Cameo Clips

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.'