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.'”

‘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.'”