Marilyn Monroe Estate Allowed to Bring Trademark Claims Against Merchandiser

2012-26 FEA Cedars Marilyn Monroe H

Marilyn Monroe read a get-well card from Joe DiMaggio in 1952 while recovering from an appendectomy at the former Cedars of Lebanon Hospital in Hollywood.

The death of Marilyn Monroe has been greatly exaggerated.

Since the actress died in 1962, her heirs have been quite litigious against those looking to capitalize on her fame. The aggressive posture was seemingly undercut in 2012 when the 9th Circuit Court of Appeals ruled that her estate couldn't take advantage of California's post-mortem publicity rights. Despite this, the estate has another way to protect her name, image and likeness.

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."

That precedent doesn't prevent the Monroe Estate suing, but it does seem to raise the issue of how many people will believe an endorsement is coming from Marilyn Monroe (or her heirs). The subtext to a possible survey to come: Has her death been exaggerated?