287 F. Supp. 3d 200
E.D.N.Y2018Background
- Eight professional models sued Summit Entertainment Corp. and Phillip Tricolla alleging defendants altered and used their images in social-media advertisements for a strip club without consent, seeking injunctive relief, damages, and fees.
- Plaintiffs pleaded two claims in the amended complaint: false endorsement under § 43(a) of the Lanham Act and deceptive practices under New York General Business Law § 349.
- Defendants moved to dismiss under Rule 12(b)(6); the magistrate judge recommended granting in part and denying in part (R&R), allowing Lanham Act claims and most § 349 claims to proceed but striking Lanham Act punitive damages and finding some state claims time-barred.
- Defendants objected to parts of the R&R (principally the § 349 holdings and individual liability of Tricolla); the district court reviewed de novo the objections and otherwise for clear error.
- The district court: denied dismissal of the § 43(a) Lanham Act claims (allowing claims against Summit and Tricolla to proceed), struck Lanham Act punitive damages, but rejected the R&R on § 349 and dismissed plaintiffs’ § 349 claims without prejudice because mere consumer confusion is insufficient harm under New York law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of Lanham Act (§ 43(a)) claim | Plaintiffs allege false endorsement via use of altered images; sufficient to state claim | Defendants sought dismissal but did not contest the magistrate's recommendation at this stage | Denied — Lanham Act claims survive dismissal; claims may proceed against Summit and Tricolla individually |
| Punitive damages under Lanham Act | Plaintiffs sought punitive damages | Defendants argued punitive damages are unavailable under the Lanham Act | Granted — punitive damages stricken as unavailable under the Lanham Act |
| Sufficiency of NYGBL § 349 claim (non-consumer plaintiffs) | § 349 covers deceptive conduct like false endorsement; consumer confusion suffices as consumer-oriented harm | § 349 requires harm to consumers or public interest beyond ordinary consumer confusion; confusion alone insufficient | Granted in part for defendants — § 349 claims dismissed without prejudice for failure to allege public-oriented harm beyond confusion |
| Individual liability of Tricolla under Lanham Act | Plaintiffs allege Tricolla is principal with operational control over advertising; thus a "moving, active, conscious force" | Defendants argued pleadings lacked factual basis tying Tricolla to wrongful acts | Denied — allegations that Tricolla controlled advertising plausibly infer individual liability and survive Rule 12(b)(6) |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard: factual allegations must state a plausible claim)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must be plausible, not merely speculative)
- DePinto v. Ashley Scott, Inc., 222 A.D.2d 288 (N.Y. App. Div. 1995) (Section 349 requires harm posing significant risk to public interest; consumer confusion alone insufficient)
- Oswego Laborers' Local 214 Pension Fund v. Marine Midland Bank, N.A., 85 N.Y.2d 20 (1995) (§ 349 requires consumer-oriented conduct with broader impact on consumers)
- Securitron Magnalock Corp. v. Schnabolk, 65 F.3d 256 (2d Cir. 1995) (§ 349 gravamen must be consumer injury or harm to public interest)
- Erie R.R. Co. v. Tompkins, 304 U.S. 64 (1938) (federal courts must apply state substantive law)