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Monroe

US publicity rights clearances are essential

Do you have products you wish to export to the United States, a film or book you want distributed there, or a website seeking US customers? Do you also use images or other identifications of famous people without consent in your product, film, book or website?

If you answered "Yes" to both questions you should seek legal advice on whether you need to obtain consent, permission or clearances before you export or publish in the US. This is because of the laws in the US known as "publicity rights". While ultimately specialist advice may be needed from a US attorney, this article is an introduction to publicity rights. It is illustrated by a New York court case involving the estate of Marilyn Monroe.

The court described the case as "a tortuous series of [legal procedural] events" ... over "Marilyn Monroe, perhaps the most famous American sex symbol of the twentieth century...". It ruled there are no Marilyn Monroe publicity rights.

1.  What are publicity rights?

The focus of the case was on publicity rights. They are legal rights granted in almost 30 states in the US under statute and common law.

In simple terms publicity rights provide a monopoly right to take legal action against:

  • commercial use, dissemination or publication - respectively without consent,
  • of the names, likeness and persona, among other things, of a personality,
  • where a reasonable person would recognise that as representing the personality claimed to be depicted, and
  • where damages (eg loss of revenue) are said to arise for the personality.

That is why if you have a website or export content or products to the United States, which feature such things as images of people (especially famous ones), then you need to be aware of publicity rights.

Publicity rights are only available in those US states which recognise them in their law. Complicating analysis, the laws vary greatly state by state.

2.  When did Monroe die and what did her will say?

The background to the case goes back to the death of Marilyn Monroe on 5 August 1962. Her will passed on what she had to various people, including Lee Strasberg her acting teacher.

The Monroe Estate remained open until 19 June 2001. Monroe's "residuary assets" were transferred to Marilyn Monroe, LLC. It is a Delaware company formed by Lee Strasberg's heirs to hold and manage the intellectual property assets of the residuary beneficiaries of Monroe's will.

3.  Why were the facts in the dispute?

The Monroe case is named Shaw Family Archives Ltd v CMG Worldwide Inc. A legal dispute arose involving several parties who make a fortune from the images and persona of Monroe.

To keep it simple, on one side was the Shaw Family Archives which claims copyright in photos taken of Monroe by the photographer, Sam Shaw. For example, Shaw shot the photo of Monroe holding down her dress while standing on a subway grate in the 1955 film The Seven Year Itch.

On the other side were the entities which started the case, Marilyn Monroe, LLC (mentioned above) and the Indianapolis-based CMG Worldwide, which has managed the Monroe publicity rights.

The dispute arose in 2005 due to the alleged sale of a t-shirt at a Target store in Indiana. The t-shirt featured a photograph of Monroe taken by Sam Shaw and the inscription "Shaw Family Archives" in the inside neck label and tag. It seems reasonable to assume the Shaw Family Archives was particularly targeted as its website offers licences for the use of Shaw's photos of Monroe for various commercial products.

Now we are getting warmer, and closer to the nitty gritty of what the case was about.

The case was ultimately heard in New York but focused on Indiana's 1994 Right of Publicity Act. Indiana's publicity rights are in some ways the most celebrity-friendly in the US. They recognise postmortem rights of publicity. They are transferable rights that survives for 100 years after a personality's death. That duration is 25 years longer than US or Australian federal copyright rights. Under Tennessee law publicity rights are protected in perpetuity.

Clearly, the commercial dispute between the parties had a lot to do with the fact that Marilyn Monroe, LLC and CMG Worldwide (ie those who claim Monroe publicity rights in Indiana, and elsewhere in the US) wanted to mustle money from the Shaw Family Archives and others who sought to exploit or use copyright in photos of Monroe taken by Shaw. A reasonable assumption is that Shaw Family Archives and others refused to either obtain or pay for any consent, permission or clearance that may have been on offer through CMG Worldwide.

The tension between publicity rights holders and copyright holders is common in US case law. If Monroe's estate had owned both the publicity rights and copyright in photos of her then there would be no dispute.

4.  Why does Monroe have no publicity rights?

The legal point in the decision is thankfully very simple. The decision handed down on 2 May 2007 stands for the simple proposition that there are no publicity rights for Monroe in the state of Indiana because Indiana's 1994 Right of Publicity Act was introduced after her death in 1962.

The court stated neither Indiana nor California allow for the transfer of publicity rights through wills of personalities who were already deceased at the time of their enactment. California recognised descendible publicity rights when it passed its postmortem right of publicity statute in 1984, 22 years after Ms Monroe's death.

As for New York law, it does not recognise any common law right of publicity and limits its statutory publicity rights to living persons: Pirone v MacMillan, Inc 984 F.2d 579, 586 (2d. Cir. 1990).

The court further said Monroe could not transfer through her will rights she did not have, and Marilyn Monroe, LLC cannot be a successor-in-interest to them.

5.  Bottom line

The bottom line - no money for Marilyn Monroe, LLC and CMG Worldwide Inc for Monroe publicity rights in Indiana, California or New York. In contrast for decades to come there can be copyright licensing revenues earned nation-wide from photos by the Shaw Family Archives.

6.  How common are publicity right suits?

Movie stars, major league sports players and other celebrities regularly take legal action, especially in California and New York, to enforce publicity rights. The names alone of some US publicity rights court cases tell a story: Onassis v Christian Dior (1984), Carson v Here’s Johnny Portable Toilets (1983), Midler v Ford Motors (1988), and Waits v Frito Lay, Inc (1992).

Publicity rights are not just over photos of personalities. They have been expanded over time to cover a personality's voice (eg the Bette Midler and Tom Waites cases), performance, race car number, and anything else that reasonably constitutes one's persona.

7.  Is there any similar "personality rights" law in Australia?

Simply stated, in Australia there are laws the effect of which can provide outcomes at times similar to those for which publicity rights are commonly applied in the US.

This has been seen in cases involving action to protect the asset holders of Crocodile Dundee and The Simpsons. These cases involve passing off law, trade mark law or the Trade Practices Act 1974 (Cth) applied in Australia. For example in the Duff beer case, Twentieth Century Fox successfully sued a brewing company for producing and distributing a can of beer that was held to be deceptively similar to ‘Duff’ beer, the fictional beer drunk by characters in The Simpsons.

As an illustration in Australia specifically of the use of trade mark registrations to obtain monopoly rights for the estates of personalities, since 1986 Elvis Presley Enterprises, Inc. has obtained about 30 trade mark registrations over the names ELVIS PRESLEY or ELVIS.

8.  Three practical takeaways

  • The takeaway for rights seekers domiciled anywhere in the world is - obtain clearance for publicity rights for products distributed or otherwise dealt with in certain states of the United States.
  • For rights seekers or holders of publicity rights under US law the takeaway is - note particulars of the date of death, the will, the jurisdiction in which probate was granted, and jurisdiction-specific common law and statutory publicity rights.
  • If you are making a will, dealing with probate or administering an estate with lots of IP, then the Monroe case is a useful reminder of potential consequences in the US for copyright and other intellectual property and publicity rights transferred under a will.

UPDATE 30 October 2007:

California has passed "An act to amend Section 3344.1 of the Civil Code, relating to deceased personalities." The effect of SB 771, Chapter 439, is to reverse the law in California arising from the Monroe case and to provide for a postmortem right of publicity at the time of death of a celebrity who passed away prior to the enactment of the statute in 1985.

UPDATE 7 February 2012:

See this Hollywood Reporter article of 26 January 2012: Why the Marilyn Monroe Estate Paid $3 Million For Photos of the Film Legend (Analysis).

UPDATE 15 November 2012

See this Prof. Tyler Ochoa article on the Eric Goldman blog, 4 October 2012: Marilyn Monroe's Image is Cast Into the Public Domain — Sort Of. Here Prof. Tyler discusses a recent Ninth Circuit decision which affirmed the lower court's ruling. He concludes: "As a result of this case, Marilyn Monroe does not have a post-mortem right of publicity under New York law, and her name and likeness have been cast into the public domain. That conclusion, however, is subject to four important caveats: ...". The caveats in effect leave the Monroe estate some wiggle room for legal negotiations on the basis of trade mark law and uncertainties in publicity rights law. Prof. Tyler's quotes the following paragraph in a recent judgement:

This is a textbook case for applying judicial estoppel. Monroe's representatives took one position on Monroe's domicile at death for forty years, and then changed their position when it was to their great financial advantage; an advantage they secured years after Monroe's death by convincing the California legislature to create rights that did not exist when Monroe died. Marilyn Monroe is often quoted as saying, "If you're going to be two-faced, at least make one of them pretty." There is nothing pretty in Monroe LLC's about-face on the issue of domicile. Monroe LLC is judicially estopped from taking the litigation position that Monroe died domiciled in California. Our conclusion in this regard is guided by the need to preserve the dignity of judicial proceedings that have taken place over the last forty years and to discourage litigants from "playing fast and loose with the courts."


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