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Motions to transfer, or in the alternative, to dismiss an array of federal and state claims against a company claiming to possess 65 “lost negatives” created by the late photographer Ansel Adams were denied by the U.S. District Court for the Northern District of California Dec. 12 (Ansel Adams Publishing Rights Trust v. PRS Media Partners, N.D. Cal., No. 10-3740 JSW, 12/1/10).
The court said that venue was proper in the Northern District of California because the company advertised its products on a website accessible to consumers in that forum. The court rejected arguments that the company made fair use of the Ansel Adams mark, that its use of the term “Ansel Adams Lost Negatives” was a non-commercial statement of opinion rather than false advertising, and that the First Amendment barred a right of publicity claim challenging use of the photographer's name and likeness.
The Ansel Adams Publishing Rights Trust owns the rights to the intellectual property of the late photographer, Ansel Adams, including his name and the “Ansel Adams” trademark.
Rick Norsigian possesses 65 negatives that he contends are lost negatives created by Adams. The Trust disputed that the lost negatives were created by Adams and said that Norsigian and his company, PRS Media Partners, unlawfully promoted and offered for sale the prints and posters they called “Ansel Adams Lost Negatives” using the Adams trademark and Adams' name and likeness.
The Trust sued Norsigian and PRS for trademark infringement, false designation of origin, unfair competition, false advertising, false endorsement, trademark dilution, and various California state law claims, including right of publicity.
PRS moved to transfer the action on the grounds that the Northern District of California was an improper venue or, alternatively, to dismiss under Fed. R. Civ. P. 12(b)(6).
PRS argued that, even if venue in the Northern District of California may be proper, the case should be transferred either to the Eastern or Central District because such transfer is permitted under 28 U.S.C. § 1406(a), “for the convenience of parties and witnesses and in the interest of justice.”
Judge Jeffrey S. White referenced the district court's ruling in Sutter Home Winery Inc. v. Madrona Vineyards,(N.D. Cal. 2005), in determining that the Northern District of California was proper venue. In Sutter Home,the defendant maintained a website on which it advertised its wines. Although the defendant did not sell wine online directly through its website, customers were able to download an order form from the website and then mail in the order. The court there held that venue was proper in the Northern District of California because consumers who resided in the district could be confused by the defendant's use of the mark in question.
“Similarly, here, Defendants advertise their prints and posters through a website accessible by consumers in the Northern District of California,” the court said. “Moreover, consumers may purchase Defendants' prints and posters directly through the website.” Thus, the court said that venue was proper pursuant to 28 U.S.C. § 1391(b)(2).
“Typically, a court should give a plaintiff's choice of forum great deference unless the defendant can show that other factors of convenience clearly outweigh the plaintiff's choice of forum,” the court said. “Defendants have not demonstrated that the convenience of witnesses and the parties, the ease of access to evidence, or that the interests of justice clearly outweigh the Trusts' choice of forum and that such factors tip in favor of transferring this case.”
PRS also argued that the Trust's claim for false designation of origin was barred by the Dastar Doctrine--referring to the Supreme Court's holding in Dastar Corp. v. Twentieth Century Fox Film Corp.,123 S. Ct. 2041, 66 USPQ2d 1641 (2003) (66 PTCJ 162, 6/6/03). However, the court said that PRS failed to define the doctrine or otherwise show how it was applicable here.
Further, PRS argued that the Trust's claim for false designation of origin, as well as its claims for false endorsement and trademark dilution, were barred because its use of the Ansel Adams mark constituted nominative fair use. Again, the court was not persuaded.
“The defense of nominative fair use applies where the defendant has used the plaintiff's mark to describe the plaintiff's product, as opposed to classic fair use where the defendant has used the plaintiff's mark to describe the defendant's own product,” the court said. “Here,” however, the court stressed, “the Trust alleges that Defendants have used the Ansel Adams mark to describe Defendants' product, the prints and posters.”
The court similarly turned back PRS's argument that the Trust's dilution claim should be dismissed for failure to allege that PRS was using a second trademark to blur or tarnish the Ansel Adams mark. Because the Trust alleged that PRS was using the Ansel Adams mark to sell its products, it had sufficiently alleged the use of an identical mark, the court said.
Next, the court rejected PRS's argument that the Trust's claim for false advertising failed because its use of the term “Ansel Adams Lost Negatives” constituted a noncommercial statement of opinion. The Trust's allegations that PRS had made statements and claims that the prints and posters it offers for sale are the works of Ansel Adams sufficed to show that the false advertising claim was premised on PRS's commercial speech, the court said.
Finally, PRS contended that the First Amendment bars the Trust's right of publicity claim because its use of the Ansel Adams name and likeness is related to a matter of great concern--the possible discovery of 65 glass negatives created by the iconic Adams.
To determine whether the First Amendment bars a right of publicity claim, courts must examine whether the new work adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message, the court said. However, PRS did not address to what extent its use of the Ansel Adams name and likeness is transformative, according to the court.
“More significantly, the Trust alleges that Defendants' use of the Ansel Adams name and likeness was use for purely commercial purposes--to market and sell 'Ansel Adams' prints and posters. Based on the Trust's allegations, the First Amendment does not bar its right of publicity claim.”
Thus, the court denied PRS's motion to transfer, or in the alternative, to dismiss.
The Trust was represented by Robert Steinberg of Latham & Watkins, Los Angeles. PRS was represented by Arnold P. Peter of Peter Rubin & Simon, Beverly Hills, Calif.
Opinion at http://pub.bna.com/ptcj/103740Dec1.pdf
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