On March 1, 2023, the United States District Court for the Northern District of Georgia entered an order denying the motion of defendant Kreyol Essence Inc. (Kreyol) to dismiss a Lanham Act false advertising count, as well as other claims, pleaded by plaintiff Madelynne Boykin.
The main takeaway from this ruling is that unauthorized use of another's likeness alone, i.e., even when the image is unaccompanied by text, can constitute a "statement of fact" upon which one may base a Lanham Act false advertising claim. This order should prove of particular interest to celebrities, models, and media personalities who seek to maximize protection of their likenesses against unauthorized uses.
Facts and Procedural History
Boykin is a model, photographer, and a social media influencer. Kreyol is a producer and seller of Haitian beauty products. In October 2019, Kreyol and Boykin executed an Influencer Term Sheet outlining terms under which Boykin agreed to post both a photograph and a video about Kreyol products on her Instagram page ("the Deliverables"). Boykin did so in November 2019.
Kreyol's co-founders had appeared on the Shark Tank reality television show, winning an investment of $400,000, which the co-founders received in January 2020. Later that year, capitalizing on their successful Shark Tank appearance, the co-founders executed several distribution deals, including one in which Kreyol would become a "textured haircare supplier" to nationwide retailer Ulta. Kreyol expected to launch its Ulta store products on April 12, 2020.
Kreyol contacted Boykin three times in March 2020 to request that Boykin post additional Instagram photos and videos promoting Kreyol products, at least one of the communications referring to the impending Ulta launch. However, no agreement resulted from those communications. In January 2021, Boykin visited an Ulta store in Florida, where she saw a photograph of herself ("the Appropriated Photograph") beside a product label for a Kreyol shampoo. Kreyol used the same advertisement at a Smyrna, Georgia Ulta store. The Appropriated Photograph had originally been generated at a 2015 modeling session, and Boykin posted the photograph to her Instagram account, but she did not authorize Kreyol to use that photograph.
In June 2022, following unsuccessful attempts to resolve these issues out of court, Boykin filed a complaint asserting several causes of action against Kreyol, including one for false advertising under the Lanham Act. Kreyol moved to dismiss the false advertising cause of action on two grounds: (1) the Appropriated Photograph, standing alone without any accompanying text, did not contain any actionable "statement of fact" to sustain a Lanham Act false advertising claim; and (2) Boykin did not sufficiently allege injury from the false advertising.
The Court's Holding and Rationale
In an order from United States District Judge Mark H. Cohen, the court rejected each of Kreyol's dismissal motion grounds.
Rejecting ground (1), the court reasoned: "Images (including images without text) can indeed convey statements that form the basis of a false advertisement claim under the Lanham Act." Boykin also, ruled the court, sufficiently alleged that Kreyol's use of the Appropriated Photograph was misleading, because "consumers viewing the Appropriated Photograph could conclude that [Boykin] approves of Kreyol's hair product, used it to achieve her look in the Appropriated Photograph, or permitted the use of her photograph for the advertisement."
Rejecting ground (2), the court upheld Boykin's allegations of injury because she "alleged that her brand and reputation [have] been injured (which is akin to loss of goodwill," and alleged "economic injury in the form of compensation she is entitled to but did not receive."
Judge Cohen's Boykin order makes clear that in Georgia federal courts, celebrities, models, and media personalities now have another arrow in their quivers to address unauthorized uses of their likenesses. Such plaintiffs may now assert a Lanham Act false advertising claim in addition to a claim for right of publicity under Georgia common law, even when the unauthorized reproduction of the likeness is unaccompanied by text, provided that all required elements for such claims are sufficiently alleged. Another court held that a right of publicity claim under Georgia law is not duplicative of a Lanham Act claim. Bogart, LLC v. Ashley Furniture Indus., Inc., No. 3:10-CV-39, 2012 U.S. Dist. LEXIS 121787, at *33-*38 (M.D. Ga. Aug. 28, 2012). Boykin asserted such a Georgia law claim in Count Three of her complaint, titled "misappropriation of likeness." Interestingly, Judge Cohen also found that the Copyright Act did not preempt either Count Three or Boykin's other asserted state law claims, because claims of copyright infringement and likeness misappropriation address separate wrongs, i.e., copyright claims address unauthorized publication of a work, and image misappropriation claims address unauthorized use of a person's likeness, which is not copyrightable subject matter, anyway.
The case is Madelynne Boykin v. Kreyol Essence Inc., No. 1:22-CV-2489-MHC, pending in the U.S. District Court for the Northern District of Georgia.