On July 14, 2017, a federal trial court ruled on an interesting issue: could models and actresses, whose popularity on social media was a strong factor in determining their earning capacities, maintain a lawsuit under the Lanham Act against a “swingers club” that used their photos without consent? In a case where social media played a prominent evidentiary role, the court permitted the models’ claim to proceed, and denied the defendants’ motion to dismiss. (Lancaster v. The Bottle Club, LLC, Civ. No. 8:19-cv-634-T-33JSS (M.D. Fla. July 14, 2017) (2017 WL 3008434).
The plaintiffs in this case were 20 models and actresses, many of whom “have substantial followings on social media.” The plaintiffs stated that the number of their social media followers was “’a strong factor in determining the model’s popularity, and, thus, earning capacity.’” The models also stated that they needed to choose carefully which products and services to advertise or endorse so as to enhance (and not harm) their reputations. Note that none of the models had any registered trademarks in their images or likenesses.
The defendants run a “swingers club” and allegedly used at least one photo of each of the plaintiffs in order to promote the club on social media. The plaintiffs claimed that the ads caused consumer confusion that the models were endorsing the club, resulting in injury to their “[i]mages, brands and marketability.”
The models sent a cease and desist letter to the defendants, with a demand for compensation for the use of the photos. The defendants refused to pay, so the plaintiffs sued on several grounds, including state law claims for right of publicity but also for violation of the federal trademark law known as the Lanham Act. The defendants moved to dismiss the lawsuit, claiming that the plaintiffs failed to state a claim.
Lanham Act Claim
The defendants claimed that the plaintiffs’ images were not protectable marks under the federal Lanham Act (15 U.S.C. § 1125(a)) because the images were not performing a “trademark” function of designation.
The court disagreed, and found that the plaintiffs were not seeking to claim trademark rights in every image, but rather were claiming that the defendants’ use of particular photos was a false endorsement of the defendants’ club.
The court found that the Lanham Act not only protected registered trademarks but also unregistered marks “including identities.” The models asserted that “’each Plaintiff’s persona is inseparable from her brand [such] that the use of the same or similar images and likeness by defendants constitutes a false representation by defendants their goods or services, i.e. swinger activities, come from the source of Plaintiff’s brand.’”
The court concluded that the plaintiffs alleged sufficient facts to state a claim for relief under the Lanham Act. Specifically, the court found that the infringed marks were “their own images and likenesses and, to show the degree of protection warranted for these marks, they allege their extensive work history in the modeling industry and their numbers of followers on social media.” In addition, the court found that many of the models used the same methods of advertising as the defendants: social media.
Most “right of publicity” cases are brought under state laws and in state courts. Here, the fact that the individuals had “personal brands” and could point to specific images allegedly impermissibly used by defendants, led this court to conclude that a Lanham Act claim could proceed. As a result, at least at this early stage of the case, the plaintiffs can remain in federal court with their Lanham Act case.