On Tuesday, the United States District Court of New York found for Shaw Family Archives in its right-of-publicity lawsuit against licensing company CMG Worldwide and Marilyn Monroe LLC, the estate of the late actress. Echoing a March decision in a similar case by a California court, the ruling places the control of licensing photographs of Monroe with the images’ copyright holders.
Shaw Family Archives is the estate of New York photographer Sam Shaw, who took a number of well-known images, such as the iconic shot of Monroe standing over a subway grill on the set of of the “Seven Year Itch.” Since Shaw’s death in 1999, his two daughters have controlled Shaw Family Archives, which owns the copyrights to such images.
The New York-based company sued CMG Worldwide and Marylin Monroe LLC in 2005, claiming that several of Shaw’s images had been used on merchandise without the archive’s permission or compensation. Milton H. Greene Archives and Tom Kelley Studios filed a similar lawsuit in California.
To counter the claim of copyright infringement, CMG and Marylin Monroe LLC argued that the actress’ estate was the only entity allowed to exploit her likeness, as it owned her right of publicity. The estate collected hefty fees for licensing this right. California attorney Surjit Soni, counsel for the Greene and Kelley companies, said CMG generated $7 million from the Monroe licensing business in 2007. He estimates the retail value of transactions, which involve items like posters and calendars, to be in excess of $50 million.
Since right-of-publicity statutes did not exist in either state at the time of Monroe’s death, 2007 decisions of both court cases sided with copyright owners of the images. However, Monroe’s estate—owned by the wife of late director and Monroe’s mentor Lee Strasberg, to whom she willed most of her possessions—has since lobbied for a change in publicity laws. While California enacted a retroactive law granting a retroactive right of publicity, the proposal did not pass in New York.
CMG and Marilyn Monroe LLC revived the Greene and Kelley case, claiming that Monroe was a resident of California at the time of her death in an effort to take advantage of the new publicity statute. However, for close to 40 years, the estate had claimed the actress lived in New York, in order to avoid paying California taxes. In March, Judge Margaret M. Morrow described CMG and Monroe’s estate as “playing fast and loose” with the court, affirmed that Monroe was a resident of New York and refused to allow the losing parties to re-argue the earlier California ruling.
This week’s outcome in the New York case referenced Morrow’s decision and sided with the plaintiff, Shaw Family Archives. The court held that CMG Worldwide and Marilyn Monroe LLC do not have the right to license Monroe’s name, image, likeness or signature.
Experts predict that both decisions will be appealed. In the meantime, commercial licensing of Marilyn Monroe images has soared, according to Gary Saal, director of licensing at California-based Legends Licensing, which claims to have the largest supply of Monroe imagery. Saal said that not having to pay license fees to Monroe’s estate and CMG can be credited with the spike in business. Legends Licensing’s Marilyn Monroe Licensing Group includes the work of Milton Greene, Tom Kelley and Harold Lloyd.