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Albany Strip Club Must Face Carmen Electra Image Use Claims (3)

Jan. 29, 2020, 3:23 PMUpdated: Jan. 29, 2020, 9:45 PM

Carmen Electra and two other women who say an Albany, N.Y., strip club used their images in social media ads without permission can continue to pursue their claims, a federal court in New York said.

Electra, Lucy Pinder, and Irina Voronina all plausibly alleged that they are famous enough to sustain their case, based on media appearances and social media followings in the millions, the U.S. District Court for the Northern District of New York said Tuesday.

Many other jurisdictions have also allowed false endorsement claims by models against strip clubs for misusing their image. “It strikes me that the opinion is straightforward, well-reasoned, and in line with other cases on the issue,” said Susan Scafidi, professor, founder, and academic director of Fordham University School of Law’s Fashion Law Institute.

“And while I suspect that most judges would have ruled in the same way, it’s interesting to note that in this #metoo moment of women coming forward to assert claims for which society might have blamed the victims in a previous generation, the parties here are looking up to a woman on the bench,” Scafidi said. Judge Brenda K. Sannes wrote the opinion.

DiCarlo’s allegedly used pictures of the models to advertise events on Facebook and Instagram. One Facebook post used an image of Voronina in a devil costume to advertise “DiCarlo’s Gentlemen’s Club Sinners & Saints Halloween Weekend.”

The models sued the club under the Lanham Act’s false endorsement provision and New York state law.

DiCarlo’s argued that the models were “not sufficiently recognizable such that their appearance would confuse customers.” But the court said the models’ appearances in well-known magazines, television shows, and movies, and their significant social media followings—including over four million followers for both Voronina and Electra—was “more than sufficient to support the conclusion that their images carry some level of public recognition.” That was sufficient to support the Lanham Act claims, the court said.

In a related case, a Manhattan federal court allowed only Electra to pursue her case, dismissing 10 other models because they weren’t famous among the ad’s intended audience. These models also had millions of social media followers and appearances in television shows and ad campaigns, but only Electra convinced the court that she was famous enough for the ads to cause consumer confusion.

In the present case, the models “were careful to plead their fame beyond having followers on social media,” said Alan Behr, an IP partner at Philips Nizer LLP in New York. “It is likely that their complaint took advantage of learning from the unsuccessful complaints filed in cases in which the models were unable to show the necessary recognition.”

Behr noted that the ruling was on a motion to dismiss, where the models’ allegations were taken as true. The models have passed the “first hurdle” to prevent dismissal based “simply on the opening paperwork,” but they will still have to prove at trial that DiCarlo’s customers would likely recognize them and wrongly associate them with the club, Behr said.

‘Intent to Commercialize’

However, many states have found that models with resumes like Pinder’s and Voronina’s can sustain false endorsement claims. Some of these courts don’t require a showing of fame at all, only an “intent to commercialize” a persona. Cases involving similar groups of models have survived dismissal in federal courts in New Jersey, Illinois, and the Middle District of Florida. And 32 models won a collective $900,000 from a Miami swingers club on their Lanham Act claims in September in the Southern District of Florida.

“Lanham Act fame isn’t one size fits all,” said Eric Ball, a trademark litigation partner at Fenwick & West LLP in Mountain View, Calif. Ball noted that other courts have held that being connected to the Kardashians or having millions of app downloads wasn’t enough to establish fame in the Lanham Act trademark dilution context.

The court here also allowed the models to continue pursuing claims based on the unauthorized use of their photos in advertising, under New York law. The court rejected DiCarlo’s argument that the statute of limitations applied because the photos were published over a year before the complaint was filed. DiCarlo’s waived this argument when it didn’t raise it in the answer to the complaint, the court said.

“The fact that DiCarlo’s failed to raise the statute of limitations defense under New York privacy law is surprising, as the short, one-year period is often problematic for potential plaintiffs,” Scafidi said.

The court dismissed the models’ claims of deceptive business practices under New York law because they didn’t argue any “specific and substantial injury to the public interest over and above the ordinary trademark infringement.”

The Casas Law Firm PC represents the models. Bartlett, Pontiff, Steward & Rhodes PC represents DiCarlo’s.

The case is Pinder v. S. DiCarlo Inc., N.D.N.Y., No. 1:18-cv-00296, 1/28/20.

(Updated with additional comment in ninth and tenth paragraphs.)

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bloomberglaw.com

To contact the editors responsible for this story: Rob Tricchinelli at rtricchinelli@bloomberglaw.com; Nicholas Datlowe at ndatlowe@bloomberglaw.com

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