August 2012

August 31, 2012, by Mandour & Associates, APC

Los Angeles – The Ninth Circuit on Thursday demolished an attempt by the estate of iconic actress Marilyn Monroe to claim the right of publicity to her likeness under California law, saying the estate has repeatedly and forcefully argued in the past that she was a New York resident at the time of her death.

Marilyn Monroe LLC began a legal wrangle in 2005 with Milton Greene Archives Inc. and Tom Kelley Studios Inc., in which the estate claimed Milton Greene was violating the estate’s rights by using Monroe’s image and likeness for unauthorized commercial purposes. Milton Greene argued that the estate owned no such right of publicity.

The estate asserted that it inherited Monroe’s right of publicity, which was created and deemed posthumous by the states of California and Indiana decades after her death, through a residual clause in her last will and testament. The will was subject to probate in the state of New York, which does not recognize a posthumous right of publicity, the court said.

Because Monroe’s executors consistently represented during the probate proceedings and elsewhere that she was domiciled in New York at her death to avoid payment of California estate taxes, among other things, the estate is now judicially estopped from asserting California’s posthumous right of publicity, the appeals court ruled, affirming the Central District of California’s ruling in the case.

Monroe was found dead in her Brentwood, California home on August 5, 1962, a few months after being kicked off 20th Century Fox’s production of Something’s Got To Give, but she maintained her New York apartment and staff throughout that period, according to the appeals court. She had executed her last will and testament in New York a year and a half prior to her death, and named a New York attorney as executor, the court said.

In May 2007 the California district court ruled in favor of Milton Greene. In direct response California State Senator Sheila Kuehl introduced Senate Bill 771 in June 2007. The bill stated that the California statutory right of publicity could be deemed to have existed at the time of death of any deceased personality who died before January 1, 1985 and is a transferable property right that could pass through the residual clause in the will of the deceased personality.

After the bill passed, the estate sought reconsideration of the district court’s grant of summary judgment for Milton Greene. The district court said the law did apply retroactively and, as amended, permitted Monroe’s right of publicity to pass to Monroe LLC through the residual clause of her will, if California’s substantive right of publicity law applied.

Unlike the California legislature, though the New York legislature had rejected Monroe LLC’s efforts to amend its laws to enact a similar descendible, posthumous right of publicity, the district court said. If New York law applied, which it would if Monroe was domiciled in New York at the time of her death, Monroe’s right of publicity would have been extinguished at her death, the court said.

Given the estate’s many efforts over more than 40 years to argue that Monroe was living in New York when she died, principles of judicial estoppel preclude Monroe LLC from advocating that Monroe was domiciled in California when she died, the district court ruled and the appeals court affirmed.

“Marilyn Monroe is often quoted as saying, “If you’re going to be two-faced, at least make one of them pretty,” the Ninth Circuit’s opinion said. “There is nothing pretty in Monroe LLC’s about-face on the issue of domicile.”

“We observe that the lengthy dispute over the exploitation of Marilyn Monroe’s persona has ended in exactly the way that Monroe herself predicted more that fifty years ago: ‘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,’” the appeals court said.

August 27, 2012, by Mandour & Associates, APC

BSH Home Appliances Corp., which makes Thermador ovens, preemptively sued the Julia Child Foundation for Gastronomy and the Culinary Arts on Friday, claiming its promotional use of photos of Child using its ovens does not infringe on the foundation’s rights to her likeness and trademarks.

BSH is seeking a judgment declaring that its use of or reference to Child’s name, image, likeness, celebrity identity and related trademarks in connection with presentations of the company’s heritage and history in various media does not infringe any trademark rights, copyrights, or rights of publicity claimed by the foundation, according to its complaint filed in Massachusetts federal court.

The action arises out of the foundation’s allegations that BSH has infringed one or more of the foundation’s trademarks and copyrights, and the foundation’s ownership of publicity rights related to the late Julia Child, according to the complaint.

“Ms. Child’s preference for and use of Thermador products, both on the set of her popular television show “The French Chef” and in her personal kitchen, is well-known and widely documented,” the complaint says.

Child’s personal kitchen was donated to the Smithsonian Institution in Washington, D.C., upon her passing, and remains on display to this day much as it appeared in her Massachusetts home, including her Thermador oven, the complaint points out.

BSH has used images of Child and references to the well-known historical fact of her use of Thermador products in various media, including on its website and on its social media web pages, the company says.

“These uses do not state or imply any endorsement by Ms. Child of Thermador products,” the complaint says. “Rather, plaintiff’s use of these photos and references to Julia Child’s name and use of Thermador products reflect on the long history, significance and influence of Thermador products on American society and culture, and Ms. Child’s documented and well-known use of those products.”

BSH claims its uses of Child’s image and name are not directly connected to the sale of any merchandise, but rather are factual references to her well-known use of Thermador products, placed in proper context, including on a timeline chronicling the company’s history and in the historical “Our Heritage” section of the Thermador website.

The foundation allegedly sent BSH a letter in July claiming exclusive ownership and control of Child’s image and trademarks, and demanded the appliance maker cease and desist from using references to Child.

Representatives for the Julia Child Foundation did not respond to emails seeking comment.

The passage of Child’s 100th birthday earlier this month served as an occasion for many tributes to her life and work.

August 17, 2012, by Mandour & Associates, APC

Los Angeles – Lorillard, the company that owns the trademark rights to Newport Cigarette brand, announced last week that it won a lawsuit against the makers of a synthetic cannabis product called Newprot. The lawsuit was filed in 2010 in U.S. District Court in Virginia, and alleged that the knock off product infringed on Lorillard’s registered trademark. The Newprot product was sold in pouches that looked almost identical to Newport packaging. Lorillard sought an injunction to prevent the further distribution of the Newprot products and court related costs.

In its court documents, Lorillard argued that the name and packaging of the Newprot product caused substantial confusion among consumers who could easily mistake the two products. In fact, U.S. District Court Judge John Gibney ruled, “only minor, trivial differences exist between the instant trademarks such that they are virtually indistinguishable”. Because both products were used in connection with smoking and sold in similar channels of commerce, there was a high likelihood that consumers could assume that the two products were by the same company. Judge Gibney further determined that the actions of the defendants were not merely negligent, but were comprised of deliberate decisions to profit from the popularity and widespread recognition of the Newport brand name.

The defendants, Majdi and Mohammad Adujamous, own three Tobacco Zone stores in Richmond Virginia, where the Newprot product was distributed. The Newprot product was sold under the advertised product name “spice”, which is a product intended to be smoked like a cigarette. Spice is also sold under various product names such as herbal incense, potpourri or bath salts and is legally marketed in Virginia. Smoking the product produces an effect similar to cannabis and is made from spraying a THC-like synthetic chemical onto dried herbs and flowers.

Lorillard was founded in 1760 and is based in Greensboro North Carolina. As one of the oldest tobacco companies in the U.S., Lorillard markets cigarettes under the brand names Newport, Maverick, Old Gold, Kent, True, Satin, and Max. Newport is the cigarette maker’s top selling cigarette brand and comprises 12% of cigarettes sold in the United States every year.

August 6, 2012, by Mandour & Associates, APC

Los Angeles – Though the two companies produce two different types of beverages, the New Ulm Brewing & Beverage Company announced this week that it is suing the Krebs Brewing Company for trademark infringement and unfair competition. New Ulm, a soft drink company, has made its famous 1919 Draft Root Beer for the August Schell Brewing Company for over 25 years. The Minnesota soft drink company did not register the 1919 name for use with carbonated soft drinks until 2001. However, the root beer brewer began using the name as far back as 1987. The 1919 logo with red, black and white color scheme was so named in remembrance of the year when prohibition forced many breweries out of business.

The Krebs Brewing Company makes an ale style beer, also named after the year 1919, which New Ulm Brewing claims is confusingly similar to its own 1919 product. Despite the obvious difference between alcoholic and non-alcoholic beverages, New Ulm noted in its court documents that the two beverages are routinely sold in the same retail locations. Consequently, it is easy for consumers to see the two products together and find the comparison somewhat confusing. The two companies exchanged letters earlier in the year over the use of the 1919 label on respective beverages. However, when Krebs refused to comply with New Ulm’s cease and desist request, New Ulm decided that a lawsuit was in order.

Additionally, New Ulm Brewing offers its root beer on draft pull taps next to beers in restaurants and bars. The brewing company intends for its products to be distributed to discerning consumers like fine crafted beers. The pending lawsuit was filed in Minnesota District Court and should be decided later this year.

Krebs attempted to trademark 1919 for use with alcoholic beverages in 2010, but later abandoned the attempt when it was determined that a separate wine company already registered a similar trademark.