Almost six decades after her death, Marilyn Monroe is still a popular choice for mugs, t-shirts, jewelry, and other products using her name, even illegally.
Authentic Brands Group LLC, which owns the rights to the late movie star’s name and the phrase “Diamonds are a girl’s best friend” popularized by her most famous song, has won a court order freezing the assets of dozens of virtual storefronts selling counterfeit products.
The company has said in court documents that it is working with marketplaces such as Amazon.com, Alibaba, EBay, Joom and Wish to shut down the sites, but that’s not enough. Court records describe an elaborate and often covert operation to identify counterfeiters, pursue sealed cases and seek court orders before the storefronts know they were being targeted.
“If there is a suspicion that the defendant is operating overseas and you are operating in whac-a-mole territory, you have to get creative,” said Anthony Dreyer, trademark attorney at Skadden law firm at New York.
Dreyer, who was not involved in the case, specializes in sports and entertainment intellectual property and represents the National Hockey League in lawsuits to shut down counterfeits. Seizure of illicit goods is not always possible and does not solve the problem, he said.
âYou want to go higher up the chain and you want to make it harder for them to do business,â Dreyer said. “The sophistication of the various payment methods makes it more difficult to freeze assets and ultimately seize assets.”
Lawsuits like the Marilyn Monroe case are becoming more common as consumers shop online without understanding – or even worrying – about what is right and wrong.
âOver the past year, especially with Covid-19 and more and more consumers buying online, counterfeiters have gotten really smart and taken advantage of it,â said Tiffany Pho, head of anti-counterfeiting at the International Trademark Association.
The association predicted that by next year the estimated total value of counterfeit goods, including digital piracy, will reach at least $ 1.9 trillion annually. Internet sales are particularly popular because counterfeiters can have more global reach and more ways to hide, Pho said.
Monroe was 36 when she died on August 4, 1962, at the height of her career, which included hit films such as “Gentlemen Prefer Blondes”, “Bus Stop” and “The Seven Year Itch”.
The actress, known for her blonde hair and curvy figure, has inspired generations of artists and remains one of the most valuable brands, ranking 13th on Forbes’ list of ‘highest paid deceased celebrities’.
His estate, including some intellectual property rights, was split, with 25% going to his therapist and 75% to famous acting trainer Lee Strasberg.
After Strasberg’s death in 1982, the rights transferred to his third wife, Anna, and Authentic Brands eventually became owners of this share. The scope of these intellectual property rights has been the subject of much litigation over the decades, but ownership of Monroe’s name and the title of his most famous song clearly belongs to Authentic Brands.
“She has a timeless beauty that still resonates today,” said Jay P. Kennedy, associate professor and assistant director of research at the Center for Anti-Counterfeiting and Product Protection at Michigan State University. “She represents a part of that history and the culture of this country that people identify with.”
This makes its name and image profitable with both legitimate businesses that license the rights to Authentic Brands and those that haven’t.
And Marilyn Monroe is not alone. Almost every product on the market has a counterfeit version that sells for a low price, Kennedy said.
âAs a consumer, if you go online and search for a product, we don’t know what is a trademark, what is copyrighted – we just know the product we are looking for,â a- he declared. “One of our partners at the center joked that if you’re a business and you make a product and you don’t have a counterfeit, you are making a really shitty product.”
Companies, including cigarette maker Philip Morris International and trade groups, formed a new group last month, United to Safeguard America from Illegal Trade, or USA-IT, to come up with new ideas for the app and public education.
Congress is also considering legislation that would require sellers to provide more information so consumers know what they are buying.
Monroe’s estate was able to mine settlements with some of the websites.
On June 25, Atlanta District Court Judge Michael Brown granted the estate’s request for an order to freeze the assets of the other companies, which did not respond to the lawsuit. Efforts to reach out to companies that had made deals were unsuccessful, or they would just say the problem had been resolved.
Authentic Brands, which also represents the estates of Elvis Presley and Muhammad Ali and owns the Izod, Brooks Brothers and Forever 21 brands, declined to comment on the dispute. The company plans to go public, people with knowledge of the matter said in May.
The case is The Estate of Marilyn Monroe v. 3D Home et al, 21-2214, US District Court for the Northern District of Georgia (Atlanta).