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The Sky . . . Isn’t Falling?

Well this is interesting, even if some may not want to hear it.

The Computer & Communications Industry Association released a study today entitled “The Sky is Rising,” in which it states that, economically speaking, the entertainment industry grew by 50 percent over the past decade and that consumer spending on entertainment also increased.

I for one am going to more movies again, but I merely attributed this to the fact that my kids are now old enough to watch themselves while Andrea and I catch a flick. In any event, as to doing my part in connection with the economic up tick in the industry, you’re welcome.

A link to the actual report is here: http://www.ccianet.org/CCIA/files/ccLibraryFiles/Filename/000000000586/TheSkyIsRising7-130.pdf .

A brief summary of some of the report’s findings are here:

• Consumer spending on entertainment as a percentage of household income rose 15% between the years of 2000 and 2008;

• Employment in the entertainment industry grew 20% during other last decade, which apparently includes a large group of individuals – nearly half of the total increase — who identify themselves as “independent artists”;

• Box office revenue jumped 25% from 2006 to 2010 (talking round numbers, that’s up $6 billion — from $25.5 billion to $31.8 billion);

• The number movies produced is increasing at a terrific rate: leaping from 5,635 in 2005 to 7,193 in 2009

• The value of the entertainment industry worldwide grew nearly $300 billion between 1998 and 2010, from $449 billion to $745 billion (so nearly $25 B per year); and

• Concert sales in the U.S. went from $1.5 billion to $4.6 billion over the decade from 1999 to 2009. Now that reason to party likes it’s 1999.

As to movies produced, and box office bang, one can only assume that indy films deserve a good deal of credit for this. After all, with the increasing ease with which these films can be made, financed and distributed, many traditional barriers, long faced by film-makers, no longer exist. It’s easier than ever to create a film on a shoestring and actually get it into theaters, or directly into the homes of audience members. This is good news! It means that we’re guaranteed a treasure trove of cinematic gems that never would have seen a screening room 2 decades ago. I can’t see this as anything other than a big win for us all.

But what about the oft-heard dire statements about the death of the entertainment industry at the hands of the Internet? That’s part of what was driving SOPA. Does this mean that Sillywood will not kill Hollywood? Does it mean that Sillywood and Hollywood are on the verge of a new Golden Age, and will wander off, hand-in-hand into the sunset?

Who knows. I for one am encouraged by these figures, but stay tuned. . . .

And in the meantime, stop reading this post and go make a movie, write a film or record a song.

Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Orange County offices of Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

The Artist Known as Prince . . . Richard Prince

Richard Prince is an artist. At least according to some people. Others have less flattering terms for what he does.

Prince is principally a painter and a photographer. He may be best known for his technique of “appropriating” photographs which he then “rephotographs” to create his works.

One example of this is his work involving photographs from Marlboro cigarette ads of the Marlboro Man. Prince rephotographed these ads (thus incorporating the works of other photographers) to create his pieces, one of which sold at Christie’s in New York for more than $1 million in 2005.

His works have been collected by major institutions, including the Guggenheim.

Shockingly, this practice of “rephotographing” did not sit well with some of photographers whose work appeared in Prince’s pieces. Photographer Patric Cariou is one such photographer.

In December 2008, Cariou filed suit against Prince, the Gagosian Gallery, Lawrence Gagosian and Rizzoli International Publications, asserting copyright infringement in some of the works Prince was showing (and selling) Gagosian’s shop.

Specifically, Cariou alleged that Prince had appropriated 35 of Cariou’s photographs some of which he claimed had barely been changed by Prince. In addition, Cariou alleged that Prince also made more than two dozen paintings that included Cariou’s images.

This is a problem?

Prince argued that his use of the photographs amounted to “fair use.”

As you know, the “fair use” defense is decided on a case-by-case basis. As the Supreme Court noted in its recent ruling in Golan v. Holder (Jan 2012):

[T]he fair use defense, is codified at 17 U. S. C. §107: “[T]he fair use of a copyrighted work, including such use by reproduction in copies . . . , for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” This limitation on exclusivity “allows the public to use not only facts and ideas contained in a copyrighted work, but also [the author’s] expression itself in certain circumstances.” Eldred, 537 U. S., at 219; see id., at 220 (“fair use defense affords considerable latitude for scholarship and comment, . . . even for parody” (internal quotation marks omitted)).

Well, try as he might to sell the “fair use” defense, the District Court didn’t buy it. In March 2011, US District Judge Deborah A. Batts ruled against Prince, Gagosian Gallery, Inc., and Lawrence Gagosian, finding that Prince’s use of Cariou’s photos was not fair use.

Citing to the case of another pop artist, the court pointed to the 1992 Rogers v. Koons case in which infringement was found (and fair use rejected) in another instance of artistic “appropriation.”

So, what’s an artist to do? Why appeal of course!

This is precisely what Prince did, and now, ladies and gentlemen, the briefs are in and we wait for a ruling from the Second Circuit. (Prince et al. v. Cariou, case number 11-1197.)

Cariou is arguing that fair use does not apply because Prince failed to use his photographs in any transformative way. Prince argues that the pieces were sufficiently transformative because they created something new with a different purpose from the original.

Now interestingly, Prince did not simply rephotograph Cariou’s photos. Prince’s work included collaged, enlarged, cropped, tinted or over-painted images which, he did not deny, had been taken from Cariou’s book of photographs “Yes, Rasta.”

However, on the flip side, Prince testified that he “doesn’t really have a message” to communicate when he makes art, and that he not transformed Cariou’s images in any way so as to effectively make a comment about them.

I find this a little surprising. I mean, agree with the defense or not, like the work or not, that seems to be precisely what the artist known as Prince is doing. If the artist himself is not make a statement or a comment or an observation, then why does the work itself have any value? It is like Roy Lichtenstein’s famous “comic book” images: if all he’s doing is copying at random images that are not intended to convey something to the viewer, why bother? Why is it art? Certainly, why pay $1M or more for it?

I would expect that turns out to be a tactical error, both in terms of the litigation and in terms of the value of the work.

I’m not taking sides in this one. Having been raised in and around the visual arts, I’m pretty accepting of a wide spectrum of creativity (even when I think it is ridiculously facile, like the works of Damian Hurst), because I’m in favor of encouraging rather than squelching art, artists, creativity, creative effort, etc. It’s all art to me, it just might be shitty art.

This seems to be the view taken by wider artistic community as well. Various museums and others filed amicus briefs arguing that the district court’s ruling imperils appropriation art generally. Again, appropriation is nothing new. Look at the works of Warhol, Lichtenstein and Jasper Johns as three well respected examples of this. Are we really going to say artists can’t engage in such activity?

I hope not.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. His is resident in the firm’s Los Angeles and Irvine offices. He represents a wide range of artists (including visual artists, performing artists and musical artists), art galleries and collectors.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Batmobile Lawsuit Hits Car Marker – Kapow!

Haven’t written in a while despite some really important rulings on, e.g. finding of personal jurisdiction based on social network activity, but the following has something that even those weighty and intellectually stimulating topics don’t have: Batman.

Cue Batman music. Ok, it was annoying enough then, kill the music (insert sound of needle scraping LP here).

Batman?

Yes, and more particularly, the Batmobile. Quite possibly the coolest car ever invented. Even you Ferrari drivers know it.
Back to our story.

The case is DC Comics v. Mark Towle et al (2:11-cv-03934), before Judge Ronald Lew in the Central District of California.

It seems that a custom carmaker who goes by the name of “Gotham Garage” decided to build replica Batmobiles. Hey, who could blame him? I want one! I like this guy already! Porsche? Who needs a Porsche? I want a Batmobile, too!

(Just a note: Gotham Garage also apparently builds other custom roadsters to look like iconic vehicles from popular TV shows and movies. Thus, if you wanted your ride to be – the beat up old horse drawn wagon from Bonanza, for example – this might be the shop to turn to.)

But alas, not everyone thought his business plan was such a great idea. Enter DC Comics (a hero in their own right, come on, we have to admit it). DC, ahem, owns the copyright to Batman and all his accoutrements. While DC may love the Batmobile as much as the rest of us, they weren’t too hip on Mr. Towle making replicas and selling them to discerning buyers, comme moi.

So they (or was it our Caped Crusaders?) sued. Copyright infringement. And trademark. And trademark counterfeiting. And unfair competition under the Lanham Act, and common law unfair competition. Hey, these guys are not messing around.

The defendant attempted to have the case dismissed on a 12(b)(6) motion (failure to state a claim). A creative argument, he said that useful articles like automobiles are not copyrightable. Judge Lew said no. He sided with the plaintiff which argued that “While automobiles (in their entirety) may be considered useful articles not protected by copyright, defendant’s motion utterly ignores the issue of separability of nonfunctional, artistic elements of plaintiff’s Batmobiles from the underlying vehicle”.

So, point for the Dynamic Duo. The court found the complaint plead sufficient facts, thus allowing it to move forward.

Next Bat-step? Towles will have to answer DC’s allegations that Towles’ full-size, drivable Batmobile replicas — which include both the version from the 60’s TV show (which is the one I want) and the version from the films infringe DC’s rights as the comic book publisher.

I think the time has come for a quote from Rodney King, with a minor addition of my own: “Can’t we all just get along?” And can’t I have one of the Batmobiles after DC takes possession of them? Hey, I was named a Southern California Super Lawyer, but I don’t even have a cape! At the very least, I should get a car!
Stay tuned. Same Bat Channel . . . ok, I’ll spare you that part.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is resident in the Los Angeles and Orange County offices and can be reached at jonathan.pink@bryancave.com. In addition to litigating copyright and trademark issues, he really wants a Batmobile.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

36th Annual Intellectual Property Institute

Ok, I usually don’t shill for anybody, but this is a worthy event and, if you’re wasting time reading my blog (and yes, George, I know you are), then you might as well know about a really good source of IP information. Namely, the 36th Annual Intellectual Property Institute.

This year the festivities will be held on November 10-12, in Dana Point. It does cost something — but there are no cops at the door, so even if you’re flat broke, super cheap, or both, you could still probably listen from hall — or ask people what was said on their way out from any particular discussion. Will it be annoying if you do so? Yes. Will you be able to nab some free coffee at the same time? Yes? Does that make it worth it? Doesn’t it?

In any event, I am inviting one and all to join me at the 36th Annual Intellectual Property Institute at the Marriott Laguna Cliffs Resort, in Dana Point, California, for excellent continuing legal education programs, networking, meals, fun. On top of all that, you can join in the celebration of the IP Section’s IP Vanguard Award honorees: Jay Monahan @ Zynga, Adrian Pruetz @ Pruetz Law Group, Hon. Judge Kozinski @ 9th Circuit, and Eric Goldman @ Santa Clara University School of Law. (Side note: Eric is the person who first showed me the Internet — so in a way, this entire blog is his fault.)

The Institute is a relative bargain according to the people who are trying to get you to buy tickets, and there are steeply discounted resort rates (again, according to . . . .) See http://bit.ly/qHY03s for more information.

And please pass this invitation on to your colleagues and friends. Thanks.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

More, Yes More, On Rule 68

For no good reason, I’m adding still more information for you on Federal Rule of Civil Procedure, Rule 68. Why? What, you’ve got something better to read? The New Yorker perhaps. Relax this will only take a minute. Besides, I mention it because it recently came up (again), and it’s information worth sharing.

Rule 68 can be an excellent tool in copyright cases, especially where you believe your client may have engaged in an act that will lead to a finding of infringement.

In such a situation, where you believe a judgment is likely to be rendered against you anyway, making a Rule 68 Offer of Judgment is a terrific way to keep the otherside’s costs and fees — which you may be expected to pay under Section 505 of the Copyright Act — from accruing.

Make the offer early, and you cap the fees/costs if you make a good bet on: (1) the ultimate damage award and (2) the otherside’s costs and fees to date.

This is because Fed. R. Civ. P. 68 provides that “[i]f the judgment that the offeree finally obtains is not more favorable than the unaccepted offer, the offeree must pay the costs incurred after the offer was made.” In copyright actions, the term “costs” includes a prevailing party’s attorney fees. See, 17 U.S.C. § 505 (“the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”). Thus, a Rule 68 offer will cut off a prevailing plaintiff’s post-offer attorney fees if the judgment he or she receives is less than the defendant’s Rule 68 offer. See, Merek v. Chesney, 473 U.S. 1, 8-10 (1985) (holding that when underlying statute defines “costs” to include attorney’s fees, such fees are to be included as costs for purposes of cost shifting. The court thus concluded that plaintiffs “who reject an offer more favorable than what is thereafter recovered at trial will not recover attorney’s fees for services performed after the offer is rejected.”); see also William F. Patry, Patry on Copyright § 22:217 (“Rule 68 [can] be used as a sword against plaintiff to deny plaintiff his attorney’s fees postoffer.”).

So in a nutshell, it works like this: You think it’s likely you’ll get tagged with infringement, but you think damages are worth no more than — let’s keep it simple and say $10,000. You think the fees and costs to date are minimal. Let’s say $10,000. You therefore make your Rule 68 Offer for a skosh over $20K, call it $23. If plaintiff is foolish enough to reject that offer, and fails to do better than this figure at trial (measuring damages plus costs and fees as of the date the Rule 68 Offer was made), plaintiff’s recovery of fees and costs is capped as of that date.

It’s a neat tactic if it works. But then again, what isn’t?

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Trademarks and the Internet — In Search of the Senior User

Does the use of a common law trademake on the Internet convey senior territorial rights to the mark holder throughout the U.S.?

No. Although the Internet is global in scope, the use of a trademark on a website that can theoretically be accessed anywhere in the U.S. (and indeed the rest of the world) does not mean that the trademark is known and established throughout the U.S.

Knowledge among persons in the territories at issue must be proven by evidence and cannot be assumed just because the Internet is national and global. See, Echo Drain v. Newsted, 307 F. Supp. 2d 1116, 1128-129 (C.D. Cal. 2003) (holding that though musical group operated a worldwide accessible website, the trademark rights in the group’s name were limited to the Dallas-Fort Worth area based on the group’s geographically limited actual presence). When the traditional tests for establishing priority of use a trademark are applied, the Internet use should be factored in and weighed along with various other factors, including: (1) the volume of sales in a given area; (2) growth trends in an area; (3) sales in that area as a function of the total market; (4) the distribution of these sales points within a given area; and (5) specific targeting, which would encompass any bricks-and-mortar advertising. See, J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:30.50 (2011); see also Louis Altman & Malla Pollack, Callman on Unfair Competition, Trademarks, and Monopolies § 20:24 (2011) (“But just being available on the Internet may not be enough; the question of whether such availability supports the acquisition of trademark rights in a given territory may depend upon whether the site is actually accessed by many people from that territory, and whether such access is accompanied by actual sales in that territory.”).

For our purposes this means that merely because the user of the mark has an Internet presence does not mean it will be deemed the senior user. An admittedly junior user who obtains a Federal registration gains the presumptive senior user status in all regions where the junior user cannot establish prior territorial use under the traditional priority-test. When you think about it, this makes a lot of sense. A contrary finding would effectively negate the need not obtain a federal registration. In other words, one would be able to claim presumptive constructive use based only on an Internet presence. As the law now stands, such presumptive use requires a registration of the mark. See 15 U.S.C. § 1057(c); see also id. at § 1115(a)(5).

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Turns Out I was Wrong — Attorneys Fees and Rule 68

After all this time . . . I had thought that FRCP Rule 68 was an excellent tool to hammer the plaintiff, even where the copyright defendant had in fact copied. This is because an argument exists that the recoverable “costs” under Rule 68 include attorneys fees. Thus, by making a Rule 68 offer early in the game, the defendant could shift the fees burden even if infringement was found (assuming, of course, the offer exceeded what plaintiff was able to recover at trial).

Opps. Turns out I was wrong, at least in part. Turns out there is a split in authority. I’ve been taking one side, while the 9th Circuit has taken the other.

In Ninth Circuit copyright actions, costs awardable pursuant to a Fed. R. Civ. P. 68 offer of judgment that exceeds plaintiff’s recovery at trial do not include a defendant’s post-offer attorney’s fees. This is because the Ninth Circuit has held that Rule 68 “costs” do not include a non-prevailing defendant’s post offer attorney’s fees when the underlying statute only awards attorney’s fees to a prevailing party. See, Champion Produce, Inc. v. Ruby Robinson Co., Inc., 342 F.3d 1016, 1031-32 (9th Cir. 2003). 17 U.S.C. § 505, the copyright provision dealing with attorney’s fees awards, provides that attorney’s fees may be awarded as a component of costs, but only to a prevailing party. 17 U.S.C. § 505 (“[T]he court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”).

Thus, because a defendant who is entitled to post Rule 68 offer costs is necessarily not the prevailing party (as the defendant is consenting to judgment), copyright defendants in this Circuit may not recover attorney’s fees as a component of costs. This view is also held by the First, Third, Fifth, Seventh, Eighth, Ninth, and D.C. Circuits. See, William F. Patry, Patry on Copyright § 22:215 (2011).

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

eBay Gets a Price Reduction

Ceux qui me connaissent savent que j’aime n’importe quoi français. En effet, mon hantise pour le pays et la culture est si ridicule que j’ai décidé d’écrire ce “post” en français. Vous pouvez me remercier maintenant.

Comme vous vous rappelez, il y a deux ans de Louis Vuitton Moet Hennessy a obtenu une victoire cuisante sur eBay, recevant un jugement €38.6 million (de $49.6 millions) basé sur de tiers ventes (quoiqu’énuméré sur eBay) des marchandises de luxe de contrefaçon de LVMH.

Spécifiquement, en 2008, la cour a ordonné qui eBay était responsable de l’infraction de marque déposée directe ou indirecte basée sur l’utilisation de son site Web de vendre les produits d’imitation de Louis Vuitton, de Christian Dior, de Guerlain, de Givenchy et de Kenzo. La cour a ordonné qu’eBay a eu une responsabilité intensifiée d’empêcher la fraude sous forme de ventes contrefaites sur son emplacement. (Notez-vous que c’est énormément différent du situation aus Etats-Unis, ou en eBay de Tiffany [2d Cir., Avril 2010], la cour a ordonné presque l’opposé.)

Bonnes nouvelles pour eBay! La semaine dernière, une cour française a ramené cette récompense à €5.7 million ($7.3 millions). Malgré cette reduction, la cour de Paris de l’Appel a confirmé la conclusion que eBay avait violé les marques déposées de LVMH par en listant et ventant des marchandises de contrefaçon.

Dans la mode française quintessencielle, eBay et le LVMH a déclaré l’acte une victoire absolue.

Jonathan Pink is a commercial litigator, and business attorney with a specialty in copyright and trademark infringement. He is also an unabashed Francophile. He can be reached – in French or English – at jonathan.pink@bryancave.com; 949-223-7173.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Ansel Adams and the First Sale Doctrine

Eric Goldman (http://blog.ericgoldman.org), whom I respect a great deal, suggested I consider whether the “first sale” doctrine would apply to Ansel Adams’ alleged long lost negatives dispute. (See post of 8/27/2010 — http://www.jonathanpinkesq.com/ansel-adams-or-not-the-story-of-a-trademark-dispute.) I now have, and don’t believe it does.

While trademark law prohibits some uses of another’s trademark, that prohibition is not unlimited. Under the first sale doctrine, when a trademarked product lawfully enters the stream of commerce, typically there is no right to claim infringement against a lawful reseller of the product if the mark is used to identify the goods. See Storz Endoscopy-America, Inc. v. Surgical Technologies, Inc., 285 F.3d 848 (9th Cir. 2002). This is similar to the fair use concept mentioned in my previous, related post, but not identical.

Here, if the photo negatives Rick Norsigian bought truly were the work of Ansel Adams, there is an argument that the Ansel Adams Trust could not prohibit him from selling prints made from those negatives while using the Adams trademark (assuming he uses the mark for purposes of advertising and identifying the goods he’s peddling).

The problem is that, from the Trust’s perspective, the goods aren’t Adams’ even if the prints were made from his negatives. The Trust claims Ansel worked his magic in the darkroom (haven’t we all?), and that his finished images consisted of more than merely the image photographed, its composition, captured moment, etc.. According to the Trust (and many casual viewers of AA’s work), the art comes equally from how Mr. Adams’ developed those images, selected the tones of lights and darks, etc.. Accordingly to the Trust, without that component, the “work” (e.g. any print made from the found negatives) simply is not the work of Ansel Adams, even if the negatives were created by him. To this end, the Trust will likely argue that the first sale rule does not apply, and Norsigian is not entitled to use the Adams’ mark pursuant to that doctrine.

The Trust’s argument should carry some punch. While the first sale rule may immunize a traditional reseller from infringement liability, it loses its effect where the goods have been altered, or are materially different from those created by the trademark owner. See Storz, supra, 285 F.3d 848. Also, I am not sure the negatives ever lawfully came onto the market when Norsigian bought them at that garage sale 10 years ago. You will recall that Norsigian claims the glass photographic plates were saved from a fire at AA’s studio 70 years ago, but even if this is so, did the garage sale seller gain legal right to their possession, and the concomitant right to resell them? I don’t know. In any event, given the foregoing, I suspect Norsigian won’t find much safety in the first sale “port” from this legal storm.

On a related, but totally non-legal note: I had a funny and similar experience this weekend. While visiting some friends who were in town at a beach house that had been in their family since the 1930s (which is mostly used as a rental when the family/cousins, etc. aren’t there in the summers), I noticed an oil painting on the wall that was rather nice. Now this place is your typical rental, with mostly your typical rental artwork (stained and tattered reproductions that you’d mostly overlook). But this work was an original oil, and quite nice. My friend said he’d never paid much attention to it; it had been hanging there his entire life, and he assumed that it had been placed there by his grandfather in the 1930s.
As I was taking a close look at it (my mom’s an art dealer, and somehow this is how I learned to closely examine art – plus, my vision is abysmal), I asked “Who did it?”
My friend, now at least a little curious – or very polite – looked for the signature and said “Edgar . . . .” I interjected: “Don’t say Payne.”
“Payne,” he said.
I couldn’t believe it. An Edgar Payne? I told him a little about the artist and suggested that the painting had to be worth at least $45K. “No!” He couldn’t believe it. I told him I was guessing, but suggested we call my mom to see what she thought.

I phoned. She was cooking dinner. I described the work. She asked if was a landscape, I told her no, it had boats, and looked like Newport Harbor. “Oh, it’s one of his seascapes!” Now she is a longtime L.A. art dealer, and has sold Payne’s work to some very well off collectors. I told her the size, a few more details, and said I had guessed its value at at least $45,000. No, she said, “It’s worth at least $150,000.”

My friends were amazed. I felt like we were living an episode of The Antique Road Show. Now they need to get that thing out of the rental! So, just to make a point, . . . these things do happen.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is also a member of the firm’s Art Law Team. He can be reached at 949-223-7173, or at jonathan.pink@bryancave.com

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Ansel Adams or Not? The Story of a Trademark Dispute

Yes, it’s been a while since I’ve written. Yes, when I extol the virtues of a blog, I always say write often. I’ll save the excuses. (OK, fine; twist my arm: in a nutshell, I became despondent when I took a friend’s offer to jazz up my site and saw my ranking plummet, plummet! From showing up on the first page of a search result to something like the 1,000,000th page! Sheesh!)

In any event, here I am. Surprise!

So where was I? Yes, new case that I just love. God knows why, just one of those cases. It’s styled The Ansel Adams Publishing Rights Trust v. PRS Media Partners, LLC, et. al. (ND CA, Case No. CV 103740 EDL – link should be here, but it isn’t, so stop looking). The complaint runs like 180 pages if you print it (thanks Latham & Watkins; helping out the environment, are we?), asserts ten causes of action: four under the Lanham Act, the same four – drafted as 5 — under California law, and a claim for violation of publicity under Cal Civ. Code Section 3344.1. Over kill? No, I like it.

So the facts of this one are what I really love. Ten years ago, a resident of Fresno, CA (ouch!) claims to have purchased at a garage sale what he insists are the long lost negatives of pix shot by famed photographer Ansel Adams. Cool. If it’s true. Rick Norsigian says he paid $45 for the box of negs, and is now seeking to sell prints of these “long lost” photos for what could ultimately amount to millions (up to $200 million, according to a July 27, 2010 press conference convened by Norsigian’s team). Gotta admire that.

Well, my friends, the Ansel Adams Publishing Rights Trust does not admire this. No one bit. Not one little bit. Not even a little bit. They claim that none of the 65 negatives that Norsigian claims will make him a mint – uh, I mean are AA originals – are indeed Mr. Adams’ early work. The Trust claims that the photos belong to a photographer of lesser talent, or at least lesser financial worth. In any event, according to them, Mr. Adams (“an American icon,” “America’s best-known photographer,” recipient of “the Presidential Medal of Freedom, our nation’s highest civilian honor,”) did not take them. According to the Trust “Plaintiff believes the evidence will ultimately show that Ansel Adams was not the photographer who created the negatives Norsigian claims to have purchased at the garage sale.” At least they hope so! $200 million times!

Covering their basis, the Trust goes on to say, well, ahem, “even if Mr. Adams created the negatives, the prints and posters Defendants are selling are, at most, derivative works – made without authority, direction, control, or permission of the Ansel Adams Trust.” To this end, the Trust asserts that the defendants’ use of Mr. Adams’ name and likeness and the Ansel Adams trade mark “are likely to cause confusion, mistake, and/or deception as to the source, origin, endorsement and approval of Defendants’ products. This is really where the rubber hits the road, or photographic image hits the plate, in this case. That is, if the works weren’t done by the master, fair enough, game over, no $200 mil (except maybe for the lawyers). But if they were, then it would seem that Norsigian and company have a pretty good defense based on fair use, at least as to the TM claims.

The fair use defense is available to one who, in good faith, fairly uses a descriptive term that has acquired a secondary meaning and is now protected by trademark, in a descriptive sense rather than its trademark sense. See e.g. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir., 1995); United States She Corp. v. Broucn Group Inc., 740 F. Supp. 196 (S.D.N.Y.), aff’d 923 F.2d 844 (2d Cir. 1990); 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) (House-of-Hef sued its former top 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 describe her as “Playboy Playmate of the Year 1981.”)

For this defense to work for Norsigian et Co, they’ll have to establish three elements. First, that the Ansel Adams name is used in its descriptive sense; second that it used the mark in good faith; and third that it has not used the mark as a trademark. See Car-Freshner Corp. v. S.C. Johnson & Son, Inc. 70 F.3d 267 (2d Cir. 1995); Packman v. Chicago Tribune, Co., 267 F.3d 628, 641 (newspaper’s use of “ The joy of six” as headline to describe the happiness associated with basketball team’s sixth championship held to be descriptive use); EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66 (2d Cir. 2000); TCPIP Holding, Co., Inc. v. Haar Communications, Inc., 244 F.3d 88, 104 (2d Cir. 2001) (use of term as name of portal website precluded finding of fair use).

Courts have also found that nominative fair use exists where the defendant used the plaintiff’s mark simply to describe the plaintiff’s own product. Cairns, supra, 292 F.3d at 1150; Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir., 1969) (defendant permitted to advertise that he repaired Volkswagen vehicles as long as he indicated his independent nature and did not use logo or script of plaintiff); 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 his website, but stylized use of “PMOY ’81” abbreviation held not a nominative use because it was not necessary to describe defendant).

Based on this, and assuming arguendo the photos are legitimately the work of Ansel Adams, it would seem to me that Norsigian has a right to use the Ansel Adams mark to describe the product he’s shilling. See Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749, 756 (6th Cir. 1998) (use of the words “Rock N’ Roll Hall of Fame – Cleveland” underneath photo of museum on poster may constitute fair use of Museum’s registered mark). I mean, how else are they going to describe the work? “They’re by that guy, the one with the beard, the broad brimmed hat, who used to take photos of Yosemite. You know who I mean? Think the first letter of the alphabet . . . times two!” I don’t think so. If they were taken by Adams, I think the trademark and unfair competition claims fail. Nice try.

As to the name and likeness claim, I like that one a bit more. California Civil Code section 3344.1 provides for recovery of damages for the unauthorized use of a “deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent. . . .” It appears for the advertising or promotional material that plaintiffs attached to the complaint in this matter that the defendants did indeed use Ansel Adam’s photo in promoting what they claim are his photographs. Notably, this statute allows for a recovery of “the greater of seven hundred fifty dollars ($750) or the actual damages suffered . . and any profits for the unauthorized use.” It also allows for a recovery of attorneys fees, which may drive this claim in a big, bad way. That is, I doubt plaintiff can establish that Norsigian’s reprints of the negatives at issue sold because the defendants’ used Ansel Adams’ mug on their promo material. That brings the damage number for this claim down to $750, plus attorneys fees. Did I mention that Latham is handling this matter?

So by my score keeping, the game goes like this: if works are proved to be legit, the plaintiff loses on everything but name and likeness, and then gets only a fraction of its legal fees for that portion. Big win for defendants. If the works are shown not to be those of Ansel Adams, it’s a big win for plaintiff, a big, big loss for the defendant. In any event, it should be fun to see if these really are Ansel Adams’ works (frankly, I’m betting against it, but then I thought Star Wars was going to bomb when I first saw the trailer), and to see whether the fair use defense comes to defendants’ rescue if the works are legit.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.