In 'Baywatch' case, court ponders discovery rule for models' tort claims over ads posted on Facebook

Models suing an adult entertainment club occasioned the high court of Massachusetts to ponder the problem of social media and the statute of limitations on media torts in a decision Wednesday.

When I heard that the Massachusetts Supreme Judicial Court decided a case about Baywatch, I knew I would want to blog about it.

Alas, I was misled. "Bay Watch" in the instant matter has nothing to do with the The Hoff or 1990s TV.

Plaintiffs allege this ad depicts model Paola Cañas.
From Compl. ex. D.

Still, it's an interesting case. Bay Watch, Inc., is the owner of an adult entertainment club in Stoughton, Massachusetts, Club Alex's. In a lawsuit filed in federal district court in June 2021, six globally recognized models alleged that Club Alex's posted their images, some of them in scant swimwear, to Facebook to promote the club, even though none of the models had any association with the club. The models alleged trademark infringement, misappropriation ("right of publicity"), defamation, and conversion.

The issue in the trial court was the statute of limitations for the state tort claims. Sitting on the generous end of the spectrum, Massachusetts allows three years for media tort claims. But the ads the plaintiffs complained about appeared from 2013 to 2015. The district court accordingly granted summary judgment on the tort claims to the defendant in 2023. But on a plaintiff motion to reconsider at the end of the year, the court agreed to certify the limitations question to the Massachusetts Supreme Judicial Court (SJC).

Alas, not that one (IMDb).

The plaintiffs in the trial court had tried to avail of "the discovery rule," a common law rule that tolls the statute of limitations when it would work an unfairness on a plaintiff who is reasonably not cognizant that she suffered an injury for which there might be a legally responsible actor. 

The discovery rule gets a lot of play in toxic tort cases, in which illness alleged to have resulted from exposure to toxic substances might take years to manifest, and the risk of exposure might not even have been known to the victim at the time. Buttressing his decision with gender-equity-oriented social science, the late Judge Jack Weinstein famously used the discovery rule in the 1990s to give reprieve to plaintiffs suing the makers of DES, a once widely prescribed synthetic estrogen replacement that turned out to be dangerously carcinogenic.

The discovery rule is appealing as a matter of fairness, but applying it can introduce a thorny question of fact. And there are many more thorns when the rule is invoked in a case without the clear delimiters of physical injury.

It's often said, as a default matter, that the limitations period for media torts, such as defamation, runs from the time of publication. Usually that rule works well enough. But in some cases, plaintiffs are able to invoke the discovery rule. If cases are any indication, then defamation occurs in the disruption of business relationships more often than in the pop culture paradigm of media subject versus publisher. A businessperson, for example, might think she lost a contract on the merits of a bid and only later discover that she lost the contract upon the whisper of a false and harmful rumor into the right ear.

Proliferation of media in the internet age has made courts slightly more willing to afford plaintiffs an argument for the discovery rule, because mass media publication in a sea of online content might not rise to an injured's attention as quickly as a story in the town paper in ye olden days. But courts' patience is not without limit. In the online environment, courts have adapted another rule familiar to the conventional interplay of mass media and the discovery rule. As the SJC opined, in part quoting the Massachusetts Appeals Court:

"[W]here an alleged defamatory publication is broadly circulated to the public, and did not involve concealment or confidential communications," the discovery rule will not be applied, and the cause of action will accrue upon publication, as such widespread publication should have been discovered by the plaintiff.

In other words, the limitations period runs upon publication, unless plaintiff can invoke the discovery rule because a reasonable person would not have recognized the harm and arguably causal actor, unless the thing was out there for everyone so the plaintiff should have recognized the harm and arguably causal actor—in which case we come back around to publication again.

If that sounds circular .... Right. The problem with this approach is that if a reasonable person would not have recognized harm, cause, and actor, then, by definition, the plaintiff cannot be expected to have recognized harm, cause, and actor. In tort analysis, the word "should" means "a reasonable person would."

What this approach really allows is for the court to deny the plaintiff the latitude of the discovery rule as a matter of law, and to dismiss, without having to hassle (or Hassel) with the plaintiff's reasonable cognizance as a question of fact suitable for trial. In short, what the court giveth, the court may taketh away.

And that's what happened in the instant case. The federal district court first indicated that it was inclined to dismiss because the ads appeared too long ago. When the plaintiffs tried to invoke the discovery rule, the court was skeptical. These are world famous models with agents whose job it is to scan for unlicensed uses of clients' likenesses, and with lawyers who have sued over misappropriations before. All the same, the court concluded, credibility notwithstanding, these images were out there in the world long enough that the plaintiffs should have found out about them. So no discovery rule.

What seems to have given the court pause on reconsideration is that the images here were posted on social media. A paralegal in the employ of the plaintiffs

attested that there is no software that would allow her to efficiently search for the images in question and that Internet search engines do not search social media posts. As a result, the only available method is this "particularized research of particular establishments." It is this process, presumably, that led the plaintiffs to the defendant's Facebook posts.

But that took time.

The witness had a point. Google seems slow to index social media when it does at all. Many writers have trumpeted "the death of the search engine," as users prefer to seek answers in familiar social media not as polluted as Google search results with commercialization and distortions resulting from digital marketing under the guise of "optimization."

As well, the tech giants seem to have backed off image searching. When reverse image search first came out, I had fun seeing what famous people Google thought I looked like. Now, no matter what image I start with, Google either finds me, or finds nothing, saying, "Results for people are limited. Try searching a larger [image] area." The search tools can't have gotten dumber; that must be a choice. The SJC observed in evidence in the case that Facebook terminated its image search tool in 2021.

You see it, right?

There are now reverse image search apps, by the way, especially for celebrity matches. I'm apparently a dead ringer for UK actress Natalie Dormer (image via Flickr by Gage Skidmore CC BY-SA 2.0, cropped) or the great James Earl Jones (image via Flickr by Phil Davis CC BY-NC-SA 2.0, edited). Eat your heart out, Hollywood. The Celebs app sees me.

The federal district court thus asked the SJC to clarify how the statute of limitations works in a social media world.

In a characteristically methodical opinion for a unanimous court, Justice Scott Kafker stepped through the analysis in 25 pages. The opinion is elaborative, but it adds nothing new. The approach remains: publication, unless discovery rule, unless broad circulation. At greater length in conclusion, here is the court's explanation of the discovery rule in the context of social media:

Claims ... that arise from material posted to social media platforms accrue when a plaintiff knows, or reasonably should know, that he or she has been harmed by the defendant's publication of that material. Given how vast the social media universe is on the Internet, and how access to, and the ability to search for, social media posts may vary from platform to platform and even from post to post, that determination requires consideration of the totality of the circumstances regarding the social media posting, including the extent of its distribution, and the accessibility and searchability of the posting. The application of the discovery rule is therefore a highly fact-specific inquiry, and the determination of whether plaintiffs knew or should have known that they were harmed by a defendant's post on social media must often be left to the finder of fact. If, however, the material posted to social media is widely distributed, and readily accessible and searchable, a judge may determine as a matter of law that the discovery rule cannot be applied.

The record was insufficient, the SJC opined, to determine how the approach should work in the instant case. The plaintiffs had equivocated, the SJC observed, when asked when they first knew about the postings. If they knew before 2018, the court reasoned, then case over. Someone should ask them that.

It is possible for the conventional "whisper" scenario to play out on social media. The SJC cited a California case, Jones v. Reekes (Cal. Ct. App. 2022), in which plaintiff had been blocked from viewing the defendant's postings. Still, the California court concluded that the postings "were otherwise available to the public[,] and the block was easily circumventable;" moreover, the plaintiff was on alert generally to the defendant's derisive commentary. So the plaintiff was precluded from availing of the discovery rule, and the date of publication controlled.

Now I can't unsee it.

Jones was thus not exceptional as a mass media case, and I don't think Bay Watch is either. I suspect the SJC was being deferential to the federal trial court, giving it a chance to make the final call. It seems to me quite clear already that the district court did what the SJC commanded when it first ruled for the defense in 2023. The SJC having confirmed the rule, there seems little more for the district court to do but reenter that judgment.

The result might seem unfair to the assiduously searching plaintiffs, or, more precisely, their agents and lawyers. But the statute of limitations furthers meritorious competing interests, including finality in freedom from legal jeopardy on the part of all publishers.

The case in the SJC is Davalos v. Bay Watch, Inc., No. SJC-13534 (Mass. Sept. 4, 2024) (Kafker, J.) (FindLaw). The case in the federal court is Davalos v. Baywatch, Inc., No. 1:21-cv-11075 (D. Mass. Dec. 15, 2023) (Gorton, Dist. J.) (Court Listener).

UPDATE, Sept. 12: I was saddened to hear of James Earl Jones's passing shortly after I published this post (N.Y. Times, Sept. 9, 2024). All joking of resemblance aside, I was a fan.

Right of publicity protects personality, not Warren-Brandeis privacy, explains new work among four by UMass Law faculty

Four recent and compelling publications from my colleagues at UMass Law examine privacy and the right of publicity, LGBTQ civil rights, legal pedagogy, and law librarianship in public service.

Prof. Marlan

Professor Dustin Marlan has done the hard work of building the philosophical foundation for a personality-based right of publicity, disentangled from Warren-Brandeis privacy.  "Unmasking the Right of Publicity" is available on SSRN and forthcoming in the Hastings Law Journal.

This Article examines the potential influence of psychoanalytic thought on the conception of publicity as a right distinct from privacy.

In the landmark case of Haelan Laboratories v. Topps Chewing Gum, Judge Jerome Frank articulated the modern right of publicity. The right is now most often seen to protect the strictly commercial value of one’s “persona”—the Latin-derived word originally meaning the mask of an actor. Among other criticisms, the right of publicity is frequently accused of lacking a coherent justification, permitting only economic redress against public harms to the persona, and stripping away individual identity by allowing for an alienable, proprietary right in one’s personality. Why might Judge Frank have been motivated to create a transferable intellectual property right in the monetary value of one’s persona distinct from the psychic harm to feelings, emotions, and dignity protected under the rubric of privacy?

Judge Frank was a leading figure in the American legal realist movement known for his unique and controversial “psychoanalysis of certain legal positions” through seminal works including Law and the Modern Mind, Why Not a Clinical Lawyer-School?, and Courts on Trial. His work drew heavily on the ideas of psychoanalytic thinkers, like Sigmund Freud and Carl Jung, to describe the distorting effects of infantile and unconscious wishes and fantasies on the decision-making process of legal actors and judges. For Judge Frank, the psychoanalytic interplay between dual parts of the personality supported the realist interpretation of lawmaking as a highly subjective and indeterminate activity. Indeed, though Judge Frank provided little rationale for articulating a personality right separate from privacy in Haelan, he had given a great deal of attention to the personality in his scholarly works.

In the spirit of Judge Frank’s psychoanalytic jurisprudence, this Article suggests that the right of publicity’s aim, apart from the personal right to privacy, may be understood through the psychoanalytic conception of the personality—one divided into public and private spheres. In the psychological sense, the term persona, or “false self,” refers to an individual’s social facade or front that reflects the role in life the individual is playing. That is, as a metaphor for the actor and their mask, the persona is used to indicate the public face of an individual, i.e., the image one presents to others for social or economic advantage, as contrasted with their feelings, emotions, and subjective interpretations of reality anchored in their private “true self.”

However, the law’s continued reliance on a dualistic metaphor of the personality—i.e., divided sharply into inner (private) and outer (public) subparts—appears misguided amidst a growing technology, internet, and social media-driven need for interwoven privacy and publicity rights. The Article thus concludes by examining intersubjective personality theory, which might provide a useful conceptual update in its view of the personality as contextual, relational, and dependent on social interaction—rather than divided sharply between the public and private.

Prof. Ho

Professor Jeremiah Ho has authored a piece building on the Masterpiece Cakeshop case (U.S. 2018) and continuing his important work in LGBTQ civil rights.  "Queer Sacrifice in Masterpiece Cakeshop" is available on SSRN and forthcoming in the Yale Journal of Law and Feminism.  Here is the abstract:

This Article interprets the Supreme Court’s 2018 decision, Masterpiece Cakeshop, Ltd. v. Colorado Civil Rights Commission, as a critical extension of Derrick Bell’s interest convergence thesis into the LGBTQ movement. Chiefly, Masterpiece reveals how the Court has been more willing to accommodate gay individuals who appear more assimilated and respectable—such as those who participated in the marriage equality decisions—than LGBTQ individuals who are less “mainstream” and whose exhibited queerness appear threatening to the heteronormative status quo. When assimilated same-sex couples sought marriage in Obergefell v. Hodges, their respectable personas facilitated the alignment between their interests to marry and the Court’s interest in affirming the primacy of marriage. Masterpiece, however, demonstrates that when the litigants’ sexual identities seem less assimilated and more destabilizing to the status quo, the Court becomes much less inclined to protect them from discrimination and, in turn, reacts by reinforcing its interest to preserve the status quo—one that relies on religious freedoms to fortify heteronormativity. To push this observation further, this Article explores how such failure of interest convergence in Masterpiece extends Derrick Bell’s thesis on involuntary racial sacrifice and fortuity into the LGBTQ context—arguing that essentially Masterpiece is an example of queer sacrifice. Thus, using the appositeness of critical race thinking, this Article regards the reversal in Masterpiece as part of the contours of interest convergence, queer sacrifice, and fortuity in the LGBTQ movement. Such observations ultimately prompt this Article to propose specific liberationist strategies that the movement ought to adopt in forging ahead. 

Prof. Flanagan

Professor Rebecca Flanagan has authored an article in legal pedagogy in which she endeavors to bring some clarity to the process of preparing law students for this rapidly evolving market. Better by Design: Implementing Meaningful Change for the Next Generation of Law Students was published at 71 Me. L. Rev. 103 (2019).  Here is the abstract:

This article presents a fictitious, utopian law school to challenge the assumption that legal education has met adequately the challenges of preparing law students for an evolving profession. By presenting the utopian ideal, the author highlights how adoption of best practices in learning and cognitive sciences could transform legal education from a highly criticized institution to a dynamic, self-transforming academy designed to meet the changing needs of students and the practicing bar.

Librarian Jessica Almeida has co-authored an article on law librarianship in public service, "Hosting a Successful Transcription Party," appearing in the AALL Spectrum, March/April 2019, at 42.  The work describes how New England law librarians and the Rhode Island State Archives used a transcription event to combine service and outreach to the community.

Despite IP exclusion, insurer bound to defend in right-of-publicity case over running shoes, Mass. high court holds

Upon an underlying case involving the right of publicity coupled with consumer protection and equity claims, the Massachusetts Supreme Judicial Court (SJC) today held insurers duty-bound to defend an insured running-shoe maker, despite the exclusion of intellectual property claims from coverage.

Abebe Bikila in Rome, 1960

Massachusetts-based Vibram USA, through its affiliate Vibram FiveFingers, named a line of "minimalist" running shoes after Ethiopian Olympic athlete Abebe Bikila, who ran barefoot when he set a marathon world record in Rome in 1960.  (See clips from 1960 and Bikila's 1964 marathon win in Tokyo on the Olympic Channel).  Seriously injured in a car accident in 1969, Bikila died of a cerebral hemorrhage in 1973.  Since then, the family has made commercial use of the Bikila name in enterprises including a Spanish retail sporting goods chain, a Bikila biography, a Japanese commercial, and a biographical feature film.  The family objected to Vibram's association of its shoe with Bikila without permission.

The complaint comprised four counts: (1) right of publicity under the Washington Personality Rights Act, (2) violation of the Washington Consumer Protection Act, (3) unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and (4) unjust enrichment.  Vibram's general insurance and liability policies with two providers, Salem-based Holyoke Mutual and Maryland Casualty, covered "personal and advertising injury liability," without defining "advertising injury"; however, the coverage excluded intellectual property liability.  The insurers sought, and the superior court granted, declaratory relief from coverage.  The SJC reversed.

To trigger an insurer's duty to defend, the insured need show only "a possibility that the liability claim falls within the insurance coverage."  The duty to defend is broader than the duty to indemnify.  The Bikila complaint alleged that Vibram used Bikila as "an advertising idea."  Bikila family members alleged that they had "intentionally and specifically connected the name to running-related ventures, and the name itself conveys a 'barefoot dedication to succeed under any circumstances,' a desirable quality for any of these ventures."  The insurers were mistaken in arguing that the claim was limited to the right of publicity, or was synonymous with trademark infringement, both IP theories excluded from coverage.  Rather, the essence of the Bikila claim was that Vibram sought to profit from Bikila-associated ideas.

Vibram FiveFingers Bikila Running Shoes (by Fuzzy Gerdes, CC BY 2.0)

From the court's opinion, it is not clear to me which or what combination of claims ensures that a complaint such as this one rises beyond the coverage exclusion.  Count 1 right of publicity by itself would not have been covered by the policy, and it is informative to see that the privacy tort now resides firmly in the IP household.  I suspect that count 3 under the Lanham Act also constitutes an excluded IP claim.  So perhaps statutory consumer protection and equitable quasi-contract each could do the trick.  Yet those theories, in any given case, could overlap wholly with IP claims.  The court's opinion suggests that there is something special about the misappropriation of an "advertising idea" that sets this case apart qualitatively from IP claims.  I'm not sure I see it.

Apparently the "advertising injury" language of the insurance coverage here is not without precedent, and the court gave an informative catalog of the "wide variety of concepts, methods, and activities related to calling the public's attention to a business, product, or service [that have] constitute[d] advertising ideas":

• logo and brand name, Street Surfing, LLC v. Great Am. E&S Ins. Co., 776 F.3d 603, 611-612 (9th Cir. 2014);
• patented telephone service enabling sale and promotion of products, Dish Network Corp. v. Arch Specialty Ins. Co., 659 F.3d 1010, 1022 (10th Cir. 2011);
• advertising strategy of "trad[ing] upon a reputation, history, and sales advantage" associated with Native American made products, Native Am. Arts, Inc. v. Hartford Cas. Ins. Co., 435 F.3d 729, 733 (7th Cir. 2006);
• concept of "Psycho Chihuahua" obsessed with Taco Bell food to advertise business, Taco Bell Corp. v. Continental Cas. Co., 388 F.3d 1069, 1072 (7th Cir. 2004);
• word "NISSAN" to promote vehicles to public, constituting "quintessential example of trademark functioning to advertise a company's products," State Auto Prop. & Cas. Ins. Co. v. The Travelers Indem. Co. of Am., 343 F.3d 249, 258 (4th Cir. 2003);
• use of internet domain, CAT Internet Servs., Inc. v. Providence Wash. Ins. Co., 333 F.3d 138, 142 (3d Cir. 2003);
• artwork and product model numbers designed to promote products (claim for trade dress infringement), Hyman v. Nationwide Mut. Fire Ins. Co., 304 F.3d 1179, 1189 (11th Cir. 2002);
• word "fullblood," connoting desirable quality, to advertise Simmental cattle breed, American Simmental Ass'n v. Coregis Ins. Co., 282 F.3d 582, 587 (8th Cir. 2002);
• agent misrepresenting himself as working for another company for purposes of inducing customers to make purchases, Gustafson v. American Family Mut. Ins. Co., 901 F. Supp. 2d 1289, 1301 (D. Colo. 2012); and
• patented technology used to market music for online sales, Amazon.com Int’l, Inc. v. American Dynasty Surplus Lines Ins. Co., 120 Wash. App. 610, 616-617, 619 (2004).

 "Advertising injury" is not "injury caused by other activities that are coincidentally advertised" (quoting Couch treatise).  "Otherwise stated, '[i]f the insured took an idea for soliciting business or an idea about advertising, then the claim is covered ... [b]ut if the allegation is that the insured wrongfully took a ... product and tried to sell that product, then coverage is not triggered'" (quoting Washington precedent and offering authorities in accord from other states).  Thus coverage is excluded in cases such as:

• use related to manufacture and not marketing, Winklevoss Consultants, Inc. v. Fed. Ins. Co., 991 F. Supp. 1024, 1034 (N.D. Ill. 1998);
• conspiracy to fix egg prices, Rose Acre Farms, Inc. v. Columbia Cas. Co., 662 F.3d 765, 768-769 (7th Cir. 2011);
• disparagement of competitor's pineapples to undermine their advertising, Del Monte Fresh Produce N.A., Inc. v. Transp. Ins. Co., 500 F.3d 640, 643, 646 (7th Cir. 2007);
• advertising another's patented method for cutting concrete, Green Mach. Corp., v. Zurich-American Ins. Group, 313 F.3d 837, 839 (3d Cir. 2002);
• design of product, Ekco Group, Inc. v. Travelers Indemnity Co. of Ill., 273 F.3d 409, 413 (1st Cir. 2001);
• misappropriation of product design, Frog, Switch & Mfg. Co. v. Travelers Ins. Co.,
  193 F.3d 742, 749-750 (3d Cir. 1999);
• taking of customer list and solicitation of customers from it, Hameid v. National Fire Ins. of Hartford, 31 Cal. 4th 16, 19-20 (2003);
• manufacture and sale of patented product, Auto Sox USA Inc. v. Zurich N. Am., 121 Wash. App. 422, 427 (2004).

So memorize those, and let me know when you're ready for the exam.

The case is Holyoke Mutual Insurance Co. in Salem v. Vibram USA, Inc., No. SJC-12401 (Mass. Sept. 12, 2018).  Suffolk Law has the oral argument video of Feb. 6.  The case was heard by the full court upon granting direct appeal, and the unanimous opinion was authored by Associate Justice David A. Lowy, a Boston University law grad and former ADA and Goodwin Proctor litigator.