Formalism run amok?

Ansel Adams Publishing Rights Trust v. PRS Media Partners, LLC, 2010 WL 4974114 (N.D. Cal.)

The Trust claims to own all Ansel Adams IP. Defendant Norsigian claims to possess 65 lost Ansel Adams negatives. The Trust disagrees that the negatives were created by Adams. The Trust sued for trademark infringement, false advertising, false endorsement, trademark dilution, and violation of the right of publicity.

Defendants argued that the false designation of origin claim was barred by Dastar, but the court held that they failed to show how Dastar applied. Defendants further argued that the Lanham Act claims were barred by nominative fair use. Because the allegation was that defendants used the plaintiff’s mark to describe defendants’ prints and posters, nominative fair use was inapplicable.

Comment: what? Okay, either this case is extremely poorly litigated or the court is extremely confused. There are two possibilities: either the negatives can properly be described as having been created by Adams, or they can’t be. In the first case, defendant wins; if we want, we can call that nominative fair use, since the only good way to explain that you have Adams prints for sale is to use Adams’ name. While this issue clearly can’t be decided on a motion to dismiss if the Trust properly pled that the negatives don’t come from Adams, the best I can figure is that the court has been confused into a formalistic distinction between descriptive and nominative fair use that is simply unhelpful when the issue involves a communicative product and a mark that is also the name of a creator.

As for false advertising, the defendants argued that the term “Ansel Adams Lost Negatives” was a noncommercial statement of opinion, since their use of the term related only to the negatives and not to their prints therefrom. But the Trust alleged that defendants claimed that the prints and posters they offer for sale are the works of Ansel Adams. This was commercial speech.

Defendants then argued that the First Amendment barred the Trust's right to publicity claim because their "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 Ansel Adams." Under Saderup, the right of publicity may trump advertisers’ right to use celebrities’ names, but the right to comment on celebrities must be given broad scope. Transformative uses will be protected by the First Amendment, but here defendants didn’t address whether their use of Ansel Adams’ name and likeness was transformative. The Trust alleged that the use of Ansel Adams’ name and likeness was for purely commercial purposes: to market and sell prints and posters.

Comment: again, what on earth is going on? If these are Ansel Adams negatives, then there is no right of publicity violation, whether one invokes the First Amendment’s protection for truthful commercial speech or simply the extremely intuitive proposition that a celebrity (or his/her estate) has no right to suppress association of his or her name with something that he or she actually made. Transformativeness is beside the point; it would matter if somebody else had created a work about/depicting the celebrity. Indeed, arguably it's more transformative to attach Ansel Adams' name to something he didn't make than something he did; there's certainly more new meaning and message to the former, as many an appropriation artist could testify.

Again: a motion to dismiss should be denied if it is properly pled that these aren't Ansel Adams negatives.  But that's the only issue, and the fact that the case law apparently led the court to think that anything else mattered is evidence that our trademark and right of publicity doctrines have lost all connection to common sense.