ALANA SOUZA, AKA ALANA CAMPOS, BROOKE BANX, BROOKE TAYLOR-JOHNSON, JACLYN SWEDBERG, JAIME EDMONDSON-LONGORIA, JESSICA HINTON, TIFFANY TOTH-GRAY, URSULA SANCHEZ, AKA URSULA MAYES, Plaintiffs-Appellants, v. EXOTIC ISLAND ENTERPRISES, INC., DBA MANSION GENTLEMEN‘S CLUB & STEAKHOUSE, KEITH SLIFSTEIN, Defendants-Appellees, EXCLUSIVE EVENTS & PROMOTIONS INC., DBA THINK SOCIAL FIRST, Third-Party-Defendant.
Docket No. 21-2149-cv
UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
May 19, 2023
August Term, 2022
Argued: December 2, 2022
LYNCH, NARDINI, and MENASHI, Circuit Judges.
Plaintiffs-Appellants, a group of current and former professional models, appeal from a judgment of the United States District Court for the Southern District of New York (Karas, J.) granting summary judgment against them on a variety of claims arising from the use of their images in social media posts promoting a “gentlemen‘s club” operated by Defendants-Appellees. On appeal, Plaintiffs argue, among other things, that the district court misapplied this Court‘s framework for evaluating the likelihood of consumer confusion in the context of a Lanham Act false endorsement claim, misconstrued Supreme Court guidance constraining the Lanham Act‘s reach in the false advertising context, and applied the wrong statute of limitations to Plaintiffs’ state law right of publicity claims. We disagree. We conclude that the district court properly granted summary judgment on Plaintiffs’ federal claims and the majority of their state law claims, and permissibly declined to exercise supplemental jurisdiction over their remaining claims. We therefore AFFIRM the judgment of the district court.
JOHN V. GOLASZEWSKI, Casas Law Firm, P.C., New York, NY, for Plaintiffs-Appellants.
MICHAEL KOLB, O‘Connor & Partners, PLLC, Kingston, NY, for Defendants-Appellees.
This appeal concerns several claims brought by Plaintiffs-Appellants Alana Souza (a/k/a Alana Campos), Brooke Banx, Brooke Taylor-Johnson, Jaclyn Swedberg, Jaime Edmondson-Longoria, Jessica (a/k/a Jessa) Hinton, Ursula Sanchez (a/k/a Ursula Mayes), and Tiffany Toth-Gray (together, “Plaintiffs“) – all current or former professional models – against Defendants-Appellees Exotic Island (“Exotic“) and Keith Slifstein (together, “Defendants“). Those claims arise from the basic undisputed allegation that Defendants, through a third-party vendor, used images of Plaintiffs without their permission in social media posts promoting a “gentlemen‘s club” operated by Defendants.
After the parties cross-moved for summary judgment, the United States District Court for the Southern District of New York (Kenneth M. Karas, J.) granted summary judgment in Defendants’ favor. Specifically, it concluded that (1) Plaintiffs’ false endorsement claims, as supported by the evidentiary record on summary judgment, were foreclosed by our decision in Electra v. 59 Murray Enters., Inc., 987 F.3d 233 (2d Cir.), cert. denied, 142 S. Ct. 563 (2021); (2) their false advertising claims were founded upon injury that either fell outside the zone of interests protected by the Lanham Act, or that was unsubstantiated by the record;
We agree with the district court on all counts, and therefore AFFIRM its judgment in full.
BACKGROUND
Although the parties cross-moved for summary judgment below, because this appeal concerns the district court‘s grant of Defendants’ motion, we construe the record in the light most favorable to Plaintiffs. See Heublein, Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir. 1993). The factual backdrop of this case, however, is simple and largely undisputed.
I. Factual Background
A. The Parties
Exotic and its president, Slifstein, operate Mansion Gentlemen‘s Club & Steakhouse (“Mansion“) in Newburgh, New York. Plaintiffs are or were professional models whose pictures appeared without their consent, and without compensation, on social media sites associated with Mansion. The Instagram and
Each Plaintiff works or has worked as a professional model, promoting her “image, likeness and/or identity . . . for the benefit of various clients, commercial brands, media and entertainment outlets.” E.g., Joint Appendix (J.A.) 63. In substantially identical declarations, Plaintiffs have testified that because they “rely on [their] professional reputation[s] to book modeling and advertising jobs,” their reputations are “critical” to the opportunities they are offered, and they therefore “have spent considerable time and energy” protecting and policing their images and reputations, and carefully negotiating their modeling fees based on “informed assessment[s]” of any given job‘s effect on their brands. E.g., id. 63-64.
Plaintiffs have enjoyed varying levels of success and visibility in their modeling careers. Several have appeared in magazines, advertising campaigns, television episodes, and films. Some are former Playboy Playmates, including five (Swedberg, Campos, Hinton, Edmondson-Longoria, and Toth-Gray) who
Plaintiffs’ links to New York State are fleeting at best. None have lived in New York, many have never even worked in New York, and several others have made just a single modeling appearance in the state. Only Mayes recalled making multiple promotional appearances in New York, between 2005 and 2009, though she never lived in the state.
Most of the Plaintiffs no longer work as full-time models. Banx and Taylor-Johnson both stopped modeling around 2014, followed soon thereafter by Edmondson-Longoria and Swedberg in, respectively, 2015 and 2017. Mayes has worked as a model only sporadically since 2014. Campos began working primarily as a real estate agent in 2015. Hinton and Toth-Gray continue to do modeling work, alongside other professional activities.
B. The Social Media Posts
Published between 2014 and 2018, each of the posts at issue set revealing photographs of Plaintiffs against advertising copy linked thematically to each
Defendants claim to have taken all possible steps to remove the posts once they were made aware of Plaintiffs’ grievances. However, as of July 2020, at least one (depicting Campos) remained live on Mansion‘s Instagram page. Defendants attribute their failure to remove the image to password difficulties that hampered their access to that Instagram account.
During discovery, each Plaintiff was asked in an interrogatory to identify “any and all jobs and/or work lost as a result of the allegations asserted in the Complaint.” E.g., J.A. 329. None identified any specific lost opportunities. Instead, each gave the following response, verbatim:
[I]t is a well-known fact that prospective clients have no duty to disclose to the model their reasoning for why the model was denied an endorsement opportunity. It is also a widely known fact that on the outset of creating a highly coveted endorsement deal, clients and/or their advertising agencies will conduct due diligence of models in advance of contacting a model to discuss an endorsement opportunity. As a result of these common industry practices, Plaintiff has not been contacted directly by a third party with notice of a refusal to do business or the rescission of an offer to hire due to Defendant‘s use of Plaintiff‘s image.
E.g., id.
A. This Litigation
Plaintiffs filed their Complaint in October 2018. The Complaint asserted several causes of action: (1) false advertising and (2) false endorsement under
In August 2021, the district court denied Plaintiffs’ motion and granted Defendants’ motion for summary judgment (and along with it, Defendants’ motion to exclude portions of Buncher‘s report), dismissing the bulk of Plaintiffs’
B. Similar Lawsuits Brought by Plaintiffs’ Counsel
Meanwhile, less than a week after the parties had filed their summary judgment motions in February 2021, another panel of this Court decided Electra v. 59 Murray Enters., Inc., 987 F.3d 233 (2d Cir. 2021). In Electra, a group of professional models – including several of the Plaintiffs in this case, represented by the same counsel – sued a group of defendants who, also through a third-party vendor, had allegedly used those models’ photographs to promote the defendants’ strip clubs. Id. at 240-41. The Electra plaintiffs asserted several of the same causes of action as those asserted here. Id. at 242. For reasons discussed below, we affirmed in relevant part the district court‘s grant of summary judgment for the defendants on most plaintiffs’ false endorsement and right of publicity claims. Id. at 239, 251, 257-58 (also overturning portions of the district court‘s summary judgment order for reasons not pertinent here).
Electra was just one of a group of such cases brought in the Southern District of New York by the same counsel on behalf of different groups of models, including many of the same plaintiffs. See Edmondson v. RCI Hosp. Holdings, Inc., No. 16-CV-2242-VEC, 2021 WL 4499031 (S.D.N.Y. Oct. 1, 2021);
DISCUSSION
Plaintiffs present five basic arguments on appeal, spread across their three remaining causes of action. First, they contend that the district court erred in evaluating their false endorsement claims by (1) oversimplifying its inquiry into the strength of Plaintiffs’ marks by focusing on recognizability alone; (2) wrongfully excluding certain expert evidence; and (3) bungling its overall balancing of the Polaroid likelihood of confusion factors. Next, Plaintiffs argue that the district court (4) adopted too restrictive a take on the zone of interests protected by the Lanham Act. Finally, they challenge the district court‘s decision (5) to apply a one-year statute of limitations to Plaintiffs’ right of publicity claims.
We address, and reject, Plaintiffs’ arguments below.
I. Standards of Review
A. Summary Judgment, Generally
“We review a district court‘s grant of summary judgment de novo, resolving all ambiguities and drawing all permissible inferences in favor of the nonmoving party.” Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 83 (2d Cir. 2020). Although “[t]he party seeking summary judgment bears the burden of establishing that no genuine issue of material fact exists,” Vivenzio v. City of
B. Likelihood of Confusion
Our standard of review has historically been tougher to pin down in Lanham Act cases involving our eight familiar Polaroid factors – discussed in further detail below – which measure the likelihood of consumer confusion in a given case. The source of that tension is that, although we have always held that the district court‘s balancing of those factors should be reviewed de novo, some of our past cases have “purported to afford ‘considerable deference’ to district courts’ findings ‘with respect to predicate facts underlying each Polaroid factor,‘” Tiffany, 971 F.3d at 85, quoting Playtex Prods., Inc. v. Ga.-Pac. Corp., 390 F.3d 158,
But although our stance may have wobbled over the years, recent cases have solidified our view that, “[i]nsofar as the determination of whether one of the Polaroid factors favors one party or another involves a legal judgment – which it often does – we must review that determination de novo.” Car-Freshner Corp. v. Am. Covers, LLC, 980 F.3d 314, 327-28 (2d Cir. 2020) (internal quotation marks omitted). To that end, we have cautioned that past cases hinting at “deference” to the district court “should not be read to suggest that a district court deciding a motion for summary judgment in a trademark infringement case has greater discretion than it would have in a non-trademark case.” Tiffany, 971 F.3d at 85 (internal quotation marks and alteration omitted) (adding that “we have never purported to expand a district court‘s license to make factual findings at summary judgment beyond those very limited circumstances in which the uncontroverted evidence and the reasonable inferences to be drawn in the nonmoving party‘s favor support only a single conclusion” (emphasis in original) (internal quotation marks omitted)).
C. Other Matters
Finally, we review for abuse of discretion a district court‘s decision to admit or exclude expert evidence. Restivo v. Hessemann, 846 F.3d 547, 575 (2d Cir. 2017) (adding that the district court‘s decision “is to be sustained unless manifestly erroneous” (internal quotation marks omitted)). The same is true of a district court‘s decision to decline to exercise supplemental jurisdiction over state law claims. Motorola Credit Corp. v. Uzan, 388 F.3d 39, 56 (2d Cir. 2004).
II. False Endorsement
use[] in commerce [of] any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person[.]
To prevail on a so-called false endorsement claim under
- strength of the trademark;
- similarity of the marks;
- proximity of the products and their competitiveness with one another;
- evidence that the senior user may bridge the gap by developing a product for sale in the market of the alleged infringer‘s product;
- evidence of actual consumer confusion;
- evidence that the imitative mark was adopted in bad faith;
- respective
quality of the products; and - sophistication of consumers in the relevant market.
Kelly-Brown, 717 F.3d at 307 (internal quotation marks omitted); see Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Those factors are neither exhaustive nor applied mechanically. See Kelly-Brown, 717 F.3d at 307; Brennan‘s, Inc. v. Brennan‘s Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004). No single factor is dispositive; rather, each is evaluated “in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product.” Brennan‘s, 360 F.3d at 130 (internal quotation marks omitted).
A. Strength of Mark
The district court held that the first Polaroid factor – strength of mark – favored Defendants. We agree.
1. Recognizability as Strength
Plaintiffs challenge that conclusion on a few fronts. First, they argue that the district court misstepped by treating recognizability as the “bottom line” barometer for strength of mark in false endorsement claims of this sort. Appellant‘s Br. 21-28.
As a general matter, Plaintiffs are correct that we have long recognized that the strength of a mark typically “encompasses two different concepts, both of which relate significantly to likelihood of consumer confusion.” Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 147 (2d Cir. 2003) (emphases added). The first is “inherent distinctiveness,” id., which looks to the mark itself, divorced from consumers’ actual knowledge of it, and classifies marks on a spectrum ranging from stronger “fanciful” or “arbitrary” marks down to progressively weaker “suggestive,” “descriptive,” or “generic” marks, see Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993).
Plaintiffs run aground, however, when they suggest that we may not focus on recognizability in this context. They insist that such an approach cannot be reconciled with the Supreme Court‘s rejection, in Two Pesos, Inc. v. Taco Cabana, Inc., of this Court‘s old rule declaring “protection for trade dress unavailable absent proof of secondary meaning.” 505 U.S. 763, 772 (1992). But the Supreme Court‘s problem with our old rule was not that it permitted secondary meaning (i.e., acquired distinctiveness) to supplant inherent distinctiveness. To the contrary, the Supreme Court expressly reiterated that distinctiveness can arise, independently, in either form: “An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired
And therein lies the wisdom underpinning the Electra panel‘s approach. The concept of inherent distinctiveness is simple enough to apply where, say, one restaurant sues another for coopting its “festive” dining setup, “decorated with artifacts, bright colors, paintings and murals,” as in Two Pesos, 505 U.S. at 765, or even when the subject matter is human names, as in, e.g., 815 Tonawanda Street Corp. v. Fay‘s Drug Co., 842 F.2d 643, 648 (2d Cir. 1988); Paco Sport, Ltd. v. Paco Rabanne Perfumes, 234 F.3d 1262 (2d Cir. 2000) (summary order). It is more awkward to apply when it effectively interrogates how much one human being does, or does not, physically resemble another. And that includes, as this case vividly illustrates, inquiries concerning the extent to which one unnamed model,
The usual criteria for inherent distinctiveness, in any event, have little application here. In a false endorsement case like this one, the “mark” in question is the identity of the purported endorser herself. Bondar v. LASplash Cosms., No. 12-CV-1417-SAS, 2012 WL 6150859, at *5 (S.D.N.Y. Dec. 11, 2012) (“Courts in this Circuit have recognized that celebrities have a trademark-like interest in their name, likeness, and persona that may be vindicated through a false endorsement claim under the
The Electra panel‘s focus on recognizability thus serves the purposes of trademark law in the false endorsement context.4 It properly calibrates strength as a function of the extent to which the purported endorser‘s identity and goodwill can be linked to the product being sold. It is also consistent with our precedent recognizing that “even a common name mark may warrant protection as a strong mark if it has achieved distinctiveness in the marketplace,” but emphasizing that “if the mark is not recognized by the relevant consumer group,
Finally, the adoption of that approach in Electra is, of course, binding on us, as it was binding on the district court. And the district court faithfully and correctly applied it.
2. Lack of Evidence of Recognizability
The district court also correctly evaluated the evidence relevant within that framework. First, it permissibly excluded Plaintiffs’ putative expert testimony as unreliable; it then correctly concluded that because Plaintiffs were left with next to no evidence of recognizability, the strength-of-mark Polaroid factor weighed in Defendants’ favor.
As to the expert evidence, Plaintiffs argue that the district court abused its discretion in excluding as unreliable testimony from Plaintiffs’ expert, Martin Buncher. We disagree. “In deciding whether a step in an expert‘s analysis is unreliable, the district court should undertake a rigorous examination of” multiple factors, including “the method by which the expert draws an opinion,” and “should only exclude the evidence if the flaw is large enough that the expert lacks good grounds for his or her conclusions.” Amorgianos v. Nat‘l R.R. Passenger Corp., 303 F.3d 256, 267 (2d Cir. 2002) (internal quotation marks omitted). Here,
Deprived of that evidence, Plaintiffs were left with precious few indicia of recognizability. The district court correctly recognized that what remained7 fell well short of establishing that any Plaintiff was sufficiently recognizable to establish a strong mark.
B. Actual Confusion
The district court next concluded, after excluding more of Buncher‘s testimony,8 that the actual confusion Polaroid factor likewise favored Defendants.
Plaintiffs once again challenge the court‘s exclusion analysis. But once again, the district court was well within its discretion to determine that methodological shortcomings counseled against admitting Buncher‘s testimony as to actual confusion. First, the court observed that the structure of the excluded portion of the survey only allowed respondents to give their impressions of all of the images of all of the Plaintiffs, and therefore did not permit respondents to differentiate between specific images and/or specific Plaintiffs. Second, the court underscored that the survey neither provided respondents with a “don‘t know” option nor instructed them “not to guess,” and therefore did not allow respondents any recourse or guidance if they were unsure about the correct answer. S.A. 27-29.
Because that permissibly excluded evidence represented the only meaningful evidence9 of actual confusion in Plaintiffs’ arsenal, the district court
Moreover, we note that even if consumers were hoodwinked into believing that the “girls” in the posts were, in fact, the “girls” working at Mansion, thus giving rise to a plausible deceptive trade practices claim, see Electra, 987 F.3d at 259, that is not at all equivalent to a trademark claim founded upon the premise that one party has “exploit[ed] the goodwill [another party] has created for its trademark.” Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 745 (2d Cir. 1998). A generic misconception that the anonymous, unrecognized models in the posts are in fact the same models who work at Mansion inflicts the same injury on a consumer irrespective of any goodwill those models have cultivated in their own “marks,” because that misconception does not rely upon such goodwill in the first place. In such a scenario, the consumer is harmed because the anonymous “attractive” models from the advertisements that the consumer expects to see upon arrival at Mansion are not actually there, not because the consumer‘s expectations were at all shaped by the models’ own identity or reputation or esteem or any of the other elements embedded in the concept of “goodwill” protected under the
Finally, the district court correctly held that the bad faith Polaroid factor also weighed in Defendants’ favor. Once again, Electra is directly and indistinguishably on point. In that case, as in this one, the defendant companies “used third-party contractors to create the advertisements and publish them on the Clubs’ websites and social media.” Electra, 987 F.3d at 241. And in that case, as in this one, there was no evidence that the defendant clubs ever “asked [the third-parties] to use a photograph of a specific person, instead requesting photographs that would complement the advertised event or the purpose of a particular webpage.” Id. That was enough at the summary judgment stage for the Electra panel to award the bad faith Polaroid factor to the defendants. The same is true here.
D. Balancing the Polaroid Factors
Plaintiffs’ final false endorsement argument is that the district court erred in how it balanced the Polaroid factors in the aggregate. We disagree.
We start with one aspect of the district court‘s Polaroid balancing that Plaintiffs do not specifically target, but that is nonetheless woven into the portions they do challenge. In this case, the district court focused its analysis on
That approach is discouraged – if not necessarily proscribed – in this Circuit. Although it was once our position that district courts need not “slavishly recite the litany of all eight Polaroid factors in each and every case,” Orient Exp. Trading Co. v. Federated Dep‘t Stores, Inc., 842 F.2d 650, 654 (2d Cir. 1988), we have since charted a different course. In Natural Organics, for example, we acknowledged that legacy, but observed that “our most recent cases on this issue confirm” the opposite. Natural Organics, 426 F.3d at 579-80 (vacating a bench trial judgment in part because the district court “did not discuss” several Polaroid factors despite “considerable evidence” having been presented at trial on those factors). That more recent perspective dates back to Judge Cabranes‘s opinion in Arrow Fastener, which explained that “it is incumbent upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why.” Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 400 (2d Cir. 1995) (reversing a bench trial judgment for other reasons).
There is good reason for that. On appeal, we weigh the Polaroid factors de novo based in large part upon the district court‘s presentation and culling of the record, albeit not in actual deference to its conclusions at the summary judgment stage. See Tiffany, 971 F.3d at 85. Accordingly, where a district court has punted on factors that it deems irrelevant for reasons that we cannot discern – or where it has erroneously analyzed one factor and neglected to address others (relegating those other factors, in all likelihood, to appellate afterthoughts) – the appeal “will generally result in a costly and avoidable remand in order to elicit findings on the other Polaroid factors” in the first instance. Natural Organics, 426 F.3d at 579-80; see
That does not mean, however, that a district court‘s judgment must inevitably be vacated wherever it neglects to account for all eight Polaroid factors. To be sure, such a failure is risky, and may well undermine our ability to conduct adequate appellate review, thus necessitating a remand. In rare cases, though, the weight of binding precedent may obviate the need for a complete Polaroid analysis. See Natural Organics, 426 F.3d at 580 (“In an appropriate case, this Court may undertake a full Polaroid balancing without the benefit of findings on each Polaroid factor.“).
This is such a case. Here, the district court directly modeled its approach after Electra. In that case, faced with effectively identical issues and facts, the panel held that the “relevant” Polaroid factors “include[d], inter alia, the strength
The district court in this case followed suit. Applying what it gleaned to be Electra‘s implicit lesson that, in this context, those three factors alone may be dispositive, it granted summary judgment to Defendants based on its determination that each of those factors weighed in Defendants’ favor. We cannot fault a district court for its reasonable adherence to recent, directly-on-point, binding precedent constructed upon substantially indistinguishable facts. On appeal, Plaintiffs do not present, and we do not discern, any reason to suggest that the other Polaroid factors not explored by the district court weighed more
In any event, Plaintiffs do not urge us to vacate the district court‘s grant of summary judgment and to remand for fuller consideration on these (or any) grounds; rather, they seek outright reversal of that judgment (or, in the alternative, certification of a state law question to the New York Court of Appeals, as discussed below). They have therefore waived any argument for such a remand. See Norton v. Sam‘s Club, 145 F.3d 114, 117 (2d Cir. 1998) (“Issues not sufficiently argued in the briefs are considered waived and normally will not be addressed on appeal.“).
But Plaintiffs’ initial concession swallows the argument it precedes: we have indeed long instructed that “the evaluation of the Polaroid factors is not a mechanical process where the party with the greatest number of factors weighing in its favor wins.” RiseandShine Corp. v. PepsiCo, Inc., 41 F.4th 112, 124 (2d Cir. 2022), quoting Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 584 (2d Cir. 1993). And even setting that point aside, Plaintiff‘s argument is foreclosed in this specific context by Electra, which held under effectively identical circumstances that the same three factors were sufficient to definitively tilt the Polaroid balance at the summary judgment stage. Electra, 987 F.3d at 257-58; see also RiseandShine, 41 F.4th at 124 (“Weak marks are entitled to only an
We therefore affirm the district court‘s grant of summary judgment in Defendants’ favor as to Plaintiffs’ false endorsement claims.
III. False Advertising
The district court also correctly granted summary judgment to Defendants on Plaintiffs’ false advertising claims.
Section 43(a) of the
use[] in commerce [of] any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which . . . in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person‘s goods, services, or commercial activities[.]
To prevail on a false advertising claim, a plaintiff must establish that the message at issue is “(1) either literally or impliedly false, (2) material, (3) placed in interstate commerce, and (4) the cause of actual or likely injury to the
Looking to the Supreme Court‘s decision in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), the district court held that Plaintiffs had established no evidence of any injury falling within the zone of interests protected by the
Instead, it conditioned statutory protection upon two requirements: (1) that a plaintiff‘s injury fall within the “zone of interests” protected by the
Turning to the proximate cause requirement, the Lexmark Court explained that although in some sense “all commercial injuries from false advertising are derivative of those suffered by consumers who are deceived by the advertising,” liability under the
We have had little occasion to apply that guidance. Although we have construed Lexmark‘s broader teachings in other contexts, see, e.g., Am. Psychiatric Ass‘n v. Anthem Health Plans, Inc., 821 F.3d 352, 359 (2d Cir. 2016); Moya v. United States Dep‘t of Homeland Sec., 975 F.3d 120, 130 (2d Cir. 2020), we have applied Lexmark in just a few cases actually involving the
Addressing that question now, we conclude that far from undermining our precedent, Lexmark reinforces it. Lexmark is entirely consistent, for instance, with our holding in Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247 (2d Cir. 2014),11 that (1) a viable false advertising claim requires the plaintiff to have been “injured as a result of the misrepresentation, either by direct diversion of sales or by a lessening of goodwill associated with its products,” id. at 255 (internal quotation marks omitted); and (2) although such injury may be “presumed” from a direct competitor‘s “false comparative advertising claim,” in all other cases, a plaintiff must present some affirmative “indication of actual injury and causation,” id. at 259 (internal quotation marks omitted). All of that jibes with Lexmark, which similarly requires plaintiffs to demonstrate “economic or reputational injury” proximately caused by the alleged false advertisement, 572 U.S. at 133, and similarly does not limit protection to direct competitors only, id. at 136. Nor,
importantly, does it foreclose courts from granting a presumption of injury to direct competitors while requiring others to present evidence of injury and causation. See id. at 138-39; Merck, 760 F.3d at 259.12We are thus bound by Lexmark and Merck alike. And the upshot of that binding authority as applied to this case is that if Plaintiffs are in direct competition with Defendants, and if Defendants’ false advertising implicated Plaintiffs in some way, then injury and proximate cause are presumed. If not, both must be affirmatively shown. Here, there is no evidence that Plaintiffs—professional models who have brought this lawsuit precisely because they object to the suggestion that they are even associated with Defendants’ marketplace—directly compete with Defendants. Unsurprisingly, then, Plaintiffs concede that “perhaps” they do not directly compete with Defendants. Appellants’ Br. 41. Instead, they insist that they have affirmatively established injury cognizable under the Lanham Act and proximate causation.
They are mistaken. Plaintiffs claim two injuries: (1) that they may have lost out on work opportunities due to the reputational hit from being linked with a “gentlemen‘s club“; and (2) that they were deprived of the revenue they would typically expect to have received directly from Defendants for an authorized use of their images. Both theories miss the mark.
The first purported injury type would likely satisfy Lexmark‘s requirements, if only there were any evidence that such an injury actually occurred in this case. In Plaintiffs’ own words, their “uncontradicted testimony is that their association with a strip club was potentially devastating to their careers.” Appellants’ Br. 42 (emphasis added). That may well be possible, but there is no evidence that anything of the sort actually happened. Plaintiffs concede that, as far as they know, no third party has ever “refus[ed] to do business or [rescinded] an offer to hire due to Defendant‘s use of Plaintiff‘s image.” E.g., J.A. 329. And even if it is true, as Plaintiffs aver, that this ignorance is to some degree attributable to the customary industry practice not to tell a model why they did not receive a job offer, Plaintiffs have made no attempt to present other evidence conceivably available to people in their position. For example, they admit that there is nothing in the record to suggest that anyone
To the contrary, Plaintiffs conceded at oral argument that their only evidence of actual injury is tied to their claim that each Plaintiff “lost the income she should have been paid had Defendants operated through legal channels and paid her for her appearance in their advertisements.” J.A. 1922; see, e.g., id. 68-69. Unfortunately for Plaintiffs, this second injury type—which sounds in trademark infringement and in theft of services—fails to check any of Lexmark‘s boxes. It does not constitute “reputational” injury, nor does it flow “from the deception wrought by the defendant‘s advertising,” nor is there any reason to believe that it would cause consumers (even assuming that term encompasses purchasers of
The district court was therefore correct to grant summary judgment to Defendants on Plaintiffs’ false advertising claims.
IV. Right of Publicity
Finally, the district court correctly determined the majority of Plaintiffs’ right of publicity claims to be time-barred, and permissibly declined to exercise supplemental jurisdiction over the remaining timely claims.
A. Statute of Limitations
The district court held that these claims are subject to New York‘s one-year statute of limitations for any “violation of the right of privacy under section fifty-one of the civil rights law,”
The only portion of this holding that Plaintiffs challenge on appeal is the applicability of the one-year statute of limitations itself. Urging us either to reverse or, in the alternative, to certify the question to the New York Court of Appeals, they argue that
Certainly, Plaintiffs are correct that those two rights are in some ways conceptually distinct. In general, privacy rights protect “individuals who have not placed themselves in the public eye . . . from the embarrassment of having their faces plastered on billboards and cereal boxes without their permission.” Jim Henson Prods., Inc. v. John T. Brady & Assocs., Inc., 867 F. Supp. 175, 188 (S.D.N.Y. 1994). The interests protected are personal: individuals’ “dignity and peace of mind,” id., with damages “designed primarily to compensate for injury to feelings,” Electra, 987 F.3d at 255 (internal quotation marks omitted). By contrast, publicity rights generally protect the “commercial value that attaches to [the] identities” of persons who do place themselves “in the public eye.” Jim Henson, 867 F. Supp. at 188. Publicity rights are, in that sense, property-like in nature. See
But none of that has any bearing on the applicable statute of limitations in this case. To the extent that New York law recognizes a right of publicity, that right is “encompassed” under the state‘s statutory right of privacy; it has no other source. See Stephano v. News Grp. Publications, Inc., 64 N.Y.2d 174, 183 (1984) (“[T]he ‘right of publicity’ is encompassed under the Civil Rights Law as an aspect of the right of privacy, which, as noted, is exclusively statutory in this State . . . “); Darden v. OneUnited Bank, 128 N.Y.S.3d 640, 642 (2d Dep‘t 2020) (“[T]here is no common-law right of publicity [under New York law].“). Consequently, there is no basis for Plaintiffs’ attempt to construe the language of
For their part, Plaintiffs cite no New York authority applying, in the statute of limitations context, the privacy/publicity distinction at the heart of their argument. Nor do they identify any New York authority actually applying to any claim brought under any aspect of
district court correctly concluded that all but a few of Plaintiffs’ right of publicity claims were time-barred.
B. Supplemental Jurisdiction
After dismissing most of Plaintiffs’ state law claims as untimely, the district court declined to exercise supplemental jurisdiction over the remaining, timely,
CONCLUSION
We have considered Plaintiffs’ other arguments and conclude that they are without merit. Thus, for the foregoing reasons, we AFFIRM the judgment of the district court.