The Archives licensed certain photographs of Monroe to celebrity licensing agency CMG Worldwide, Inc., and to Marilyn Monroe, LLC, a company formed to hold and manage the intellectual property assets for the residuary beneficiaries of Monroe's will. CMG and the Monroe, LLC sued the Archives in Indiana alleging that the Archive's commercial exploitation of certain photographs of Marilyn Monroe on T-shirts sold at a Target Store in Indianapolis violated Indiana’s 1994 Right of Publicity Act (Indiana Act). The Indiana Act creates a descendible and freely transferable right of publicity that survives for 100 years after a famous personality's death, and applies to an act or event that occurs within Indiana, regardless of a personality's domicile, residence, or citizenship. Ind. Code §32-36-1-8.
The Archives responded that as a copyright holder, it had the sole right to license and otherwise exploit the Monroe photographs commercially, and sued CMG and Monroe, LLC in U.S. District Court (S.D.N.Y.) for injunctive relief and attorney’s fees under the Copyright Act. The Archives asserted that Monroe died in 1962 in California, and her will was probated in New York, where she was domiciled; and at the time of Monroe’s death, neither New York nor California recognized any posthumous right of publicity.
Although California later enacted a statute guaranteeing celebrities a post-mortem right of publicity, New York never passed a comparable statute. The California statute, effective January 1, 1985, was not retroactive. And although the California legislature “clarified” the statute by purporting to make it retroactive in 2007, it applied only to California domiciliaries. The Archives concluded that Monroe’s right of publicity died with her, and Indiana law could not retroactively confer any right of publicity on CMG and Monroe, LLC.
CMG and Monroe, LLC moved to dismiss or stay the New York suit in favor of the Indiana suit, or, alternatively, to transfer the New York case to Indiana. CMG and Monroe, LLC also moved in the Central District of California to transfer a virtually identical case to Indiana, this case being against other photographers who had registered copyrights in photographs of Monroe. Both motions were denied and instead, the Indiana case was transferred to the New York District Court and consolidated with the Archives' pending lawsuit.
The District Court granted summary judgment dismissing the CMG/Monroe, LLC right of publicity claims under Indiana law, 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. In the meantime, the judge handling the California litigation concluded that CMG/Monroe, LLC were estopped from contesting that New York was Monroe's state of domicile at the time of her death. The District Court in New York then entered summary judgment in favor of the Archives, and proceeded to consider the Archives' motion for attorneys fees and sanctions.
Because the CMG/Monroe, LLC claims under the Indiana Act were dismissed, the Archives did not prevail on the merits of the public domain claim, the Court held that it was not considered a “prevailing party” under the Copyright Act and was not entitled to attorney’s fees. 17 U.S.C. §505.
However, the Indiana Act mandated an award of attorneys fees, costs and expenses to the prevailing party, and the Court awarded $165,933 in favor of the Archives' attorney. The Court also awarded litigation and discovery sanctions against CMG/Monroe, LLC (total $15,000) and their attorneys ($15,000) in connection with the Indiana Act claim.
Judge(s): Colleen McMahon, District Judge
Related Categories: Civil Procedure , Civil Remedies , Entertainment
| Plaintiff Lawyer(s) | Plaintiff Law Firm(s) |
| Christopher Serbagi | |
| Amy L. Wright | Benesch |
| Cem Ozer | Bushell Sovak Ozer & Gulmi LLP |
| David Michael Marcus #2 | Marcus & Greben |
| J. Lee McNeeley | McNeely, Stephenson Thopy & Harrold |
| Tracy Nicole Betz | Sommer Barnard PC |
| Jonathan Garland Polak | Sommer Barnard PC |
| Marci A. Hamilton | The Law Office of Marci Hamilton |
| Defendant Lawyer(s) | Defendant Law Firm(s) |
| Nancy Delain | Delanie Law Office PLLC |
| Michelle Craven | Gibson Dunn |
| Howard Hogan | Gibson Dunn |
| Theodore Minch | Gibson Dunn |
| Orin Snyder | Gibson Dunn |
| Paula Kae Colbath | Loeb & Loeb LLP |
| Douglas E. Mirell | Loeb & Loeb LLP |
| Barry Isaac Slotnick | Loeb & Loeb LLP |
| Laura Wytsma | Loeb & Loeb LLP |
| Amicus Lawyer(s) | Amicus Law Firm(s) |
| James M. Murphy | Spivak Lipton Watanabe Spivak & Moss LLP |
Battle Over Publicity Rights to Marilyn Monroe Photographs