Death Pays: The Fight Over Marilyn Monroe's Publicity Rights

Sunday, July 1, 2007 - 01:00

Just because a celebrity is dead, doesn't mean she can't try and earn a living. Take, for example, Marilyn Monroe. Since the blonde bombshell's estate teamed up with the talent giant CMG Worldwide, Inc. ("CMG") in 1996, the licensing of Marilyn Monroe's name and image has pulled in over $30 million in revenues. Forbes Magazine routinely ranks Monroe as one of the top grossing dead celebrities; in fact, she earned a cool $8 million just last year alone. Not bad for someone who has been dead almost 45 years. Thanks to CMG's efforts, Monroe's name, voice and likeness are used to sell a vast array of products, including refillable lighters, vodka, cars, wine, leather furniture and jeans.

But May 2007 was not a good month for Monroe. Courts in both New York and California dealt her estate a crippling blow, ruling that Monroe's rights of publicity died when she did and, therefore, her estate did not own (and could not license through CMG), Monroe's name, voice, image and/or likeness. In addition to potentially devastating the estate's and CMG's future revenue stream from Monroe-related goods and advertising fees, the rulings may have wide implications for the rights of other deceased celebrities and New York's right of publicity law may be drastically amended as a result.

The first decision issued was by the Southern District of New York in the case of Shaw Family Archives Ltd. v. CMG Worldwide, Inc., No. 05 Civ. 3939 (CM), 2007 U.S. Dist. LEXIS 35674 (S.D.N.Y. May 2, 2007). That case pitted Marilyn Monroe's estate, MMLLC, and its licensing agent, CMG, against The Shaw Family Archives ("SFA"), which is owned by the children of the late photographer Sam Shaw, who took (and owned the copyright in) several of the most famous images of Monroe, including several of her standing on the subway grate for the film "The Seven Year Itch." Monroe's estate alleged that SFA violated Monroe's publicity rights under Indiana's Right of Publicity Act because it sold T-shirts at a Target store in Indianapolis bearing Monroe's photograph and operated a website through which customers could purchase licenses for the use of Monroe's image on various commercial products. Not surprisingly, Indiana is the home of CMG, which controls the publicity rights of numerous other celebrities, both alive and dead, such as James Dean, Ingrid Bergman and Babe Ruth, and has one of the most sweeping right of publicity statutes in the nation. Most notably, Indiana provides for a right of publicity that survives 100 years after a person's death and applies to any act or event that occurs within the State of Indiana, regardless of where the person seeking to invoke Indiana's law resides or is domiciled.1

MMLLC (which is controlled by the wife and heir of Monroe's acting teacher Lee Strasberg, to whom she left the bulk of her estate) alleged that it owned Monroe's publicity rights because the residuary clause in Monroe's will included "all property to which [she] shall in any way be entitled." But SFA argued that Monroe could not grant those publicity rights in her will because postmortem publicity rights did not exist at the time of her death, and therefore, she could not devise what she did not own. The Court agreed.

The Court found that at the time of Monroe's death in 1962, postmortem rights of publicity were not recognized in either New York, California or Indiana. California did not recognize postmortem publicity rights until 1984; New York does not recognize postmortem publicity rights at all; and Indiana did not recognize postmortem publicity rights until 1994. The Court also found that under both New York and California law (the only two states in which Monroe could have been domiciled), a person may not dispose of by will a property right that she does not own at the time of death. Therefore, because Monroe did not own a postmortem right of publicity at the time of her death, she could not have devised such rights in her will, and, therefore, MMLLC could not own Monroe's publicity rights.

Finally, the Court rejected MMLLC's argument that it obtained Monroe's publicity rights after she died when California and Indiana enacted statutes recognizing postmortem rights of publicity. The Court noted that even if a postmortem right of publicity in Monroe's persona could have been created after her death, both California's and Indiana's right of publicity statutes provide that an individual cannot pass by will a statutory property right that she did not own at the time of death. Rather, such publicity rights could only be transferred to statutorily specified heirs.2 Because MMLLC obtained Monroe's publicity rights through her will, and was not her statutory heir, MMLLC still could not own Monroe's publicity rights even under this alternate theory.

Less than two weeks later, a California court reached the same conclusion in the case of The Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., 05-CV-2200 (MMM). Like the Shaw case, the California lawsuit was brought by the children of two well-known photographers - Tom Kelly and Milton Greene - who had taken several iconic images of Monroe over the course of her career.

Both Greene and Kelly challenged MMLLC and the CMG's right to Monroe's publicity rights and, for the same reasons expressed by the Southern District of New York, the California District Court for the Central District of California held that Monroe could not bequeath publicity rights that she did not own at the time of her death. Similarly, like the New York Court, the California Court held that under California's and Indiana's right of publicity statutes, rights of publicity could be transferred to the surviving heirs of celebrities who died before either of those laws were passed, but they could not be transferred by will to other beneficiaries - such as MMLLC and CMG.

These decisions may greatly impact the rights of other deceased celebrities who died before the state in which he or she was domiciled recognized a postmortem right of publicity. In addition, it also affects the owners of the publicity rights of deceased celebrities who claim to own such publicity rights by will, and not because they are that celebrity's statutory heir.

But even if Monroe's publicity rights died with her, Monroe and other deceased celebrities who may be adversely affected by the courts' rulings, are not without legal recourse to protect against the unauthorized use of their persona. The use of a deceased celebrity's name, image, voice and/or likeness may also give rise to a false endorsement claim under section 43(a) of the Lanham Act, which prohibits, among other things, the use of any name, symbol, or device which is likely to deceive or cause consumers to be confused as to the source, sponsorship, approval or association of a party's goods or services. In false endorsement cases, the celebrity's persona or identity functions as a "trademark."3

The relevant standard in evaluating Lanham Act claims is whether a "reasonable consumer would be likely to conclude" that a party has endorsed, approved or is associated with the defendant's goods or services.4 Thus, false endorsement claims differ significantly from right of publicity claims, which do not require any evidence of likelihood of consumer confusion.5 The New York and California decisions rejected only MMLLC's right of publicity claim and did not address any other intellectual property rights MMLLC could assert to protect against the unauthorized use of Monroe's name and image. In light of these decisions, MMLLC (and other celebrities whose rights may be in jeopardy) will likely rely upon the Lanham Act (and potentially other state laws) to control the use of Monroe's persona and to provide a basis to demand licensing fees for the use of her name and image.

Given the large sums of money at stake, Monroe's estate is not sitting back and hoping that the Second Circuit will vindicate its rights when the case is appealed. Instead, it is waging a campaign to circumvent the Shaw decision by enlisting a host of both living celebrities and the heirs of deceased celebrities to support a bill that would radically alter New York law. As noted, New York law does not currently recognize postmortem rights of publicity. But the proposed bill pushed by MMLLC would change that. The new bill, which, if enacted, would take effect immediately, would make it unlawful to use, for purposes of advertising or trade, the "portrait, name, voice, signature or picture" of any person who died on or after January 1, 1938 without the written permission of that person's heirs or estate. A particularly troubling aspect of the bill - one clearly designed to eviscerate the Shaw ruling - is that it would retroactive ly grant these publicity rights "to the deceased person before such person's death" and the rights would last in perpetuity.

The proposed bill is flawed in numerous respects. Most notably, it would immediately make unlawful uses of a person's "portrait, name, voice, signature or picture" that are currently legal. In addition, it would become unlawful to use a deceased person's name or likeness without the permission of that person's heirs even if that person consented to such use before he or she died. Moreover, the bill would provide for publicity rights that would last in perpetuity - a right no other state allows. The only state that does not place an express time limit on descendible rights of publicity - Tennessee - provides that such rights are terminated by proof of their non-use for commercial purposes for any two-year period after the ten years following the person's death.6

Clearly, Monroe's estate, faced with the loss of enormous revenues as a result of the decisions in Shaw and Greene, will make every attempt to effectively overturn these decisions, including an attempt to rewrite New York law. Such a change in the law would be unwise and unwarranted. 1 Ind. Code 32-13-1-16; 32-13-1-1(a).

2 See Cal. Civ. Code 3344.1(b)-(d); Ind. Code 32-36-1-16 to 18.

3 See Waits v. Frito-Lay, Inc. 978 F.2d 1093, 1110 (9th Cir. 1992) ("A false endorsement claim based on the unauthorized use of a celebrity's identity is a type of false association claim, for it alleges the misuse of a trademark, i.e., a symbol or device such as a visual likeness, vocal imitation, or other uniquely distinguishing characteristic, which is likely to confuse consumers as to the plaintiff's sponsorship or approval of the product."); White v. Samsung Elec. Am., Inc., 971 F.2d 1395, 1397 (9th Cir. 1992) ("In cases involving confusion over endorsement by a celebrity plaintiff, "mark" means the celebrity's persona.").

4 See Kournikova v. Gen. Media Commc'ns, Inc., 278 F. Supp. 2d 1111, 1124 (C.D. Cal. 2003).

5 Parks v. LaFace Records, 329 F.3d 437, 460 (6th Cir. 2003) .

6 See Tenn. Code 47-25-1104(b) (2).

Sara L. Edelman is a Partner in Davis & Gilbert's Litigation and Advertising, Marketing & Promotions Departments. She may be reached at (212) 468-4897.

Please email the author at sedelman@dglaw.com with questions about this article.