Marilyn Monroe once said:

“I knew I belonged to the public and to the world, not because I was talented or even beautiful, but because I had never belonged to anything or anyone else.” Monroe is No. 3 in posthumous celebrity earnings, trailing only Michael Jackson and Elvis Presley. While Marilyn may have considered herself to be in the public domain, those asserting claims (whether by inheritance or copyright) to her name, voice, signature, photograph, image, likeness, distinctive appearance, gestures, or mannerisms have fiercely competed over the privilege to exploit such rights. At issue in the long pending California case of Milton H.Greene Archives v. Marilyn Monroe LLC, (9th Cir. 2012) 693 F.3d 983: Whether the iconic actress’ publicity rights were passed to her psychiatrist and acting coach through her will, or rather, expired with her death in 1962, freeing her photographer from obligations as a licensee of such rights.

Apart from the probate questions raised by Greene Archives (addressed in CITATIONS companion article on pg. 11), the case involves competing doctrines within the framework of our federal and state intellectual property laws. Copyright is based on Congress’ explicit constitutional power to “promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” copyright law is statutory and at least in principal, uniform across states. The right of publicity, in contrast, evolved from the individual’s constitutional and common law right of privacy and is far from uniform.

While federal copyright grants the creator of an original work commercial rights over the work, statutory and common law rights of publicity (also called rights of personality), pursuant to state law, grant the person who was the subject of the work (whether a celebrity or a common person) the right to maintain control over his or her name or likeness for commercial purposes. California is one of many (about half ) of U.S. states recognizing publicity rights by statute. About twenty states recognize a postmortem right of publicity. In particular, California’s Celebrity Rights Act, aka the Astaire Celebrity Image Protection Act (1985), provides celebrities with publicity rights for 70 years after their death. Civ. Code, §3344.1. The law, however, was enacted decades after Marilyn passed away.

Greene Archives is a dispute over the rights to a portfolio of thousands of photographs taken by Monroe’s long-time friend, Milton Greene, valued by Forbes at $27 million. In 2007, Judge Margaret Morrow of the Central District of California ruled at summary judgment that the estate couldn’t control Monroe’s posthumous image because she had died prior to the enactment of the Celebrity Rights Act. The ruling freed the owner of the copyright in Marilyn’s images (Greene Archives – the photographer) to exploit the images as it desired, terminating any obligation to seek a license from the estate.

The California Legislature – in an unapologetic attempt to abrogate the district court’s decision in favor of the photographer, with child-star turned California state senator Sheila Kuehl leading the charge – succeeded in amending the Celebrity Rights Act just six weeks the Green Archives judgment had entered, extending its reach to those who died before its enactment. Civ. Code § 3344.1.10. This resulted in a new rush to the courthouse and request for reconsideration. In 2008, Judge Morrow agreed with the estate that as amended, the Act would have permitted the estate to survive summary judgment. Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., (C.D. Cal. 2008) 568 F.Supp.2d 1152. Nonetheless, the court once again granted summary judgment in favor of the photographer and entered an order of dismissal of the case in full, this time based on judicial estoppel (as explained in the article on page 11) : The court held that New York, and not California, law applied, because the estate was a bound by its prior election of that state as Marilyn’s domicile at the time of death for tax purposes. New York did not provide for a posthumous right of publicity by law, and had expressly rejected a corollary rushed attempt to lobby its legislature to enact a law, based on potential Constitutional conflicts, as well as conflicts with the retroactively diminishing the rights of those who had previously relied on the absence of such rights in entering into contracts that would lawfully exploit certain images. On August 30, 2012, the Ninth Circuit affirmed Judge Morrow, upholding summary judgment in favor of the copyright owner and against the publicity rights owner in a “textbook case for applying judicial estoppel.” Greene Archives, supra, 692 F.3d at 986. The court noted that the decision fell on the 50th anniversary of Monroe’s death, and remarked on “plans to resurrect Monroe as a holographic ‘performer, spokesperson, cultural pundit and computer avatar’ ” as indicative of the expansive nature of Monroe’s posthumous publicity rights.

In a surprising twist, on September 11, 2013, Judge Morrow rejected the parties’ joint request to approve a settlement and dismissal, which the parties’ intended to prevent “collateral attacks or satellite litigation.” The court, however, ruled that having already ordered the case dismissed in full, and noting how many motions it took to obtain such resolution, it no longer retained jurisdiction to approve the parties’ settlement. To the extent the request reflected the parties’ displeasure with and sought vacation of the judgment entered by the court and affirmed by the Ninth Circuit in its published decision, the court denied that relief as well. One cannot but wonder if the court took umbrage at the estate’s nearly successful lobbying efforts to legislate around her earlier decision. The Greene Archives parties have not quite given up the ghost: On September 17, they asked Judge Morrow to reconsider her ruling.

Because the doctrine of judicial estoppel appears to have finally put the Greene Archives case to rest, whether federal copyright laws would have preempted posthumous state publicity rights was not reached by the court. Given the broad reach of the Celebrity Rights Act, and the high value of celebrities’ postmortem intellectual property applied retroactively, expect further challenges to the Act, including challenges to its constitutionality based on copyright-related preemption or even First Amendment-related fair use interests.

Panda Kroll, senior attorney at DK Law Group, is chair of VCBA’s Biotech Law Section and a member of  the Citations Editorial Board.

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