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Trade Dress Limits On Copyright Licenses

By Patrick Eyers
March 27, 2007
Amidst the pantheon of pop culture icons, Marilyn Monroe retains a unique allure. And so it is that the first federal case to consider directly the intersection of copyright and trade dress rights arose from a dispute over the use of revealing photographs of a young Monroe on labels of red wine. The case, Nova Wines, Inc. d/b/a/ Marilyn Wines v. Adler Fels Winery LLC, No. C 06-06149 (N.D.Cal Dec. 1, 2006), out of the Northern District of California, was decided on a preliminary injunction motion and involved two commercial wine merchants intent on capitalizing on Monroe's enduring marketability. Judge Marilyn Hall Patel held that Nova Wines could assert its established trade dress rights in the use of photographs of Monroe on wine labels to prevent the holder of a valid copyright license in certain nude photographs of the actress from using one such image in a similar fashion. In reaching its decision, the court explored the evolving interplay between the copyright, trademark, and trade dress regimes.

Factual Background

Plaintiff Nova, doing business as Marilyn Wines, had produced wines under variations of the Marilyn Monroe brand name and with labels bearing the image of Monroe for 20 years. In 1989, Nova obtained from the Monroe estate an exclusive license to use the registered trademark 'Marilyn Monroe,' as well as the common law marks for Monroe's name, image, and likeness, in selling its wines. In 1999, Nova was approached by Tom Kelley Studios, Inc. ('TKS'), the copyright holder in a series of 1949 nude photographs of Monroe taken when the actress was an unknown 23-year-old, referred to as the 'Red Velvet Collection.' In 2004, the parties entered a licensing agreement for the use of the Red Velvet Collection photos, a relationship that deteriorated in mid-2005. TKS's September 2005 revocation of Nova's license to the Red Velvet Collection photographs remains a subject of arbitration. After terminating its arrangement with Nova, TKS promptly entered into negotiations with other wineries for use of the images on wine labels. In the summer of 2006, Nova learned that Adler Fels was planning to release a wine bearing a Red Velvet Collection image. In July 2006, Adler Fels refused to 'succumb to [Nova's] threats' and began marketing the wine in September, at which time Nova proceeded to file suit.

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