The Judicial View has noted the trial-level results of the fight that has been going on over the rights to Marilyn Monroe photographs. The copyright holder was photographer Sam Shaw, deceased; Mr. Shaw’s family formed a business entity for the purpose of holding the copyrights to his works.
Marilyn also has a successor organization, called Marilyn Monroe, LLC, that holds her intellectual property assets under the terms of her will.
The Shaw Family Archives licensed a t-shirt company to make and sell t-shirts bearing Marilyn’s likeness. They were sold at a Target in Indiana, which gives a famous personality a freely descendable right of publicity for 100 years after the personality’s death, regardless of that personality’s domicile or residence. Marilyn Monroe, LLC sued the Archives under this Indiana law, claiming that the right of publicity was infringed. The Archives, which holds the copyright in the images, responded that they hold the copyright and under federal copyright law they have the right to license the images to whomever they see fit. New York does not have a statutes similar to Indiana’s so Monroe sued in the US District Court for the Southern District of New York (SDNY), where the court must apply New York state law if state law must be applied, under the Copyright Act (17 USC) for an injunction against the Indiana action and for associated attorneys’ fees. Marilyn Monroe, at the time of her death, was domiciled in New York and her will was probated in New York, which gave New York courts the jurisdictional toehold (which is all they need) to hear the case.
Because Marilyn Monroe was domiciled in New York at the time of her death, and because New York has no right of publicity law (let alone a post-mortem right of publicity), the right of publicity was deemed in this matter to have died with Marilyn in 1962.
After a good bit of procedural juggling, the Indiana case, along with a sister case in California, ended up in the SDNY, which proceeded to enter summary judgment dismissing the Monroe, LLC right of publicity claims under Indiana law and noting that the Indiana Act was enacted over three decades after Monroe’s death and that Monroe never had any contact with Indiana during her lifetime. California, meanwhile, decided that Monroe, LLC were estopped from contesting that New York was Monroe’s state of domicile at the time of her death.
The SDNY then entered summary judgment in favor of the Archives, and granted attorneys’ fees under the Indiana law to the Archives.
The case presents an interesting view of the conflict between a state’s right-of-publicity laws and the federal copyright laws. In this particular matter, the right-of-publicity laws were held not to have survived Marilyn Monroe’s death, thus preventing the court from having to decide which law prevails in a head-on collision, but what will happen in a case where the laws do come into direct conflict?
The appeal is now pending before the US Court of Appeals for the Second Circuit.
I served as local counsel in the SDNY to the Archives’ attorneys in this matter.