21-2149-cv
`Souza v. Exotic Island Enterprises, Inc.
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`
`August Term, 2022
`
`Argued: December 2, 2022 Decided: May 19, 2023
`
`Docket No. 21-2149-cv
`
`
`ALANA SOUZA, AKA ALANA CAMPOS, BROOKE BANX, BROOKE TAYLOR-JOHNSON,
`JACLYN SWEDBERG, JAIME EDMONDSON-LONGORIA, JESSICA HINTON, TIFFANY
`TOTH-GRAY, URSULA SANCHEZ, AKA URSULA MAYES,
`
`Plaintiffs-Appellants,
`
`— v. —
`
`EXOTIC ISLAND ENTERPRISES, INC., DBA MANSION GENTLEMEN’S CLUB &
`STEAKHOUSE, KEITH SLIFSTEIN,
`
`EXCLUSIVE EVENTS & PROMOTIONS INC., DBA THINK SOCIAL FIRST,
`
`Defendants-Appellees,
`
`Third-Party-Defendant.*
`
`
`
`* The Clerk of Court is directed to amend the caption as displayed above.
`
`
`Souza v. Exotic Island Enterprises, Inc.
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`
`August Term, 2022
`
`Argued: December 2, 2022 Decided: May 19, 2023
`
`Docket No. 21-2149-cv
`
`
`ALANA SOUZA, AKA ALANA CAMPOS, BROOKE BANX, BROOKE TAYLOR-JOHNSON,
`JACLYN SWEDBERG, JAIME EDMONDSON-LONGORIA, JESSICA HINTON, TIFFANY
`TOTH-GRAY, URSULA SANCHEZ, AKA URSULA MAYES,
`
`Plaintiffs-Appellants,
`
`— v. —
`
`EXOTIC ISLAND ENTERPRISES, INC., DBA MANSION GENTLEMEN’S CLUB &
`STEAKHOUSE, KEITH SLIFSTEIN,
`
`EXCLUSIVE EVENTS & PROMOTIONS INC., DBA THINK SOCIAL FIRST,
`
`Defendants-Appellees,
`
`Third-Party-Defendant.*
`
`
`
`* The Clerk of Court is directed to amend the caption as displayed above.
`
`
`
`B e f o r e:
`
`LYNCH, NARDINI, and MENASHI, Circuit Judges.
`
`
`
`Plaintiffs-Appellants, a group of current and former professional models,
`appeal from a judgment of the United States District Court for the Southern
`District of New York (Karas, J.) granting summary judgment against them on a
`variety of claims arising from the use of their images in social media posts
`promoting a “gentlemen’s club” operated by Defendants-Appellees. On appeal,
`Plaintiffs argue, among other things, that the district court misapplied this
`Court’s framework for evaluating the likelihood of consumer confusion in the
`context of a Lanham Act false endorsement claim, misconstrued Supreme Court
`guidance constraining the Lanham Act’s reach in the false advertising context,
`and applied the wrong statute of limitations to Plaintiffs’ state law right of
`publicity claims. We disagree. We conclude that the district court properly
`granted summary judgment on Plaintiffs’ federal claims and the majority of their
`state law claims, and permissibly declined to exercise supplemental jurisdiction
`over their remaining claims. We therefore AFFIRM the judgment of the district
`court.
`
`
`
`JOHN V. GOLASZEWSKI, Casas Law Firm, P.C., New York, NY,
`for Plaintiffs-Appellants.
`
`MICHAEL KOLB, O’Connor & Partners, PLLC, Kingston, NY,
`for Defendants-Appellees.
`
`
`
`2
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`
`
`GERARD E. LYNCH, Circuit Judge:
`
`This appeal concerns several claims brought by Plaintiffs-Appellants Alana
`
`Souza (a/k/a Alana Campos), Brooke Banx, Brooke Taylor-Johnson, Jaclyn
`
`Swedberg, Jaime Edmondson-Longoria, Jessica (a/k/a Jessa) Hinton, Ursula
`
`Sanchez (a/k/a Ursula Mayes), and Tiffany Toth-Gray (together, “Plaintiffs”) – all
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`current or former professional models – against Defendants-Appellees Exotic
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`Island (“Exotic”) and Keith Slifstein (together, “Defendants”). Those claims arise
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`from the basic undisputed allegation that Defendants, through a third-party
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`vendor, used images of Plaintiffs without their permission in social media posts
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`promoting a “gentlemen’s club” operated by Defendants.
`
`After the parties cross-moved for summary judgment, the United States
`
`District Court for the Southern District of New York (Kenneth M. Karas, J.)
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`granted summary judgment in Defendants’ favor. Specifically, it concluded that
`
`(1) Plaintiffs’ false endorsement claims, as supported by the evidentiary record
`
`on summary judgment, were foreclosed by our decision in Electra v. 59 Murray
`
`Enters., Inc., 987 F.3d 233 (2d Cir.), cert. denied, 142 S. Ct. 563 (2021); (2) their false
`
`advertising claims were founded upon injury that either fell outside the zone of
`
`interests protected by the Lanham Act, or that was unsubstantiated by the record;
`
`3
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`
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`and (3) the bulk of their state-law right of publicity claims were barred by New
`
`York’s one-year statute of limitations for such claims. The district court then
`
`declined to exercise supplemental jurisdiction over the few state-law claims that
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`were not time-barred.
`
`We agree with the district court on all counts, and therefore AFFIRM its
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`judgment in full.
`
`BACKGROUND
`
`Although the parties cross-moved for summary judgment below, because
`
`this appeal concerns the district court’s grant of Defendants’ motion, we construe
`
`the record in the light most favorable to Plaintiffs. See Heublein, Inc. v. United
`
`States, 996 F.2d 1455, 1461 (2d Cir. 1993). The factual backdrop of this case,
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`however, is simple and largely undisputed.
`
`I.
`
`Factual Background
`
`A.
`
`The Parties
`
`Exotic and its president, Slifstein, operate Mansion Gentlemen’s Club &
`
`Steakhouse (“Mansion”) in Newburgh, New York. Plaintiffs are or were
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`professional models whose pictures appeared without their consent, and without
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`compensation, on social media sites associated with Mansion. The Instagram and
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`4
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`
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`Facebook posts at issue were actually created and published to Defendants’
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`accounts by Third-Party Defendant Exclusive Events & Promotions d/b/a Think
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`Social First, a third-party vendor authorized by Exotic to operate those accounts
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`on its behalf.
`
`Each Plaintiff works or has worked as a professional model, promoting her
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`“image, likeness and/or identity . . . for the benefit of various clients, commercial
`
`brands, media and entertainment outlets.” E.g., Joint Appendix (J.A.) 63. In
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`substantially identical declarations, Plaintiffs have testified that because they
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`“rely on [their] professional reputation[s] to book modeling and advertising
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`jobs,” their reputations are “critical” to the opportunities they are offered, and
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`they therefore “have spent considerable time and energy” protecting and
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`policing their images and reputations, and carefully negotiating their modeling
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`fees based on “informed assessment[s]” of any given job’s effect on their brands.
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`E.g., id. 63-64.
`
`Plaintiffs have enjoyed varying levels of success and visibility in their
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`modeling careers. Several have appeared in magazines, advertising campaigns,
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`television episodes, and films. Some are former Playboy Playmates, including
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`five (Swedberg, Campos, Hinton, Edmondson-Longoria, and Toth-Gray) who
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`5
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`
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`were named Playmate of the Month between 2010 and 2012 and one (Swedberg)
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`who was named 2012 Playmate of the Year. Their highest single-year modeling
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`earnings range from around $18,300 to around $107,000. Their social media
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`footprints range from several thousand to a few million followers.
`
`Plaintiffs’ links to New York State are fleeting at best. None have lived in
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`New York, many have never even worked in New York, and several others have
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`made just a single modeling appearance in the state. Only Mayes recalled making
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`multiple promotional appearances in New York, between 2005 and 2009, though
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`she never lived in the state.
`
`Most of the Plaintiffs no longer work as full-time models. Banx and Taylor-
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`Johnson both stopped modeling around 2014, followed soon thereafter by
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`Edmondson-Longoria and Swedberg in, respectively, 2015 and 2017. Mayes has
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`worked as a model only sporadically since 2014. Campos began working
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`primarily as a real estate agent in 2015. Hinton and Toth-Gray continue to do
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`modeling work, alongside other professional activities.
`
`B.
`
` The Social Media Posts
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`Published between 2014 and 2018, each of the posts at issue set revealing
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`photographs of Plaintiffs against advertising copy linked thematically to each
`
`6
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`
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`visual in some way. For example, one of Mansion’s September 2014 Facebook
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`posts featured a picture of Taylor-Johnson in an apparent school uniform that
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`included a short plaid skirt, captioned: “Friday Oct 17th SEXY SCHOOL GIRL
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`PARTY! No Cover For Ladies That Wear A Sexy School Girl Skirt[.] All Our
`
`Dancers Will Be Wearing Short Plaid Skirts!” J.A. 37. A May 2015 Instagram post
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`featured Swedberg, astride a motorcycle in lingerie, captioned: “EVERY
`
`TURSDAY [sic] is BIKE NIGHT AT #THEMANSION #bikenight
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`#adultentertainment #stripclub #strippers #gentlemensclub #newburgh
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`#hudsonvalley #steakhouse.” Id. 38. A December 2015 Facebook post featured
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`Hinton, in a Santa Claus cap and topless save for a bra, captioned: “The
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`Naughtiest party of the year is happening tonight! Are you naughty enough to
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`party with our girls?” Id. 41. Matching Instagram and Facebook posts from
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`January 2016 featured Banx posing suggestively in a cropped Pittsburgh Steelers
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`top, captioned, respectively, “No sexier place to watch the #NFL” and “No sexier
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`place to watch the Steelers vs. Broncos!!” Id. 35-36. A Facebook post from the
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`same month featured Edmondson-Longoria posed in a similarly scant Seattle
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`Seahawks top, captioned: “It’s FOOTBALL Sunday at #Mansion! Watch all the
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`BIG games today with us!” Id. 40. In each of those pictures, Plaintiffs’ faces were
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`7
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`
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`visible. Several other posts included images of Plaintiffs whose full faces were
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`not visible.
`
`Defendants claim to have taken all possible steps to remove the posts once
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`they were made aware of Plaintiffs’ grievances. However, as of July 2020, at least
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`one (depicting Campos) remained live on Mansion’s Instagram page. Defendants
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`attribute their failure to remove the image to password difficulties that hampered
`
`their access to that Instagram account.
`
`During discovery, each Plaintiff was asked in an interrogatory to identify
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`“any and all jobs and/or work lost as a result of the allegations asserted in the
`
`Complaint.” E.g., J.A. 329. None identified any specific lost opportunities.
`
`Instead, each gave the following response, verbatim:
`
`[I]t is a well-known fact that prospective clients have no
`duty to disclose to the model their reasoning for why
`the model was denied an endorsement opportunity. It is
`also a widely known fact that on the outset of creating a
`highly coveted endorsement deal, clients and/or their
`advertising agencies will conduct due diligence of
`models in advance of contacting a model to discuss an
`endorsement opportunity. As a result of these common
`industry practices, Plaintiff has not been contacted
`directly by a third party with notice of a refusal to do
`business or the rescission of an offer to hire due to
`Defendant’s use of Plaintiff’s image.
`
`E.g., id.
`
`8
`
`
`
`II.
`
`Procedural Background
`
`A.
`
`This Litigation
`
`Plaintiffs filed their Complaint in October 2018. The Complaint asserted
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`several causes of action: (1) false advertising and (2) false endorsement under
`
`Section 43 of the Lanham Act; (3) violation of their privacy/publicity rights under
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`New York Civil Rights Law §§ 50-51; (4) violation of New York’s Deceptive Trade
`
`Practices Act; and (5) defamation. Plaintiffs later withdrew their deceptive trade
`
`practices and defamation claims. In January 2019, Defendants answered,
`
`asserting a statute of limitations affirmative defense, and the parties began
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`several years of discovery. In November 2019, Defendants sought and were
`
`granted leave to file a third-party complaint against Exclusive Events. Eventually,
`
`in February 2021, the parties filed dueling summary judgment motions.
`
`Defendants also moved to strike the expert report and survey of Plaintiffs’ expert,
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`Martin Buncher.
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`In August 2021, the district court denied Plaintiffs’ motion and granted
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`Defendants’ motion for summary judgment (and along with it, Defendants’
`
`motion to exclude portions of Buncher’s report), dismissing the bulk of Plaintiffs’
`
`9
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`
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`claims as a matter of law and declining to exercise supplemental jurisdiction over
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`a few leftover state law claims. This appeal followed.
`
`B.
`
`Similar Lawsuits Brought by Plaintiffs’ Counsel
`
`Meanwhile, less than a week after the parties had filed their summary
`
`judgment motions in February 2021, another panel of this Court decided Electra v.
`
`59 Murray Enters., Inc., 987 F.3d 233 (2d Cir. 2021). In Electra, a group of
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`professional models – including several of the Plaintiffs in this case, represented
`
`by the same counsel – sued a group of defendants who, also through a
`
`third-party vendor, had allegedly used those models’ photographs to promote
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`the defendants’ strip clubs. Id. at 240-41. The Electra plaintiffs asserted several of
`
`the same causes of action as those asserted here. Id. at 242. For reasons discussed
`
`below, we affirmed in relevant part the district court’s grant of summary
`
`judgment for the defendants on most plaintiffs’ false endorsement and right of
`
`publicity claims. Id. at 239, 251, 257-58 (also overturning portions of the district
`
`court’s summary judgment order for reasons not pertinent here).
`
`Electra was just one of a group of such cases brought in the Southern
`
`District of New York by the same counsel on behalf of different groups of
`
`models, including many of the same plaintiffs. See Edmondson v. RCI Hosp.
`
`10
`
`
`
`Holdings, Inc., No. 16-CV-2242-VEC, 2021 WL 4499031 (S.D.N.Y. Oct. 1, 2021);
`
`Gibson v. SCE Grp., Inc., 391 F. Supp. 3d 228 (S.D.N.Y. 2019).1 Plaintiffs’ counsel
`
`and his firm have also filed many similar lawsuits in other jurisdictions, again
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`often on behalf of some of the same plaintiffs.2
`
`1 One of those cases has subsequently settled. Edmondson v. RCI Hosp. Holdings,
`Inc., No. 16-CV-2242-VEC (S.D.N.Y. Aug. 10, 2022), Dkt. No. 225. The other is
`currently on appeal before this Court. Gibson v. SCE Grp., Inc., No. 22-916 (2d
`Cir.).
`
`2 See, e.g., Pepaj v. Paris Ultra Club LLC, No. CV-19-01438-PHX-MTL, 2021 WL
`632623 (D. Ariz. Feb. 18, 2021); Takeguma v. Freedom of Expression LLC, No.
`CV-18-02552-PHX-MTL, 2021 WL 487884 (D. Ariz. Feb. 10, 2021); Pinder v. 4716
`Inc., 494 F. Supp. 3d 618 (D. Ariz. 2020); Gray v. LG&M Holdings LLC, No.
`CV-18-02543-PHX-SRB, 2020 WL 6200165 (D. Ariz. Sept. 23, 2020), reconsideration
`denied, 2020 WL 9074801 (D. Ariz. Oct. 14, 2020); Longoria v. Million Dollar Corp.,
`No. 18-CV-02266-PAB-NYW, 2021 WL 1210314 (D. Colo. Mar. 31, 2021); Moreland
`v. Beso Lounge & Rest. LLC, No. 3:19-CV-00958 (VLB), 2020 WL 5302312 (D. Conn.
`Sept. 4, 2020); Burciaga v. Gold Club Tampa, Inc., No. 8:16-CV-790-T-27JSS, 2016
`WL 9526567 (M.D. Fla. Dec. 28, 2016); Moreland v. Club 390 Corp., No. 18 C 7441,
`2019 WL 13076638 (N.D. Ill. Aug. 26, 2019); Lundberg v. One Three Five, Inc., No.
`2:19-CV-00692-RJC, 2022 WL 2669136 (W.D. Pa. Jan. 14, 2022), report and
`recommendation adopted, 2022 WL 2668557 (W.D. Pa. Mar. 15, 2022); Geiger v.
`Abarca Fam. Inc., No. 3:21CV771 (DJN-EWH), 2022 WL 4242838 (E.D. Va. July 29,
`2022), report and recommendation adopted, No. 3:21CV771(RCY), 2022 WL 4241649
`(E.D. Va. Sept. 14, 2022).
`
`11
`
`
`
`DISCUSSION
`
`Plaintiffs present five basic arguments on appeal, spread across their three
`
`remaining causes of action. First, they contend that the district court erred in
`
`evaluating their false endorsement claims by (1) oversimplifying its inquiry into
`
`the strength of Plaintiffs’ marks by focusing on recognizability alone;
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`(2) wrongfully excluding certain expert evidence; and (3) bungling its overall
`
`balancing of the Polaroid likelihood of confusion factors. Next, Plaintiffs argue
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`that the district court (4) adopted too restrictive a take on the zone of interests
`
`protected by the Lanham Act. Finally, they challenge the district court’s decision
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`(5) to apply a one-year statute of limitations to Plaintiffs’ right of publicity claims.
`
`We address, and reject, Plaintiffs’ arguments below.
`
`I.
`
`Standards of Review
`
`A.
`
`Summary Judgment, Generally
`
`“We review a district court’s grant of summary judgment de novo,
`
`resolving all ambiguities and drawing all permissible inferences in favor of the
`
`nonmoving party.” Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 83 (2d Cir.
`
`2020). Although “[t]he party seeking summary judgment bears the burden of
`
`establishing that no genuine issue of material fact exists,” Vivenzio v. City of
`
`12
`
`
`
`Syracuse, 611 F.3d 98, 106 (2d Cir. 2010) (internal quotation marks omitted),
`
`“[w]hen the burden of proof at trial would fall on the nonmoving party, it
`
`ordinarily is sufficient for the movant to point to a lack of evidence to go to the
`
`trier of fact on an essential element of the nonmovant’s claim,” CILP Assocs., L.P.
`
`v. PriceWaterhouse Coopers LLP, 735 F.3d 114, 123 (2d Cir. 2013) (internal quotation
`
`marks omitted). In that scenario, “once such a showing is made, the non-movant
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`must set forth specific facts showing that there is a genuine issue for trial.”
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`Weinstock v. Columbia Univ., 224 F.3d 33, 41 (2d Cir. 2000) (internal quotation
`
`marks omitted).
`
`B.
`
`Likelihood of Confusion
`
`Our standard of review has historically been tougher to pin down in
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`Lanham Act cases involving our eight familiar Polaroid factors – discussed in
`
`further detail below – which measure the likelihood of consumer confusion in a
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`given case. The source of that tension is that, although we have always held that
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`the district court’s balancing of those factors should be reviewed de novo, some of
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`our past cases have “purported to afford ‘considerable deference’ to district
`
`courts’ findings ‘with respect to predicate facts underlying each Polaroid factor,’”
`
`Tiffany, 971 F.3d at 85, quoting Playtex Prods., Inc. v. Ga.-Pac. Corp., 390 F.3d 158,
`
`13
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`
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`162 (2d Cir. 2004), or even to the district court’s “‘finding on each factor’
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`generally,” id., quoting Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576,
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`578 (2d Cir. 2005).
`
`But although our stance may have wobbled over the years, recent cases
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`have solidified our view that, “[i]nsofar as the determination of whether one of
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`the Polaroid factors favors one party or another involves a legal judgment – which
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`it often does – we must review that determination de novo.” Car-Freshner Corp. v.
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`Am. Covers, LLC, 980 F.3d 314, 327-28 (2d Cir. 2020) (internal quotation marks
`
`omitted). To that end, we have cautioned that past cases hinting at “deference” to
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`the district court “should not be read to suggest that a district court deciding a
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`motion for summary judgment in a trademark infringement case has greater
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`discretion than it would have in a non-trademark case.” Tiffany, 971 F.3d at 85
`
`(internal quotation marks and alteration omitted) (adding that “we have never
`
`purported to expand a district court’s license to make factual findings at summary
`
`judgment beyond those very limited circumstances in which the uncontroverted
`
`evidence and the reasonable inferences to be drawn in the nonmoving party’s
`
`favor support only a single conclusion” (emphasis in original) (internal quotation
`
`marks omitted)).
`
`14
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`
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`And so, to reiterate, “we review de novo a ruling on whether the plaintiff
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`has shown a likelihood of confusion because we consider the issue to be a
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`question of law.” Car-Freshner, 980 F.3d at 326.
`
`c.
`
`Other Matters
`
`Finally, we review for abuse of discretion a district court’s decision to
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`admit or exclude expert evidence. Restivo v. Hessemann, 846 F.3d 547, 575 (2d Cir.
`
`2017) (adding that the district court’s decision “is to be sustained unless
`
`manifestly erroneous” (internal quotation marks omitted)). The same is true of a
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`district court’s decision to decline to exercise supplemental jurisdiction over state
`
`law claims. Motorola Credit Corp. v. Uzan, 388 F.3d 39, 56 (2d Cir. 2004).
`
`II.
`
`False Endorsement
`
`Section 43(a) of the Lanham Act prohibits the
`
`use[] in commerce [of] any word, term, name, symbol,
`or device, or any combination thereof, or any false
`designation of origin, false or misleading description of
`fact, or false or misleading representation of fact
`which . . . is 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
`
`
`
`15 U.S.C § 1125(a)(1)(A). This provision is intended to “prevent consumer
`
`confusion regarding a product’s source,” to “enable those that fashion a product
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`to differentiate it from others on the market,” EMI Catalogue P’ship v. Hill,
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`Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 61 (2d Cir. 2000) (internal
`
`quotation marks omitted), and to protect against the risk that consumers will
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`mistakenly “believe that the trademark owner sponsors or endorses the use of the
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`challenged mark,” Kelly-Brown v. Winfrey, 717 F.3d 295, 304 (2d Cir. 2013)
`
`(internal quotation marks omitted).
`
`To prevail on a so-called false endorsement claim under Section 43 of the
`
`Lanham Act, a plaintiff must prove, among other uncontested requirements,
`
`“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 (internal quotation marks
`
`omitted). To determine whether there is a likelihood of consumer confusion, we
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`look to our eight familiar Polaroid factors:
`
`(1) strength of the trademark; (2) similarity of the marks;
`(3) proximity of the products and their competitiveness
`with one another; (4) evidence that the senior user may
`bridge the gap by developing a product for sale in the
`market of the alleged infringer’s product; (5) evidence of
`actual consumer confusion; (6) evidence that the
`imitative mark was adopted in bad faith; (7) respective
`
`16
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`
`
`quality of the products; and (8) sophistication of
`consumers in the relevant market.
`
`Kelly-Brown, 717 F.3d at 307 (internal quotation marks omitted); see Polaroid Corp.
`
`v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Those factors are neither
`
`exhaustive nor applied mechanically. See Kelly-Brown, 717 F.3d at 307; Brennan’s,
`
`Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004). No single factor is
`
`dispositive; rather, each is evaluated “in the context of how it bears on the
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`ultimate question of likelihood of confusion as to the source of the product.”
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`Brennan’s, 360 F.3d at 130 (internal quotation marks omitted).
`
`A.
`
`Strength of Mark
`
`The district court held that the first Polaroid factor – strength of mark –
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`favored Defendants. We agree.
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`1.
`
`Recognizability as Strength
`
`Plaintiffs challenge that conclusion on a few fronts. First, they argue that
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`the district court misstepped by treating recognizability as the “bottom line”
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`barometer for strength of mark in false endorsement claims of this sort.
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`Appellant’s Br. 21-28.
`
`17
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`
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`Plaintiffs are mistaken. We recently endorsed that precise approach in
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`Electra. In that case, the district court had declared without qualification that in
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`“celebrity” false endorsement cases “the ‘strength of the mark’ refers to the level
`
`of recognition that the plaintiff has among the consumers to whom the
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`advertisements are directed.” Toth v. 59 Murray Enters., Inc., No. 15-CV-8028-
`
`NRB, 2019 WL 95564, at *6 (S.D.N.Y. Jan. 3, 2019) (internal quotation marks
`
`omitted). On appeal, the Electra panel held that the district court in that case had
`
`“properly analyzed the record of each [plaintiff’s] public prominence to
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`determine the strength of their marks.” Electra, 987 F.3d at 258. Then, amplifying
`
`a prior district court’s holding that the “misappropriation of a completely
`
`anonymous face could not form the basis for a false endorsement claim,” the
`
`panel reiterated that “because the ultimate question under Polaroid . . . is the
`
`likelihood of consumer confusion, the district court properly analyzed
`
`[plaintiffs’] recognizability.” Id., quoting Bondar v. LASplash Cosms., No. 12-CV-
`
`1417-SAS, 2012 WL 6150859, at *7 (S.D.N.Y. Dec. 11, 2012). We are bound by
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`Electra, which presented effectively identical issues in an effectively identical
`
`factual context.
`
`18
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`
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`Perhaps recognizing that we are so constrained, Plaintiffs rely upon several
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`critiques of the Electra panel’s approach. Most significantly, they cite a number of
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`cases for the proposition that the strength inquiry is intended to be broader than
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`a simple, one-dimensional “fame” test. See, e.g., Brennan’s, 360 F.3d at 130
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`(explaining that the strength of mark factor also includes a mark’s “inherent
`
`distinctiveness”); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1367
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`(Fed. Cir. 2012) (remarking that “fame cannot overwhelm the other” factors
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`relevant to the likelihood of confusion calculus); see also 15 U.S.C. § 1125(a)(1)
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`(providing for civil remedies for “any person who believes that he or she is or is
`
`likely to be damaged” (emphasis added)).
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`As a general matter, Plaintiffs are correct that we have long recognized that
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`the strength of a mark typically “encompasses two different concepts, both of
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`which relate significantly to likelihood of consumer confusion.” Virgin Enters. Ltd.
`
`v. Nawab, 335 F.3d 141, 147 (2d Cir. 2003) (emphases added). The first is “inherent
`
`distinctiveness,” id., which looks to the mark itself, divorced from consumers’
`
`actual knowledge of it, and classifies marks on a spectrum ranging from stronger
`
`“fanciful” or “arbitrary” marks down to progressively weaker “suggestive,”
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`“descriptive,” or “generic” marks, see Gruner + Jahr USA Pub., a Div. of Gruner +
`
`19
`
`
`
`Jahr Printing & Pub. Co. v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993). The
`
`second concept is “acquired distinctiveness,” which we have defined as “fame, or
`
`the extent to which prominent use of the mark in commerce has resulted in a
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`high degree of consumer recognition.” Virgin, 335 F.3d at 147; see Guthrie
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`Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 41 n.4 (2d Cir. 2016) (“The theory
`
`is that a mark similar to a famous mark is more likely to cause confusion, or at
`
`least more likely to cause a more widespread confusion, than a mark similar to a
`
`relatively unknown one.”).
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`Plaintiffs run aground, however, when they suggest that we may not focus
`
`on recognizability in this context. They insist that such an approach cannot be
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`reconciled with the Supreme Court’s rejection, in Two Pesos, Inc. v. Taco Cabana,
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`Inc., of this Court’s old rule declaring “protection for trade dress unavailable
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`absent proof of secondary meaning.” 505 U.S. 763, 772 (1992). But the Supreme
`
`Court’s problem with our old rule was not that it permitted secondary meaning
`
`(i.e., acquired distinctiveness) to supplant inherent distinctiveness. To the
`
`contrary, the Supreme Court expressly reiterated that distinctiveness can arise,
`
`independently, in either form: “An identifying mark is distinctive and capable of
`
`being protected if it either (1) is inherently distinctive or (2) has acquired
`
`20
`
`
`
`distinctiveness through secondary meaning.” Id. at 769 (emphasis in original).
`
`Rather, the Supreme Court’s concern was that this Court’s rule did not permit
`
`trade dress to be protected even where it had been found (in that case, by a jury) to
`
`be inherently distinctive. Id. at 772. We have applied no such rule in the false
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`endorsement context. Nor are we saddled with any such inherent distinctiveness
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`finding – or even an argument from Plaintiffs that their marks are inherently
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`distinctive – in this case.
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`And therein lies the wisdom underpinning the Electra panel’s approach.
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`The concept of inherent distinctiveness is simple enough to apply where, say, one
`
`restaurant sues another for coopting its “festive” dining setup, “decorated with
`
`artifacts, bright colors, paintings and murals,” as in Two Pesos, 505 U.S. at 765, or
`
`even when the subject matter is human names, as in, e.g., 815 Tonawanda Street
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`Corp. v. Fay’s Drug Co., 842 F.2d 643, 648 (2d Cir. 1988); Paco Sport, Ltd. v Paco
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`Rabanne Perfumes, 234 F.3d 1262 (2d Cir. 2000) (summary order). It is more
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`awkward to apply when it effectively interrogates how much one human being
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`does, or does not, physically resemble another. And that includes, as this case
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`vividly illustrates, inquiries concerning the extent to which one unnamed model,
`
`21
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`
`
`whose face may or may not be shown, and who may appear to be of a certain
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`race, ethnicity, body type, physical stature, etc., resembles another.
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`The usual criteria for inherent distinctiveness, in any event, have little
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`application here. In a false endorsement case like this one, the “mark” in question
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`is the identity of the purported endorser herself. Bondar v. LASplash Cosms., No.
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`12-CV-1417-SAS, 2012 WL 6150859, at *5 (S.D.N.Y. Dec. 11, 2012) (“Courts in this
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`Circuit have recognized that celebrities have a trademark-like interest in their
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`name, likeness, and persona that may be vindicated through a false endorsement
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`claim under the Lanham Act.”). But unlike a conventional adopted mark, an
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`endorser’s face and body fall nowhere on the familiar spectrum from “arbitrary”
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`to “generic”; their identity inherently is their mark. And where any face or figure
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`regarded as “attractive,” J.A. 1547, will do, notwithstanding the anonymity of the
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`actual person whose face or figure is depicted (and the negligible endorsement
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`value derived from that actual person’s connection to the product being sold), the
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`unauthorized use of that person’s image may invade rights granted by other
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`statutes or common law sources, see, e.g., the discussion of N.Y. Civ. Rights Law
`
`22
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`
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`§§ 50-51 below,3 but creates no risk of consumer confusion as conceived under
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`the Lanham Act.
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`The Electra panel’s focus on recognizability thus serves the purposes of
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`trademark law in the false endorsement context.4 It properly calibrates strength
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`as a function of the extent to which the purported endorser’s identity and
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`goodwill can be linked to the product being sold. It is also consistent with our
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`precedent recognizing that “even a common name mark may warrant protection
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`as a strong mark if it has achieved distinctiveness in the marketplace,” but
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`emphasizing that “if the mark is not recognized by the relevant consumer group,
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`3 Defendants in fact conceded liability under §§ 50-51 with respect to the one
`Plaintiff’s claim whose timeliness they did not contest below.
`
`4 Although Electra was the first time we endorsed that approach, district courts in
`this Circuit have long applied it to false endorsement cases. See, e.g., Pelton v.
`Rexall Sundown, Inc., No. 99-CV-4342-JSM, 2001 WL 327164, at *3 (S.D.N.Y. Apr. 4,
`2001) (remarking that the “strength of [plaintiff’s] mark or name is a crucial factor
`in determining likelihood of consumer confusion,” and granting summary
`judgment to defendants because “there [was] no evidence that [plaintiff] is a
`recognizable celebrity”); Jackson v. Odenat, 9 F. Supp. 3d 342, 357 (S.D.N.Y. 2014)
`(“In a celebrity endorsement case, the ‘mark’ is the plaintiff’s persona and the
`‘strength of the mark’ refers to the level of recognition that the plaintiff has
`among the consumers to whom the advertisements are directed.”); Gibson, 391 F.
`Supp. 3d at 245-46 (“In [a false endorsement case] the Court, like other courts in
`this District, interprets the strength of the mark to mean the level of recognition
`the celebrity has among the segment of the public to whom the goods are
`advertised.” (internal quotation marks omitted)).
`
`23
`
`
`
`a similar mark will not deceive . . . consumers.” Brennan's, 360 F.3d at 132.
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`Finally, the adoption of that approach in Electra is, of course, binding on us, as it
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`was binding on the district court. And the district court faithfully and correctly
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`applied it.
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`2.
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`Lack of Evidence of Recognizability
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`The district court also correctly evaluated the evidence relevant within that
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`framework. First, it permissibly excluded Plaintiffs’ putative expert testimony as
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`unreliable; it then correctly concluded that because Plaintiffs were left with next
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`to no evidence of recognizability, the strength-of-mark Polaroid factor weighed in
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`Defendants’ favor.
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`As to the expert evidence, Plaintiffs argue that the district court abused its
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`discretion in excluding as unreliable testimony from Plaintiffs’ expert, Martin
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`Buncher. We disagree. “In deciding whether a step in an expert’s analysis is
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`unreliable, the district court should undertake a rigorous examination of”
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`multiple factors, including “the method by which the expert draws an opinion,”
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`and “should only exclude the evidence if the flaw is large enough that the expert
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`lacks good grounds for his or her conclusions.” Amorgianos v. Nat’l R.R. Passenger
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`Corp., 303 F.3d 256, 267 (2d Cir. 2002) (internal quotation marks omitted). Here,
`
`24
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`
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`the court permissibly determined that Buncher’s survey of 812 respondents “who
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`had patronized . . . a ‘Bikini Bar/Gentlemen’s Club/Strip Club’ in the past two
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`years,” J.A. 160, suffered from methodological flaws and therefore did not lay a
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`reliable foundation for his recognizability analysis.5 Specifically, the court flagged
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`the study’s absence of a control group, its overly inclusive approach to actual
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`recognition,6 and its failure to show respondents several Plaintiffs’ full faces
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`(which, the court noted, somehow did not appear to have meaningfully affected
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`respondents’ professed ability to recognize the Plaintiffs who were pictured).
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`Exclusion on those grounds was comfortably within the court’s discretion. See
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`Amorgianos, 303 F.3d
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