Something's Got To Give In Marilyn Monroe Trade Mark Dispute

In the United States it is commonplace for celebrities to trade mark their names and reap the economic benefits in doing so. Examples of celebrities who are utilizing their intellectual property rights include Kim Kardashian West, Conor McGregor and Justin Bieber who have all trade marked their names. On Monday 13th March 2017, however, a federal judge in the US made a ruling that will undoubtedly spark unrest in the world of celebrity and potentially question the validity of a celebrity's trade mark in the future.

It all started in 2015 when the Marilyn Monroe Estate was given the go ahead to bring trade mark infringement claims against the merchandising company, Avela, for violating the "Marilyn Monroe" trademarks. This brought with it several counterclaims from organisations claiming that the Marilyn Monroe Estate was trying to unfairly control the market for the late actress and that the name Marilyn Monroe was now too generic to be capable of being protected by trade mark.

Last week, District Judge Katherine Polk Failla dismissed the counterclaim in respect of controlling the market, stating that Avela's licensing agent, V. International Fine Art's publishing, had not successfully proved that the Marilyn Monroe estate has restricted market access to competitors. However, the judge seemed to leave the question open regarding whether the 'Marilyn Monroe' trade mark is generic when she stated in her judgement, "To be clear, the court harbors (sic) serious doubts that V. International will be able to establish that the contested marks are generic….Reaching that conclusion at this state, however, would be premature."

This comment suggests that although Judge Failla is giving both sides the opportunity to be heard at trial in respect of whether the trade mark has become generic or not, she herself has already made up her mind. Judge Failla's comments should not influence the decision of the trial Judge however as it will be a finding of fact on behalf of the trial judge as to whether the trade mark has become generic. The one thing that is for sure following this decision last week is that this long running dispute has a while to go yet before it is resolved.