Models’ Lawsuits Against Nightclubs Highlight SCOTUS Petition Challenging Elevation of ‘Public Prominence’ Factor in Lanham Act Cases

Carmen Electra at Maxim Magazine’s presentation of the Pussycat Dolls, Henry Fonda Theater, Hollywood, CA 12-03-02

In mid-October, a pair of lawsuits were filed in the Eastern District of Virginia by different groups of professional models seeking damages and injunctive relief under the Lanham Act from adult entertainment clubs for the unauthorized use of the models’ images in promotional materials. The filings come at about the same time that the U.S. Supreme Court is considering a petition for writ of certiorari from the U.S. Court of Appeals for the Second Circuit which asks the nation’s highest court whether the Second Circuit was wrong to create a public prominence requirement that prevents lesser known models from being able to assert their rights to their own likeness.

Lawsuits Target Misappropriation of Model Likenesses in Online Ads for Nightclubs

On October 13, one group of models filed suit against Ambis 1 Nightclub of Raleigh, North Carolina, and a separate group of models, including Baywatch actress Carmen Electra, filed suit on October 14 against Cherry’s Gentlemen’s Club of Havelock, North Carolina. Both lawsuits allege that the nightclub defendants misappropriated and intentionally altered images of the models to make it appear that they worked at or endorsed those clubs. In some cases, images were taken from social media pages maintained by plaintiff models to promote their brand. While there are standard business practices in the modeling agency by which a model’s likeness can be licensed for a term of a few years, the nightclubs in these cases allegedly never contacted the models to request permission for the use of their likeness in online ads on private websites and social media accounts.

While Electra may be the most recognizable name among the nearly two dozen models listed as plaintiffs, both lawsuits include detailed information on the models asserting the rights to their likeness. Included in the suit against Ambis 1 are Denise Milani, allegedly “the world’s most famous pinup model;” Dessie Mitcheson, who served as the main ring girl during the 2015 Mayweather v. Pacquiao boxing event; and Kara Monaco, Playboy’s Playmate of the Year in 2006 and a former contestant on CBS’ “Big Brother” reality TV show. Included in the Cherry’s lawsuit are Irina Voronina, Kandy Magazine’s Model of the Year for 2013; Rosa Acosta, who was a prominent classically trained ballerina in the Dominican Republic before transitioning into a modeling career; and Ursula Mayes, who serves as suitcase model #5 for the TV game show “Deal or No Deal.”

The extensive allegations surrounding the professional modeling careers for each plaintiff support arguments that the models have a commercial interest in their likeness which should be protectable under 15 U.S.C. § 1125(a)(1)(A), which creates civil liability for anyone making a false description or misleading representation of fact about a person’s affiliation with goods or services. However, over in the Second Circuit, a recent decision on appeal involving Electra and a few other models in the Ambis 1 and Cherry’s actions has created heightened requirements for proving a violation of the Lanham Act in such circumstances.

Will the Supreme Court Reconsider the Second Circuit’s “Public Prominence” Requirement?

Those requirements are being challenged in a petition filed by Electra and other models being represented by John V. Golaszewski, who is also serving as lead counsel in the recent North Carolina district court lawsuits. The petition for Electra v. 59 Murray Enterprises Inc., filed with the Supreme Court on September 13, asks the nation’s highest court to reconsider the Second Circuit’s affirmance of a district court’s summary judgment ruling in favor of Electra on her Lanham Act claim and in favor of defendant Manhattan-area nightclubs on the other plaintiffs’ Lanham Act claims. Although the district court agreed that the advertisements using unauthorized images of the plaintiffs constituted a misleading representation of fact supporting a false endorsement claim, it ruled that the other plaintiffs did not demonstrate that they were sufficiently recognizable to consumers that there was a likelihood of confusion. Affirming the district court, the Second Circuit determined that the appellant models lacked the public prominence required to establish that their likeness was a strong mark given that the nightclub advertisements contained no identifying information other than the models’ pictures.

Rendering a decision in the 59 Murray Enterprises appeal would solve a circuit split on which individuals qualify for protection under Section 1152(a) to file suit over allegations of false endorsement, the petition notes. Both the Second Circuit and the Ninth Circuit, which cover major media markets in New York and California, require evidence of either “recognizability” or “public prominence” to support a false endorsement claim under Section 1152, while the Sixth, Seventh and Eleventh Circuits have all rejected arguments that fame should have dispositive bearing on a likelihood of confusion analysis.

Electra and the other appellants argue that, rather than requiring a plaintiff in a false endorsement suit to prove their own public prominence, plaintiffs should only need to show that they have a commercial interest in their identity.

The Lanham Act was not passed for the purpose of protecting only celebrities’ images and likenesses; its purpose was to protect investments in marks and commercial interests, whether registered or unregistered, famous or obscure. The Lanham Act protects both the established worldwide celebrity and the emerging artist seeking to build her brand. By turning Lanham Act protection exclusively on a plaintiff’s ‘recognition’ or ‘public prominence,’ the Second Circuit has ignored the black letter and legislative history of the Lanham Act, and that portion of the Second Circuit’s decision in Electra must be reversed.

The appellants further note that courts recognizing a public prominence requirement have never articulated the amount of public prominence required or how a plaintiff can demonstrate such prominence.

59 Murray Enterprises: Marks Must Be Distinctive to Be Confusing

On October 14, the respondent nightclubs filed a brief in opposition of the petition for writ challenging Electra’s contention that a circuit split existed, noting that the Second and Ninth Circuits were the only two circuits that squarely answered the question on recognizability requirements for a false endorsement claim. “[T]he Petitioners… point to only a handful of district court decisions from other circuits in which the courts applied different standards in declining to dismiss comparable false endorsement claims,” the opposition brief reads.

Further, the respondents argue that the Lanham Act regularly imposes requirements such as mark distinctiveness affecting what a plaintiff can recover, and that the Second Circuit’s treatment of public prominence and recognizability correctly led to the conclusion that the unnamed representations of the models could not have created a likelihood of consumer confusion without a showing that the consuming public would have recognized the models from their images.

Stephen Zralek, a Partner with Spencer Fane said that Electra’s two cases underscore the two different types of claims plaintiffs file when third parties use their name, image or likeness (NIL) without permission: one for violating their right of publicity and one for false endorsement under the federal Lanham Act. “Although these claims often overlap, they have different elements,” Zralek said. He continued:

For example, when examining false endorsement claims, Electra’s Supreme Court petition for certiorari highlights how federal courts are split on whether an individual must provide evidence of celebrity to recover, or whether mere commercial interest in one’s name is sufficient. On the other hand, when examining the right of publicity (which is a creature of state law), some courts have restricted the right to individuals who can establish their NIL has commercial value (such as celebrities), while courts in other jurisdictions have extended the right to all citizens, regardless of their fame or lack of fame.

Although the Supreme Court’s June 2021 decision concerning student athletes in Alston focused on whether the NCAA’s rules limiting compensation violated antitrust laws, many practitioners hope that decision indicates a willingness by the Court to further examine and clarify both false endorsement claims under the Lanham Act and state-based right of publicity claims, such as Electra’s. Many practitioners are also eager to see if Congress takes up any meaningful legislation to federalize the right of publicity, or if the states adopt any uniform laws concerning the right of publicity. Until then, right of publicity and false endorsement claims will remain two of the most volatile areas of intellectual property law.

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