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Toth-Gray v. Lamp Liter, Inc.

United States District Court, N.D. Illinois, Eastern Division

July 31, 2019

TIFFANY TOTH-GRAY and EMILY SCOTT, Plaintiffs,
v.
LAMP LITER, INC. d/b/a LAMP LITER CLUB, Defendant.

          MEMORANDUM OPINION AND ORDER

          VIRGINIA M. KENDALL JUDGE.

         Plaintiffs 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.

         BACKGROUND

         Plaintiffs 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.)

         Scott 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.)

         Plaintiffs' 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.)

         Defendant 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.)

         DISCUSSION

         To 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).

         I. Lanham Act Claims

         Plaintiffs 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.

         To 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. 2016).

         In both 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 omitted).

         Lamp 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 ...


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