- Court denies defendants’ motion to dismiss claims of trademark infringement, trademark dilution, false designation of origin, false endorsement, false advertising, right of publicity and unfair competition in action brought by late photographer’s trust against company and individual that sought to market recently discovered “lost negatives” of Ansel Adams.
The district court denied the defendants’ motion to transfer venue because the Northern District was proper and transfer was not warranted. Venue is proper in a trademark infringement action where customer confusion would likely occur. Because the defendants were selling and advertising their products on a website accessible to customers who live in the Northern District, the venue was proper. Though venue was proper, a court may transfer to a forum more convenient to the parties and witnesses and in the interest of justice. The general rule is that the plaintiff’s choice of forum is to be given substantial weight. However, this may be overcome by the defendants’ showing that the convenience of witnesses and parties, the ease of access to evidence or that the interest of justice clearly outweighs the plaintiff’s choice of forum and that such factors weigh in favor of a transfer. The court found that defendants had not met this burden and denied the motion to transfer.
The court also denied the defendants’ motion to dismiss all of the plaintiff’s claims. The defendants moved to dismiss the claims of false designation of origin, false endorsement and trademark dilution based on the Dastar doctrine and the defense of nominative fair use. The court rejected the application of Dastar because the defendants failed to assert why Dastar is applicable or show how Dastar could be applied here.
The court rejected the nominative fair use defense as inapplicable as well. The nominative fair use defense applies where (1) the product or service in question is one not readily identifiable without use of the trademark, (2) only so much of the mark or marks is used as is reasonably necessary to identify the product or service, and (3) the user did nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Where, as here, the plaintiff alleges that the defendants were using the mark to describe the defendants’ product, the nominative fair use defense is inapplicable and the claim cannot be dismissed on that ground.
The court also did not dismiss plaintiff’s false advertising claim. A false advertising claim must be premised on a defendant’s commercial speech. The defendants here argued that their use of the term “Ansel Adams Lost Negatives” constitutes a non-commercial statement of opinion regarding the negatives, and not about their prints. However, the court found that the plaintiff premised this claim on commercial speech because the plaintiff alleged that the defendants made claims and statements that the products they offer for sale are the works of Ansel Adams. Accordingly, this claim was not dismissed.
The defendants also moved to dismiss plaintiff’s right of publicity claim by arguing that their speech fell within the protections of the First Amendment. Under California law, the right of publicity grants specified successors in interest of deceased celebrities the ability to prohibit others from using the celebrity’s name, voice, signature, photograph or likeness for commercial purposes. However, where a celebrity thrusts himself forward into the limelight, the First Amendment provides the right to comment on and make other expressive uses of the celebrity image. The defendants claimed that their use of the name and likeness is related to a matter of great concern and thus is protected under the First Amendment.
In determining whether the First Amendment bars a right of publicity claim, a court must examine the purpose and character of the defendant’s use and determine whether and to what extent the new work is transformative. This was not addressed by the defendants. More significantly, the First Amendment does not protect false and misleading commercial speech. Because the plaintiff alleged that the defendants’ use of the name and likeness was for purely commercial purposes and this appropriation creates a false and misleading impression of endorsement, the court denied the motion to dismiss the right of publicity claim.
The defendants also moved to dismiss the plaintiff’s state law claims of false advertising, trademark dilution, unfair competition and trademark infringement. The defendants argued that the plaintiff did not separately plead additional facts in support of such claims but rather incorporated by reference the preceding allegations. The court declined to dismiss those claims because the defendants failed to provide any authority that stands for the proposition that incorporating preceding allegations renders such later claims insufficient.