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The Legal Backdrop: Milton H. Greene Archives, Inc. v. Estate of Marilyn Monroe, LLC
When the California legislature amended the statute to apply retroactively to all celebrities (as discussed in a prior Arent Fox alert), the estate asked the court to reconsider its decision. This time around, the court pointed out that the California statute only protects publicity rights for individuals who were California residents when they died. Although Monroe died in her California home, the estate had claimed in a prior legal proceeding that Monroe died a New York resident in order to avoid inheritance and estate taxes under California law. On this basis, the court held, and the Ninth Circuit agreed, that the estate was judicially estopped from claiming California residency. Because New York law does not offer posthumous publicity rights, the estate was left without an avenue to enforce state law rights in Monroe’s persona.
The Current Dispute
The court disagreed, holding that the estate’s false endorsement claim was separate and distinct from an assertion of publicity rights under state law. Publicity rights generally grant broad rights to an individual (or that person’s estate) to control the commercial use of his or her name, image, and likeness. By contrast, the court explained, the Lanham Act’s prohibition on false endorsement prevents the use of another’s trademark in connection with a product or service where that use will mislead consumers into thinking that the individual has sponsored or otherwise approved the product or service. A successful claim for false endorsement requires (1) a false or misleading representation of fact (2) in commerce (3) in connection with goods or services (4) that is likely to cause consumer confusion. The key difference, said the court, is that a false endorsement claim requires a showing that consumer confusion is likely, whereas a publicity claim does not. The court further explained that celebrities hold a “trademark-like interest in their name, likeness, and persona” that may be vindicated through a false endorsement claim under the Lanham Act.
The court went on to hold that the estate had properly stated a claim for false endorsement. In doing so, it rejected an additional argument made by AVELA that the use of a celebrity’s image cannot amount to a false or misleading representation of fact, one of the above-listed elements of a false endorsement claim. Citing several precedents to the contrary, the court confirmed that the use of an image on a product can, in fact, satisfy the misrepresentation element of a false endorsement claim. In addition, it rejected AVELA’s contention that a deceased celebrity’s likeness cannot provide the basis for a false endorsement claim. Acknowledging that, in some cases, consumer confusion is less likely when the celebrity is deceased, it held that there is no blanket prohibition on false endorsement claims involving deceased celebrities.
In addition to the estate’s false endorsement claim, the court permitted the estate to proceed with claims of trademark infringement and trademark dilution under the Lanham Act, and unfair competition under New York state law. Arent Fox is monitoring this case, and will post updates as we learn of them. Please contact Anthony V. Lupo, Sarah L. Bruno, or Thorne Maginnis with questions.