Thursday, February 22, 2018

False endorsement: some bad questions to ask in a survey

Gibson v. BTS North, Inc., 2018 WL 888872, No. 16-24548 (S.D. Fla. Feb. 14, 2018)

Plaintiffs are professional models, actresses, and/or businesswoman who earn their livings by promoting her image, likeness, and/or identity to select clients, commercial brands, media, and entertainment outlets and carefully controlling their images. Defendants operate three “full friction and full nudity” gentlemen’s clubs. Each plaintiff had one or more of her images used on at least one of the Club’s Facebook pages without her consent.  Defendants’ corporate representative testified that they never asked the plaintiffs for their consent, and that he assumed J Dog Media, a separate company thad does the ads for the Clubs, created the graphic designs, backed up by a declaration from the owner of J Dog.

He stated that “in procuring the images at issue, these images were not altered in any way, and were located on other Facebook sites and pages, none of which were Facebook pages associated with, or describing by name, any Plaintiff, and all of which invited ‘sharing’ on the internet.” He said he chose the images “solely because the images depicted attractive females, and not on the basis of any person’s identity, celebrity, popularity, or any personal basis or characteristic associated with any particular Plaintiff.”

Plaintiffs alleged that the uses caused affiliation confusion, and submitted a survey with three representative images from defendants’ ads, two of which featured a named plaintiff. The survey included only “adult (21 and over) male Florida residents who had patronized a Bikini Bar/Gentleman’s Club/Strip Club in the past two years.” The expert testified that 94% of respondents thought the models in the advertisements had agreed to be in the advertisements; 91% of respondents thought the models agreed to promote the Club in the advertising; 9 out of 10 “thought the models represent the lifestyle to which the Club is oriented” [query: how could this be verified or falsified, ever?]; almost 4 out of 5 “thought the models enjoyed a lifestyle like that reflected in the advertising and might participate in some of the events described in the advertising” [mostly the same query]; 75% thought it was “extremely likely” the models were used “to make them think they represented the kind of women they would expect to see at the club,” and another 20% thought it was “somewhat likely” [ditto].

Lanham Act false advertising: Plaintiffs argued literal falsity in that the ads “necessarily conveyed or implied each Plaintiff’s association with[,] endorsement of, and support for the Clubs.” They didn’t show that the images were altered, and since they were actual images of the plaintiffs, they weren’t literally false. “[A]n unauthorized use of a photograph is not a literally false statement, even if the image was altered,” without more. The ads could still be misleading, as shown by evidence of deception.

Defendanted contest the validity of the survey based on the fact that the survey had a small sample size, included images of other women used by other clubs, and used only two of the 57 advertisements at issue in this case representing only two (or possibly three) of the thirteen plaintiffs. These “[c]hallenges to survey methodology go to the weight given the survey, not its admissibility” and a reasonable juror could find the survey unpersuasive, thus preventing summary judgment for plaintiffs.  Further, they didn’t explain how the alleged deception had a material effect on purchasing decisions.  “While the survey found ‘[j]ust over 90%’ of the participants were more likely to be interested in patronizing Defendants by seeing the ads with Plaintiffs than they were from seeing the same advertisements without Plaintiffs, viewed in the light most favorable to Defendants, this does not mean consumers would actually be more likely to frequent Defendants’ establishments based on seeing Plaintiffs in the advertisements.”  [Yeah, not necessarily the right control for materiality.]  Finally, plaintiffs didn’t show how they’d been or were likely to be injured—an alleged right to compensation for the fair market value of the use of their image had “nothing to do” with whether the use was misleading and wasn’t necessarily proximately caused by the misleadingness.

False endorsement: this is the same as TM infringement/false association. Again, the court denied summary judgment to plaintiffs.  Plaintiffs argued that their images were “by definition” inherently distinctive [this seems wrong under Wal-Mart; surely the plaintiffs’ images were either product design or close enough to get the benefit of the rule that in close cases courts should require secondary meaning], or had acquired distinctiveness.

Defendants argued that plaintiffs weren’t celebrities, which the court construed as an argument that their marks weren’t strong.  Interestingly, the court said that the standard secondary meaning factors “do not lend themselves as easily to Plaintiffs whose mark is their identity rather than their name,” which may be to say that identity isn’t really the proper subject matter of a “mark” [paging Mark McKenna], or in other words you can’t necessarily tell what in a plaintiff’s metaphorical “image” is performing the source identification function and what is just a non-trademark kind of distinctiveness (like my distinctive writing quirks).  The court didn’t require much definition from plaintiffs: “While Plaintiffs never explicitly state what exactly their brands represent, Plaintiffs’ declarations satisfy the first three factors [of length & nature of use, nature & extent of advertising and promotion, and & efforts to promote a conscious association between the mark and the business].”  But how can this be a coherent sentence?  What have they used for so long?  What is the mark with which they promote an association and what is the business, if not the “brand” itself?  Can a plaintiff be a mark for herself?

Regardless, plaintiffs provided no evidence of secondary meaning/public recognition, meaning that this factor was neutral in the light most favorable to defendants.

Similarity was “about as strong as can be.”  Similarity of goods/services, sales outlets, and customer base: plaintiffs’ lawsuit was premised on the idea that they’d never have endorsed these uses, leading service dissimilarity to weigh in defendants’ favor.  But plaintiffs argued that they vie for the same dollars as Defendants because “Defendants’ customers also fall within a subset of the demographic that is interested in beautiful women.” Plus the parties both use websites and social media such as Twitter and Facebook to reach their target audience. [That is, they exist in 2018.]  So that weighed in plaintiffs’ favor.

Intent: it was difficult to determine whether defendants intended to capitalize on plaintiffs’ goodwill.  If they didn’t even create the ads, they couldn’t have had bad intent, and J Dog’s owner said he chose the images because they were pretty, not on the basis of identity/popularity; this favored defendants.

Actual confusion: see above about the survey, which didn’t ask if respondents recognized the plaintiffs.

Statutory and common law misappropriation of likeness: Although “[r]epublication of facts already publicized elsewhere cannot provide a basis for an invasion of privacy claim,” the harm of misappropriation is different; plaintiffs secured summary judgment on these claims. 

Civil theft and conversion: Plaintiffs didn’t show the requisite intent to deprive them of the use of the images; at most there was a fact issue about who created the images. A reasonable finder of fact could determine that neither defendants nor J Dog intended to deprive plaintiffs of their images or any rights to them. [Also, depriving plaintiffs of the right to control all uses of their images is not the same thing as depriving them of their own possession of copies of the images, which is what conversion requires, especially to avoid copyright preemption. This should have been summary judgment for defendants, though it’s not clear they moved for that.]

Unjust enrichment: plaintiffs didn’t argue that the use of their images increased defendants’ customers or otherwise led to a gain, but that use of their images constituted a voluntary acceptance and retention of the benefit of using their photos without paying any fee.  The court wasn’t convinced that it would be inequitable to let them retain this benefit, especially that the misappropriation of likeness claims would provide compensation for the exact same harm.
Damages for misappropriation of likeness: Plaintiffs claimed they were entitled to the fair market value for the use of their images and reasonable royalties, though the court found their expert’s report problematic.  E.g., the expert valued one plaintiff’s “working day rate” at $5,000 without explaining what it meant. The court [wrongly I think] presumed that this was the fair market value for the use of each image; the same image was used three times [which would be one photo shoot, not three] but then the expert calculated actual damages as $30,000. Another plaintiff was credited with a “working day rate” of $100,000; for three different images and eight total uses, the expert calculated actual damages at $900,000. The expert didn’t sufficiently explain his calculations to avoid speculativeness.

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