from the estate-your-case dept
As you may recall, over the summer we wrote about the Marilyn Monroe Estate's second attempt to extract money from AVELA, a company that produces consumer products with images of nostalgia affixed to them. The first attempt the Estate made was way back in 2012, when it tried to apply publicity rights under California law to AVELA's products featuring the image of Marilyn Monroe. The problem in that case was that the California law only applied to celebrities living in the state at the time of their deaths and Monroe's Estate had previously affirmed she did not live in California at the time of her death, so as not to have to pay the relevant taxes on her estate. With that attempt dashed, Monroe's Estate has instead turned to trademark law in attempt to do exactly the same thing. The court allowed the suit to proceed after hearing form AVELA on matters of whether customers can be confused that a dead celebrity is endorsing, well, anything.
And now things are getting even more twisted in knots. AVELA has managed to get another company, X One X Movie Archives, to enter the fray with its own claims, designed to completely invalidate and cancel the trademarks held by the Monroe Estate. X One X also argues that the estate has actually been engaged in monopolistic and shady business.
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 Strasburg. After those two died in the early 1980s, the estate landed in the hands of Strasburg's widow Anna and Aaron Frosch.So, the way this supposedly works is that the Monroe Estate claims exclusive trademark rights on Marilyn Monroe when it knows it doesn't have those exclusive rights, all so the Estate can license Monroe's image for sale on products sold only in retail stores that Leonard Green & Partners owns. This effectively disallows any competition for nostalgia products on the basis of exclusive rights that the Estate doesn't actually have. Any trademarks it does have, X One X argues, are not distinct and don't actually provide the consumer with information about the origin of the associated products.
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.
Cancellation 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.Meaning that the upshot of all this is that the Monroe Estate's decision to try to bully AVELA using trademark law after losing on publicity rights might result in the estate losing its trademarks entirely. That's the kind of poetic justice I can get behind.
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."