By Matthew Hersh, J.D.
But a Lanham Act claim against an e-commerce retailer, along with a common law privacy claim against both defendants, will go forward for now.
A lawsuit alleging that Vogue magazine violated the Lanham Act by using the images of 43 runway models to endorse its e-commerce retail partner would have to be dismissed under free speech principles, the federal district court in Manhattan has ruled. But the court held that the false endorsement claims brought by 25 of the models, while unlikely to succeed in the long run, could go forward for now against the e-commerce retailer. Moreover, both Vogue and its retail partner will continue to face publicity rights claims under New York privacy laws from 17 of the models (Champion v. Moda Operandi, Inc., September 22, 2021, McMahon, C.).
The case arises out of Vogue’s relationship with Moda Operandi, an e-commerce website that sells designer fashions. In September 2019, Vogue published on its website an editorial feature about the Spring 2020 “Ready-to-Wear” collections—styles designed to be sold off the rack, as opposed to made to order—of more than 50 fashion designers. The feature offered extensive multimedia coverage of each designer’s latest fashion show, consisting of a cover photo, text, and a photo slideshow from the runway. Superimposed upon the cover photo and each individual runway photo was a prominent red box with the words “Shop This Look” (or in the case of the cover photo, “Buy on Moda Operandi”) which, when selected, took the visitor away from Vogue.com and onto the corresponding purchase page within the e-commerce website.
The present litigation began when 43 fashion models featured on the website sued Vogue and its e-commerce partner for violations of the federal Lanham Act as well as their right of publicity under state law, a species of privacy law that is widely litigated in the New York courts. The models did not question their appearance in Vogue’s online coverage of the fashion shows. However, they contended that the superimposition of “Shop This Look” buttons over their images from the runway—along with the corresponding purchase links—was designed to deceive customers into thinking that they endorsed the e-commerce website. Vogue and its e-commerce partner moved to dismiss the complaint, leading to this opinion.
Lanham Act claims against Vogue. The court, in a typically colorful opinion by recently retired chief judge Collen McMahon, held that the Lanham Act claims against Vogue were barred by the First Amendment. Under Second Circuit doctrine, first articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)—a case in which Ginger Rogers alleged that the title Ginger and Fred created the false impression that she was involved in the movie—expressive works are protected from the Lanham Act as long as the defendant’s use of the mark is “artistically relevant” to the work and not “explicitly misleading.” The editorial feature was an expressive work, the court reasoned, despite the clearly commercial purpose of the e-commerce link, because the link made up only a small part of coverage that was otherwise expressive—“a work of fashion journalism that, like every fashion magazine, happens to contain advertisements.” Vogue’s use of the photographs had an artistic purpose, meanwhile, because it was “impossible to imagine the . . . editorial without any photographs of the runway shows that are being described and critiqued.” And Vogue’s superimposition of purchase links over the models’ photos was not explicitly misleading because it suggested only that the models wore a particular item of fashion and that the item could be purchased by following the link, and “[t]hese are not misrepresentations – they are true facts.”
The claims of many of the models also failed for the independent reason that it was simply “implausible” that any visitor to the Vogue website would be confused. Photos of six of the models appeared on individual designer cover pages with a superimposed logo that read “Buy on Moda Operandi.” But the remaining 37 models appeared only on slideshow pages with a superimposed logo reading “Shop This Look.” Because nothing in that logo contained even the name of the e-commerce retailer, no consumer could plausibly be confused. As the court put it, “[n]o reasonable factfinder could infer that a consumer who was browsing through one of the Vogue Runway Editorial slideshows decided to click on ‘Shop This Look’ because she thought the model wearing the outfit she liked had anything to do with Moda. And that is the end of any Lanham Act claim against Conde Nast.”
Lanham Act claims against the e-commerce retailer. Although the court dismissed the Lanham Act claims against Vogue, it allowed some of the claims against the e-commerce retailer to proceed. These claims were based not on photos of the models on Vogue’s website, but on photos of the models that were visible to a user once he or she clicked through to the e-commerce retailer’s website. Thus, as they were not part of Vogue’s editorial coverage, the First Amendment did not apply. Nonetheless, not all claims survived. Six of the models did not appear on the e-commerce website at all, and another 11 appeared without their faces visible. As to the remaining 26 models, however, the question was closer. The use of the models’ photos on the website plausibly misrepresented, at least based on the current pleadings, that the models worked for the e-commerce retailer—although the argument was “highly unlikely to succeed” on the eventual merits. As to the likelihood of confusion, all of the models except one were prominent enough to be recognizable by consumers, and in light of the fact that the retailer cropped some of the model’ faces and not others, it was at least plausible that the retailer might have intended to capitalize on the recognizability of certain of those models. Thus, the claims of these models would survive for now.
Right of publicity claims. The court issued a similarly split decision on the right of publicity claims, retaining some and dismissing others. The claims of 26 of the plaintiffs were required to be dismissed because the models were not New York residents. As to the remaining 17 plaintiffs, the publicity claims against the e-commerce retailer clearly survived—the retailer did not even challenge them—but the claims against Vogue presented a closer procedural question. The right of publicity claims were brought in federal court on the basis of supplemental jurisdiction, as they were paired with federal Lanham Act claims. With no remaining federal claim against Vogue, however, there was no strong basis for retaining federal court jurisdiction over the state law claims, as there was “no particular federal interest in overseeing claims under a New York State law that applies only to New York State domiciliaries.” However, a Lanham Act claim did remain against the e-commerce retailer, and the 17 remaining plaintiffs had brought identical publicity claims against both defendants. Thus, for reasons of judicial economy, albeit with “some reluctance,” the court retained supplemental jurisdiction over the publicity rights claims against Vogue.
The case is No. 1:20-cv-07255-CM.
Attorneys: Edward Charles Greenberg (Edward C. Greenberg, LLC) for Abby Champion. Edward Henry Rosenthal (Frankfurt Kurnit Klein & Selz, PC) for Moda Operandi, Inc. Adam Ivan Rich (Davis Wright Tremaine LLP) for Advance Publications, Inc. and Advancea Magazine Publishers Inc.
Companies: Moda Operandi, Inc.; Advance Publications, Inc.; Advance Magazine Publishers Inc.
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