Gibson v. SCE Grp., Inc.

22-916
Gibson v. SCE Grp., Inc., et al.

UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT

SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT.
CITATION TO A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS
PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE
PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN CITING A
SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY
MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE
(WITH THE NOTATION “SUMMARY ORDER”). A PARTY CITING TO A
SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT
REPRESENTED BY COUNSEL.

At a stated term of The United States Court of Appeals for the Second Circuit,
held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of
New York, on the 28th day of June, two thousand twenty-three.

PRESENT:
ROSEMARY S. POOLER,
SUSAN L. CARNEY,
BETH ROBINSON,
Circuit Judges.
_________________________________________

CIELO JEAN GIBSON, JESSICA BURCIAGA, PAOLA CANAS, JOANNA KRUPA, SARA
UNDERWOOD, BRITTANY WILCOX, JESSICA ROCKWELL, TAL BERKOVITCH, TIFFANY SELBY,
VIDA GUERRA, ALICIA WHITTEN, ANYA MONZIKOVA, ASHLEY VICKERS, CARISSA ROSARIO,
CORA SKINNER, EVA PEPAJ, IRINA VORONINA, JAMILLETTE GIAXIOLA, URSULA MAYES, JESSA
HINTON, SHEENA LEE WEBER,

Plaintiffs-Appellants,

BROOKE TAYLOR,

Plaintiff,

v. No. 22-916
SCE GROUP, INC., DBA SIN CITY CABARET, 21 GROUP, INC., DBA SHOW PALACE
GENTLEMEN’S CLUB,

Defendants-Third-Party-Plaintiffs-Appellees,

THE CREATIVE COMPLEX, INC., PIXEL ROBOT, LLC, LR GRAPHICS, LLC, DBA SIKGRFX,

Defendants-Third-Party-Defendants,

LAMBROS MOUMOURIS,

Defendant-Third-Party-Plaintiff,

LUIS J. RAMIREZ,

Third-Party-Defendant.

_________________________________________

FOR APPELLANTS: JOHN V. GOLASZEWSKI, The Casas Law
Firm, P.C., New York, NY.

FOR APPELLEES: DON R. SAMPEN, Clausen Miller P.C.,
Chicago, IL (Thomas D. Jacobson,
Clausen Miller P.C., New York, NY, on
the brief).

Appeal from an order and judgment of the United States District Court for

the Southern District of New York (Ramos, Judge).

UPON DUE CONSIDERATION WHEREOF, IT IS HEREBY ORDERED,

ADJUDGED, AND DECREED that the July 17, 2019 order granting partial

summary judgment for Defendants is AFFIRMED, and the March 28, 2022

judgment for damages to Plaintiff Burciaga is AFFIRMED.

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 Plaintiffs-Appellants appeal the district court’s July 17, 2019 order granting

partial summary judgment to Defendants-Appellees on their claims for false

endorsement under section 43(a) of the Lanham Act, and violations of New York

Civil Rights Law (“NYCRL”) sections 50 and 51 (hereinafter the “July 17 order”). 1

See Gibson v. SCE Grp., Inc., 391 F. Supp. 3d 228 (S.D.N.Y. 2019). Plaintiff-

Appellant Jessica Burciaga also appeals a judgment entered on March 28, 2022,

awarding her $5,000 (hereinafter the “March 28 judgment”). See Gibson v. SCE

Grp., Inc., No. 15-cv-8168 (ER), 2022 WL 901591 (S.D.N.Y. Mar. 25, 2022). We

assume the parties’ familiarity with the underlying facts, procedural history, and

arguments on appeal, to which we refer only as necessary to explain our

decision.

Plaintiffs-Appellants are twenty models and the sister of a model. They

filed this action because Defendants-Appellees—two nightclubs that feature

partially nude dancers—used Plaintiffs’ pictures in advertisements without their

consent. In the July 17 order, the district court granted Defendants’ motion for

summary judgment on all claims except for Burciaga’s claim for compensatory

damages under NYCRL sections 50 and 51 for the unauthorized use of one

1 The district court also dismissed Plaintiffs’ state law claims for defamation and deceptive
trade practices, but Plaintiffs have not appealed that ruling.

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image. The court granted Burciaga summary judgment as to that claim and

directed the parties to brief their proposed damages award. After reviewing the

parties’ submissions, the district court issued the March 28 judgment holding

Defendants jointly and severally liable to Burciaga in the amount of $5,000.

1. July 17 Order

We review a district court’s grant of summary judgment without deference

to the district court. See Brandon v. Kinter, 938 F.3d 21, 31 (2d Cir. 2019).

Summary judgment may be granted “only if the court concludes that the case

presents ‘no genuine issue as to any material fact and that the moving party is

entitled to a judgment as a matter of law.’” 2 Rubens v. Mason, 527 F.3d 252, 254

(2d Cir. 2008) (quoting Fed. R. Civ. P. 56(c)). We recently clarified that we review

a district court’s analysis of the likelihood of consumer confusion for purposes of

a Lanham Act claim as a question of law, without deference to the district court’s

weighing of the various relevant factors. Souza v. Exotic Island Enters., Inc., 68

F.4th 99, 109 (2d Cir. 2023).

For the reasons set forth below, we reject Plaintiffs’ various challenges to

the district court’s order granting summary judgment for Defendants on

2 In quotations from caselaw and the parties’ briefing, this order omits all internal quotation
marks, alterations, footnotes, and citations, unless otherwise noted.

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Plaintiffs’ claims for “false endorsement” under section 43(a) of the Lanham Act,

and we conclude that the district court properly determined that all of Plaintiffs’

claims for violation of their right of publicity under NYCRL section 51, except for

one of Burciaga’s claims, were barred by the statute of limitations.

a. Lanham Act Claims

The Lanham Act prohibits the “use[ ] in commerce [of] any word, term,

name, symbol, or device, or any combination thereof . . . likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or

association of such person with another person, or as to the origin, sponsorship,

or approval of his or her goods, services, or commercial activities by another

person.” 15 U.S.C. § 1125(a)(1)(A).

Plaintiffs’ argument that the district court should have concluded as a

matter of law that consumer confusion could result from the false association

suggested by Defendants’ use of Plaintiffs’ photos is foreclosed by our

precedential decisions in Souza, 68 F.4th at 109-12, and Electra v. 59 Murray

Enters., Inc., 987 F.3d 233, 257 (2d Cir. 2020), cert. denied, 142 S. Ct. 563 (2021). In

both cases, we considered similar claims by models whose images had been used

in advertisements without their consent. In Electra, we explained that the

proponent of a false endorsement claim under the Lanham Act “must prove (1)

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that the mark . . . is distinctive as to the source of the good or service at issue, and

(2) that there is the likelihood of confusion between the plaintiff’s good or service

and that of the defendant.” Electra, 987 F.3d at 257. We did not suggest that the

falsity of the implied association between Plaintiffs and defendant

establishments obviated Plaintiffs’ burden to show likely consumer confusion.

To the extent that this approach to the false endorsement claim diverges

from our caselaw involving false advertising, that result is consistent with the

fact that the two types of claims are distinct. See Lexmark Int’l, Inc. v. Static

Control Components, Inc., 572 U.S. 118, 122 (2014) (explaining that false association

and false advertising claims under the Lanham Act are distinct). Whereas the

text of the Lanham Act’s false association provision requires that the false or

misleading representation of fact be “likely to cause confusion,” its false

advertising provision requires only that a person “misrepresent[].” Compare 15

U.S.C. § 1125(a)(1)(A), with id. § 1125(a)(1)(B).

We likewise reject Plaintiffs’ argument that the district court applied the

wrong burden of proof in assessing Defendants’ motion for summary judgment.

Even at the summary judgment stage, Plaintiffs must produce sufficient evidence

to establish their entitlement to relief. Selevan v. New York Thruway Auth., 711

F.3d 253, 256 (2d Cir. 2013) (“A defendant is entitled to summary judgment

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where the plaintiffs have failed to come forth with evidence sufficient to permit a

reasonable juror to return a verdict in [the plaintiffs’] favor on an essential

element of a claim on which the plaintiffs bear the burden of proof.”).

We agree with the district court’s application of the Polaroid factors in

assessing the likelihood of confusion in this case. See Polaroid Corp. v. Polarad

Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). As is most relevant here, these

factors include the strength of the mark, evidence of actual consumer confusion,

evidence that the mark was adopted in bad faith, proximity of the products, and

sophistication of the consumers. See id.; Starbucks Corp. v. Wolfe's Borough Coffee,

Inc., 588 F.3d 97, 116 (2d Cir. 2009).

Plaintiffs’ argument that in false endorsement cases, the strength of the

mark should be evaluated with reference to its distinctiveness, rather than the

recognizability of the individual plaintiffs, is at odds with our conclusion in

Electra that the strength of the plaintiffs’ marks should be analyzed with

reference to the respective plaintiffs’ recognizability or public prominence. See

987 F.3d at 258. We expanded on this conclusion in Souza, commenting that the

Electra panel’s focus on recognizability “serves the purposes of trademark law in

the false endorsement context.” 68 F.4th at 112.

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 With respect to evidence of actual confusion, we reject Plaintiffs’ argument

that the district court improperly ignored their expert evidence. In their

summary judgment briefing responding to Defendants’ challenges to Plaintiffs’

expert evidence, Plaintiffs stated that they “did not rely on any expert survey or

report on their motion for summary judgment.” Jt. App’x 1393. More

specifically, in their response to Defendants’ Rule 56.1 statement, Plaintiffs

stated, “As set forth in Plaintiffs’ brief in support of their motion for summary

judgment, Plaintiffs have in no manner relied on [the expert’s] survey or report

to establish Plaintiffs’ entitlement to relief at this time.” Jt. App’x 1474. They

further emphasized, “[the expert’s] methodology, survey, and report, including

the issues he addresses therein and the questions he poses, are not a subject of

Defendants’ motion for summary judgment.” Id. at 1475. Plaintiffs’ suggestion

on appeal that the district court should have considered their expert evidence or

that their disavowal of reliance on any expert report was limited to their own

summary judgment motion is not supported by the record.

The district court’s analysis of bad faith in the context of the Lanham Act

claim was also not erroneous. There is no evidence that Defendants knew

Plaintiffs’ identities when they used Plaintiffs’ photos or that they intended to

confuse consumers. See Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 964 (2d

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Cir. 1996) (“Under this factor, we look to whether the defendant adopted its

mark with the intention of capitalizing on plaintiff's reputation and goodwill and

any confusion between [the defendant’s] and the senior user’s product.”

(emphasis added)).

We also reject Plaintiffs’ argument that their products are “proximate” to

Defendants’ because both seek to attract clients using the image of a beautiful

woman. The district court did not err in concluding that Plaintiffs failed to offer

any evidence of geographic proximity, such as evidence that Plaintiffs’ followers

on social media live in New York City. See Brennan’s, Inc. v. Brennan’s Rest.,

L.L.C., 360 F.3d 125, 134-35 (2d Cir. 2004) (concluding that though the plaintiff

established market proximity, the competitive proximity factor weighed in the

defendants’ favor because the plaintiff did not show geographic proximity).

Even in the face of some competitive proximity, this factor would not outweigh

the other factors that suggest minimal risk of consumer confusion.

The sophistication of customers is not likely a significant factor in this case,

but insofar as Plaintiffs argued to the district court that the consumers at issue

are sophisticated, we cannot fault the district court for accepting that

characterization in evaluating the Polaroid factors. Even accepting Plaintiffs’ new

argument on appeal that the consumers are in fact not sophisticated, this is not a

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factor that would override the other factors that indicate little risk of consumer

confusion.

For these reasons, we conclude that the district court correctly dismissed

Plaintiffs’ Lanham Act claim.

b. Right of Publicity Under NYCRL §§ 50-51

Our recent decision in Souza forecloses Plaintiffs’ argument that the district

court erred in concluding that almost all of their right of publicity claims under

NYCRL sections 50 and 51 were time-barred. In Souza, this Court definitively

rejected the argument, advanced by Plaintiffs here, that because the right of

publicity protects a commercial property interest rather than a personal interest,

Plaintiffs’ right of publicity claim should be governed by the three-year

limitations period for property damage set forth in N.Y. C.P.L.R. § 214(4) instead

of the one-year statute of limitations applicable to right-to-privacy claims under

N.Y. C.P.L.R. § 215(3). See Souza, 68 F.4th at 121-22.

2. March 28 Damages Judgment

With respect to Plaintiff Burciaga’s argument that the district court’s

award of damages on her NYCRL section 51 claim violated her Seventh

Amendment right to a jury trial, we conclude that Burciaga waived her demand

for a jury through her conduct.

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 At the conclusion of its summary judgment ruling, which awarded

Plaintiff Burciaga summary judgment on liability with respect to the publication

of one image in violation of her right of publicity, the district court directed

Plaintiffs “to submit proposed damages for Burciaga’s claim and a memorandum

of law in support of that proposal by July 31, 2019.” Sp. App’x 36. The court

gave Defendants time to respond.

Plaintiffs timely filed a fifteen-page memorandum attaching Burciaga’s

expert’s report and laying out her argument for damages. The memo concludes,

“For the foregoing reasons, Plaintiffs respectfully request that the proposed

judgment submitted herewith in the amount of [$160,000] be entered by the

Court, and that this Court grant such other relief as it deems just and proper.” Jt.

App’x 1754. Their reply memo included the same prayer for relief. Jt. App’x

1916. Plaintiffs submitted a proposed judgment and order for the district court

to sign. At no point in this briefing process did Plaintiffs ask for a jury trial on

damages or challenge the district court’s process for resolving the remaining

issue in the case.

Because Burciaga did not object to the district court’s resolving the

damages question without a jury trial, and affirmatively requested that the court

enter a judgment for damages, she waived any challenge on appeal based on her

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complaint’s initial jury demand. See Royal Am. Managers, Inc. v. IRC Holding

Corp., 885 F.2d 1011, 1018 (2d Cir. 1989) (“It would be patently unfair and, in

effect, an ambush of the trial judge on appeal if appellant were allowed to lodge

an early demand for a jury, participate in a bench trial without objection, and

then assign as error the failure to honor the jury demand.”).

* * *

We have considered Plaintiffs’ remaining arguments and conclude that

they are without merit. For the above reasons, the district court’s order and

judgment are AFFIRMED.

FOR THE COURT:
Catherine O’Hagan Wolfe, Clerk of Court

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