Marilyn Monroe’s Image is Cast Into the Public Domain — Sort Of (Guest Blog Post)

by Guest Blogger Tyler Ochoa [check out Prof. Ochoa’s casebook on publicity rights / affiliate link]

In 2011, Marilyn Monroe was #3 on Forbes magazine’s annual list of top-earning dead celebrities, earning $27 million for her estate. Next year, however, she may be absent from the list. Why? A month ago, the Ninth Circuit affirmed a lower court ruling that stripped Monroe’s estate of her post-mortem right of publicity, potentially casting her name and likeness into the public domain. See Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, ___ F.3d ____, 2012 WL 3743100, 2012 U.S. App. LEXIS 18419 (9th Cir. Aug. 30, 2012).

The right of publicity is the right to use one’s name and likeness (or other indicia of identity) for a commercial purpose. It is an IP right of relatively recent vintage. In 1953, in a case involving baseball cards, the Second Circuit predicted that New York would recognize a transferable “right of publicity” as part of its common law. That Erie-based prediction turned out to be wrong: in 1984, the New York Court of Appeals held that the right of publicity in New York was purely statutory. Because the New York statute provides the right only for “any living person,” there is no post-mortem right of publicity under New York law.

The California legislature enacted a right of publicity for living persons in 1971; but the California Supreme Court rejected a post-mortem right of publicity under its common law in 1979. The legislature responded by enacting a statutory post-mortem right of publicity in 1984, effective January 1, 1985. At the time, the right lasted for 50 years after the celebrity’s death; it has since been extended to 70 years after the celebrity’s death. Other states have statutory rights of publicity with different durations. For example, in 1994 Indiana enacted a post-mortem right that lasts 100 years after the celebrity’s death (largely at the behest of CMG Worldwide, a celebrity marketing firm based in Indiana).

When Marilyn Monroe died on August 5, 1962, none of these states recognized a post-mortem right of publicity, so it is hardly surprising that it was not mentioned in her will. The residual clause in Monroe’s will left 25% of the remainder of her estate to her psychiatrist, Dr. Marianne Kris. The remaining 75% went to her acting teacher, Lee Strasberg. Monroe had been particularly close to Lee Strasberg and his second wife, Paula. Paula Strasberg died in 1966, however, and Lee later married his third wife, Anna. When Lee Strasberg died in 1982, Monroe’s estate passed to Anna Strasberg, a woman who never met or knew Marilyn Monroe. Anna Strasberg was named executor in 1989, and she later founded Marilyn Monroe, LLC (MMLLC), a Delaware corporation, to manage Monroe’s right of publicity.

The controversy that led to the ruling began when MMLLC and its licensee, CMG Worldwide, sued the successors to the estates of several photographers for selling copies of their photographs of Marilyn Monroe (and merchandise emblazoned with those photos) without the permission of MMLLC and CMG. The cases were filed in the Southern District of Indiana, the home district of CMG. Seeking a more appropriate venue, Milton H. Greene Archives sued MMLLC and CMG in the Central District of California, seeking a declaratory judgment that MMLLC did not own Monroe’s post-mortem right of publicity. At the same time, Sam Shaw Archives sued MMLLC and CMG for a similar declaratory judgment in the Southern District of New York. The Southern District of Indiana transferred its cases involving the parties to those districts, and the two cases proceeded on parallel paths.

Although these cases potentially raised several interesting issues (including preemption by federal copyright law), the critical issue was choice of law. If either Indiana or California law applied, Monroe had a statutory post-mortem right of publicity. If New York law applied, she did not. The relevant choice-of-law principles provided that the applicable law was the law of the state in which Monroe was domiciled at the time of her death. If that issue was litigated on a clean slate, the outcome would be far from clear. At the time of her death, Monroe owned an apartment in New York and maintained a staff there; but she also owned a house in Brentwood, California, where she resided during the last several months of her life, and where she died.

In order to avoid a trial, the plaintiffs in the Shaw Family Archives case argued that even assuming that Monroe was entitled to a post-mortem right of publicity (under either California or Indiana law), CMG and MMLLC were not the owners of that right, because that right did not exist at the time that Marilyn Monroe died, and therefore it could not have been transferred by will to her testamentary beneficiaries. Because CMG and MMLLC claimed ownership of the right by transfer from her testamentary beneficiaries, a ruling that the rights could not be transferred by will would deprive them of standing to pursue their infringement claims. Instead, the right would have vested in her statutory beneficiaries, under the law of intestate succession. Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 468 F. Supp. 2d 309 (S.D.N.Y. 2007).

Although Marilyn Monroe was married three times (including famously to New York Yankees’ Hall-of-Fame center-fielder Joe DiMaggio and playwright Arthur Miller), she was divorced at the time of her death and did not have any children. Accordingly, under the California statute, any post-mortem right of publicity would have passed to her mother, Gladys Baker (who died in 1984), and her father, Edward Mortensen (who died in 1981). Since both of her parents had died by the time California’s post-mortem right came into effect on January 1, 1985, under Shaw Family Archives, Monroe’s right of publicity terminated upon her death.

Two weeks after the ruling in Shaw Family Archives, the federal district court in California reached the same conclusion, holding that Marilyn Monroe “could not have devised a statutory right that was created only decades after her death.” Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., 568 F. Supp. 2d 1152 (C.D. Cal. 2008) (paraphrasing the court’s previous order). The twin rulings set off a flurry of lobbying activity in California and New York. In New York, MMLLC unsuccessfully attempted to get the New York legislature to enact a post-mortem right of publicity. In California, however, MMLLC met with greater success. Senate Bill 771, enacted on October 10, 2007, amended the California statute to allow for testamentary disposition of the right for celebrities who died before January 1, 1985. SB 771 also added subsection (p) to California Civil Code section 3344.1, stating: “The rights recognized by this section are expressly made retroactive, including to those deceased personalities who died before January 1, 1985.” Finally, SB 771 expressly provided: “It is the intent of the Legislature to abrogate the summary judgment orders entered in The Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., United States District Court, Central District of California, Case No. CV 05-2200 MMM (MCx), filed May 14, 2007, and in Shaw Family Archives Ltd. v. CMG Worldwide, Inc., United States District Court, Southern District of New York, Case No. 05 Civ. 3939 (CM), dated May 2, 2007.”

On January 7, 2008, the district court in the Milton H. Greene Archives case held that under the amended statute, CMG and MMLLC did have standing to pursue a claim for violation of Monroe’s statutory post-mortem right of publicity. Seven months later, however, the same court ruled that CMG and MMLLC were judicially estopped from asserting that Monroe was a California domiciliary at the time of her death. The court noted that Monroe’s estate had consistently taken the position that Monroe was domiciled in New York at the time of her death, in order to avoid California inheritance taxes; that the estate had previously submitted several sworn declarations to that effect; that CMG and MMLLC were in privity with Monroe’s estate; and that having benefited from those representations, they would obtain an unfair advantage if they were now permitted to try to establish otherwise. See Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., 568 F. Supp. 2d 1152 (C.D. Cal. 2008).

Relying on that order, the district court in New York subsequently held that CMG and MMLLC were collaterally estopped from relitigating the issue of Monroe’s domicile. See Shaw Family Archives Ltd. v. CMG Worldwide, Inc., 2008 WL 4127830 (S.D.N.Y. 2008). Although an appeal was filed in that case, in 2011 the Shaw Family Archives filed for bankruptcy protection, in part as a result of the legal fees that it had incurred. The Archives subsequently cut a deal in which MMLLC would become the exclusive licensing agent for Shaw’s photographs of Monroe in exchange for a guaranteed $3 million in royalties over the five-year term of the agreement. The settlement removed the possibility of a ruling on appeal in the New York case.

MMLLC and CMG pursued their appeal in the Milton H. Greene Archives case in the Ninth Circuit. In the recent decision, the Ninth Circuit affirmed the lower court’s ruling. It systematically reviewed all of the evidence showing that Monroe’s will was submitted for probate in New York, and that during the 40-year probate proceedings, her executors (including Anna Strasberg) had consistently represented that Monroe was domiciled in New York at the time of her death. They took the same position in litigation with the California tax authorities. They supported their position with sworn declarations from many of Monroe’s friends. Strasberg also took the position that Monroe was domiciled in New York in litigation with a purported daughter of Monroe’s, as recently as 2002. The court concluded:

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.” [citation omitted]

Because Monroe died domiciled in New York, New York law applies to the question of whether Monroe LLC has the right to enforce Monroe’s posthumous right of publicity. Because no such right exists under New York law, Monroe LLC did not inherit it through the residual clause of Monroe’s will, and cannot enforce it against Milton Greene or others similarly situated…. [emphasis added]

The italicized statement is dicta, since the only party to the case other than the Milton H. Greene Archives who can directly take advantage of the decision was Tom Kelley Studios, Inc., the successor to another photographer’s copyrights in photos of Marilyn. Undoubtedly, however, any other defendant would be able to successfully invoke collateral estoppel to prevent MMLLC and CMG from continuing to litigate the issue of Monroe’s domicile at the time of her death.

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:

First, although Monroe’s likeness is now in the public domain as a matter of state law, anyone wishing to reproduce a specific photograph or motion picture of Monroe will still have to negotiate with the owner of the federal copyright in that work. Thus, the decision in the case was more of a victory for the photographers than a victory for the public domain.

Second, although Monroe’s name is now in the public domain as a matter of state law, MMLLC has registered the name “Marilyn Monroe” as a federal trademark for a wide variety of goods and services. Anyone selling similar goods and services will likely face a trademark or unfair competition claim under the Lanham Act. Indeed, if the mark “Marilyn Monroe” is deemed to be a “famous” mark, federal anti-dilution law will protect it from being used even on unrelated goods or services. Potential trademark defendants will have to rely on the descriptive fair use defense in 15 U.S.C. § 1115(b)(4), and be prepared to defend it through a likely appeal.

Third, it is perhaps not inevitable that other states will apply a choice-of-law rule that looks the law of the state where Monroe was domiciled at the time of her death. Indeed, Washington State has a right of publicity statute that purportedly applies to any exploitation of a celebrity’s image in the state of Washington, regardless of domicile. A federal district court, however, has held that the Washington law is unconstitutional. See Experience Hendrix, LLC v., Ltd., 766 F. Supp. 2d 1122 (W.D. Wash. 2011). That ruling will undoubtedly be appealed to the Ninth Circuit. Although it is a common practice to look to the law of the state where the deceased person was domiciled, it is far from clear that it should be unconstitutional for a state to apply its own law to transactions that occur inside that state.

Fourth, MMLLC and CMG continue to lobby the New York legislature to enact a post-mortem right of publicity, and to make it retroactive to celebrities who died before its enactment. Should they succeed in doing so, Marilyn Monroe’s name and likeness will be removed from the public domain and will once again become private property. If that happens, then other potential issues, such as copyright preemption, may have to be litigated in the future.