Friday, July 31, 2009

Noncelebrity false endorsement claim proceeds

Arnold v. Treadwell, 2009 WL 2222928 (E.D. Mich.)

When do you not need to show secondary meaning to gain protection for a personal name under the Lanham Act? When you allege a violation of §1125(a), apparently. Plaintiff is an aspiring fashion model. Defendants run a business specializing in digital photography and run associated websites.

Plaintiff alleged that she agreed to have non-sexually-explicit photos taken by defendants to build her portfolio and advance her career. She alleged that their agreement allowed her full control and approval over any use or distribution of the photos, and that defendants violated that agreement by posting pictures on a pay site it owned and by licensing a magazine of ill repute to run her picture. Don Diva Magazine published the picture in its “Sticky Pages” section, and included the words “Try to Concentrate,” along with plaintiff’s real first name. The photo also showed up inat least one ad for the magazine. (Defendants claim to have a written release, but were unable to produce it for purposes of the summary judgment motion.)

Plaintiff’s aspirations aside, she’s been working as an exotic dancer at a place called Trumps, and “her attempts at modeling have met with little success. She has had no identifiable modeling jobs apart from a single job passing out flyers at an unidentified event.” Still, she’s made efforts to launch a modeling career and made attempts to control her image, including using a false name as an exotic dancer.

Plaintiff moved to strike defendants’ summary judgment motion to the extent that it was based on the First Amendment, on the ground that it was an affirmative defense and had not been included in the answer. The court agreed, based on dicta from other Lanham Act cases, that the First Amendment is an affirmative defense that should be raised in an answer. “The issue of whether the various publications and media that published the plaintiff’s image constitute expressive content so that the heightened standard applied by the Sixth Circuit in Parks should apply require the development of facts that are not generally relevant to a plaintiff’s prima facie case under the Lanham Act.” Here, the plaintiff would be prejudiced by waiving the requirement of Rule 8, “because the plaintiff has been deprived of the opportunity to develop facts that would tend to show that the defendants’ websites were not the type of expressive content contemplated by the Sixth Circuit in Parks that would require Parks’ level of heightened scrutiny.” Query: what facts would tend to show that a magazine isn’t protected by the First Amendment? Is there any credible argument that the magazine is commercial speech, or some other un- or less-protected type of speech? (More on this in a moment.)

The key remaining question was whether the plaintiff had to show that she was a celebrity before she could claim false association or false endorsement under the Lanham Act. Courts have required a plaintiff to show that his/her persona had commercial value, but in most of the cases the court discussed, the plaintiff’s celebrity status was undisputed. Other cases in which celebrity was in play were complicated because the “likeness” at issue was not a photo but some other indicator of identity, and celebrity was key to recognizability.

The court followed Condit v. Star Editorial, Inc., 259 F.Supp.2d 1046 (E.D.Cal.2003), which required a §43(a) plaintiff to have a commercial interest in her name—meaning at least a present intent to commercialize her name--because of the commercial purpose of the Lanham Act. Here, the plaintiff had such a present intent, and thus stated a claim.

Because there was a dispute over the scope of her consent to be associated with defendants—she says she agreed only to allow pictures to be shown on one of their websites, and the pictures were the least risque of the bunch--summary judgment was inappropriate on the issue of false association.

Then the court specifically addressed defendants’ First Amendment arguments, arguing that under the Parks v. LaFace rule, the photos were actionable only if they had no artistic relevance or if they explicitly misled as to endorsement. However, the court held that the defendants hadn’t met their burden of showing that the defense applied: the evidence about whether the allegedly unauthorized website involved “commercial transactions” was disputed. That is, the evidence seemed to show that the website had subscribers who paid fees for access to additional photos, and that defendants held themselves out as a modeling agency.

Okay, but why does that make Parks inapplicable? Does the court think that Outkast did not require people to pay to get copies of its songs? What about the magazine—shouldn’t the analysis have asked whether it was commercial speech? And, oh yeah: commercial transactions are not the same thing as commercial speech, under First Amendment jurisprudence. The only invitation to engage in a commercial transaction at issue seems to be the ad for the magazine (and for obvious reasons, ads for First Amendment-protected speech tend to get treated like the speech itself, as compared to ads for products). Summary judgment denied.

A little leeway here, a little leeway there: this is how the Lanham Act swallows up free speech. I don’t find the defendants’ conduct attractive, assuming the facts are as alleged, but using the Lanham Act instead of contract law to remedy the problem has serious implications for anyone who takes, sells, or publishes photos.

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