Opinion
99 Civ. 4342 (JSM).
April 2001
For Plaintiff: Edward Greenberg, Greenberg Reicher, LLP, 17th Floor New York, NY.
For Defendants: Michael A. Bamberger, Sonnenschein Nath Rosenthal, New York, NY.
For Third-Party Defendant: David M. Plouff Procopio, Cory, Hargreaves Savitch San Diego, CA. Brian Bielmann, Haleiwa, Hawaii.
MEMORANDUM OPINION AND ORDER
Jean Pelton ("Plaintiff") brings this action against Rexall Sundown, Inc. ("Rexall"), Advanced Research Products, and Richardson Labs ("Richardson") (collectively "Defendants") for violations of the Lanham Act Section 43(a), 15 U.S.C. § 1125(a), and New York Civil Rights Law Section 51 based on Defendants' use of her photograph on the packaging of two of their dietary supplement products. Defendants bring a third-party complaint for indemnity against Educorp, LLC and Gazelle Technologies, now known as Digitalis, Inc. (collectively "Third-Party Defendants"), alleging that the photograph at issue was obtained from a CD-ROM purchased from Third-Party Defendants. Defendants now move for summary judgment on Plaintiff's complaint and Third-Party Defendants move for summary judgment on Defendants' complaint.
For the reasons set forth below, Defendants' motion is granted and Third-Party Defendants' motion is denied as moot.
BACKGROUND
Plaintiff is a professional model whose photograph has appeared in several magazines, including the 1984 Sports Illustrated Swim Suit Edition, and in advertisements for consumer products, such as Speedo and Oil of Olay. In 1986, Plaintiff participated in a photo shoot with photographer Brian Bielmann ("Bielmann") for Surfing Magazine. The magazine later published four of these shots in its 1987 and 1988 Calenders. One of the photographs that Bielmann took during that session is the subject of this action.
Plaintiff signed two general releases authorizing Surfing Magazine and Bielmann to use the photographs. The first release, signed on July 28, 1986 stated:
I hereby irrevocably consent and authorize the use and reproduction by you, or anyone authorized by you, of all or any photographs that you have taken of me, for any purpose whatsoever, without further compensation to me.
(Nov. 30, 2000 Bamberger Decl. Ex. B.) At the bottom of this release, beneath Plaintiff's signature, appears a hand-written notation: "$300.00 Total amount for shots run in 87 calendar." (Nov. 30, 2000 Bamberger Decl. Ex. B.) Plaintiff signed a second release on October 3, 1986, in which she agreed to:
consent that the photographer, his legal representatives, successors and assigns, shall have the absolute right and permission to copyright, publish, use, sell, or assign any and all photographic portraits or pictures of me taken on these dates, whether apart from or in connection with, illustrative or written printed matter, story, or news item, or in reproduction thereof in color or otherwise.
(Bamberger Decl. Ex. C.) Both releases are typed on Surfing Magazine letterhead.
In 1989, Bielmann provided several photographs, including the photograph at issue in this action, to Rick Owens, the owner of Preferred Stock Photography, a stock photography agency located in Los Angeles, California. Mr. Owen thereafter sent the photograph along with a release to Third-Party Defendants, who included it on a CD-ROM that they released sometime between 1989 and 1991 entitled "Swimsuit Volume 1." According to Third-Party Defendants, advertisements for the CD-ROM included usage rights and limitations, and the CD-ROM itself contained a file called "About the Swimsuit CD-ROM" stating, among other things:
Limited commercial rights are granted for 20,000 and under press runs, at 1/4 page or smaller, inside pages only. The images may not be used with lewd lascivious, or degrading text. They may not be used for T-Shirts and calendars or used to advertise sexually explicit material. The images may not be placed on a BBS network or added to any other clip art collection. They may not be reused in any computer digital media or included in any software product for resale without the express permission of a publisher and photographer. Any other use must be authorized by contacting Preferred Stock at 808-638-5351.
(Plouff Decl. Ex. 2.) Defendants deny seeing any such limitations in advertisements or on any file on the CD-ROM.
Although Defendants were able to locate the packaging from their copy, the CD-ROM itself is missing. The actual catalog used to order the CD-ROM was not retained.
Rexall develops, manufactures, markets and sells vitamins, nutritional supplements, and consumer health products. In January 1998, Rexall acquired Richardson and its inventory of products, including CitraLean and Ultra CitraLean, which are marketed as dietary supplements and natural appetite suppressants. CitraLean was first sold to the public in 1993, and Ultra CitraLean was introduced in 1995. The label and product box for both products features a photograph of Plaintiff in a swimsuit on a beach. The photograph used in the packaging has been identified as one taken by Bielmann during the 1986 Surfing Magazine photo shoot. The photo at issue features Plaintiff sitting on a beach in a swimsuit with her arm blocking her forehead as if to shade her eyes from the sun.
The photograph was chosen for the packaging by Mitchell Irion, who was responsible for creating product concepts and artwork for Richardson. Irion had purchased the Swimsuit Volume 1 CD-ROM for the express purpose of finding a photograph to use on the CitraLean packaging. He decided to use the photograph of Plaintiff and represents that he relied on the packaging of the Swimsuit Volume 1 CD-ROM, which stated that it contained "200 model-released photographs . . . with unlimited reproduction rights." (December 22, 2000 Bamberger Decl. Ex. D.) Thus, the CitraLean and Ultra CitraLean products have been sold for several years with packaging that features Plaintiff's photograph. The products are sold in national retail chains such as General Nutrition Centers ("GNC").
At some point in time, Plaintiff learned from a friend that her image appeared on the Ultra CitraLean label. She thereafter filed a complaint against Defendants on or about May 7, 1999. In August 1999, Defendants filed a third-party complaint against Third-Party Defendants for indemnity based on Defendants' allegation that the photograph on the label was taken from the Swimsuit Volume 1 CD-ROM. Defendants move for summary judgment on three grounds:
(1) The Lanham Act is not applicable to Plaintiff's claims because the photograph does not indicate source or sponsorship of the products;
(2) Plaintiff's state law claims are barred by the one-year statute of limitations period under New York C.P.L.R. § 215; and
(3) Plaintiff executed broad written releases authorizing the use of the photograph at issue.
Plaintiff responds that:
(1) The Lanham Act is applicable to her claims because there is a likelihood of consumer confusion regarding Plaintiff's endorsement of the products;
(2) Plaintiff's state law claims are timely because Plaintiff filed her claim within one year of learning of the use of her photograph on Defendants' products; and
(3) The releases should be read as limited to use by Surfing magazine for editorial purposes.
DISCUSSION
I. Lanham Act ClaimSection 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), imposes liability for unfair competition on:
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. . . .
This section provides the statutory basis for false endorsement claims. See Albert v. Apex Fitness Inc., No. 97 Civ. 1151, 1997 WL 323899, at *1, (S.D.N.Y. June 13, 1997). In order to state such a claim, Plaintiff must establish that: (1) goods or services were involved, (2) there was an effect on interstate commerce, and (3) there was either a false designation of origin or a false description of the goods or services. See Allen v. National Video, Inc., 610 F. Supp. 612, 625 (S.D.N.Y. 1985).
Plaintiff's Lanham Act claim fails because she cannot establish the third element. The crucial determinant under the Lanham Act is a showing of likelihood of consumer confusion as to the source or sponsorship of the product. See Pirone v. MacMillan, Inc., 894 F.2d 579, 584 (2d Cir. 1990). Thus, Plaintiff must prove that her photograph on the CitraLean and Ultra CitraLean products misleads consumers into believing that she endorsed or produced the products. See Albert, 1997 WL 323899, at * 1. Although consumer confusion is usually a question of fact, claims "may be dismissed as a matter of law where the court is satisfied that the products or marks are so dissimilar that no question of fact is presented." Pirone, 894 F.2d at 584.
In Pirone, the Second Circuit Court of Appeals confirmed the district court's finding that Babe Ruth's heirs could not show confusion as to source or sponsorship of a baseball calendar which featured Babe Ruth on the cover along with the MacMillan mark. A similar conclusion is warranted here. There is nothing about the use of Plaintiff's photograph that implies her endorsement of the CitraLean and Ultra CitraLean products. Her name does not appear anywhere on the label, and the product does not appear in the photograph with her. Rather, she appears sitting on the beach and shielding her face from the sun. Such an image in no way suggests that Defendants attempted to trade on her recognizability in selling CitraLean or Ultra CitraLean.
Plaintiff correctly notes that the strength of her mark or name is a crucial factor in determining likelihood of consumer confusion. See Standard Poor's Corp. v. Commodity Exchange, Inc., 683 F.2d 704, 708 (2d Cir. 1982). Although Plaintiff characterizes herself as an internationally known model, there is no evidence that she is a recognizable celebrity. One appearance in a Sports Illustrated Swimsuit Issue in 1984 and some advertising work for well-known consumer products does not deliver celebrity status. A search of news databases in the last ten years yielded only approximately six articles that mention Plaintiff, usually as the companion of a former television actor. The fact that Plaintiff's photograph appeared on these labels for at least five years without her discovery suggests that Plaintiff may not be as recognizable as she represents.
There is simply no evidence that a consumer who sees this photograph is likely to recognize Plaintiff, let alone believe that she endorsed or sponsored the product, particularly because her face is partially covered by her arm. An ordinary consumer would view Plaintiff's image in a swimsuit on the label not as an indication of sponsorship, but as a reminder of the benefits of taking CitraLean or Ultra CitraLean. See Pirone, 894 F.2d at 585.
There is therefore no issue of material fact to preclude summary judgment on Plaintiff's Lanham Act claim.
II. The Statute of Limitations
New York Civil Rights Law Section 51 provides:
Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained . . . may . . . sue and recover damages for any injuries sustained by reason of such use. . . .
N.Y. Civ. Rights § 51. Actions brought pursuant to Section 51 are subject to a one-year statute of limitations. See N.Y. C.P.L.R. § 215(3). "The single publication rule, which holds that distribution of the offending publication gives rise to only one cause of action, applies to Section 51 claims. Under this rule, the limitations period runs from the first distribution of the offending item." Rostropovich v. Koch Int'l Corp., 94 Civ. 2674, 1995 WL 104123, at *7 (S.D.N.Y. Mar. 7, 1995) (citing Khaury v. Playboy Publ'ns., Inc., 430 F. Supp. 1342, 1344-46 (S.D.N.Y. 1977)); see also Castel v. Jean Norihiko Sherlock Corp., 552 N.Y.S.2d 212 (App.Div. 1990).
Defendants' products were distributed to national retail chains for sale to the public several years prior to the commencement of this action. Plaintiff had ample opportunity to discover the alleged violation of Section 51 before the statute of limitations expired. Although Plaintiff argues that the single publication rule does not apply to violations of Section 51 involving packaging, there is no authority for this argument.
In fact, Judge Keenan applied the single publication rule in the context of packaging in Rostropovich. See Rostropovich, 1995 WL 104123, at *7. Thus, Plaintiff's Section 51 claims are barred by the statute of limitations.
It appears that even if Plaintiff's state law claims were not barred by the statute of limitations, Plaintiff would not be able to sustain a claim under New York Civil Rights Law Section 51. In order to establish a violation of Section 51, Plaintiff must prove that her photograph was used for commercial or trade purposes without written consent. See N.Y. Civ. Rights § 51. Plaintiff's Section 51 claim appears to be precluded because she signed at least one broad release that consented to the use of the photograph at issue. See Wrangell v. C.F. Hathaway Co., 253 N.Y.S.2d 41, 42-43 (App.Div. 1964). While there is some dispute between Defendants and Third-Party Defendants regarding the existence of a file on the Swimsuit Volume 1 CD-ROM limiting the use of the photograph, a possible violation of the terms of use set by the corporation that created the CD-ROM would not negate Plaintiff's consent to the use of her photograph for any purpose whatsoever.
Because Defendants' motion for summary judgment is granted and Plaintiff's complaint is accordingly dismissed, Defendant's third-party complaint is also dismissed as moot. See Bragger v. Trinity Capital Enter. Corp., 30 F.3d 14, 16 (2d Cir. 1994).
CONCLUSION
For the foregoing reasons, Defendant's motion for summary judgment is granted and Plaintiff's complaint is dismissed. Defendant's third-party complaint is also dismissed as moot.
SO ORDERED.