I have previously (over) shared why, in the early 2000s, my younger self considered Carmen Electra to be the luckiest person on planet Earth. My older, wiser self continues to admire Electra, but for an entirely different reason. Electra has been on something of a crusade. She and a group of other models and actors have brought a series of lawsuits against strip clubs across America that have been using their likenesses without permission to advertise their adult entertainment offerings. (See this post.)

Earlier this month, one of these cases made it to the Second Circuit. The defendants are the owners and operators of strip clubs located in New York, including FlashDancers Gentlemen’s Club, which, according to its website, is "The #1 Gentlemen's Club in New York City." (No substantiation for this claim is proffered.) Between 2013 and 2015, the clubs published ads on their websites and social channels that incorporated photos of Electra and ten other plaintiffs. The photos - which many would describe as sexy, but the Second Circuit described as "prurient" - came from old ad campaigns in which the plaintiffs had appeared as models (including for a lingerie brand, a dating service, and a costume company). The clubs did not get permission from the plaintiffs or from the owners of the copyright in the photos (presumably the advertisers on whose behalf the photos were taken or, possibly, the photographers). The plaintiffs sued, alleging that the use of their likenesses violated their statutory right of privacy and publicity under New York Civil Rights Law §§ 50-51, constituted false endorsement under Section 43 of the Lanham Act, constituted a deceptive trade practice under New York General Business Law Section 349(h), and constituted libel under New York law.

The court's decision addresses a number of interesting issues. In this post, I want to focus on only one: could the strip clubs escape liability under New York Civil Rights Law based on the fact that the plaintiffs had signed broad releases when they were hired to appear in the original ad campaigns?

New York recognizes a right to prevent the appropriation of one’s name or likeness by statute only. Under New York Civil Rights Law § 50, it is a misdemeanor to use "for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person." Section 51 provides a private right of action for damages and injunctive relief if a plaintiff can demonstrate: (i) use, by the defendant, of the plaintiff’s name, portrait, picture, or voice, (ii) within the state of New York, (iii) for purposes of advertising or trade, and (iv) without plaintiff’s written consent.

The district court granted summary judgment to the clubs after finding that the plaintiffs had entered into comprehensive releases granting to the advertisers broad, assignable, usage rights to the photos in which they appeared. By so doing, the district court reasoned, the plaintiffs had released all of their proprietary rights to the photographs and could not object when they were used by others, even for advertising purposes.

The releases that some of the plaintiffs signed were, indeed, broad. For example, plaintiff Gemma Lee had granted to Dreamgirl Lingerie and “its legal representatives and assigns, the exclusive and absolute right and permission ... to purchase, own, assign, license, transfer, sell, distribute, copyright, use, reuse, publish, republish, exhibit, display, produce and reproduce, print and reprint” the photograph, “or to authorize others to do any of the foregoing, in any and all media now existing or hereafter developed, and in any and all forms or formats of distribution.” In addition, the release expressly authorized use “for any commercial or noncommercial purpose whatsoever."

Nevertheless, the Second Circuit reversed the district court. At the outset, the Court noted that the clubs "had no legal rights under the releases." The clubs were not parties to the releases. Nor were the clubs third party beneficiaries since they could not plausibly argue that the releases were intended for their benefit. And, because the clubs had used the photographs without permission from the advertisers, there was no argument that the clubs were licensees under the releases.

In addition, the Second Circuit held that the broad releases that the plaintiffs had signed in favor of the advertisers "did not constitute written consent [under § 51] for all others to use their images for purposes of advertising or trade." The court drew a distinction between proprietary rights in the photographs (i.e., under copyright law) and the statutory rights that the plaintiffs were attempting to vindicate in their lawsuit (i.e., right of publicity under New York law). There is no question that releases divested the plaintiffs of all proprietary interests they may have had in the photos vis a vis the entire world; had they sued the clubs for copyright infringement, the release would have been a complete defense. (We can put aside the question of whether the models' contributions during the photo shoots was likely to qualify as copyrightable subject matter). However, the statutory rights protected by section § 51 do not work the same way. The court noted that "written consent in favor of one party does not allow others to use an image for trade or advertising," Here, the releases granted broad usage rights to the advertisers and their licensees. Since the clubs were not licensees, the clubs' use of the plaintiffs' likenesses did not fall within the scope of the releases. The court cautioned that the result might have been different had the clubs licensed the photos from the advertisers: "the releases could provide a defense in an action against the releasees or those who could assert lawful use by reason of assignment or license" (emphasis supplied).

Unfortunately, none of this matters for Electra. The Second Circuit affirmed the district court's dismissal of the claims brought by Carmen and four of the other plaintiffs on statute of limitations grounds. Claims under Section 51, claims must be brought within one year. Carmen and the other four had waited too long.

Electra v. 59 Murray Enterprises, Inc., 2021 WL 438900, __ F.3d __ (2nd Cir. Feb 9, 2021)