For years, Marilyn Monroe, LLC (“MMLLC”) and its licensing agent, CMG Worldwide, Inc, (“CMG”) have been licensing and collecting fees for commercial uses of Ms. Monroe’s image. But May 2, 2007, the District Court for the Southern District of New York held: No more! In Shaw Family Archives Ltd. v. CMG Worldwide, Inc., No. 05 Civ. 3939 (CM), the Court, having first noted that Marilyn Monroe was “perhaps the most famous American sex symbol of the twentieth century,” nonetheless found that Ms. Monroe’s publicity rights died with her in 1962. Accordingly, no postmortem publicity right could have either been transferred by the residuary clause of her will or retroactively revived by subsequently enacted statutes purporting to create transferable or descendible publicity rights.

To understand the right to publicity, and the significance of the decision, one needs to understand a little about the right to privacy. The right to publicity is of relatively recent vintage and grows out of the right to privacy. The right to privacy traditionally protected against four intrusions: intrusion upon physical solitude, publication of private facts, putting someone in a false light, and using and benefiting from the likeness of another. The right to privacy was held to be personal to the affected party, meaning that the right dies with that person. Just as it makes no sense to say that a person’s right to be free from assault and battery can be transferred—or somehow survive after the person dies (there is no longer a “body” that can be assaulted)—so too, the right to privacy carried no transferable property rights and died with the affected party. Accordingly, the right to privacy has been protected by tort law—rather than by the law of property.

Over time, however, lawyers and judges came to recognize a difference between the first three privacy invasions and the fourth: a party may not wish to minimize the use of his likeness so long as he or she can reap the commercial advantage. Soon, in addition to and independent of a right to privacy, courts and legal commentators began to speak of a right to publicity—a right (unlike traditional privacy rights) that might be transferable and capable of surviving the death of its original owner.

Unsurprisingly, Ms. Monroe’s will makes no mention of a publicity right. At the time of her death (and by extension, at the time of the drafting of her will) no such right survived a person’s death, and for such a right to have been descendible was unthinkable. Her will does, however, contain a standard residuary clause, bequeathing to Lee Strasberg “the remaining balance” of her estate. Following certain subsequent transfers, the Monroe Estate closed in June 2001, at which time the Surrogate’s Court authorized the transfer of any residuary assets to MMLLC, a company formed to hold and manage the intellectual property assets of the residuary beneficiaries of Ms. Monroe’s will. MMLLC brought this action (originally in Indiana) against Shaw Family Archives, et al. (“SFA”) for alleged violations of Ms. Monroe’s publicity right by selling t-shirts and photographs in Indiana taken by the late photographer Sam Shaw.

Admittedly, SFA had licenses to the copyrights in the photographs. In other words, SFA had the right to copy, distribute and make derivative works of those particular expressions. One may own the copyrights—the exclusive rights—to certain expressions and yet not be free to exploit those expressions if they cause injury to another person. Ownership of the copyright, for example, does not give license to publish a libel. In this case, MMLLC’s claimed that its right to publicity negated, or at least limited SFA’s ability to make use of those exclusive rights as to those particular expressions.

The issue in this case came down to whether MMLLC owned a post-mortem right to publicity for Marilyn Monroe in Indiana. At the time of her death in 1962, Ms. Monroe did not own a right to publicity in Indiana because no such right then was recognized in Indiana. In fact, Indiana did not recognize such a right until 1994, when it enacted the Right to Publicity Act (Ind. Code Sec. 32-36-1). This statute created a publicity right in Indiana, transferable and descendible, that survives 100 years after the death. However, given that the right was created 30 years after Marilyn Monroe’s death, the court was unwilling to hold that Marilyn Monroe had this right in 1962 when she died, or that any such right descended and transferred to MMLLC.

MMLLC strenuously argued that a testator can devise property that it does not own at the time of death, and that Ms. Monroe did just that with respect to the right to publicity that came into being 30 years later in Indiana. It was not clear whether Ms. Monroe was domiciled in New York or California at the time of death, so the court analyzed the cases under the law of both states. The court concluded that both California and New York provide that a testator can only devise property owned at the time of death. Because neither California nor New York (nor Indiana for that matter) recognized a postmortem or descendible publicity right at the time of Ms. Monroe’s death in 1962, the residuary clause in her will could not have devised any publicity right.

The laws on publicity are many and varied and continue to evolve. Almost 20 states have statutes dealing with the right of publicity, and nearly a dozen others recognize some version of the right through the common law. The laws vary as to whether and how they protect a post-mortem right and as to the duration of any such protection. Although many have seen this ruling as opening the door for free use of images of now deceased celebrities, the issue isn’t that clear-cut. As shown through the court’s well-reasoned decision, the issue of whether the right of publicity survives is factually specific. Care must be taken to fully understand the state of domicile of the deceased celebrity and to understand the statutory and common laws in place as of the time of death. Finally, this is a decision with significant monetary implications, not just for the MMLLC, but also for the estates of the host of other deceased celebrities who trade on the continuing viability of the celebrity’s fame. As it has been, the issue of the right of publicity remains a subtle one, and care must be taken when using potentially protected rights.