Trade Dress Limits On Copyright Licenses

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.