Thursday, February 03, 2022

Contextual advertising and the right of publicity

Champion v. Moda Operandi, Inc., --- F.Supp.3d ----, 2021 WL 4340670, No. 20 Civ. 7255 (CM) (S.D.N.Y. Sept. 22, 2021)

This case should be of interest to people working on contextual advertising. In one way, it's a replay of the Stewart v. Rolling Stone litigation, though the facts are more internet-oriented. Plaintiffs are fashion models whose runway appearances were featured in Vogue. “It is a truth universally acknowledged – so universally as to be worthy of judicial notice – that designers long to have their work featured in Vogue, and that the models who make their living exhibiting designer clothes aspire to have their photographs appear in the magazine – or, today, on its website or social media account.” Yet plaintiffs are suing Vogue, because Vogue has an agreement with the website Moda Operandi to link from Vogue to Moda if anyone wants to purchase the designer clothes featured in Vogue online stories.

example of editorial content with model images

“Plaintiffs believe that they should be paid by Vogue for the use of their photographs if the screen on which their visages are exhibited includes a link to Moda.” So they sued both Vogue and Moda for violations of NY’s right of publicity law and false endorsement under the Lanham Act. Where Moda used recognizable photos of the models on its own website, the claims survive, but Vogue’s own editorial content—even when coupled with links to Moda—was protected under Rogers.

More facts: in 2019, Vogue published an online editorial feature about the 2020 Spring Ready-to-Wear collections, which included coverage of over 50 designers, whose names appear on the editorial’s homepage as hyperlinks to their individual sections, which have slideshows of photos from the designer’s show accompanied by editorial commentary and some additional photos. (“Interestingly, Plaintiffs plead no facts about the terms of their contracts with the designers who hire them to work the runway; the court acknowledges the very real possibility that those contracts govern how images captured from a fashion show are used.”)

Plaintiffs based their complaint on the fact that images appear on pages with links from Vogue to Moda. The cover page for each relevant designer’s collection displays “Buy on Moda Operandi” in small text under the slideshow/featured photo; this link goes to a Moda page featuring that designer. Also, when a viewer clicks through the slide show, each slide has a photo of one item as seen on the runway (that is, on the model). “[A] small red box containing the words ‘Shop This Look’ in white print is superimposed over the bottom of the photograph” for computer users, while the link appears at the bottom of the screen on mobile. Either way, clicking on the link also sends browsers to Moda’s designer page.

"buy on Moda Operandi" link at bottom (mobile)
"shop this look" example on a computer

In addition, visitors can browse the “trunk show” on Moda’s website, which displays photos of models wearing a particular designer’s clothing on the runway.

Lanham Act claims: These were false endorsement claims that consumers might be confused into thinking that the models were affiliated, connected or associated with Moda’s brand, and that the models endorsed or promoted consumers’ use of Moda as a venue for buying the clothes they were wearing.

Claims against Vogue/Conde Nast were covered by Rogers, which applies whenever the “unauthorized use of another’s mark is part of a communicative message and not a source identifier,” including to “commentary, ... news reporting or criticism,” “i.e., content that cannot be deemed purely commercial.”

Vogue’s editorial feature “easily” fell within that category. Of course the links had a “commercial purpose.” But the purpose of the editorial, “viewed as a whole,” was reporting, not commercial speech. “The opportunity to purchase clothing is made available to the reader, but only in the context of a preview of the designer’s entire collection and journalistic commentary on that collection.” The links were small and not applied to each photo in the slide show [don’t see why that matters; ads take up a bunch of each hour of broadcast TV, for those of us who still do that sort of thing, but they don’t make the program they break up into commercial speech]. “Common sense tells us that this is not a simple advertisement.”  “It is a work of fashion journalism that, like every fashion magazine, happens to contain advertisements.”

Plaintiffs argued that the “Buy on Moda Operandi” and “Shop This Look” links were not incidental or extricable from the editorial, “because one could not delete them without altering the content of the editorial,” but so what? [Indeed, if commercial and noncommercial speech are inextricably intertwined, precedent dictates treating the speech as noncommercial, so this is a quixotic argument.] “[T]he question is not whether this journalistic feature could have run without including advertiser links; it is whether the photographs used by Vogue in the Runway Editorial are both artistically relevant to the journalistic (non-commercial) aspects of the expressive work and are not explicitly misleading.”

And of course the photos were neither irrelevant nor explicitly misleading. On relevance: “There is no better way to aid the reader in understanding the collections and Vogue’s commentary than to see pictures from the runway shows; and those pictures will necessarily include the models, whose headpieces, hair, and makeup are an integral part of any runway show.”

Explicitly misleading: No allegations supported this.

The only things that are explicitly represented on the allegedly offending pages are (1) this model wore this item of this particular designer’s clothing in a publicly viewed runway show, and (2) the viewer can purchase this particular item of clothing by pressing a link that takes her to some other website (since Vogue, as every reader knows, sells magazines, not clothes). These are not misrepresentations – they are true facts.” Any physical proximity between the pictures of Plaintiffs and either an explicit reference to Moda … or a link to Moda … is insufficient to create an explicit link between the Plaintiffs and Moda.

Separately, 37 of the plaintiffs, the ones whose photos appeared only in slideshows on, failed to state a claim against Conde Nast because they didn’t plausibly plead confusion. Only 6 plaintiffs appeared on individual designer “home” pages in the editorial, which was the only place that Moda’s name appeared. The other 37 plaintiffs appeared only in slide shows, and “Moda” appeared nowhere on the pages of the slide show. “Shop This Look” wasn’t plausibly enough to constitute a misleading representation that they endorsed Moda. “For all the consumer knows, the hyperlink might connect to Amazon – or directly to the featured designer’s Madison Avenue store.” [I’m not sure this has ever come up before, but it does make some sense that the rule about unknown source only applies to acquisition/maintenance of trademark rights and not to infringement; hard to see how random confusion, if it existed, would do harm.] The only way for a consumer to find out about Moda would be to click the link and go to an entirely different website. “No reasonable factfinder could infer that a consumer who was browsing through one of the Vogue Runway Editorial slideshows decided to click on ‘Shop This Look’ because she thought the model wearing the outfit she liked had anything to do with Moda. … The only inference that can plausibly be drawn from the pictures of Plaintiffs containing a ‘Shop This Look’ link is that Plaintiffs are associated or affiliated with the clothes they modeled and/or the designers who created them.” And that’s true. “Simply by walking the runway wearing the clothes, Plaintiffs were advertising the items for sale.”

However, some Lanham Act claims against Moda survived, since Moda was just selling clothes.  “The model’s faces as seen on Moda’s website are not incidental to any non-commercial purpose, such that a consumer is unlikely to associate the model with Moda’s brand.” Although the court viewed the confusion argument—that the photos falsely represented the models’ endorsement of Moda as a preferred place to buy the clothes they modeled—as “highly unlikely to succeed,” it was not implausible. Still, the court dismissed all claims from models whose faces weren’t clearly shown on Moda’s site. Models who were only shown on Vogue’s site, or on Moda’s “(1) cropped so that the upper half of the face cannot be seen, (2) shown from the back, or (3) indiscernible because they are part of a crowd of models” failed to state a claim. “[T]he misappropriation of a completely anonymous face [cannot] form the basis for a false endorsement claim, because consumers would not infer that an unknown model was ‘endorsing’ a product.”  Further, “the very fact that their faces are not identifiable renders the allegation that Moda intended to trade on the good will associated with their personas totally implausible.”

cropped and not actionable

That left 25 plaintiffs who could at least give Polaroid a try, though one didn’t sufficiently allege that her face would be recognizable to the general public: “a model working the runway for the first time is not someone who can plausibly assert recognizability.” The court also commented that purchaser sophistication favored Moda, “as it is unlikely that individuals who can afford to purchase designer clothing and who follow fashion design would be easily misled about what it was that the plaintiff models were, and were not, doing.” However, the fact that Moda cropped some images and not others supported an inference that Moda might have had an intent to capitalize on certain models’ recognizability.

NY right of publicity: First, the court kicked out all claims by non-domiciliary plaintiffs. The remaining claims against Moda remained live. [Edited to reflect what's in Conde Nast's filings] For whatever reason, the court didn't engage with Conde Nast's argument that NY’s ROP doesn’t cover editorial content, so the court retained supplemental jurisdiction over the state law claims against Conde Nast, though unhappily. (Conde Nast has moved to dismiss those claims again on newsworthiness grounds, and it's hard to see them surviving; I also think Rogers, itself a ROP case, albeit from a different state, would preclude the claims.)

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