As readers of this blog have seen, protecting your brand involves tending to a variety of rights. See Einstein, Child . . .and Kardashian. This task can become even more complex if the brand you’re protecting is a celebrity, as recently illustrated in a Ninth Circuit case involving the estate of Marilyn Monroe. See. Milton Greene Archives Inc. v. Marilyn Monroe LLC, Nos. 08-56471, 08-56472 & 08-56552 (9th Cir. Aug. 30, 2012).

Marilyn Monroe Ranks Third for Top-Earning Deceased Celebrities

Most of our readers probably associate Ms. Monroe with Hollywood and, indeed, she purchased a home in California in 1962 during the filming of “Something’s Got to Give.” Ms. Monroe, however, had an apartment in New York, which she maintained and staffed even while she was in California. When Ms. Monroe died in 1962, the question was whether she was a California domiciliary or a New York domiciliary.

The executor of her estate over the years successfully maintained in the courts and before various administrative agencies that she was a New York domiciliary, with the resulting tax benefits. The executor also managed Ms. Monroe’s “brand” such that Forbes ranked the earnings to her estate in 2011 as #3 among deceased celebrities right after Michael Jackson as #1 and Elvis Presley as #2. See Pomerantz, Top-Earning Dead Celebrities, Forbes, Oct. 25, 2011.

The estate also maintained federally registered trademarks associated with Ms. Monroe.

Right of Publicity Survives Death

In 2005, the estate sued a company, claiming that it violated the estate’s rights in Ms. Monroe’s state-law right of publicity in photos that the company was commercially exploiting. (The estate did not own the copyright in the photographs; the company did.) The court ruled against the estate, holding that neither New York nor California had a right of publicity that survived the death of the celebrity and, therefore, the estate had no right of publicity to enforce.

In response, the California legislature amended its law to permit a right of publicity to survive the death of the celebrity under certain circumstances. Cal. Civ. Code § 3344.

The estate sued the company again, arguing that the new California law gave it a right of publicity. The estate also argued that Ms. Monroe was a California resident at the time of her death. Both the trial court and the Ninth Circuit disagreed, holding that the estate was judicially estopped from changing the state of domicile.

Part of the Ninth Circuit’s reasoning was based on copyright law. The court found that this case and the 2005 case “have forced Monroe photographers into lengthy litigation in order to simply defend their right to profit from their copyrighted photographs. If Monroe LLC [the estate] were to succeed in establishing ownership of Monroe’s right of publicity, Milton Greene’s [defendant’s] ability to commercially exploit the photographs that it created and in which it owns copyrights would be subject to Monroe LLC’s control.” Slip Op. at 15.

Case: Milton Greene Archives Inc. v. Marilyn Monroe LLC, Nos. 08-56471, 08-56472 & 08-56552 (9th Cir. Aug. 30, 2012).

This article was prepared by Sue Ross (sross@fulbright.com / 212 318 3280) of Fulbright’s Intellectual Property and Technology Practice.