Norsigian visited a garage sale in Fresno,
California, and bought a box of sixty-five
photographic negatives for $45. He now
claims that these are long-lost works of iconic American photographer Ansel
Adams from the 1920s or 1930s, and is selling prints from the negatives for
$1500 to $7500 each.
Adams Publishing Rights Trust, which owns all intellectual property rights in Adams' work and name, has sued Norsigian and a consulting
firm working with him. The complaint declares
that plaintiff does not believe the negatives to be Adams'
creations, but even if they are, defendants' sale of the prints is misleading and
detrimental to plaintiff's intellectual property rights.
alleges trademark infringement, false designation of origin, false advertising,
false endorsement, dilution, and right of publicity violations. There is no copyright claim in the complaint,
making this case an interesting exercise in protecting copyrightable material
without using copyright law.
plaintiff's claims would require it to overcome significant legal and factual hurdles. First, it is unclear whether the plaintiff is
using the name Ansel Adams as a trademark to indicate source or instead as a
description of its goods. Second, for
false designation of origin claims, the United States Supreme Court has ruled
that "origin" refers to source of manufacture, not creative
origin. Dastar Corp. v. Twentieth
Century Fox Film Corp., 539 U.S.
23 (2003). Third, the false advertising
claim presages a battle of experts before the court over the true origin of the
negatives. Fourth, plaintiff's claim of dilution
by blurring is tenuous because defendants are using the Ansel Adams name to
refer to Ansel Adams himself. There must be a second mark or product at
issue in order for there to be blurring; using a famous mark to refer to the
product of the owner of the famous mark cannot blur that mark. Tiffany,
Inc. v. eBay, Inc., 600 F.3d 93, 112 (2d Cir. 2010).
tarnishment, right of publicity and false endorsement claims appear to be
stronger causes of action. First, if
plaintiff can show that the defendants' products are of poor quality, it may be
able to show dilution by tarnishment.
Second, under California
right of publicity law, plaintiff would need to show that the defendants
knowingly used the plaintiff's identity and appropriated plaintiff's name to
defendant's commercial advantage, that plaintiff did not consent to the use of
the name, and plaintiff was injured by the defendant's use of the name. Adams,
who died in 1984, assigned his rights of publicity to plaintiff, and under
California law, publicity rights survive for 70 years after death. Third, the Ninth Circuit recognizes a false
endorsement cause of action and has even developed a list of false endorsement
factors, many of which seem to weigh in the plaintiff's favor in this case. See Downing v. Abercrombie & Fitch, 265
F.3d 994, 1007 (9th Cir. 2001).