Is an icon’s image too generic to trademark?

Bitter battle by Marilyn Monroe estate to protect her legacy may have unforeseen consequences for celebrities

It’s common these days for celebrities to trademark their names and properties attached to them (yes, you Beyonce, and all of you in the Kardashian clan). Her estate has tried to create comparable legal protections for Norma Jean Mortenson, the sliver-screen legend better known as Marilyn Monroe.

But a U.S. District Court in Manhattan has cast a long shadow over the movie star’s intellectual property rights, raising the possibility—not just for her and her estate but for other pop culture icons —that a megastar like Monroe may be too generic for protection.

The issue is far from decided, and, in a 51-page opinion and order, U.S. District Judge Katherine Folk Pailla has observed that, “What began in 2012 as a declaratory judgment action has transmogrified into a sprawling conflict raising issues of trademark, antitrust, and state business law.”  So, as Marilyn herself might aver: Sugar, what’s behind this Monkey Business that could Shock Miss Pilgrim, in which Something’s Gotta Give, some parties don’t seem to be Gentlemen [who] Prefer Blondes, and, the court hopes, won’t turn into a Seven Year Itch?

A battle brews

In 2012, the Marilyn Monroe Estate sued several companies, asserting they violated publicity rights by using the late bombshell’s images on their products or within their photo catalogs. Monroe had homes in California and New York at the time of her death in 1962. But the executors argued for estate tax considerations that she was domiciled in New York at the time of her death. The U.S Ninth Circuit Court of Appeals took the position that, because of the executors’ New York claims, the Empire State laws on rights of publicity for the deceased would apply.

By this time, her estate no longer had a right to publicity in Monroe’s image. So they turned to trademarking her name and images of her.

And that launched the estate’s long, bitter legal battle with A.V.E.L.A. Inc., a nostalgia company and its licensing agents V. Int’l and X One X. They had novelties they were selling with images of Monroe on them. A.V.E.L.A. filed a declaratory judgement, asking the courts to find that its images did not infringe. The estate counterclaimed, asserting “ownership of a trademark in Monroe’s physical image, irrespective of the expiration of the right of publicity.”

Not to let it stop there, A.V.E.L.A. countered, seeking dismissal by asserting the mark claim was an attempt to revive the right to publicity. 

Trademark cancellation

While the federal court in Manhattan dismissed the claims of monopolization by the estate over everything Monroe, the judge also permitted the counterclaim of trademark cancellation because of the functionality of the name. A.V.E.L.A (V. Intl’) wants to establish that famous names are for aesthetic appeal only for consumers. They, therefore, cannot be trademarked because “[t]he appearance of Marilyn Monroe’s name and/or stylized signature in the Contested Marks is purely functional” because they “at most may provide some aesthetic appeal to consumers and serve as a product feature,” A.V.E.L.A. has argued.

The judge has taken further steps to advance this case, and, in practicality, celebrities, their heirs, and estates of the legendary who have marks on their names should be watching, and maybe fretting. Could their protections evaporate?