robot marilyn

Marilyn Monroe is one of the most valuable ‘personas’ ever (its a little ghoulish to put it that way but there you are). I have blogged many disputes relating to Marilyn Monroe’s personality rights (or lack thereof).

Now we have a declaratory judgment action relating to the creation of a ‘Virtual Marilyn.’

The image above is not the subject of this dispute, but an image I located here, assuming that if I searched ‘robotic marilyn’ in Google Image, I would find a reference to the iconic image from ‘Seven Year Itch.’

virtual marilyn rts of publicity.pdf

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marilyn monroe ghost.jpg
Dead celebrities have lobbied NY state senators to introduce S06790, a bill to amend NY civil rights law to add a 70 year post-mortem right to prevent the use of the persona of a deceased personality. The ghost of Marilyn Monroe may have been among the lobbyists, because Section 12 of the bill seems to reverse the outcome of this case, that held that Marilyn Monroe’s estate, and CMG, the estate’s agent, couldn’t enforce post-mortem rights in NY, if we ever got them, because you cannot devise what doesn’t exist when the will is written.
Drawing of Marilyn Monroe ghost from here.

marilyn mopnroe red velvet wine.jpg
Plaintiff winery licensed the MARILYN MONROE name and likeness from the Monroe licensing entity, and sold wine under the MARILYN MONROE brand for many years, displaying a succession of images of Marilyn on its labels, over the years. At one point it also licensed the copyright in a famous nude photograph of Marilyn on Red Velvet, from the photographer (historical aside – nude photos used to be scandalous) and sold wine with the photo on the label. The photographer terminated the license and then licensed the photo to Defendant, a different winery, which reproduced the photo on its label. Plaintiff sues on trademark infringement for use of a photo that it can no longer use, but defendant can.
As discussed here by Prof Patry, plaintiff prevails. Even though defendant utilized the work under a valid copyright license, such use created a likelihood of confusion with plaintiff’s trade dress, which consisted in part of the likeness of Marilyn on the label. The good professor questions the decision, noting the paradox that the plaintiff could prohibit the use of an image by the rightful owner, when itself could not use that image.
I’ve been emailing and phoning Bill this week about this paradox, and I think we pretty much agree now that the decision is ok. I guess I would phrase it this way – the bundle of rights that is a trademark, contains a negative right to prohibit all those usages that would create the likeihood of confusion but the bundle of positive rights is not identical – the trademark owner cannot use all similar images to its own, if it does not own copyright in them.
Example: Coca Cola has by now built up strong rights in the use of polar bears as trademarks for Coke. I might create a polar bear and own valid copyright in it – except that I cannot use it as a trademark for soda if it creates a likelihood of confusion with Coke’s trademark rights (and, Coke cannot use an image of a polar bear that infringes my copyright in my polar bear).
So the scope of protection for a ‘fluid’ trademark can be hard to articulate with precision. Take images that have been updated many times over the years, such as the BETTY CROCKER or AUNT JEMIMA logos. Some of these images have been modified so any times that, from a copyright point of view, had they been independently created, the first in the series might not infringe the copyright in the last of the series (see the series of Betty Crocker images below, for example).
betty croker series.jpg
One would have to do a likelihood of confusion analyis of the marks still in use, a copyright analysis of images no longer in use, as well a ‘residual goodwill’ analysis of logos no longer in use, to identify all the potential images that would infringe the trademark rights in this ‘series’ of marks. I’ll call the totality of the prohibited usages the negative penumbra.
However, within that negative penumbra may be certain images in which third parties lawfully own the copyright, for example because it was an artistic work that makes fair use of the protected image.
jemima croker.jpg
It would seem therefore that the ‘positive penumbra’ of trademark rights would be smaller than the negative penumbra, as the trademark owner would not itself be able to use those images without the permission of the copyright owner – the Red Velvet Marilyn photo being one such example.
Berry Croker image from here.
‘Home Cookin’ image from here.

Sounds funny to say it that way but it makes sense, especially after you read this decision holding that the purported owners of the Marilyn Monroe persona, cannot enforce their rights in New York, because a post-mortem right of publicity did not exist at the time of Marilyn Monroe’s death, and the testator can only devise that which exists at the time of death.
Best title by WSJ’s law blog: “Goodbye Norma Jean (And to Your Right of Publicity)

Forbes’ list of the highest grossing dead celebrities.  Interesting commentary here.  The list does not appear to distinguish between earnings from copyright (which probably accounts for most of these earnings) and those from ‘personality rights,’ which is probably how Marilyn Monroe makes it on the list.

The Top Ten
  1. Elvis
  2. Charles Schulz
  3. J.R.R. Tolkien
  4. John Lennon
  5. George Harrison
  6. Dr. Seuss
  7. Dale Earnhardt
  8. Tupac Shakur
  9. Bob Marley
10. Marilyn Monroe

Lee Strasbery played Hyman Roth in Godfather Part 2 but before that he was famous as an acting coach, training Marlon Brando and Marilyn Monroe among others.   Someone named Dluhos registered LEESTRASBERG.COM.  Strasberg’s estate, owners of a federal regsitration incoroporating the name, protested.  The Strasberg estate brought a UDRPand Dluhos went into civil court, pro se, and filed all sorts of actions, including constitutional attacks on the UDRP.  He screwed up service so the UDRP was not stayed, and the panel issued a decision against him.  Dluhos amended his complaint and the district court reviewed.  It dismissed Dluhos’ claims and upheld the UDRP decision, reviewing it under the strict standards of the Federal Arbitration Act.  Under the FAA, you essentially have to show that the arbitrators were either corrupt or on crack before the Court will vacate the arbitration.

The Third Circuit reviewed.  Held:  The FAA only applies to non-binding arbitration where the arbitration might realistically settle the dispute.  Because the UDRP was expressly intended to not deprive parties of access to civil courts, it does not fall under the FAA.  However, a district court may still review a UDRP decision because 15 USC Sec 1114(2)(D)(v) of the ACPA (Section 32(D)(v) of the Lanham Act) provides jursidiction from it to do so.  The case was remanded for a de novo review of the UDRP  action (which will now in effect become an ACPA action).  Dluhos v. Strasberg, no. 01-3713 (3d Cir Feb 20 2003).

Thank you to for bringing this case to my attention.