Marilyn Monroe estate can proceed with TM claim

The estate belonging to late actress Marilyn Monroe has been granted the right to proceed with a trademark claim against a company selling celebrity-themed merchandise.

On Friday, September 18, the US District Court for the District of New York rejected a declaration of non-infringement by merchandise company Avela.

At the centre of the dispute is the allegation that merchandise company Avela, alongside X One X Movie Archives and V International, sell and produce products bearing Marilyn Monroe's trademark name and a lip print design without the permission of the Marilyn Monroe Estate.

All three businesses, described by the estate as “sham companies” in the lawsuit, are understood to be run by Leo Valencia.

The estate maintains and protects the portfolio of registered US trademarks bearing variations of Monroe’s names.

In 2011, the estate sent a cease-and-desist letter to Valencia concerning the alleged infringement. Valencia responded shortly after rejecting any claims of infringement.

In 2012, Valencia filed for a declaratory judgment of non-infringement at the New York district court. The estate counterclaimed stating that Valencia had infringed its marks.

Valencia believed the estate attempted to assert a false right of publicity claim. The estate had actually filed a false endorsement claim.

In Friday’s judgment Judge Katherine Failla said that the “key distinction” between a right of publicity and a false endorsement claim is that “the latter requires a showing of consumer confusion”.

Under US law, said Failla, celebrities’ name or likeness can acquire “trademark-like interests” and are therefore able to file false endorsement claims.

Valencia had also argued that many images of Monroe are in the public domain but Failla rejected the claim.

She said this “conflation of the distinct disciplines of copyright and trademark law” is “fatally flawed”.