United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
VIRGINIA M. KENDALL JUDGE.
Tiffany Toth-Gray and Emily Scott are models. They bring this
action against Defendant Lamp Liter, a strip club in Ottawa,
Illinois, alleging that Lamp Liter used their images without
permission to promote the club. Plaintiffs bring claims under
the Lanham Act and the Illinois Right of Publicity Act, and
for negligence. Defendant moves to dismiss the Lanham Act
claims under Rule 12(b)(6), arguing that Plaintiffs are not
famous enough for their images to be protectable marks under
the Act. Defendant also moves to dismiss the IRPA and
negligence claims as time-barred. For the reasons stated
here, Defendant's motion [Dkt. 18] is granted in part and
denied in part.
Tiffany Toth-Gray and Emily Scott are professional models.
(Dkt. 1 ¶¶ 22-23.) They earn a living by modeling
and selling their images to various commercial entities,
which use the images to advertise, endorse, and promote
products and services. (Id. ¶ 28.) Gray holds
the title of Playboy Playmate and was named the
Playboy “Cyber Girl of the Month” for
May 2006. (Id. ¶ 50.) Gray has been featured in
various catalogs and magazines, including Super Street
Bike, Import Tuner, Sport Truck,
Iron Man, Seventeen, and Maxim.
(Id.) She has over 3.8 million Facebook followers,
over 1.2 million Instagram followers, and over 223, 000
Twitter followers. (Id.) In the modeling industry,
the number of social media “likes” or
“followers” is a strong factor in determining a
model's earning capacity. (Id.)
is a model and DJ based in Sydney, Australia and London,
England. (Id. ¶ 61.) She has been voted
“one of the world's sexiest women” by
multiple magazines in the United States, United Kingdom, and
Australia, has been featured on over 30 magazine covers,
including Maxim and FHM, and has appeared
in ten features for European editions of Playboy.
(Id.) Scott appeared in advertising campaigns for
Wonderbra and Lipton Iced Tea. (Id.) She appeared in
an episode of the hit television show Entourage, was
chosen to be a contestant on Dancing with the Stars
Australia, and has appeared on other reality television
shows. (Id.) Scott is also a touring DJ.
(Id.) She has headlined tours and festivals across
the world and appeared alongside well-known DJs and musical
artists, and has mixed high-profile compilations for major
record labels including EMI. (Id.) After completing
a 10-city DJ tour in Southeast Asia, Scott was chosen for the
cover of FHM Malaysia's March 2015 edition as
“Australia's hottest export.” (Id.)
Scott has over 1.3 Facebook followers. (Id.)
careers depend on their goodwill and reputations, which are
critical to establishing an individual brand, being selected
for modeling contracts, and maximizing earnings.
(Id. ¶¶ 29-33.) To that end, Plaintiffs
try to control the use and dissemination of their images and
are selective about which companies and brands they model
for. (Id. ¶¶ 34-37.)
Lamp Liter operates a strip club in Ottawa, Illinois, where
it engages in the business of selling alcohol and food in an
atmosphere where nude or semi-nude women entertain customers.
(Id. ¶¶ 24, 39.) Lamp Liter promotes its
business, events, and parties using Facebook and other social
media. (Id. ¶ 26.) On February 24, 2016, Lamp
Liter posted an image of Gray on its Facebook page with the
caption “WET YOUR WHISTLE WEDNESDAY: $8
Pitchers.” (Id. ¶ 52; see also
Dkt. 1-1.) On May 3, 2016, Lamp Liter posted an image of
Scott on its Facebook page with the caption “THIRSTY
THURSDAY: $2 drafts.” (Id. ¶ 63; see
also Dkt. 1-2.) Both images remain publicly posted on
Lamp Liter's Facebook page. (Id. ¶¶
52, 63.) Plaintiffs did not give Lamp Liter permission to use
their images. (Id. ¶¶ 57, 68.)
overcome a Rule 12(b)(6) motion, “a complaint must
‘state a claim to relief that is plausible on its
face.'” Adams v. City of Indianapolis, 742
F.3d 720, 728 (7th Cir. 2014) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007)). “A claim has
facial plausibility when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.”
W. Bend Mut. Ins. Co. v. Schumacher, 844 F.3d 670,
675 (7th Cir. 2016) (quoting Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009)). The Court accepts the complaint's
factual allegations as true and draw all permissible
inferences in Plaintiffs' favor. Id. However,
“[w]hile a plaintiff need not plead ‘detailed
factual allegations' to survive a motion to dismiss, she
still must provide more than mere ‘labels and
conclusions or a formulaic recitation of the elements of a
cause of action' for her complaint to be considered
adequate under [Rule] 8.” Bell v. City of
Chicago, 835 F.3d 736, 738 (7th Cir. 2016) (quoting
Iqbal, 556 U.S. at 678).
Lanham Act Claims
bring false advertising and false endorsement claims under
the Lanham Act, 15 U.S.C. § 1125(a). Lamp Liter moves to
dismiss the Lanham Act claims under Rule 12(b)(6), arguing
that Plaintiffs are not famous enough to render their images
and likenesses as protectable marks under the Act.
bring a false-endorsement claim under the Act, Plaintiffs
must show that Lamp Liter's Facebook posts likely caused
consumers to believe that Plaintiffs endorsed Lamp Liter.
Jordan v. Jewel Food Stores, Inc., 743 F.3d 509, 522
(7th Cir. 2014); see also Woodard v. Victory
Records, Inc., No. 11 C 7594, 2016 WL 1270423,
at *9 (N.D. Ill. March 31, 2016.) Similarly, to bring a
false-advertising claim under the Act, Plaintiffs must show
that Lamp Liter “made a material false statement of
fact in a commercial advertisement and that the false
statement deceived or had the tendency to deceive a
substantial segment of its audience.” Muzikowski v.
Paramount Pictures Corp., 477 F.3d 889, 907 (7th Cir.
2007); see also, e.g., Martin v. Wendy's
Int'l, Inc., 183 F.Supp.3d 925, 933 (N.D. Ill.
cases, the inquiry focuses on confusion by the consumer.
See Bd. of Regents of Univ. of Wis. Sys. v. Phoenix
Int'l Software, Inc., 653 F.3d 448, 455 (7th Cir.
2011); Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d
813, 819-20 (7th Cir. 1999). In trademark infringement cases,
courts consider the following factors to determine the
likelihood of confusion: “(1) the similarity between
the marks in appearance and suggestion; (2) the similarity of
the products; (3) the area and manner of concurrent use; (4)
the degree of care likely to be exercised by consumers; (5)
the strength of the plaintiff's mark; (6) any evidence of
actual confusion; and (7) the intent of the defendant to
“palm off” his product as that of another.”
Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir.
2015). In false endorsement cases like this one,
“[c]ourts analyze a variety of factors to determine
whether the use of a mark creates the likelihood of
confusion, including the level of plaintiff's recognition
among the segment of the society for whom defendant's
product is intended, the relatedness of plaintiff's fame
or success to defendant's product, and defendant's
intent in selecting the plaintiff.” Stayart v.
Yahoo! Inc., 651 F.Supp.2d 873, 883 (E.D. Wis. 2009),
aff'd, 623 F.3d 436 (7th Cir. 2010) (citations
Liter's argument focuses entirely on the strength of
Plaintiffs' marks. Lamp Liter argues that Plaintiffs'
claims fail because they are not famous enough to have a
protectable interest in their image and likeness. According
to Lamp Liter, the posts did not use Plaintiffs' names
and their claims are thus “based solely [on] a face and
body.” (Dkt. 19 at 3-4.) And because “[n]either
Plaintiff is Michael Jordan, ” images of their faces
and bodies “do not function as a source identifier,
” and so there is no way a consumer could be confused
if they do not view the images as identifiers in the first
place. Id. (citing Jord ...