If you or your club has been hit with a civil lawsuit from a firm representing a “stock photo model,” attorney Luke Lirot has some promising news. He enjoyed a victory with one such case in Florida, and explains why, in many cases, these suits can be defeated.
Since late 2015, and with increasing frequency up to the current date, a number of individuals have filed lawsuits against a vast number of gentlemen’s clubs throughout the country for the alleged “unauthorized” use of their “image” in various promotional materials used by the clubs. The plaintiffs are allegedly “professional models” who work in print, internet, movies and television. Some were “Suitcase girls” on “Deal or No Deal,” adding the all-important feminine pulchritude quotient to a show predicated on greed and luck. Others have been in a variety of magazines, like the pages of GQ and Maxim. Still others have been Playmates of the Month, going back some 7 to 10 years. Simply stated, these plaintiffs are among the thousands of ambitious young ladies, trading on their looks (not that we can criticize that), trying to “make it big” in some entertainment or media endeavor. Unfortunately, it would appear that their efforts to popularize their “pretty face” has been exploited to ensnare gentlemen’s clubs.
Based on an internet search of most of these plaintiffs, and a description of their prior work outlined in the numerous complaints I have seen, it appears that they have appeared in a number of different promotional positions, some as feature spreads, some strictly for advertising and other endeavors. All have otherwise publicly appeared semi-nude. The primary claims that these women make is that the subject gentlemen’s clubs “misappropriated” the images of these various female plaintiffs in promoting their gentlemen’s club. The images were allegedly distributed via the internet and otherwise as a marketing tool, allegedly without payment or recognition to each of the named plaintiffs. These women (through their attorneys) argue that the clubs use of the images “conveyed the impression” that these women either work for, endorse, or are otherwise affiliated with the subject gentlemen’s clubs.
Even though it is entirely clear that the photographs were professionally taken, the plaintiffs’ attorneys have argued that it makes no difference who may own the copyright to these photographs, or that the photographs were obtained from a “stock photo repository,” where for a small subscription fee or “per photograph” fee, graphic artists and advertisers can find a generic photo of, for example, a “Sexy Santa” to promote a Christmas Party. The argument made is that, it is not the actual “photo” that the plaintiffs are suing over, but the use of their “image” to promote something they would not dream of promoting, i.e. “adult entertainment.” That is like saying the milk you drank was unacceptable, not because of its taste, but because of its color. Some distinctions and “separations” simply make no sense, and this is one of those situations.
To buy into the plaintiffs’ argument, one would have to say they were disappointed that Colonel Sanders did not serve them their chicken, or that the “Moon over My ’Hammy” omelet at Denny’s that the waitress brought to the table didn’t match the picture in the menu. This is simply ridiculous! Also, there does not appear to be any action taken against the actual photographers who took these photographs (and presumably own the rights to the photographs, either through copyright or a signed release) for putting them into “distribution.” Amazingly, even in light of the frustrating assertion of many claims that have “no basis in law or fact,” and are, quite honestly, stretching many legal theories beyond the breaking point, these lawsuits are being filed against gentlemen’s clubs at a pace to rival the Fair Labor Standards Act cases that plague the gentlemen’s club industry.
These cases have filed in both State Court and Federal Court, and include (in the Federal cases) allegations of violations of the Lanham Act. This Act, passed by Congress in 1946, was designed to set out the remedies that can be sought when a trademark is infringed. Various provisions forbid the importation of goods that infringe registered trademarks, and restrict, through the use of injunctions and damages, the use of false descriptions and trademark dilution.
Another component is the “likelihood of confusion” standard for infringement of an unregistered trademark or trade dress, and courts still frequently refer to the provision as “Section 43(a),” which states:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce 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—
(A) 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, or
(B) 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, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1)(A) is often used when false or misleading statements are alleged to have hurt a consumer or business. The claimant must prove that a false or misleading statement was made in commerce and that the statement creates a likelihood of harm to the plaintiff.
15 U.S.C. § 1125(a)(1)(B) is often used when false or misleading statements are alleged to have hurt a business.
The disconnect with this argument is that the mere use of a “pretty face” does not cause confusion, and simply does not lead to the “mistake” that some patron of some gentlemen’s club is either going to believe that one specific “pretty face” will be at any club he attends, or that the proverbial “eye candy” portrayed by any plaintiff is engaged in the same type of endorsement that say, a Tiger Woods would have appearing in a golf glove ad. The use of the “pretty face” to market everything from eye cream to washing machines to caskets (yes, I have seen such an ad!) just does not work in a setting where, since there is no “control” over what particular “dancer” may or may not be present at any particular club at any particular time, the “portrayal” is neither true nor false, it is just a reflection of this country’s overwhelming use of generic female beauty to market anything and everything.
The plaintiffs have overwhelmingly speculated, with zero basis to do so, that some idiot will think this “pretty face” will be at a particular club, or that the “pretty face” endorses the club. To make such a supposition is to impugn club patrons to a level below imbecile!
Often, it is unknown if any graphic artist paid for any of the photographs used by purchasing the photographs through stock photography websites, such as shutterstock.com and/or gettyimages.com. No actual website has been identified as the source of the photos. Some stock photography websites do not allow for the photograph to be used for “adult entertainment,” but that beef would be between the stock photo website and any subscriber, not the model. Since all of the photographs were taken as part of a professional model “shoot,” and the custom and practice for any professional “shoot” requires a release of all rights to those photos to the photographer, the “talent” depicted simply have no ownership rights or other rights to assert in connection with the photos, thus lacking standing to bring any action for the “use” of these same photographs, under any theory.
We have argued that, based on the lack of any reference in the complaint to any “copyright” holder, plaintiffs, absent proof of copyright ownership, do not have standing to bring this action. Because these “photographers” are not named, we have sought dismissal of the complaints for multiple reasons, including: (a) lack of subject matter jurisdiction as the actions are preempted by the Copyright Act; (b) failure to join an indispensable party, namely, the copyright holder of the photographs; (c) failure to state a cause of action due to a lack of standing and lack of rights in the photographs.
Plaintiffs are seeking damages in the millions of dollars. To debunk that, we are in the process of propound discovery to plaintiffs to learn the details of their claim, including each plaintiffs’ employment history, earning potential, the extent to which plaintiffs claim their images were used and any agreements for the sale of the subject photographs to photo stock companies.
During a recent conversation with defense counsel from other firms in Florida and New York that are handling similar claims, we believe that plaintiffs’ counsel is using facial recognition software to locate and identify alleged “misuse” of the subject images. This means that for some model that appeared years ago in some fleeting internet blurb or Facebook post, your club could be on the hook for being the recipient of one of these lawsuits.
In spite of this onslaught, there is some light at the end of the tunnel. In one case involving the a club in South Florida, during the oral argument on my Motion to Dismiss, the Judge dismissed, completely, several counts and, stated that “the plaintiffs shall be required to specify in the amended complaint whether the plaintiffs are basing their claims on the ‘ownership’ of the photographs attached as exhibits to the complaint, or whether they assert ‘ownership’ of the images within the photographs, and distinguish between ‘images’ and ‘photographs’ in the claims asserted. The court indicated it was going to dismiss the Florida Deceptive and Unfair Trade Practices Act, and the unfair competition claims with prejudice, a rare accomplishment for an initial Motion to Dismiss hearing. Also conceded was the defamation claim: “this count has been dismissed with prejudice by plaintiffs, and will not be repled.” Apparently, the plaintiffs’ counsel were so concerned that there might be an adverse order neutralizing many of their “counts,” they dismissed the entire complaint.
The bottom line is that every club owner should have some knowledge of where his or her promotional materials are coming from. That being said, while there may or may not be some value to having one’s image used to promote a gentlemen’s club, no model, Playboy Playmate or otherwise, can assume that modern society will think less of their “pretty face” simply because a lawful business, which everyone knows is protected by the First Amendment, and for which vast resources have been expended to make the club a first-class location, has “damaged” a model with by using her “pretty face” to promote any club. In any event, these cases are being litigated extensively, there are valid defenses to many of the claims, and I would respectfully suggest that they be defended to the greatest extent possible. No one wants to be “taken” by just another “pretty face.”
Luke Lirot has represented countless clients in the realm of First Amendment litigation, as well as a wide variety of other types of litigation, including Constitutional Law, Civil Rights, Criminal Law, Entertainment Law, Land Use Law and Personal Injury. Lirot is a past president of the First Amendment Lawyers’ Association. He can be reached at firstname.lastname@example.org or by calling (727) 536-2100.