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.”

ABG Nets Marilyn’s ‘Diamonds’ for $50K

The licensing arm of Marilyn’s estate, Authentic Brands Group (ABG) has purchased rights to ‘Diamonds Are a Girl’s Best Friend’ – her signature number from Gentlemen Prefer Blondes – for $50,000, as Martin Rapaport writes for Diamonds.net.

“ABG Intermediate Holdings, which trades as Authentic Brands Group (ABG), acquired the intellectual property related to the actress and singer’s famous song title for $50,000 last month, according to a court filing. The purchase covers several trademarks registered in the US, Canada, the European Union and with the World Intellectual Property Organization, as well as relevant internet domain names — including diamondsareagirlsbestfriend.com — and a video-game registration.

A. Jaffe and Firestar Diamond, two of Nirav Modi’s American jewelry brands, were the previous owners. They filed for Chapter 11 in February after the Indian tycoon became the subject of a fraud investigation, with bankruptcy trustee Richard Levin subsequently liquidating the companies’ assets, including jewelry and intellectual property.

‘There were a lot of industry players excited and contemplating what we believe was a six-figure property,’ Donald Palmieri, president of the Gem Certification and Assurance Lab (GCAL) and appraiser to the trustee, told Rapaport News Monday. ‘Many expressed interest, even excitement, but when the sale occurred, only one bidder showed up who had serious interest and an open wallet.’

That bidder, ABG, offered $25,000, but later doubled the amount after Levin declared the property unsold.

‘They…asked what the trustee wanted,’ Palmieri continued. ‘He said $50,000, and [ABG] said $50,000. There were plenty of major players in the room who could have jumped in, but there were no further bids.'”

Stern Heirs Fight for Marilyn Photos in Court Case

Marilyn’s image is caught up in yet another legal dispute after Bert Stern’s widow sued his heirs (with whom he had worked for many years and was also romantically involved, according to the New York Post) for the right to his work, reports ABC News. And as Courthouse News Service reports, the heirs’ online sales of ‘bedazzled’ versions of Stern’s photos have also raised questions of authorship.

“A federal judge (Paul Engelmayer) in New York ruled Friday that Stern’s heirs are the rightful owners of the copyright interests in the ‘Last Sitting’ photographs.

The issue arose in a lawsuit Stern’s widow, Shannah Laumeister Stern, filed against Lisa and Lynette Lavender, twin sisters who were Stern’s assistants. The lawsuit claimed copyright infringement involving the reproduction and online sale of modified versions of certain Monroe images.

The Lavenders counter-sued, claiming Stern never owned the rights to the photographs.

Instead the sisters said the copyright belonged to Conde Nast, which hired Stern to photograph Monroe for Vogue. The Lavenders also claimed Stern authorized them to make, modify and sell copies of Monroe photographs following his death.

The judge found that Stern was, and his heirs are, the rightful owners of the copyright to the photographs. Whether the Lavender sisters infringed the judge said will have to be decided at trial.”

Marilyn Photo Collector Sues Vanity Fair

A collector of celebrity memorabilia is suing Vanity Fair for unauthorised use of this photo – showing Marilyn attending the Madison Square Garden concert where she famously sang ‘Happy Birthday’ to President Kennedy in 1962 – in their 2016 magazine special, Vanity Fair Icons: Marilyn Monroe, reports TMZ.

“In docs, obtained by TMZ, [Aric] Hendrix says he’s a collector of historical photographs and owns the photo AND the negative of Marilyn. He’s suing for damages in excess of $1 million. We’ve reached out to Vanity Fair, so far no word back.”

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.'”

MM Estate Sues Florida Strip Club

A West Palm Beach strip club is being sued by Marilyn’s estate for copyright infringement, reports the Sun-Sentinel:

“Marilyn Monroe may have been the most prominent sex symbol of the last century, but her image cannot be used to promote a highbrow West Palm Beach strip club, her estate argued in a federal lawsuit filed last week.

Monroe’s of Palm Beach is infringing on the late actress’ trademark by using her name and image in its signs, its Twitter account and its very name, according to the lawsuit filed by the estate of Marilyn Monroe, which is based in New York.

Until recently, some of its fliers featured a silhouette reminiscent of the iconic scene from The Seven Year Itch in which Monroe’s skirt is blown from a blast of air coming from a subway vent.

A manager at the West Palm Beach club, who identified himself only as John, said the business has stopped using the skirt silhouette, but denied the club is trying to profit from the memory of Marilyn Monroe. The club uses images of numerous 1950s stars, including Lana Turner, Bettie Page and the Rat Pack, he said.

‘Monroe,’ he said, was the name of the club owner’s cat, and the name was chosen in jest as a challenge to Rachel’s, a rival strip club believed to be named after its owner’s cat.”

MM Fan Speaks Out on Fair Use

Photo by Yury Toroptsov, 'Marilyn and I', 2010

Marijane Gray, who has written several articles about Marilyn, was interviewed by Elisa Jordan for The Examiner recently, and spoke out about ABG and Facebook’s treatment on Monroe’s fans – and in particular, the mass deletion of non-profit tribute pages.

“It would do a lot to restore public opinion of them if they admitted they were wrong about what constitutes a copyright violation and left the non-commercial tribute pages in peace. There are enough people out there selling fake autographs, fake memorabilia, putting Marilyn’s face on cheap junk … go after them, not the people who want to look at photos or have a chat about her.”