A federal court ordered three New York strip clubs to stop using actress Carmen Electra’s image in promotional materials, but 10 less famous co-plaintiffs weren’t so lucky.
Electra won a permanent injunction barring The New York Dolls Gentleman’s Club, Private Eyes Gentlemen’s Club, and Flashdancers Gentlemen’s Club from using her image. Electra won no money with her injunction because she failed to prove her image produced any profits for the clubs or any losses for herself, the court said in its summary judgment.
Electra was the only plaintiff who demonstrated that her personal brand was recognizable enough to win a false endorsement claim under federal trademark law, the U.S. District Court for the Southern District of New York ruled. The 11 women together sued the clubs for using dozens of their images in promotional materials without permission.
The Dec. 3 decision demonstrates that the Lanham Act, which governs trademark law, requires consumers to recognize a trademark in order to create confusion—including when that trademark is a persona.
The clubs conceded that they used 37 images of the women without their consent, meeting the Lanham Act’s requirement of a misrepresentation. That left the question of whether that misrepresentation would likely confuse customers, the court said.
A trademark’s strength, evidence of actual customer confusion, bad faith by infringers and consumer sophistication all factor into establishing likelihood of confusion, the court said.
Electra, an actress who made $5 million modeling from 2009 to 2012 alone, “offered persuasive evidence of the strength of her mark.” But the other plaintiffs “failed to cite even one example of actual recognition” for their work as actresses and endorsement models, the court said.
The plaintiffs also failed to demonstrate bad faith because they offered no evidence the clubs knew that third-party contractors hired to manage their online presence used unlicensed images, the court said. The clubs removed the images after the suit was filed, the opinion noted.
The clubs convinced the court to ban testimony from two proposed experts who supposedly could establish confusion and damages. One, a modeling agent, made misrepresentations and false assumptions to calculate fair market value of the images, the court said.
The other witness created a survey for gentlemen’s club patrons to show consumers would think the models agreed to promote the clubs and represented the “lifestyle to which the club is oriented.” The court cited “manifold” flaws in the survey, including misleading or ambiguous questions and a lack of options for respondents to express uncertainty. The author conceded the survey shows a model’s identity is not a major factor in driving club business as long as she is attractive, the court said.
The clubs also prevailed over allegations of deceptive trade practices and defamation.
The women brought separate state law claims for likeness misappropriation, with different requirements and path to damages. But many of the images were time-barred under that law because they were published more than a year before the women filed the lawsuit. In other cases, the models signed releases relinquishing their rights to the images, the court said.
Judge Naomi Reice Buchwald wrote the opinion.
Orans Elsen Lupert & Brown LLP represented the models. Lewis Brisbois Bisgaard & Smith LLP represented the clubs.
The case is TIFFANY TOTH, GEMMA LEE, JESSA HINTON, BROOKE TAYLOR, JESSE GOLDEN, LINA POSADA, SHEENA LEE WEBER, HEATHER RAE YOUNG, RACHEL KOREN, SABELLA SHAKE, URSULA MAYES, and CARMEN ELECTRA, Plaintiffs, - against - 59 MURRAY ENTERPRISES, INC., d/b/a NEW YORK DOLLS GENTLEMEN?S CLUB, BARRY LIPSITZ, AAM HOLDING CORPORATION, d/b/a PRIVATE EYES GENTLEMEN?S CLUB, ANITA MICELI, JAY-JAY CABERET, INC., d/b/a FLASHDANCERS GENTLEMEN?S CLUB, and MARSHA LIPSITZ, Defendants., 2019 BL 2078, S.D.N.Y., No. 15-8028, 1/3/19