District Court Gives Go-Ahead to Marilyn Monroe’s Estate on False Endorsement Claim
What’s the News?
A federal judge in the Southern District of New York recently held in A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC that the Lanham Act protects rights in a celebrity’s image long after his or her death. Specifically, the court determined that Marilyn Monroe’s estate could proceed with a Lanham Act false endorsement claim against a vintage collectibles licensor who was creating and marketing various products featuring images of the iconic celebrity. Notably, the court issued this holding over the licensor’s objection that the false endorsement claim was a “thinly veiled” attempt to enforce publicity rights, a separate type of claim not available under the Lanham Act.
The Legal Backdrop: Milton H. Greene Archives, Inc. v. Estate of Marilyn Monroe, LLC
This is not the first dispute over Marilyn Monroe’s persona. The celebrity’s estate has long been fighting legal battles to prevent others from profiting off of the commercial use of her identity. Most notably, in 2005, the estate sought in Milton H. Greene Archives, Inc. v. Estate of Marilyn Monroe, LLC to enjoin two photography agencies from using the celebrity’s image, asserting publicity rights under California state law. The attempt was rebuffed, with the court holding that the California statute providing for posthumous publicity rights only applied to celebrities who died after the law’s enactment in 1984.
When the California legislature amended the statute to apply retroactively to all celebrities (as discussed in a prior Arent Fox alert), the estate asked the court to reconsider its decision. This time around, the court pointed out that the California statute only protects publicity rights for individuals who were California residents when they died. Although Monroe died in her California home, the estate had claimed in a prior legal proceeding that Monroe died a New York resident in order to avoid inheritance and estate taxes under California law. On this basis, the court held, and the Ninth Circuit agreed, that the estate was judicially estopped from claiming California residency. Because New York law does not offer posthumous publicity rights, the estate was left without an avenue to enforce state law rights in Monroe’s persona.
The Current Dispute
Against this backdrop, the district court’s recent decision in A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC may come as a surprise to some—including Leo Valencia, the vintage collectibles manufacturer and licensor who initiated the lawsuit. Valencia operates a number of companies that design, manufacture, distribute, and license products, such as apparel and glassware, featuring images of celebrities, including Monroe. Valencia, acting through his company A.V.E.L.A., Inc., preemptively filed suit in the Southern District of New York seeking a declaratory judgment that his manufacture and sale of merchandise featuring Monroe would not violate any rights held by the estate. The estate counterclaimed, bringing a number federal and state law claims, including false endorsement under the Lanham Act. AVELA contended that the false endorsement counterclaim was nothing more than a “thinly veiled” attempt to enforce state law publicity rights that, under Greene Archives, do not exist.
The court disagreed, holding that the estate’s false endorsement claim was separate and distinct from an assertion of publicity rights under state law. Publicity rights generally grant broad rights to an individual (or that person’s estate) to control the commercial use of his or her name, image, and likeness. By contrast, the court explained, the Lanham Act’s prohibition on false endorsement prevents the use of another’s trademark in connection with a product or service where that use will mislead consumers into thinking that the individual has sponsored or otherwise approved the product or service. A successful claim for false endorsement requires (1) a false or misleading representation of fact (2) in commerce (3) in connection with goods or services (4) that is likely to cause consumer confusion. The key difference, said the court, is that a false endorsement claim requires a showing that consumer confusion is likely, whereas a publicity claim does not. The court further explained that celebrities hold a “trademark-like interest in their name, likeness, and persona” that may be vindicated through a false endorsement claim under the Lanham Act.
The court went on to hold that the estate had properly stated a claim for false endorsement. In doing so, it rejected an additional argument made by AVELA that the use of a celebrity’s image cannot amount to a false or misleading representation of fact, one of the above-listed elements of a false endorsement claim. Citing several precedents to the contrary, the court confirmed that the use of an image on a product can, in fact, satisfy the misrepresentation element of a false endorsement claim. In addition, it rejected AVELA’s contention that a deceased celebrity’s likeness cannot provide the basis for a false endorsement claim. Acknowledging that, in some cases, consumer confusion is less likely when the celebrity is deceased, it held that there is no blanket prohibition on false endorsement claims involving deceased celebrities.
In addition to the estate’s false endorsement claim, the court permitted the estate to proceed with claims of trademark infringement and trademark dilution under the Lanham Act, and unfair competition under New York state law.