Mcle Trademark Law's Protection for Image and Likeness ... at Least if You're Famous

• Jurisdiction: United States,Federal
• Citation: Vol. 47 No. 1
• Publication year: 2022
• Author: Dan Rozansky
• topic: Commercial Litigation,Contracts,Trademark,Intellectual Property,Civil Procedure

MCLE TRADEMARK LAW'S PROTECTION FOR IMAGE AND LIKENESS ... AT LEAST IF YOU'RE FAMOUS

AUTHORS

Dan Rozansky
Stubbs Alderton & Markiles LLP

Heather A. Antoine
Stubbs, Alderton & Markiles LLP

Jeremy C. Beutler
Stubbs Alderton & Markiles LLP

(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)

The Supreme Court's recent decision to deny certiorari in Electra v. 59 Murray Enters., Inc.,¹ has left open questions as to the role "fame" or "public prominence" plays in protecting one's identity or persona through false endorsement claims under the Lanham Act.²

Everyone has a right of publicity, which prevents the unauthorized use of one's name or likeness without his or her consent. This right of publicity arises under state law. When a celebrity's image or likeness is used for commercial purposes without the celebrity's consent, the celebrity will typically bring a misappropriation of likeness claim under these state laws.³

A lesser-known avenue to protect an individual's image, however, is to bring a claim for false endorsement under trademark law. The Lanham Act allows a plaintiff to bring a false endorsement claim against another person who uses "any word, name, term, symbol, or any combination thereof" that "is likely to cause confusion...as to the affiliation, connection or association" of the plaintiff with such person or "as to the origin, sponsorship or approval of" that person's goods, services, or commercial activities.⁴

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In contrast to right of publicity claims, which are available to celebrities and non-celebrities alike, some courts have limited false endorsement claims to plaintiffs who have achieved some level of "public recognition" or "fame." In their petition for certiorari, the Electra plaintiffs—a group of professional models, actresses, and businesswomen who appeared in a variety of commercial, promotional campaigns, and magazines—argued that the Second Circuit (where the case was brought) has wrongfully adopted this "public recognition" or "fame" standard and they sought to challenge this standard at the Supreme Court. The plaintiffs argued that false endorsement claims under the Lanham Act should be available to all, regardless of the level of fame achieved.⁵ The Supreme Court ultimately denied the petition,⁶ leaving unresolved questions regarding the role a plaintiff's fame plays in false endorsement claims.

THE ELECTRA CASE

The Electra plaintiffs brought suit against the owners of various New York City-based strip clubs that used the plaintiffs' images to promote the clubs' businesses. The clubs never sought plaintiffs' permission to use the images and none of the plaintiffs agreed to appear in the clubs' promotional content.

The plaintiffs' causes of action included claims for false endorsement under the Lanham Act. The plaintiffs alleged that the clubs' use of the plaintiffs' images falsely conveyed their endorsement or approval of the clubs' services.⁷

The district court rejected most of the plaintiffs' false endorsement claims on grounds the plaintiffs had not put forward proof they had attained public recognition. Without some level of recognition, the court found, there was no basis for inferring confusion regarding the sponsorship or approval of the clubs' goods or services.⁸

This fact, in combination with the absence of admissible evidence of actual confusion and defendants' lack of bad faith, led the court to conclude that consumers were unlikely to view the clubs' use of the plaintiffs' images as plaintiffs' endorsement or sponsorship of the clubs' goods and services.⁹

The district court's conclusion did not apply, however, to plaintiff Carmen Electra, who had demonstrated her celebrity status through her starring roles in popular movies and television shows, by recording and releasing an album, and becoming a published author.¹⁰

Plaintiffs appealed the district court's decision to the Second Circuit. On the false endorsement claim, the Second Circuit endorsed the lower court's analysis, including the trial court's analysis of each of the plaintiff's public prominence (or lack thereof), and affirmed the district court's judgment.¹¹

On the point of public recognition, the Second Circuit reasoned that misappropriation of an "anonymous face" cannot form the basis for a false endorsement claim because the consuming public will not infer that an unknown model was endorsing a product.¹² Rather, consumers will infer that the anonymous model merely lent her image to the company for a fee.

The plaintiffs filed a petition for a writ of certiorari to the Supreme Court, arguing that the district court and Second Circuit's reliance on whether plaintiffs proved "public recognition" imposed an extra-statutory burden on the plaintiffs. The plaintiffs cast the Second Circuit's decision as "fundamentally alter[ing] the standing requirements" for false endorsement claims under the Lanham Act.¹³

The plain text of the Lanham Act allows "any person who believes he or she is likely to be damaged" by another's use of a trademark or false or misleading representation to bring a false endorsement claim.¹⁴ By requiring a certain level of fame, plaintiffs argued that the Second Circuit has imposed an additional standing requirement that does not apply to other trademark holders who must demonstrate only that they made commercial use of the mark (not that the mark has become famous or is widely recognized).

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CONSIDERATIONS FOR BRINGING RIGHT OF PUBLICITY AND FALSE ENDORSEMENT CLAIMS

The Electra case highlights a few important procedural, remedial, and potentially substantive distinctions between right of publicity claims, on the one hand, and false endorsement claims under the Lanham Act, on the other.

The most critical distinction for many of the Electra plaintiffs is the statute of limitations. In New York, right of publicity claims are subject to a one-year statute of limitations.¹⁵ In contrast, the Lanham Act has no statute of limitations; rather, federal courts look to analogous state laws to determine whether a Lanham Act claim is barred under the doctrine of laches. In New York, the most relevant analogous state law is the state's six-year fraud statute.¹⁶

There are also remedial distinctions between right of publicity claims and false endorsement claims. Because right of publicity is a matter of state law, the remedies available to plaintiffs vary by state and can include injunctive relief, statutory damages, compensatory damages, punitive damages, and/or attorney's fees and costs. In New York, the right of publicity statute permits injunctive relief, compensatory damages, and, if the use of the individual's name, portrait, or picture was "knowing," exemplary damages. The statute does not provide recovery for the prevailing party's attorney's fees.¹⁷

The Lanham Act similarly provides for...