The Estate of Marilyn Monroe LLC may pursue trademark infringement claims against a company for marketing merchandise similar to products licensed, manufactured, or distributed by the estate, the Southern District of New York said.

The court rejected A.V.E.L.A. Inc.'s contention that persona rights of deceased celebrities are limited to family, direct heirs, or “the actual estate.” Although the estate purchased the rights, an “unbroken chain of title” extends from Monroe to the estate, the court said.

The court also shot down A.V.E.L.A.'s defenses based on the First Amendment, fair use and the estate’s alleged failure to take timely action.

But the court declined to award Monroe’s estate summary judgment on trademark infringement or trademark dilution claims since material facts are still in dispute. The court also denied judgment on unfair competition despite “bad-faith behavior of the A.V.E.L.A. is clear” since doing otherwise required an infringement finding.

Likelihood of consumer confusion in particular—key in trademark infringement and false endorsement claims—remain undecided, the court said.

“The Court concludes that a reasonable jury could find that AVELA’s products confuse consumers into believing they were endorsed by Ms. Monroe or the Estate, and that it could find that Ms. Monroe’s ubiquity and the passage of time would lead consumers to conclude that neither Monroe nor the Estate were in any way connected to the items,” the court said.

Both sides submitted surveys reaching opposing conclusions on consumer confusion. A.V.E.L.A. moved to toss the estate’s report, but the court said its methodology objections “are better addressed through cross-examination” before a jury.

Estate Granted IP Rights

After Monroe’s death in 1962, 75 percent of her estate passed to her acting teacher, and the remainder to her psychiatrist, the court said. The estate closed in 2001, and a New York court transferred all remaining assets to Marilyn Monroe LLC, a company formed to manage intellectual property belonging to Monroe.

In December 2010, the estate acquired a controlling interest in Marilyn Monroe LLC, including Monroe’s name, likeness, voice, and rights of publicity.

As a result, any intellectual property rights that belonged to Monroe at the time of her death now belong to the estate, the court said.

A.V.E.L.A. initiated the suit, seeking a ruling that it wasn’t violating any rights held by the estate by using images of Monroe. The estate counterclaimed with allegations that the company and owner Leo Valencia are violating federal and New York state laws.

Judge Katherine Polk Failla issued the opinion.

Technology Litigation Center represents A.V.E.L.A.

Sheppard, Mullin, Richter & Hampton LLP, and DLA Piper US LLP represent the estate.

The case is A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC, S.D.N.Y., No. 12-cv-4828, 1/30/19.