test in a patent infringement declaratory action);

G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc.,

873 F.2d 985, 990 (7th Cir.1989) (applying test in trademark case).

See also Starter,

84 F.3d at 595 (trademark case);

Windsurfing Int’l,

828 F.2d at 757 (trademark case);

Joint Stock Soc’y,

53 F.Supp.2d at 702 (trademark case). If either prong of this test is not satisfied, a federal court may not exercise jurisdiction,

Starter,

84 F.3d at 595 , and any opinion the Court might offer would be advisory and beyond its constitutional powers to issue.

Infinitech, Inc. v. Vitrophage, Inc.,

842 F.Supp. 332 (N.D.Ill.1994).

13. In

International Harvester,

623 F.2d at 1215 , and

G. Heileman,

873 F.2d at 990 , the Seventh Circuit held that to establish an adversarial course of conduct, “the plaintiff must possess the ‘apparent ability and definite intention ... to manufacture and sell a product similar to ... defendant’s ....’”

Accord Starter,

84 F.3d at 595-96 . The “apparent ability and definite intention” test does not require actual use of the trademark by the plaintiff, but it does require that the plaintiffs interest or desire to use the mark be “sufficiently real.”

G. Heileman,

873 F.2d at 990 . What this means is that the plaintiff must be actively preparing to use the mark in such a way that the plaintiff has reached “the last point before the point of no return.”

Id.

at 990-91

(quoting

6A J. Moore, Moore’s Federal Practice ¶ 57.20, at 57-217);

see also Starter,

84 F.3d at 596 . Or, as one appellate court put it, the plaintiff must have engaged in “present activity which could constitute infringement or taken concrete steps with the intent to conduct such activity.”

B.P. Chems. Ltd. v. Union Carbide Corp.,

4 F.3d 975, 978 (Fed.Cir.1993). This requirement is intended to ensure that jurisdiction extends only to those cases where the plaintiff has “a true interest to be protected, rather than a desire for an advisory opinion on whether it would be liable if it initiated some merely contemplated activity.”

Infinitech,

842 F.Supp. at 336 (internal quotations and citations omitted).

14. Applying this standard, the Court concludes that it lacks subject matter jurisdiction over the declaratory judgment claim and counterclaim because Planet Hollywood cannot presently meet the “apparent ability and definite intention prong” of the actual controversy test.

22

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D.

15. Any concrete plans that Planet Hollywood had in 1996 for a casino in conjunction with ITT have long since fallen by the wayside. The evidence at trial established that Planet Hollywood has not currently taken even the first step (much less the last step) before the “point of no return” for a casino project. Mr. Earl’s trial testimony established that Planet Hollywood not only does not know what it would call a casino (Trial Tr. 962), but in truth does not know whether there ever will be one: Mr. Earl conceded that Planet Hollywood is not approved by any regulatory authority to open a casino, and that Planet Hollywood currently has no plans to open a casino “on the drawing board” (Trial Tr. 825). While Planet Hollywood asserts that it recently has charged one of its employees with the responsibility of finding a licensee to use the Planet Hollywood name for a casino, Planet Hollywood has not offered any evidence that it in fact has entered into any licensing agreements with any entity which has the ability or the definite intent to use the “Planet Hollywood” trademark in conjunction with casino businesses — or that Planet Hollywood even has located an entity willing to do so.

16. Nor is Planet Hollywood sufficiently far along in concrete plans for a casino that the Court can answer the basic question of how Planet Hollywood intends to use its mark in the casino business. The Court must be able to determine how the proposed trademark user will utilize its mark before any trademark analysis can begin. In

International Harvester,

628 F.2d at 1216-17, the Seventh Circuit held that there was no justifiable controversy, and thus vacated a .trial court ruling. With respect to “immediate intention and apparent ability” prong, the Seventh Circuit explained that “[o]ur concern is not that the [product] will never be produced, but rather that because of the relatively early stage of its development, the design

*875

which is before us now may not be the design which is ultimately produced and marketed.” 623 F.2d at 1216 . The Seventh Circuit reasoned that “[f]or a decision in a case such as this to be anything other than an advisory opinion, the plaintiff must establish that the product presented to the Court is the same product which will be produced if a declaration of non-infringement is obtained.”

Id. See also Starter,

84 F.3d at 597 .

17. While

International Harvester

involved a requested declaration of patent non-infringement, we believe this reasoning applies as well to this trademark case. Here, Planet Hollywood cannot tell the Court how the mark would be used in identifying or promoting a casino: or, for that matter, the name of the casino or where it would be located (although Planet Hollywood’s vision is to locate a casino in Las Vegas or Atlantic City, we cannot be certain of either venue). Instead, Planet Hollywood asks the Court to “assume” that the name would be “Planet Hollywood Casino” even though Planet Hollywood says that name might not be used — which only further underscores the hypothetical nature of the ruling that Planet Hollywood seeks.

18. Planet Hollywood’s post-trial filing for bankruptcy and the reorganization plan proposed by Planet Hollywood further highlight the speculative nature of the declaratory judgment claims. The history of these parties’ casino endeavors demonstrates that any effort to establish casinos is fraught with uncertainty — witness the failed efforts of the Sands to establish a casino in Atlantic City (Findings Nos. 75-79), and Planet Hollywood’s failure to establish a casino with ITT even after concrete plans had been made and a groundbreaking had occurred (Finding No. 126). The pendency of Planet Hollywood’s bankruptcy proceedings only further complicates any efforts by Planet Hollywood to use its name for a casino, and further attenuates the likelihood that will ever occur. As the Court has found, while Planet Hollywood’s current condition does not preclude the possibility of a casino in its future, the failure of the reorganization plan to mention any concrete plans for a casino business indicates (at a minimum) that a casino is not on the immediate horizon for Planet Hollywood. Whether Planet Hollywood will emerge from this bankruptcy rejuvenated and successful, whether it will extend into the casino business, and if so, when that might occur, where a casino would be located, and what it would be called, all are questions that cannot be answered now, and that uncertainty renders this case unsuitable for declaratory relief.

19. The Court accepts that Planet Hollywood would like to use its name for casinos, and even assume

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