Judge Allows for Possibility "Marilyn Monroe" Is Too Generic for Trademark

A merchandiser is battling the Marilyn Monroe Estate in court.
20th Century-Fox/Photofest

It's fairly common these days for entertainers to obtain federal trademark registration on their names. Kim Kardashian, Taylor Swift and Justin Bieber are just a few stars who have done so. But what about enforcement? The Marilyn Monroe Estate is learning it's not that simple.

Five years ago, a federal appeals court determined that Marilyn Monroe's personality was in the public domain thanks to where she was domiciled at time of her death in 1962. The decision threatened tens of millions of dollars in annual income. So the Marilyn Monroe Estate switched from right of publicity to trademarks as its method of protecting the lucrative brand.

In 2015, in a lawsuit against a merchandiser, a federal judge allowed the Marilyn Monroe Estate to assert trademark infringement claims. This triggered counterclaims that the Marilyn Monroe Estate was attempting to monopolize the market for the late actress who reinvented celebrity.

On Monday, U.S. District Court Judge Katherine Polk Failla wouldn't allow the monopolization claim, deciding that nostalgia company AVELA's licensing agent V. International Fine Arts Publishing hadn't defined much of a market nor factually supported a foreclosure of competition allegation. But the judge is allowing for the possibility that "Marilyn Monroe" marks are too generic or functional to be protected.

Upon the argument that "Marilyn Monroe" only reminded consumers of a famous historical figure, the Estate retorted 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, says 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.

"Whether the Contested Marks are in fact generic is a determination best left for another day, with a more robust record in place," writes the judge in partially rejecting a motion to dismiss. "To be clear, the Court harbors serious doubts that V. International will be able to establish that the Contested Marks are generic. Reaching that conclusion at this stage, however, would be premature."

The judge also permits a counterclaim alleging that "Marilyn Monroe" marks should be canceled because they are functional.

"Here, too, the Estate Movants argue that V. International is trying to set a bright-line rule," writes Failla (read full opinion here). "This time, they claim that V. International is attempting to establish that a 'famous name' that 'provides aesthetic (or utilitarian?) appeal to consumers' cannot be trademarked. In so arguing, the Estate Movants over-read Counterclaim Two: V. International alleges that '[t]he appearance of Marilyn Monroe’s name and/or stylized signature in the Contested Marks is purely functional' because they 'at most may provide some aesthetic appeal to consumers and serve as a product feature.' That cabins the scope of V. International’s functionality claim to trademarks related to Marilyn Monroe."

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."