Toth Gray v. Harco, Inc.

CourtDistrict Court, District of Columbia
DecidedJune 17, 2024
DocketCivil Action No. 2022-1393
StatusPublished

This text of Toth Gray v. Harco, Inc. (Toth Gray v. Harco, Inc.) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Toth Gray v. Harco, Inc., (D.D.C. 2024).

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

TIFFANY TOTH GRAY, et al.,

Plaintiffs,

v. Case No. 22-cv-1393 (TSC)

HARCO, INC., et al.,

Defendants.

MEMORANDUM OPINION

Each of the ten Plaintiffs in this action is a “well-known professional model who earns

her livelihood modeling and licensing her Images to companies, magazines and individuals for

the purpose of advertising products and services.” Compl. ¶ 21, ECF No. 1. Defendants operate

Archibald’s Gentleman’s Club (“Archibald’s” or the “Club”), a strip club in Washington, D.C.,

and manage its social media accounts. Id. ¶¶ 6, 20. Plaintiffs allege that Defendants

misappropriated their images and used them in advertisements for the Club without Plaintiffs’

consent. They bring eight counts for violations of the Lanham Act and several common law

torts. Defendants moved to dismiss the Complaint in its entirety, ECF No. 11 (“Mot.”), and

Plaintiffs opposed, ECF No. 12 (“Opp.”). For the reasons set forth below, Defendants’ motion to

dismiss is GRANTED in part and DENIED in part.

I. BACKGROUND

The court assumes the truth of the facts alleged in the Complaint as follows. Atherton v.

D.C. Office of the Mayor, 567 F.3d 672, 681 (D.C. Cir. 2009). Plaintiffs earn their living

modeling and licensing their images to companies, magazines, and individuals. Compl. ¶ 21.

They have posed for magazines including Playboy, Maxim, GQ, Esquire, and others; appeared in

Page 1 of 24 various films, music videos, and television shows; modeled for international product lines and

fashion brands; and maintain large social media followings. Id. ¶¶ 28, 31, 34, 37, 40, 43, 46, 49,

52, 55, 58. Plaintiffs are selective in choosing the companies and brands they represent because

their careers in the modeling industry place high value on their good will and reputation. Id.

¶ 22. Each Plaintiff resides outside the District of Columbia. Id. ¶¶ 8–19.

Defendant Harco, Inc. operates Archibald’s Gentlemen’s Club in the District of

Columbia. Id. ¶¶ 1, 6. Plaintiffs claim the unnamed Defendants manage the social media

accounts for the Club and use those accounts to promote and attract customers. Id. ¶¶ 62–63.

From at least 2016 to 2017, Defendants sourced images from Plaintiffs’ social media pages and

altered them to create posts advertising the Club on the Club’s Facebook, Twitter, and Instagram

pages. Id. ¶ 23; Exs. A–K. Defendants altered Plaintiffs’ images to make it appear that they

worked at the Club, endorsed the Club, or were otherwise affiliated with the Club. Id. ¶¶ 29, 32,

35, 38, 41, 44, 47, 50, 53, 56, 59; Exs. A–K. None of the Plaintiffs have ever been employed by

the Club, hired to endorse or promote the Club, or received compensation from Defendants for

use of their images. Id. ¶¶ 30, 33, 36, 39, 42, 45, 48, 51, 54, 57, 60, 82, 83.

II. LEGAL STANDARD

“To survive a motion to dismiss, a complaint must contain sufficient factual matter,

accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556

U.S. 662, 678 (2009) (internal quotation marks and citation omitted). A claim is plausible when

the factual content allows the court to “draw the reasonable inference that the defendant is liable

for the misconduct alleged.” Id. Thus, although a plaintiff may survive a Rule 12(b)(6) motion

even where “recovery is very remote and unlikely,” the facts alleged in the complaint “must be

enough to raise a right to relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550

U.S. 544, 555–56 (2007) (internal quotation marks and citation omitted). Evaluating a 12(b)(6) Page 2 of 24 motion is a “context-specific task that requires the reviewing court to draw on its judicial

experience and common sense.” Iqbal, 556 U.S. at 679. The reviewing court may “consider

only the facts alleged in the complaint, any documents either attached to or incorporated in the

complaint and matters of which [the court] may take judicial notice.” E.E.O.C. v. St. Francis

Xavier Parochial Sch., 117 F.3d 621, 624 (D.C. Cir. 1997).

III. ANALYSIS

The court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331 because Plaintiffs

have stated claims under the Lanham Act, 15 U.S.C. § 1125(a)(1). Subject-matter jurisdiction

exists for the non-federal claims pursuant to 28 U.S.C. § 1332(a)(1) because the parties have

complete diversity and the amount in controversy exceeds $75,000.00. See Compl. ¶¶ 4, 6, 8–

19. The parties agree that District of Columbia law governs the common-law claims. See

Capitol Servs. Mgmt., Inc. v. Vesta Corp., 933 F.3d 784, 790 (D.C. Cir. 2019).

A. Right of Publicity (Count I)

The court construes Plaintiffs’ right of publicity claim as a claim for misappropriation.

The right of publicity protects an individual’s “exclusive right to publicize and benefit from the

value of [her] identity, reputation, and work.” Lane v. Random House, Inc., 985 F. Supp. 141,

145 (D.D.C. 1995). The District of Columbia does not recognize a common law tort for right of

publicity, but recognizes the tort of misappropriation of name or likeness, “which has been found

to be indistinguishable as a legal matter from infringement of right of publicity.” Sampedro v.

Anyado Grp., LLC, No. 22-cv-1402-BAH, 2023 WL 1398577, at *4 (D.D.C. Jan. 31, 2023)

(internal quotations omitted).

A defendant is liable for misappropriation where it “appropriates to his own use or

benefit the name or likeness of another.” Tripp v. United States, 257 F. Supp. 2d 37, 40 (D.D.C.

2003) (quoting Restatement (Second) of Torts § 652C); see also Doe v. Bernabei & Wachtel, Page 3 of 24 PLLC, 116 A.3d 1262, 1268 (D.C. 2015). “The common form of invasion of privacy under [this

rule] is the appropriation and use of the plaintiff’s name or likeness to advertise the defendant’s

business or product, or for some similar commercial purpose.” Restatement (Second) of Torts

§ 652C, cmt. b. “Incidental use . . . for a purpose other than taking advantage of a person’s

reputation or the value associated with his name will not result in actionable appropriation.”

Vassiliades v. Garfinckel’s, Brooks Bros., 492 A.2d 580, 592 (D.C. 1985).

Defendants argue that Plaintiffs’ misappropriation claim is barred by the statute of

limitations and the doctrine of laches, and that any alleged misuse of Plaintiffs’ images was

incidental. Mot. at 1–2.

i. Statute of Limitations “At the Rule 12(b)(6) stage, a court should not dismiss on statute of limitations grounds

unless the claim is time-barred on the face of the complaint.” Bradford v. George Wash. Univ.,

249 F. Supp. 3d 325, 334 (D.D.C. 2017) (internal quotations omitted). Still, “courts should

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