BY:Michael I. Rudell and Neil J. Rosini
Originally published in the Entertainment Law column in the New York Law Journal on February 24, 2020.
A model alleges that her image was used in advertising for a strip club without her authorization. She points to hundreds of thousands of followers on Facebook and other proofs of public recognition and declares she never was employed by the club. The model sues in federal court with three theories of recovery. The defendant moves to dismiss and succeeds on one count out of three.
This is the rough scenario of Pinder v. S. DiCarlo and Tess Collins, No. 1:18-cv-00296-BKS-ATB. (N.D.N.Y., filed Jan. 28, 2020), except that there were three models who brought the action rather than one. They premised their complaint on theories of false endorsement under §43 of the Lanham Act, misappropriation of likeness for adverting purposes under the N.Y. Civil Rights Law Sections 50-51, and deceptive trade practices under the N.Y. General Business Law. In allowing the first two causes of action to go forward and dismissing the third, U.S. District Judge Brenda K. Sannes wrote an opinion that reviews the elements of all three theories of recovery for unauthorized use of a person’s image in advertising.
According to the complaint, the plaintiffs are three “well-known professional models and actresses” who each earn a livelihood “promoting and licensing her image, likeness and/or identity.” Plaintiff Lucy Pinder is “an English model, actress, host, businesswoman, and one of Great Britain’s most famous glamour models,” who appeared in “hundreds of magazines” and in film and television productions including “Celebrity Big Brother” and “Stripper vs. Werewolves.” Plaintiff Irina Voronina has been featured on “the covers and pages of worldwide magazines” including Maxim and Playboy, where she was named Miss January 2001. Her film credits include “Reno 911: The Movie” and “Piranha 3DD.” Her Facebook, Instagram, Twitter and YouTube followers allegedly exceed four million. Plaintiff Carmen Electra is a “world famous actress, recording artist … entrepreneur” and “published author” whose TV performances were seen in “Baywatch” and “Singled Out” and whose film roles included “Scary Movie,” “Dirty Love,” and “Cheaper by the Dozen 2.” Currently, she hosts a docu-series called “Ex Isle” and has more than three million Facebook followers, 740,000 Instagram followers and nearly 400,000 followers on Twitter.
Defendant DiCarlo’s is a “gentleman’s club” in Albany, allegedly serving food and drink in an atmosphere where “nude and /or semi-nude women entertain” the clientele. Defendant Tessa Collins is alleged to be the “owner, principal, and/or chief executive” of the establishment (and defendants’ motion also sought to remove her from the action). DiCarlo’s posted on its Instagram and Facebook pages images of the plaintiffs posed in various ways, such as in lingerie with a Santa hat, in proximity to a “Best Breasts” contest announcement, in a devil’s costume, and on a stripper pole.
The plaintiffs’ first claim, based on §43(a) of the Lanham Act (15 U.S.C. §1125(a)(1)(A)), alleged that the images used by defendants “misle[d] potential customers as to [their] … employment at and/or affiliation with DiCarlo’s.” To prevail, they need to prove that defendants “(1) in commerce, (2) made a false or misleading representation of fact (3) in connection with goods or services (4) that is likely to cause consumer confusion as to the origin, sponsorship, or approval of the goods or services.” The defendants challenged the existence of either a false or misleading representation of fact or consumer confusion.
The court found both. It held that the plaintiffs plausibly alleged a false endorsement because they undisputedly never endorsed DiCarlo’s and yet their images were posted on the club’s social media pages that prominently referenced the club name and advertised its events.
As for consumer confusion, the court responded to the defendants’ assertion that the plaintiffs “were not significantly recognizable” to establish the possibility of consumer confusion, and rejected it for purposes of the motion. To reach that conclusion, the court cited a modified version of the Second Circuit’s “Polaroid factors” from Polaroid v. Polarad Electronics, 287 F.2d 492, 495 (2d Cir. 1961): (1) strength of the mark (in this case, the mark is the plaintiff’s persona and its strength derives from the “level of recognition that the plaintiff has among the consumers to whom the advertisements are directed”); (2) evidence of actual consumer confusion; (3) evidence of bad faith in adopting the “imitative mark”; (4) similarity of the marks; (5) proximity of the products and their competitiveness with each other; and (6) sophistication of consumers in the relevant markets.
In light of the plaintiffs’ alleged print, TV and film appearances and their social media following, the court was unwilling to conclude at the pleading stage that the plaintiffs’ lacked a level of recognition capable of causing consumer confusion. Further, the plaintiffs plausibly alleged bad faith by pleading that the defendants used their images to create a false impression with the public that they either worked at or endorsed DiCarlo’s. Although not addressing the remainder of the Polaroid factors (tacitly reserving them for discovery and further proceedings), the court refused to grant judgment on the pleadings to the defendants.
The plaintiffs’ claim for violation of their rights under §§50 and 51 of the N.Y. Civil Rights Law also was preserved, at least temporarily. Those provisions “create a private right of action for the use of a living person’s picture for advertising or trade purposes without that person’s written consent,” as the court characterized them, citing an earlier case decision. There appeared to be no dispute that the plaintiffs were alive at the appropriate time and that their images were used for advertising without consent. But the sections are subject to a one-year limitations period measured from the date of first publication, and the plaintiffs filed their complaint after its expiration. To avail themselves of this affirmative defense, the defendants needed to plead it in their initial answer or amended answer, which they failed to do. Although they proposed to amend their complaint again to include it, court rejected their motion for judgement on the pleadings as premature.
The plaintiffs’ third claim arose under NYGBL §349(a), which prohibits “[d]eceptive acts or practice in the conduct of any business, trade or commerce or in the furnishing of any service in this state.” This section has three elements: (1) the act or practice was consumer-oriented; (2) the act or practice was misleading in a material respect; and (3) the plaintiff was injured as a result; but the gravamen of a complaint “must be consumer injury or harm to the public interest.” In the Second Circuit, the prevailing view is that mere trademark infringement is not cognizable under §349(a) in the absence of a “specific and substantial injury to the public interest over and above the ordinary trademark infringement” claim of consumer confusion. The plaintiffs argued that this condition was satisfied because the defendants “sought to misrepresent to consumers at large the women who worked as strippers at DiCarlo’s.” The court held that precedents on which the plaintiffs based this argument reflected “a minority view,” and because the plaintiffs failed to allege a “consumer-oriented harm greater than consumer confusion,” their claim was dismissed.
The defendants’ motion also sought to dismiss from the action the individual defendant, Tess Collins, who was alleged in the complaint to be “the owner, principal and/or chief executive officer” of DiCarlo’s. The defendants argued that more was required for individual liability for trademark infringement and unfair competition: the officer needed to be “a moving, active conscious force behind [the corporation’s] infringement.” The plaintiffs argued that they sufficiently alleged personal liability by citing Ms. Collins’s positions in the company without alleging Ms. Collins to be sole shareholder or a direct participant in the infringing activity. The court held to the contrary and dismissed the claim against Ms. Collins, while giving the plaintiffs leave to amend.
As this case illustrates, several legal theories of recovery might be asserted by individuals in response to unauthorized advertising use of their personas, but facts and circumstances matter: §349(a) of the N.Y. General Business Law has relatively narrow application in that it requires consumer-oriented harm greater than consumer confusion; §43(a) of the federal Lanham Act requires (among other elements) an appreciable level of recognition among consumers to whom the advertising is directed; and N.Y. Civil Rights Law §§50 and 51 have general application to New York state infringements, provided the claim is timely filed within a relatively short limitations period.