In September 2020, nearly 50 models filed suit against Moda Operandi (“Moda”) and Condé Nast (the parent company to Vogue) alleging that Moda and Vogue used their images from runway shows for the purpose of selling merchandise on Moda’s platform without written consent or compensation to the models. Plaintiffs alleged that the use of their photos might confuse or deceive consumers into thinking that the model was endorsing Vogue’s or Moda’s services. Plaintiffs also alleged that Moda and Condé Nast violated their right of publicity.

A year later, the Southern District of New York dismissed all of plaintiffs’ false endorsement claims against Condé Nast, most false endorsement claims against Moda, and most of plaintiffs’ right of publicity claims. Interestingly, the court noted that while this case was a classic right of publicity case, plaintiffs turned it into a false endorsement case in “a blatant effort to federalize a state law claim” in order to extend the reach to people with no rights under New York law.

The court held that the First Amendment barred false endorsement claims against Condé Nast. Under the Rogers test (which restricts Lanham Act liability to protect First Amendment interests), the use of a trademark is actionable only if the use of the mark or other identifying material (1) has no artistic relevance to the work and (2) is explicitly misleading as to the source or content of the work. Here, the court found that Vogue’s Runway Editorial (where the images were published) was an expressive work, even though it also had a commercial purpose (i.e., encouraging individuals to purchase clothing). Further, the court found that (1) the photographs were “artistically relevant” to the work as they were used in a document that summarized the season’s new fashions and (2) the use of the photos were not explicitly misleading as to the source or content of the work; they only represented that a model wore a particular designer’s clothing in a publicly viewed runway show and the viewer could purchase that clothing at Moda.

However, the court held that plaintiffs’ false endorsement claims against Moda could not be dismissed based on constitutional grounds, because Moda’s purpose was to display the pictures on its website to sell clothing, meaning its purpose was explicitly commercial. The court did dismiss some false endorsements claims against Moda, because (1) some models did not appear on Moda’s website and (2) others were mostly unidentifiable in the images.

Finally, plaintiffs brought right of publicity claims under New York state law, which prohibits the use for advertising or trade purposes the use of the name and likeness of a person without having obtained prior written consent. However, because most of the plaintiffs were not domiciled in New York State, the court held that they could not maintain a cause of action under New York law. The fact that the models worked in New York did not change the analysis. The court did not dismiss the right of publicity claims for the models who were residents of New York.

Takeaway: Not all states protect a right of publicity and attempts to gain a backdoor entry to state law protections will likely not work. This will limit the pool of potential plaintiffs bringing right of publicity claims and lessen a brand’s exposure based on where talent resides.

In addition, keep in mind that an expressive work need not be exclusively expressive to garner constitutional protections. If a brand creates work that has both commercial and expressive aspects to it, the company may still be protected from false endorsement liability if the purpose of the work, as a whole, is expressive.