By: Matthew G. Massari
Ten years ago, Rick Norsigian visited a garage sale in Fresno, California, and bought a box of sixty-five photographic negatives for $45. Norsigian claims to have noticed that the negatives resembled Ansel Adams’ Yosemite National Park photos. He hired an attorney to assemble a team of experts to authenticate the negatives. In a July 21, 2010 press release and a July 27, 2010 press conference, Norsigian and his lawyer proclaimed that the team of experts had analyzed the negatives for six months and concluded that the photos were created by iconic American photographer Ansel Adams "beyond a reasonable doubt." The “expert report,” which at the time of this writing is available on the website located at www.ricknorsigian.com, prominently features Ansel Adams’ name and trademark. Claiming that the collection is “the lost work of Ansel Adams” from the 1920s or 1930s, Norsigian is now offering for sale prints and posters made from the images for $1,500 to $7,500.
The Ansel Adams Publishing Trust, which owns the intellectual property rights in and to Ansel Adams’ works, including the trademark ANSEL ADAMS, filed suit on August 23, 2010, in the U.S. District Court for Northern California to stop Rick Norsigian and his lawyer from selling prints made from the negatives. In its lawsuit, the Adams Trust calls Norsigian’s claims that the negatives are Adams’ long lost works “dubious at best.” The Adams Trust accuses Norsigian and his lawyer of, among other things, trademark infringement, claiming that use of Mr. Adams’ name and the ANSEL ADAMS trademark “are likely to cause confusion, mistake, and/or deception as to the source, origin, endorsement and approval of Defendants’ products.” The Ansel Adams Publishing Rights Trust v. PRS Media Partners, LLC, et. al. (ND CA, Case No. CV 103740 EDL). For purposes of this article, we will assume that the works were actually created by Ansel Adams. If they were, then it would seem that Mr. Norsigian and his lawyer have a pretty good fair use defense as to the trademark claims.
Trademark law recognizes a defense where the mark is used only "to describe the goods or services of [a] party, or their geographic origin." 15 U.S.C. Section 1115(b)(4). The fair use defense is available to one who, in good faith, fairly uses another’s trademark in a descriptive sense rather than its trademark sense. See e.g. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (“classic fair use” concerns the defendant’s use of the plaintiff’s mark to describe the defendant’s own product); Playboy v. Welles, 279 F.3d 796 (9th Cir. 2002) (Playboy sued its former bunny, Terri Welles, for using the words "Playboy" and "Playmate of the Year" in her website’s metatags; Welles won, arguing that these terms were necessary to accurately describe her as "Playboy Playmate of the Year 1981."). “[T]he courts will hold as a matter of law that the original producer does not sponsor or endorse another product that uses his mark in a descriptive manner.” New Kids on the Block v. News America Pub., Inc. 971 F.2d 302 (9th Cir. 1992) (citing Schmid Laboratories v. Youngs Drug Products Corp., 482 F.Supp. 14 (D.N.J. 1979) (“ribbed" condoms). Courts have found that nominative fair use exists where the defendant used the plaintiff’s mark simply to describe the plaintiff’s own product.
In Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir., 1969), the Ninth Circuit recognized that in "advertising [the repair of Volkswagens, it] would be difficult, if not impossible, for [Church] to avoid altogether the use of the word ‘Volkswagen’ or its abbreviation ‘VW,’ which are the normal terms which, to the public at large, signify appellant’s cars." Id. at 352. Church did not suggest to customers that he was part of the Volkswagen organization or that his repair shop was sponsored or authorized by VW; he merely used the words "Volkswagen" and "VW" to convey information about the types of cars he repaired. Therefore, his use of the Volkswagen trademark was not an infringing use. In Wells, supra, 279 f. 3d 796, defendant’s title “Playmate of the Year 1981” could be used to identify herself on her website and to index the content of her website, but stylized use of “PMOY ’81” abbreviation was held not a nominative use because it was not necessary to describe defendant.
The test for nominative use requires the court to ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder. See New Kids on the Block v. News America Pub., Inc. 971 F.2d 302 (9th Cir. 1992). Based on nominative fair use case law, and assuming that the photos are legitimately the work of Ansel Adams, it would seem that Norsigian has a right to use the Ansel Adams mark to describe the product he is selling. Indeed, it would be difficult, if not impossible for Norsigian, or any other legitimate seller of legitimate Ansel Adams’ prints, to describe the product without using the name “Ansel Adams.” Would the confusion claimed by the Adams Trust be avoided were Norsigian forced to advertise the products as “prints from that certain iconic American photographer famous for his black and white landscape photography from the 1920s and 1930s.”?