Right-of-Publicity Amendments Extend Protections, But Marilyn Monroe LLC Suffers New Setback

The Washington state amendment was prompted in significant part by a ruling from the U.S. Court of Appeals for the Ninth Circuit that involved the estate of guitarist Jimi Hendrix, who died in 1970. The appeals court decided that the estate had no descendible right of publicity because Hendrix's last domicile was New York City. Experience Hendrix LLC v. The James Marshall Hendrix Foundation, 05-36029 (9th Cir. 2007).

When the Ninth Circuit ruled, the Washington Personality Rights Act, Wash. Rev. Code Sec. 63.60.010 et seq., included posthumous publicity rights for personalities who died within 50 years of Jan. 1, 1998. But the Act contained no choice of law provision.

In July 2008, the Western District of Washington decided a trademark infringement suit brought by the Hendrix estate against the manufacturer of unauthorized “Hendrix” vodka. The defendants pointed to the Ninth Circuit's decision in The James Marshall Hendrix Foundation case. But the district court noted: “The Foundation Order can only be read to say that no rights in the commercial value of Jimi Hendrix's name, likeness or other indicia of identity descended to Plaintiffs by operation of New York law.” The district added: “Trademark rights and publicity rights are distinct rights that are analyzed under different standards.”

The court then granted summary judgment to the estate on incontestable Hendrix trade and service marks, and decided that issues of fact existed regarding contestable Hendrix marks. Experience Hendrix LLC v. Electric Hendrix LLC, C07-0338 TSZ (W.D.Wash. 2008). (A trademark or service mark becomes incontestable and difficult to challenge if the owner timely notifies the U.S. Patent and Trademark Office in an affidavit that the mark has been used continuously in commerce for five consecutive years after registration.)

The Washington right-of-publicity statute initially took effect on June 11, 1998. The law protects name, likeness, photograph, signature and voice, whether or not a “personality” commercially exercised the right of publicity while he or she was alive. A “personality” is anyone whose protectable indicia “had commercial value at the time of his or her death.” The descendible right extends for 75 years after a personality dies.

The recent Washington statutory amendment included the following changes:

• The statute also applies to personalities' rights that “existed before June 11, 1998, and at the time of death of any deceased individual or personality or subsequent successor of their rights.”
• The statute applies to “all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose.”
• The statute applies “regardless of place of domicile or place of domicile at time of death.”
• The publicity right is “freely transferable, assignable, and licensable, in whole or in part, by any otherwise permissible form of inter vivos or testamentary transfer” whether “entered into or executed before, on, or after June 11, 1998.”

The amended statute appears to give courts within the state of Washington jurisdiction over right-of-publicity disputes when the state has a significant interest in the parties and rights at issue.

The Monroe Cases

When Marilyn Monroe died in 1962, she left her estate to her acting coach, Lee Strasberg. The residuary clause in her will devised to Strasberg “the rest, residue and remainder of my estate, both real and personal of whatsoever nature and whatsoever situate, of which I shall die seized or possessed or to which I shall be in any way entitled, or over which I shall possess any power of appointment by Will at the time of my death.” Strasberg left his estate to his wife Anna, who transferred the Monroe residuary assets to Marilyn Monroe LLC (MMLC) in 2001. The California and New York cases ' in which federal district courts decided that Monroe had no descendible publicity right to include in her will ' involved whether MMLC and its licensee, CMG Worldwide, had control through right of publicity over photographs of Monroe.

The recent amendment to California's Civil Code Sec. 3344.1 ' making that state's publicity right descendible for personalities who died as far back as 70 years before Jan. 1, 1985 ' took effect on Jan. 1, 2008. But the U.S. District Court for the Central District of California has since ruled that statements by the Monroe estate's executor to the California inheritance tax appraiser in the 1960s that Monroe's domicile was in New York, judicially estopped the Monroe legatees from now claiming California as Monroe's domicile in order to obtain a descendible right of publicity. (Judicial estoppel prevents a party from changing a position.) Milton H. Greene Archives Inc. v. CMG Worldwide Inc., CV 05-02200 MMM (MCx) (C.D.Calif. 2008). The California federal district court noted: “Given that the estate successfully argued to the California taxing authorities that Monroe was domiciled in New York at the time of her death, it would appear that either this court or the California taxing authorities had been misled were plaintiffs to prevail on their argument that Monroe died a California domiciliary.”

In September 2008, the U.S. District Court for the Southern District of New York decided that MMLC and CMG Worldwide were collaterally estopped from relitigating the domicile issue decided against them in the recent Milton H. Greene Archives ruling in California. The New York federal district court noted: “The only difference is that this action involves a different photographer” but is about “exactly the same rights.” Shaw Family Archives Ltd. (SFA) v. CMG Worldwide Inc., 05 Civ. 3939.

These rulings are a strong blow to policing unauthorized use of image, but there has been litigation outside the right-of-publicity sphere to enforce Marilyn Monroe image rights. In December 2006, the U.S. District Court for the Northern District of California granted a preliminary injunction to the Monroe estate's long-time licensee for wine products. Nova Wines Inc. v. Adler Fels Winery LLC, 467 F.Supp.2d 965 (N.D. Calif. 2006). The defendant's wine bottles bore a photographic image of Monroe that had been obtained from a photo studio involved in the Milton H. Greene Archives litigation. In issuing the injunction, the Northern District of California found in part: “[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 [which protects the total image of a product].”

The Ninth Circuit heard arguments in January 2008 on the defendants' appeal of the preliminary injunction, but no decision had been issued as of the time of this writing.

Los Angeles entertainment attorney Robert A. Finkelstein accompanied Nancy Sinatra to Washington, DC, last summer for a U.S. Congressional hearing on a proposal for terrestrial radio stations to pay performance royalties to air sound recordings. Sinatra was a key artist-rights witness before the House Subcommittee on Courts, the Internet and Intellectual Property. (The subcommittee later voted to support the performance royalty legislation, then sent it to the House Judiciary Committee.) As SoundExchange Executive Director John Simson brought this author over in the Congressional hearing room to greet Sinatra and the long-time Sinatra-family attorney, Finkelstein praised a recent change in Washington state's right-of-publicity statute. The amendment, which took effect in June 2008, eliminated a personality's domicile as a bar to bringing a right-of-publicity suit.

The California-based Sinatra family had been busy licensing Frank Sinatra product to mark 10 years since the legendary crooner passed away. California had recently enacted a major change in its statutory right of publicity, too ' in response to litigation that involved the residuary rights of Frank Sinatra's late friend Marilyn Monroe. After federal district courts in California and New York ruled that Monroe had no ability to include a post-mortem right of publicity in her will when she died in 1962, the California legislature amended its descendible publicity right to apply to personalities who died up to 70 years before the California statute originally took effect on Jan. 1, 1985. But the amendment to Calif. Civ. Code Sec. 3344.1 hasn't helped the Monroe legacy. Both California and New York federal district courts have now decided that, though Monroe often worked in California, her domicile was New York, which has no descendible publicity right.

Washington State Amendment

The Washington state amendment was prompted in significant part by a ruling from the U.S. Court of Appeals for the Ninth Circuit that involved the estate of guitarist Jimi Hendrix, who died in 1970. The appeals court decided that the estate had no descendible right of publicity because Hendrix's last domicile was New York City. Experience Hendrix LLC v. The James Marshall Hendrix Foundation, 05-36029 (9th Cir. 2007).

When the Ninth Circuit ruled, the Washington Personality Rights Act, Wash. Rev. Code Sec. 63.60.010 et seq., included posthumous publicity rights for personalities who died within 50 years of Jan. 1, 1998. But the Act contained no choice of law provision.

In July 2008, the Western District of Washington decided a trademark infringement suit brought by the Hendrix estate against the manufacturer of unauthorized “Hendrix” vodka. The defendants pointed to the Ninth Circuit's decision in The James Marshall Hendrix Foundation case. But the district court noted: “The Foundation Order can only be read to say that no rights in the commercial value of Jimi Hendrix's name, likeness or other indicia of identity descended to Plaintiffs by operation of New York law.” The district added: “Trademark rights and publicity rights are distinct rights that are analyzed under different standards.”

The court then granted summary judgment to the estate on incontestable Hendrix trade and service marks, and decided that issues of fact existed regarding contestable Hendrix marks. Experience Hendrix LLC v. Electric Hendrix LLC, C07-0338 TSZ (W.D.Wash. 2008). (A trademark or service mark becomes incontestable and difficult to challenge if the owner timely notifies the U.S. Patent and Trademark Office in an affidavit that the mark has been used continuously in commerce for five consecutive years after registration.)

The Washington right-of-publicity statute initially took effect on June 11, 1998. The law protects name, likeness, photograph, signature and voice, whether or not a “personality” commercially exercised the right of publicity while he or she was alive. A “personality” is anyone whose protectable indicia “had commercial value at the time of his or her death.” The descendible right extends for 75 years after a personality dies.

The recent Washington statutory amendment included the following changes:

• The statute also applies to personalities' rights that “existed before June 11, 1998, and at the time of death of any deceased individual or personality or subsequent successor of their rights.”
• The statute applies to “all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose.”
• The statute applies “regardless of place of domicile or place of domicile at time of death.”
• The publicity right is “freely transferable, assignable, and licensable, in whole or in part, by any otherwise permissible form of inter vivos or testamentary transfer” whether “entered into or executed before, on, or after June 11, 1998.”

The amended statute appears to give courts within the state of Washington jurisdiction over right-of-publicity disputes when the state has a significant interest in the parties and rights at issue.

The Monroe Cases

When Marilyn Monroe died in 1962, she left her estate to her acting coach, Lee Strasberg. The residuary clause in her will devised to Strasberg “the rest, residue and remainder of my estate, both real and personal of whatsoever nature and whatsoever situate, of which I shall die seized or possessed or to which I shall be in any way entitled, or over which I shall possess any power of appointment by Will at the time of my death.” Strasberg left his estate to his wife Anna, who transferred the Monroe residuary assets to Marilyn Monroe LLC (MMLC) in 2001. The California and New York cases ' in which federal district courts decided that Monroe had no descendible publicity right to include in her will ' involved whether MMLC and its licensee, CMG Worldwide, had control through right of publicity over photographs of Monroe.

The recent amendment to California's Civil Code Sec. 3344.1 ' making that state's publicity right descendible for personalities who died as far back as 70 years before Jan. 1, 1985 ' took effect on Jan. 1, 2008. But the U.S. District Court for the Central District of California has since ruled that statements by the Monroe estate's executor to the California inheritance tax appraiser in the 1960s that Monroe's domicile was in New York, judicially estopped the Monroe legatees from now claiming California as Monroe's domicile in order to obtain a descendible right of publicity. (Judicial estoppel prevents a party from changing a position.) Milton H. Greene Archives Inc. v. CMG Worldwide Inc., CV 05-02200 MMM (MCx) (C.D.Calif. 2008). The California federal district court noted: “Given that the estate successfully argued to the California taxing authorities that Monroe was domiciled in New York at the time of her death, it would appear that either this court or the California taxing authorities had been misled were plaintiffs to prevail on their argument that Monroe died a California domiciliary.”

In September 2008, the U.S. District Court for the Southern District of New York decided that MMLC and CMG Worldwide were collaterally estopped from relitigating the domicile issue decided against them in the recent Milton H. Greene Archives ruling in California. The New York federal district court noted: “The only difference is that this action involves a different photographer” but is about “exactly the same rights.” Shaw Family Archives Ltd. (SFA) v. CMG Worldwide Inc., 05 Civ. 3939.

These rulings are a strong blow to policing unauthorized use of image, but there has been litigation outside the right-of-publicity sphere to enforce Marilyn Monroe image rights. In December 2006, the U.S. District Court for the Northern District of California granted a preliminary injunction to the Monroe estate's long-time licensee for wine products. Nova Wines Inc. v. Adler Fels Winery LLC , 467 F.Supp.2d 965 (N.D. Calif. 2006). The defendant's wine bottles bore a photographic image of Monroe that had been obtained from a photo studio involved in the Milton H. Greene Archives litigation. In issuing the injunction, the Northern District of California found in part: “[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 [which protects the total image of a product].”

The Ninth Circuit heard arguments in January 2008 on the defendants' appeal of the preliminary injunction, but no decision had been issued as of the time of this writing.