Tesfay v. Hanesbrands Inc.

Background

Yordanos Tesfay sued Hanesbrands Inc. over the continued appearance of photographs taken during a 2008 modeling agreement involving Playtex products. Tesfay alleged that Hanes breached the agreement by continuing to use her images after the agreement’s permitted use periods ended. She also alleged that the use violated section 51 of the New York Civil Rights Law, which addresses using a person’s name, portrait, picture, or voice for advertising or trade without written consent.

The agreement defined Tesfay as the “Model” and Playtex as the “Client.” It allowed specified uses of her images during defined use periods, including internet advertising and display on websites owned by the client’s customers. After the use periods ended, the agreement stated that the client could not use the images or produce, ship, or distribute materials incorporating them, but did not require the client to recall or remove materials remaining in circulation. The agreement also gave Playtex ownership of the image copyrights. The court assumed, without deciding, that Hanes was legally bound by the agreement.

Tesfay alleged that, in March 2019, images from the original photo shoot appeared on Sears and Kmart websites and in a Boscov’s printed publication advertising a Playtex bra. She alleged that Hanes had licensing agreements with those businesses and others governing the use of Hanes’s trademarks, copyrights, and images. She also alleged that Hanes had not compensated her for image use after 2012.

Legal Standard

Hanes moved to dismiss under Rule 12(b)(6), which allows dismissal when a complaint does not state a legally sufficient claim. At this stage, the court accepts well-supported factual allegations as true and asks whether they plausibly show that the defendant is liable. Legal conclusions and unsupported accusations are not treated as facts.

Breach of Contract

The court applied New York law because the agreement selected New York law. To state a contract-breach claim, Tesfay had to allege a contract, her own performance, Hanes’s failure to perform, and resulting damages.

The court held that the agreement was unambiguous and that its plain language did not support Tesfay’s interpretation. The agreement prohibited the client from using the images after the applicable use periods, but Tesfay alleged that the images were published by Hanes’s customers or licensees rather than by Hanes itself. The court concluded that “use” did not mean that Hanes had to take affirmative steps to prevent third parties from using the images.

The court also found insufficient Tesfay’s allegations about licensing agreements. She did not allege that those agreements covered her images or that Hanes received an indirect benefit from licensing them that would amount to Hanes’s use. An agency theory also failed because she did not allege that Hanes directed or controlled the customers’ conduct, authorized or encouraged the post-period uses, or even knew about them.

The court rejected Tesfay’s argument that the agreement’s definition of “General Uses,” which included certain uses on customer websites, changed the meaning of “use” in the post-period restriction. The court said the agreement used those terms differently and would not rewrite the agreement to impose an obligation that the parties had not included.

New York Civil Rights Law § 51

Section 51 requires allegations that the defendant used the plaintiff’s name, portrait, or picture in New York for advertising or trade, without written consent. The court held that Tesfay failed to plausibly allege the required use by Hanes for the same reason that her contract claim failed: the complaint alleged publication by Hanes’s customers or licensees, not use by Hanes.

The court characterized the allegation that Hanes used Tesfay’s image for advertising or trade without consent as a legal conclusion rather than a factual allegation. Because the complaint did not adequately allege that Hanes itself used the images, the Section 51 claim also failed.

Disposition

The court granted Hanes’s motion to dismiss as to both causes of action in the amended complaint. It granted Tesfay leave to replead both claims, requiring any amended complaint to be filed by January 15, 2020. The opinion does not state that the claims were dismissed with or without prejudice.