Cameo Clips

Celebrity Images/Trade-Dress Claims

The U.S. District Court for the Northern District of California issued a preliminary injunction barring a wine company from using the name or image of Marilyn Monroe on its products. Nova Wines Inc. v. Adler Fels Winery LLC, 06-06149 MHP. The plaintiff ' which sold wines with labels of photographs of the late actress Marilyn Monroe under a license from Monroe's estate ' filed suit over the defendants' marketing of a wine featuring a 1949 photo of Monroe licensed from a photographer who had obtained a release from Monroe. The district court first found that even though Nova Wines was a licensee of the federally registered 'Marilyn Monroe' trademark, the plaintiff lacked standing to pursue its trademark-infringement claim because 'the license is non-exclusive [for wine] and does not convey a property interest.' Nova Wines also asserted an interest in a common-law trademark for 'Marilyn,' but the district court emphasized: 'The common first name 'Marilyn,' standing alone, is likely not a protectable trademark. ' Presumably, therefore, plaintiff is asserting an interest in the name 'Marilyn' as it is represented within the registered trademark comprised of the stylized 'Marilyn Monroe' signature. ' [But i]n any case, defendants represent that they have not and do not intend to use the stylized 'Marilyn' mark.'

Nova Wines also claimed trade-dress infringement. The applicable test for establishing such infringement requires an inherently distinctive trade dress or one with secondary meaning, 'nonfunctionality' and a likelihood of consumer confusion caused by the defendant's product. Siding here with Nova Wines, the district court explained about distinctiveness: '[T]he use at issue in this case is not simply the use of the Marilyn Monroe image, it is the use of the Marilyn Monroe image on wine bottles. Plaintiff's unique, long-standing practice of placing various images of Marilyn Monroe on its wines has created a recognizable trade dress specifically limited to the sale of wine.'

The district court next noted: 'The test for aesthetic functionality is 'whether protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage.' ' Defendants do not assert that they would be placed at a significant competitive disadvantage if they were denied the right to place Marilyn Monroe images on their wine bottles. The court therefore finds that the Marilyn Monroe trade dress is non-functional.'

The court went on to see a likelihood of consumer confusion, considering that the defendants' 'Red Velvet Collection bottle is virtually identical to plaintiff's 2002 and 2004 Velvet Collection bottles. ' [T]he court finds that plaintiff is likely to show that the ordinary degree of care exercised by typical wine purchasers will not lead these purchasers to verify the source of the wine by reading the reverse side of the Marilyn Monroe label.' The court added: 'As the sole purveyor of Marilyn Monroe wines for the past twenty years, plaintiff may suffer immeasurable and irreparable damage to its reputation and goodwill if other wineries are able to sell wines with nearly identical packaging outside the control of plaintiff. ' Given the large number of unclaimed names and images that Adler Fels could select for its wines, it is difficult to see how Adler Fels' business will be adversely affected by being barred from using the name or image of one particular individual.'

The U.S. District Court for the Southern District of New York denied a defense motion for summary judgment in a copyright-infringement action alleging joint authorship of the composition 'Throwback,' which appeared on Usher's multi-million-selling album Confessions. Johnson v. Arista Holdings Inc., 05 Civ. 9645(LBS). The defendants claimed that the contributions of plaintiff Eric Johnson (p/k/a E-Bass) to 'Throwback' weren't original enough to be copyrightable on their own ' a requirement for joint authorship. But the district court noted: 'In his affidavit, plaintiff's counsel states that to rebut adequately defendants' expert report, he will need to depose defendants' expert and retain his own musicologist to show that plaintiff did, in fact, make copyrightable contributions to the Throwback composition. ' Because the parties were operating on an expedited discovery schedule and plaintiff did not receive defendants' expert report until the last day of the discovery period and was simultaneously served with the motion for summary judgment, plaintiff did not have an adequate opportunity to complete discovery on an issue that may be dispositive and is likely to present a genuine issue of material fact.'

Johnson had worked as a session guitarist on 'Throwback.' The American Federation of Musicians (AFM) sound-recording labor agreement he completed for compensation from the session contained a clause that stated:

'All of the results and proceeds of the services provided under this agreement, whether in writing or recorded, are and shall be deemed 'works-made-for-hire' for the Company. Accordingly, the Company shall be deemed the author and/or exclusive owner of all of the rights comprised in the copyright thereof, and the Company shall have the right to exploit any or all of the foregoing in any and all media, whether now known or hereafter invented, as the Company determines.'

Though the defendants thus argued that Johnson's services had been as a work-for-hire, the district court noted: 'Plaintiff does not dispute that he worked as a session musician for that period of time, however he claims that he did additional work on Throwback for which he was not compensated. Plaintiff points to the session logs as evidence that he was present in the studio for some period of time before and after the 1:00 a.m. to 5:00 a.m. [session-work] window. While the Court does not adopt plaintiff's characterization of these logs ' they are sufficient to create an issue of fact as to whether there are time periods that he worked on the composition in another capacity and therefore outside the scope of the AFM Agreement.'

Celebrity Images/Trade-Dress Claims

The U.S. District Court for the Northern District of California issued a preliminary injunction barring a wine company from using the name or image of Marilyn Monroe on its products. Nova Wines Inc. v. Adler Fels Winery LLC, 06-06149 MHP. The plaintiff ' which sold wines with labels of photographs of the late actress Marilyn Monroe under a license from Monroe's estate ' filed suit over the defendants' marketing of a wine featuring a 1949 photo of Monroe licensed from a photographer who had obtained a release from Monroe. The district court first found that even though Nova Wines was a licensee of the federally registered 'Marilyn Monroe' trademark, the plaintiff lacked standing to pursue its trademark-infringement claim because 'the license is non-exclusive [for wine] and does not convey a property interest.' Nova Wines also asserted an interest in a common-law trademark for 'Marilyn,' but the district court emphasized: 'The common first name 'Marilyn,' standing alone, is likely not a protectable trademark. ' Presumably, therefore, plaintiff is asserting an interest in the name 'Marilyn' as it is represented within the registered trademark comprised of the stylized 'Marilyn Monroe' signature. ' [But i]n any case, defendants represent that they have not and do not intend to use the stylized 'Marilyn' mark.'

Nova Wines also claimed trade-dress infringement. The applicable test for establishing such infringement requires an inherently distinctive trade dress or one with secondary meaning, 'nonfunctionality' and a likelihood of consumer confusion caused by the defendant's product. Siding here with Nova Wines, the district court explained about distinctiveness: '[T]he use at issue in this case is not simply the use of the Marilyn Monroe image, it is the use of the Marilyn Monroe image on wine bottles. Plaintiff's unique, long-standing practice of placing various images of Marilyn Monroe on its wines has created a recognizable trade dress specifically limited to the sale of wine.'

The district court next noted: 'The test for aesthetic functionality is 'whether protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage.' ' Defendants do not assert that they would be placed at a significant competitive disadvantage if they were denied the right to place Marilyn Monroe images on their wine bottles. The court therefore finds that the Marilyn Monroe trade dress is non-functional.'

The court went on to see a likelihood of consumer confusion, considering that the defendants' 'Red Velvet Collection bottle is virtually identical to plaintiff's 2002 and 2004 Velvet Collection bottles. ' [T]he court finds that plaintiff is likely to show that the ordinary degree of care exercised by typical wine purchasers will not lead these purchasers to verify the source of the wine by reading the reverse side of the Marilyn Monroe label.' The court added: 'As the sole purveyor of Marilyn Monroe wines for the past twenty years, plaintiff may suffer immeasurable and irreparable damage to its reputation and goodwill if other wineries are able to sell wines with nearly identical packaging outside the control of plaintiff. ' Given the large number of unclaimed names and images that Adler Fels could select for its wines, it is difficult to see how Adler Fels' business will be adversely affected by being barred from using the name or image of one particular individual.'

The U.S. District Court for the Southern District of New York denied a defense motion for summary judgment in a copyright-infringement action alleging joint authorship of the composition 'Throwback,' which appeared on Usher's multi-million-selling album Confessions. Johnson v. Arista Holdings Inc., 05 Civ. 9645(LBS). The defendants claimed that the contributions of plaintiff Eric Johnson (p/k/a E-Bass) to 'Throwback' weren't original enough to be copyrightable on their own ' a requirement for joint authorship. But the district court noted: 'In his affidavit, plaintiff's counsel states that to rebut adequately defendants' expert report, he will need to depose defendants' expert and retain his own musicologist to show that plaintiff did, in fact, make copyrightable contributions to the Throwback composition. ' Because the parties were operating on an expedited discovery schedule and plaintiff did not receive defendants' expert report until the last day of the discovery period and was simultaneously served with the motion for summary judgment, plaintiff did not have an adequate opportunity to complete discovery on an issue that may be dispositive and is likely to present a genuine issue of material fact.'

Johnson had worked as a session guitarist on 'Throwback.' The American Federation of Musicians (AFM) sound-recording labor agreement he completed for compensation from the session contained a clause that stated:

'All of the results and proceeds of the services provided under this agreement, whether in writing or recorded, are and shall be deemed 'works-made-for-hire' for the Company. Accordingly, the Company shall be deemed the author and/or exclusive owner of all of the rights comprised in the copyright thereof, and the Company shall have the right to exploit any or all of the foregoing in any and all media, whether now known or hereafter invented, as the Company determines.'

Though the defendants thus argued that Johnson's services had been as a work-for-hire, the district court noted: 'Plaintiff does not dispute that he worked as a session musician for that period of time, however he claims that he did additional work on Throwback for which he was not compensated. Plaintiff points to the session logs as evidence that he was present in the studio for some period of time before and after the 1:00 a.m. to 5:00 a.m. [session-work] window. While the Court does not adopt plaintiff's characterization of these logs ' they are sufficient to create an issue of fact as to whether there are time periods that he worked on the composition in another capacity and therefore outside the scope of the AFM Agreement.'