delay bars ROP/Lanham Act claims when Facebook use was open and plaintiffs were aware of lots of unauthorized use

Davalos v. Baywaych Inc., 2024 WL 5344434, --- F.Supp.3d ----, No. 21-11075-NMG (D. Mass. Sept. 30, 2024)

The caption seems to be a typo, but it’s one of the many right of publicity etc. cases by models against adult clubs that used their images in online ads. The defendant here gets summary judgment on laches.

The four images in dispute were posted on defendant’s Facebook page between August, 2013, and November, 2015. Plaintiffs sued in 2021. The court certified a question to the Massachusetts Supreme Judicial Court:

Under what circumstances, if any, is material publicly posted to social media platforms “inherently unknowable” for purposes of applying the discovery rule in the context of defamation, right to publicity, right to privacy and related tort claims?

The SJC answered:

Claims for defamation, violation of the right to privacy, violation of the right of publicity, and related claims that arise from material posted to social media platforms accrue when a plaintiff knows, or reasonably should know, he or she has been harmed by the defendant’s publication of that material. Given how “vast” the social media universe is on the [i]nternet, and how access to, and the ability to search for, social media posts may vary from platform to platform and even from post to post, that determination requires consideration of the totality of the circumstances regarding the social media posting, including the extent of its distribution, and the accessibility and searchability of the posting. The application of the discovery rule is therefore a highly fact-specific inquiry, and the determination of whether plaintiffs knew or should have known that they were harmed by a defendant’s post on social media must often be left to the finder of fact. If, however, the material posted to social media is widely distributed, and readily accessible and searchable, a judge may determine as a matter of law that the discovery rule cannot be applied.

Among other things, the SJC thus clarified that the “inherently unknowable” standard for the discovery rule is, under contemporary law, more accurately stated as a “knows or reasonably should know” standard.

The state tort claims were governed by a three-year limitation period. Under the discovery rule, a statute of limitations is tolled and will not begin to run until “[T]he plaintiff discovers or with reasonable diligence should have discovered that (1) he has suffered harm; (2) his harm was caused by the conduct of another; and (3) the defendant is the person who caused that harm.”

What a plaintiff knew or should have known is generally a fact question, but the burden is on the party asserting the discovery rule to demonstrate that an action is timely.

Plaintiffs here either stated that they were either unaware of the Facebook posts at issue until their attorney brought the posts to their attention in 2021 or could not recall how they became aware of the posts. Without information about how many people actually viewed the Facebook page at issue/the specific posts and without information about likes or shares, it was impossible to determine how widely circulated they were. Even wide circulation itself would not inherently prevent the application of the discovery rule. But, relatedly, there were not allegations the posts were ever concealed, kept secret, or restricted. “In fact, the purpose of the posts as advertisements for Club Alex indicates that they were meant to be circulated, not hidden, and plaintiffs offer nothing to rebut that inference. Even if the posts were in some way restricted and not readily accessible to plaintiffs, moreover, that would not be sufficient in and of itself to excuse plaintiffs’ failure to discover them.”

Most importantly:

[T]he facts leave no doubt that plaintiffs, all of whom license their images as part of their profession, had good reason to know that people were misappropriating their likenesses on social media. Indeed, plaintiffs have all been involved with numerous lawsuits related to other instances of misappropriation in the years following Club Alex’s posts. Plaintiffs were able to discover and act upon misappropriations in other cases and offer no reason why these posts were any different or less discoverable than others. … [T]he frequency with which plaintiffs have had their likenesses misappropriated renders reliance on the discovery rule suspect.

A footnote referred to Meta’s “facial recognition technology that, at all times relevant to this case, could have aided in such searches.”

True, social media is vast, with more than 350 million images uploaded to Facebook each day in 2013, but “[t]he fact that the allegedly misappropriated posts occurred amid a vast sea of Facebook posts does not … render plaintiffs’ lack of knowledge objectively reasonable. Nor is the fact that the posts may have required more than a perfunctory search to locate on Facebook enough to invoke the discovery rule’s protections.” Thus, there was no genuine dispute of fact on tolling the limitations period, and the state law claims were time-barred.

Lanham Act claims: instead of a limitations period, the Lanham Act uses laches, generally borrowing the most relevant state law limitations period to determine whether laches is presumed or not.  Plaintiffs argued that laches shouldn’t apply to deliberate infringement, but only the Second Circuit agrees. Other circuits consider deliberate infringement to be merely one factor in considering when to apply laches, a rule that “better align[s] with the equitable nature of laches than the Second Circuit’s brightline test.”

Here, the parties didn’t dispute that the most analogous statute of limitations is drawn from the Massachusetts Consumer Protection Act, with a four-year limitations period. Thus, laches was presumed. Laches requires: 1) a lack of diligence by the non-moving party in asserting their claims and 2) prejudice to the party asserting the defense. Plaintiffs failed to create a material dispute about reasonable diligence, for the reasons given above. “The only substantive piece of evidence plaintiff has proffered to the contrary is an affidavit of a legal secretary who claims that successful image searches can take ‘days or weeks to complete,’ but that does nothing to explain why an over eight-year delay is reasonable here.” The court again pointed to plaintiffs’ “host” of other lawsuits. “[T]he extent to which plaintiffs’ likenesses have allegedly been misused is sufficient to put them on notice.”

And for prejudice, the original club owner died in 2018. “Had plaintiffs brought their claim sooner, that individual would have had the opportunity to present potentially salient details about his intent and the likelihood of confusion the images may have caused.” Also, plaintiffs relied on a 2023 survey; defendants argued that, if plaintiffs had sued earlier, “it would have been possible to assess this issue based on potential clientele at the time the posts were made rather than a decade later. That deterioration in the face of delay is precisely the kind of prejudice the First Circuit has found to be meaningful.”

Given the totality of the circumstances, the court found laches even assuming the infringement was willful. A claim brought more than eight years after the final Facebook post was such a “lengthy” delay that it was easier to find prejudice.