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Marilyn’s Estate Makes Gains in Brand Dispute

Marilyn’s estate has been given the green light to pursue trademark infringement claims against merchandiser A.V.E.L.A. Inc. by the Southern District of New York, as Bloomberg Law reports. This legal battle has been brewing for several years, with A.V.E.L.A recently contending that Marilyn’s brand was ‘too generic’ for copyright protection.

“The court rejected A.V.E.L.A. Inc.’s contention that persona rights of deceased celebrities are limited to family, direct heirs, or ‘the actual estate.’ Although the estate purchased the rights, an ‘unbroken chain of title’ extends from Monroe to the estate, the court said.

The court also shot down A.V.E.L.A.’s defenses based on the First Amendment, fair use and the estate’s alleged failure to take timely action.

But the court declined to award Monroe’s estate summary judgment on trademark infringement or trademark dilution claims since material facts are still in dispute. The court also denied judgment on unfair competition despite ‘bad-faith behavior of the A.V.E.L.A. is clear’ since doing otherwise required an infringement finding.

Both sides submitted surveys reaching opposing conclusions on consumer confusion. A.V.E.L.A. moved to toss the estate’s report, but the court said its methodology objections ‘are better addressed through cross-examination’ before a jury.”

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Legally Blonde: ‘Is Marilyn Too Generic?’

Marilyn by John Florea, 1953

The ongoing legal battle between Marilyn’s estate and nostalgia brand AVELA (previously reported here) has raised an interesting paradox. As Eriq Gardner writes for the Hollywood Reporter, U.S. District Court Judge Katherine Polk Failla rejected the claim that Marilyn’s estate had ‘monopolised’ her image, but allowed the possibility that MM is ‘too generic’ for copyright protection.

“Upon the argument that ‘Marilyn Monroe’ only reminded consumers of a famous historical figure, the Estate argued that such a proposition was tantamount to a per se ‘rule that names of identifiable individuals are…non-distinctive, contrary to existing law.’

Failla, though, responded that the question of whether a mark has become genericized is a factual one, meaning that it’s inappropriate for an early decision. Both sides will have an opportunity to test the facts — perhaps by taking surveys of whether consumers really associate ‘Marilyn Monroe’ with the Estate.

The judge again stresses the early posture of the case (despite the fact that the complicated case is in its third year), and the Marilyn Monroe Estate at least defeats a claim that it committed fraud upon the U.S. Patent & Trademark Office, but she’s at least allowing defendants to attack the notion that the Estate enjoys broad trademark rights to ‘Marilyn Monroe.'”

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Marilyn Merchandise Lawsuit Proceeds

Marilyn in court, 1954

As the legal battle between Marilyn’s estate and merchandiser AVELA continues, the Hollywood Reporter reveals a new development.

“Now, another merchandising company, X One X Movie Archives, associated with AVELA and dragged into this dispute, has asserted its own counterclaims against the Marilyn Monroe Estate. This time, an attempt is being made to go the distance by cancelling trademarks and holding the Marilyn Monroe Estate liable for alleged monopolization and deceptive business practices.

The court filing on Friday (read here) says that when Monroe died in 1962, she bequeathed $25,000 to her personal secretary and divided the rest of her assets between her psychiatrist Dr. Marianne Kris and her acting coach Lee Strasberg. After those two died in the early 1980s, the estate landed in the hands of Strasberg’s widow Anna and Aaron Frosch.

In 2010, after more events happened including legal fights with some prominent photographers, an entity named ABG is said to have purchased Marilyn Monroe LLC, registered trademarks and established themselves as The Estate of Marilyn Monroe LLC.

X One X regards this all as misleading, reporting that other entities own trademarks and copyright to Marilyn Monroe films and characters while the purported official estate run by James Salter works with Leonard Green & Partners to bully others and perpetuate the idea that it holds exclusive rights to Monroe.

Cancelation of trademark registrations is being sought on the grounds that contested marks (like ‘Marilyn Monroe’) lack distinctiveness, only identify a deceased person rather than the source or origin of any product, and are purely functional in that they are used to describe a famous person in the public domain. The ABG group is also alleged to have made false statements to the U.S. Patent & Trademark Office to obtain trademark registrations.

The monopolization allegedly happens through a ‘a vertical scheme with its affiliate Leonard Green & Partners’ such that ‘ABG assures licensees that their ABG-licensed Marilyn Monroe-related products will sell exclusively in retailers owned by Leonard Green & Partners,’ precluding lawful competitors.

The counterclaim goes on to say that a judgment in favor of the Marilyn Monroe Estate would perpetuate a monopoly and that it ‘would outlast any period of copyright, would usurp the right of the public (and X One X) to make commercial use of public domain images, and would enable the ABG Parties to unlawfully restrain any use of Marilyn Monroe’s image, likeness or name in commerce.’

AVELA and X One X have a history of precedent-setting legal tangles that have defined the boundaries of intellectual property. Past battles include a skirmish with the Bob Marley estate and another with Warner Bros. This could be an even higher stakes legal fight with the potential of shaking up the Forbes dead celebrity earner list.”

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‘Celebrity Services’: Marilyn’s Estate Vs AVELA

‘The death of Marilyn Monroe has been greatly exaggerated,’ Eriq Gardner quips in an article for the Hollywood Reporter, detailing a new lawsuit filed by Marilyn’s estate, against merchandiser AVELA.

Interestingly, AVELA previously filed suit against the estate in June 2012, for interfering with its licensing activity. In a separate case that August, involving the Milton H. Greene Archives, it was ruled that MM’s persona belonged to the public, not the Monroe estate. The AVELA case is still ongoing, and this latest development is a counter-lawsuit.

“The Monroe Estate is now in court against AVELA, a company that specializes in nostalgia merchandise, and is asserting that goods featuring Monroe are a violation of trademarks. In a motion to dismiss, AVELA argued that the trademark claims are ‘a thinly veiled attempt to assert a right that does not exist — a right of publicity in Marilyn Monroe.’

In her opinion on Friday, U.S. District Judge Katherine Polk Failla spells out the difference between publicity rights and trademarks. ‘The key distinction between a right of publicity and a false endorsement claim is that the latter requires a showing of consumer confusion,’ she writes.

Shrugging off other objections including the implausibility of the Monroe Estate’s ownership and the viability of a false endorsement claim on behalf of a deceased celebrity, the judge allows the lawsuit to proceed.

This is good news for anyone in the ‘celebrity services’ business as it allows stars an additional statutory vehicle to pursue those who use their images. Some like Halle Berry and Sandra Bullock have already used both publicity rights and trademarks together as legal weapons in court.

Alternatively, those hoping that trademarks don’t become a way to skirt what’s fallen into the public domain, may have to square Judge Failla’s opinion that just because Monroe’s persona has been adjudicated to belong to everyone doesn’t mean her estate can’t bring a trademark action.

Of course, the Monroe Estate still has to win on the merits and this might not be clear cut. For instance, the opinion mentions a prior case where Fred Astaire’s widow sued over the ‘Fred and Adele Astaire Awards’ and failed because the plaintiff was unable to show ‘that consumers will be deceived into believing that the late Fred Astaire endorsed defendants’ awards.'”

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Legal Threat to MM Estate

AVELA, a company specialising in nostalgia merchandise, has filed a lawsuit in New York, alleging that the Marilyn Monroe estate is interfering with its licensing activity, according to the Hollywood Reporter.

“Despite judgments that ruled that Monroe couldn’t devise by will a property right she did not own at the time of her death in 1962, the estate has continued to send out cease-and-desist letters…

…AVELA says that it has also received a cease-and-desist and is now suing to punish the estate for its legal aggressiveness.”