using testimonials post-relationship failure can be a ROP problem

McCandless Group, LLC v. COY Collective, Inc., No. LA CV 21-02069-DOC-KES, 2023 WL 8351525 (C.D. Cal. Oct. 23, 2023)

The individual defendants co-founded COY in 2019 to provide creator clients with a platform to offer subscription services. COY hired MG to develop COY’s subscription platform. Things eventually went bad, resulting in contract/trade secret claims and copyright/ROP counterclaims.

One of the individual defendants is “a social media personality and model who became well-known for her photos and videos, and who has also started an agency to provide management services to other models and influencers.” Individual counterclaim defendant McCandless pitched Bartlett on building a personal website for her to “monetize” her following on Instagram and other sites. After they executed a Web Development Agreement, a number of her copyrighted photos were added to the site created by McCandless (it’s disputed who did that). Bartlett also helped them recruit another popular Instagram model, Passos. Because of Bartlett’s popularity, McCandless used her, among other personalities, to market his services and asked her to provide a “testimonial” video for him to use, which she provided and he posted to his Instagram.

After the relationship broke down, Bartlett’s website became disabled, but MG and McCandless kept copies of Bartlett’s photos on their servers until after defendants filed their counterclaims. “Before their removal, Works were accessible at least to an unknown number of individuals with content creator or content manager access to MG’s platform. While the URLS for each image (which included long strings of characters unique to each image) were only findable by those with that access who had saved the links prior to Bartlett’s website being shut down, any person that entered the correct URL into a web browser could access the photos.”

McCandless admits that he left Bartlett’s testimonial on his Instagram page and did not remove the video until September 2022, despite lacking authorization since at least 2020. Although not tied specifically to Bartlett’s video, MG received revenue from new models during the period of use of Bartlett’s endorsement video for recruitment. “Bartlett was upset by the use of her image to endorse a company with whom she was also engaged in litigation.”

Addressing only the counterclaims: Bartlett made out most of her ROP claim related to the testimonial video, despite an argument that she hadn’t shown injury. “The invasion of plaintiff’s right to privacy constitutes the harm, entitling plaintiff to recover for all damage caused by the invasion. While special damages may be awarded if sustained, general damages are recoverable without a showing of specific loss,” which included injury to her feelings. While the prima facie claim had been established, there was a genuine dispute of fact on the affirmative defense of incidental use, which the court predicted existed in California.

A defendant’s “insignificant or fleeting use of plaintiff’s identity is not an infringement.” It was undisputed that Bartlett’s video was a small part of a longer endorsement video, and it was disputed whether McCandless was “unaware” this video was on his Instagram and what commercial impact the video had. These were questions for the jury, as was the “knowing” element of the statutory misappropriation claim, given the credibility question of whether McCandless knew the video was still on his Instagram page.

Copyright counterclaims: There was a genuine dispute of fact about the public display right. Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065 (9th Cir. 2021), held that an infringing public display includes making an image available via a server that is publicly accessible, regardless of whether anyone accesses the photo. Causation was established because Wilmott had “assum[ed] responsibility for ... the servers.” This was “volitional for purposes of copyright infringement.” “In other words, Bell establishes that general control of the server that is publicly displaying the image may be sufficient to impose liability.”

But in Bell, the copy was apparently always infringing, which doesn’t seem to be the case here. Nonetheless, the court concluded that MG’s inaction after Bartlett requested the images be removed and filed her counterclaims “may have caused the photos to remain public, without Bartlett’s consent, for five months.” Responsibility for the website and its architecture was a disputed issue.