JS 44C/SDNY

REV. 4/2014
CIVIL COVER SHEET
ed hereBneitrjBeplace ftrMpIment the filingarSsecef J
iprovid* by &Aiules oAoudVhis form, approveBby Snf QJ
1974, iiBMiuireaCr use oHlre Clerk of Court for therurpow*f
The JS-44 civil cover sheet and the information contained
pleadings or other papers as required bylaw, exceptas
Judicial Conference of the United States in September"
initiating the civil docket sheet.
PLAINTIFFS
vSrv.i M>rtTi ucW&y$^iul!toK*M^AM,uc
ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER ATTORNEYS (IF KNOWN)
tikf ofRtctofpUlftlB. \Mlk p.t.
m- y* V~ Vv* /* Ttt:m-tfi*osn6
CAUSE OF ACTIOl((CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OF CAUSE)
(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
2% USC fltfl <"</ 28 C/SC f/?38
Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY at any time? NtBr-esQudge Previously Assigned
Ifyes, was this case Vol. Invol. Dismissed. No Yes Ifyes, give date
IS THIS AN INTERNATIONAL ARBITRATIONCASE? No [w Yes LJ
(PLACEAN[x] IN ONE BOXONLY) NATURE OF SUIT
OCT 0 1 2014
[]110
[]120
I 1130
I 1140
[ ]150
1)151
[]152
[ ]153
[ ]160
11190
[ 1196
[ ]196
TORTS
PERSONAL INJURY
[ ] 310 AIRPLANE
[ ] 315 AIRPLANE PRODUCT
LIABILITY
[ ] 320 ASSAULT, LIBEL &
SLANDER
[ ] 330 FEDERAL
EMPLOYERS'
LIABILITY
[ ] 340 MARINE
[ ] 345 MARINE PRODUCT
LIABILITY
[ ] 350 MOTORVEHICLE
[ ] 355 MOTORVEHICLE
PRODUCT LIABILITY
[ ] 360 OTHER PERSONAL
INJURY
[ ] 362 PERSONAL INJURY-
MED MALPRACTICE
PERSONAL INJURY
[ J 367 HEALTHCARE/
PHARMACEUTICAL PERSONAL
INJURY/PRODUCT LIABILITY
[ ] 365 PERSONALINJURY
PRODUCT LIABILITY
[ ] 368 ASBESTOSPERSONAL
INJURY PRODUCT
LIABILITY
PERSONAL PROPERTY
[ ] 370 OTHER FRAUD
[ 1371 TRUTH IN LENDING
INSURANCE
MARINE
MILLER ACT
NEGOTIABLE
INSTRUMENT
RECOVERY OF
OVERPAYMENT &
ENFORCEMENT
OF JUDGMENT
MEDICARE ACT
RECOVERY OF
DEFAULTED
STUDENT LOANS
(EXCLVETERANS)
RECOVERY OF
OVERPAYMENT
OF VETERAN'S
BENEFITS
STOCKHOLDERS
SUITS
OTHER
CONTRACT
CONTRACT
PRODUCT
LIABILITY
FRANCHISE
[ ] 380 OTHER PERSONAL
PROPERTY DAMAGE
[ ] 385 PROPERTY DAMAGE
PRODUCT LIABILITY
PRISONER PETITIONS
[ ] 463 ALIENDETAINEE
[ ] 510 MOTIONS TO
VACATE SENTENCE
28 USC 2255
[ ] 530 HABEASCORPUS
[ ] 535 DEATHPENALTY
[ ] 540 MANDAMUS &OTHER
ACTIONS UNDER STATUTES
CIVIL RIGHTS
[ ] 440 OTHERCIVIL RIGHTS
(Non-Prisoner)
[ ] 441 VOTING
[ ] 442 EMPLOYMENT
[ ] 443 HOUSING/
ACCOMMODATIONS
[ ] 445 AMERICANS WITH
DISABILITIES -
EMPLOYMENT
[ ] 446 AMERICANSWITH
DISABILITIES-OTHER
[ ] 448 EDUCATION
& Case No.
ACTIONS UNDER STATUTES
REAL PROPERTY
FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
[ ] 625 DRUGRELATED
SEIZURE OF PROPERTY
21 USC 881
1 ] 690 OTHER
[ 1422 APPEAL
28 USC 158
[ ] 423 WITHDRAWAL
28 USC 157
PROPERTY RIGHTS
>
I ] 375 FALSE CLAIMS
f J400 STATE
REAPPORTIONMENT
[ ] 410 ANTITRUST
[ j430 BANKS &BANKING
[ ] 450 COMMERCE
[ ] 460 DEPORTATION
[ ] 470 RACKETEER INFLU
ENCED & CORRUPT
fciffiO COPYRIGHTS ORGANIZATION ACT
[1 830 PATENT
[ ] 840 TRADEMARK
(RICO)
[ ] 480 CONSUMERCREDIT
[ ] 490 CABLE/SATELLITE TV
SOCIAL SECURITY [ ] 850 SECURITIES/
COMMODITIES/
LABOR
[ ] 710 FAIR LABOR
STANDARDS ACT
[ ] 720 LABOR/MGMT
RELATIONS
[ ] 740 RAILWAY LABOR ACT
[ ] 751 FAMILY MEDICAL
[ ] 861 HIA(1395ff)
[ ] 862 BLACK LUNG(923)
[ ] 863 DIWC/DIWW(405(g))
[ ] 864 SSID TITLEXVI
[ ] 865 RSI (405(g))
FEDERAL TAX SUITS
EXCHANGE
[ ] 890 OTHERSTATUTORY
ACTIONS
[ ] 891 AGRICULTURAL ACTS
LEAVE ACT (FMLA)
[ ] 790 OTHER LABOR
LITIGATION
[ ] 791 EMPL RET INC
SECURITY ACT
[ ] 870 TAXES (U.S. Plaintiff or
Defendant)
[ J 871 IRS-THIRD PARTY
26 USC 7609
[ ] 893 ENVIRONMENTAL
MATTERS
[ ] 895 FREEDOMOF
INFORMATION ACT
[ ] 896 ARBITRATION
IMMIGRATION
[ ] 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEWOR
[ ] 462 NATURALIZATION
APPLICATION
[ ] 465 OTHER IMMIGRATION
ACTIONS
APPEAL OF AGENCY DECISION
[ ] 950 CONSTITUTIONALITY OF
STATE STATUTES
[]210
220
230
240
245
[ ]290
LAND
CONDEMNATION
FORECLOSURE
RENT LEASE &
EJECTMENT
TORTS TO LAND
TORT PRODUCT
LIABILITY
ALL OTHER
REAL PROPERTY
Checkif demandedin complaint:
CHECK IF THIS IS ACLASS ACTION
UNDER F.R.C.P. 23

DEMAND $_ OTHER
Check YES onlyifdemandeain complaint
JURY DEMAND: 5/YES LNO
PRISONER CIVIL RIGHTS
[ ] 550 CIVILRIGHTS
[ ] 555 PRISON CONDITION
I 560 CIVIL DETAINEE
CONDITIONS OF CONFINEMENT
DOYOUCLAIM THIS CASE IS RELATED TO A CIVIL CASE NOWPENDING INS.D.N.Y.?
JUDGE DOCKET NUMBER
A/O
NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).
^
(PLACEANxINONEBOXONLY) ORIGIN
JSTl Original 2 Removed from 3 Remanded D4Reinstated or Q 5 Transferred from Q6 Multidistrict 7Appeal to District
^ Proceeding state Court from Reopened (Specify District) Litigation XistraTjudge
a. all parties rapreianted Appellate Judgment
| | b. At leastone
party is pro se.
(PLACEANxINONEBOXONLY) ^, BASIS OF JURISDICTION IF DIVERSITY, INDICATE
1USPLAINTIFF 2U.S. DEFENDANT J3$ FEDERAL QUESTION D4 DIVERSITY CITIZENSHIP BELOW.
(U.S. NOT A PARTY) ,
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY) /VrVT
(Place an [X] inone boxfor Plaintiff and one boxfor Defendant)
PTF DEF PTFDEF PTF DEF
CITIZEN OF THIS STATE [11 [11 CITIZEN OR SUBJECT OFA []3[]3 INCORPORATED andPRINCIPAL PLACE []5 []5
FOREIGN COUNTRY OF BUSINESS INANOTHER STATE
CITIZEN OF ANOTHER STATE []2 []2 INCORPORATED or PRINCIPAL PLACE []4[]4 FOREIGN NATION []6 []6
OF BUSINESS IN THIS STATE
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)
DEFENDANT(S) ADDRESS(ES) ANDCOUNTY(IES)
DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADETHAT, AT THIS TIME, I HAVEBEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN
RESILIENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Check one: THIS ACTION SHOULD BE ASSIGNED TO: WHITE PLAINS j^MANHATTAN
(DO NOT check either box ifthis a PRISONER PETITION/PRISONER CIVIL RIGHTS
COMPLAINT.) /) /J yl
DATE (O/lhoiU* SIGNATURE OF ATTORNEY OF RECOBdVA U ^/S/6/s' ADMITTED TO PRACTICE IN THIS DISTRICT
/ / jq. YES (DATE ADMITTED Mo. P Yr. W^2
RECEIPT # 'Attorney Bar Code #22*72. J*/A/*=
Magistrate Judge is to be designated by the Clerk of the Court.
Magistrate Judge MAH TTmHPTOTT is so Designated.
Ruby J. Krajick, Clerk of Court by Deputy Clerk, DATED .
UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
O
UNITED STATES DISTRICT COURT
SOUTHERNDISTRICT OF NEW YORK ___.
JUDGE SQWUN
VIRTUAL MARILYN, LLC, Case No:
Plaintiff, Date Filed: October 1,2014
-against-
THE ESTATE OF MARILYN MONROE,
Defendant. JURY TRIAL REQUESTED
14 CV 7938
LTX, COMPLAINT * ** ^
NATURE AND SUMMARY OF ACTION
This is a declaratory judgment actionto adjudicate the rights and legal relations of
theparties regarding, inter alia, theirconflicting claims to ownership anduseof different
r--j
types of intellectual property rights involving the persona of the deceased human being cd
Marilyn Monroe. In 2012, the United States Court ofAppeals for the Ninth Circuijh _|_ zg
determined, inter alia, that (a) Marilyn Monroe's personarights expired in 1962 when -
she died and, as a result, (b) Marilyn Monroe's Estate never inherited Marilyn Monroe')*?
persona rights. Milton H. Green Archives, Inc. v. Marilyn Monroe, LLC, 692F.3d983,
999-1000 (9th Cir. 2012) (the "Persona Ruling"). Although the Persona Ruling indicates
that MarilynMonroe's personarights fell into the public domainwhen she died in 1962,
Marilyn Monroe's Estate, which is controlled by a commercial licensingcompany(not
by her heirs), continues to assert ownership and use rights to MarilynMonroe's persona.
Indeed, notwithstandingthe Persona Ruling, Defendant continues to extract (improperly)
significant licensing fees fromvarious persons and entities in return for Defendant
"allowing" those persons and entities to use Marilyn Monroe's persona.
o
cr
Plaintiff is the current owner of a federally registered copyright in a fictional,
computer-generated character called "VM2 -Virtual Marilyn" or "Virtual Marilyn" (the
"Fictional VM Character"). The Fictional VM Character is described onitscopyright
registration as encompassing, inter alia, "audiovisual work and character artwork
depicting acomputer generated virtual actress adopting the persona ofMarilyn Monroe."
Plaintiffalsois the current ownerof a separate federally registered copyright in a
fictional story called "VM2 and The Legion ofVactors" (the "Fictional VM Story"). The
Fictional VM Story is described onits copyright registration as encompassing, inter alia,
a "treatment for creationandexploitation of original computer generated characters
adopting the personas of celebrated people."
On July 29, 2014, Defendant publically asserted that "The Monroe Estate is a
premier brand development and licensing company with exclusive ownership of
intellectual property rights related toMarilyn Monroe." Defendant has also asserted that
(a) the"useandlicensing of the Virtual Marilyn is aninfringement of the Monroe
Estate's rights in Ms. Monroe's identity and personathat is likelyto confuse consumers
as to the Monroe Estate's association with or endorsement of Virtual Marilyn and/or any
goods or services with which 'she' is associated"; (b) the "use of Marilyn Monroe's
identity andpersonawithoutthe Monroe Estate's prior authorization constitutes unfair
competition and false designation of origin"; and (c) the Monroe Estate"demandsthat
[thecopyright claimant] agreeto ceaseall current, if any, and future use and licensing of
Virtual Marilyn or any other marks, names, logos, designs, avatars, or the like based upon
the identityand persona of Marilyn Monroe, and warns that it will seriously consider all
courses ofaction, including filing afederal lawsuit, if you do, infact, use or license
Virtual Marilyn."
Plaintiff believes there are several independent legal reasons that provide Plaintiff
with the right to use its federally registered copyrights in the Fictional VM Character and
the Fictional VM Story - - as well as the right to use trademarks that derive from or relate
to such federally registered copyrights - - without violating Defendant's asserted
trademark rights in Marilyn Monroe's persona. For instance, due to the Persona Ruling,
Plaintiffbelievesthat Defendant does not have an enforceable trademarkright to use and
license Marilyn Monroe's persona.
Plaintiff, however, does not wishto be exposed to the riskof trademark damages
to Defendant in the event the Court were to disagreewith Plaintiffs position regarding
the nature, scope and extent of Plaintiffs asserted rights. Ina situation where, as here,
the parties have conflicting claims toownership and use ofdifferent types ofintellectual
property rights involving the persona of the deceased human being Marilyn Monroe,
federal lawauthorizes the adjudication of those conflicting claims, issues and rights
through a declaratoryjudgment action.
PARTIES
1. Plaintiff Virtual Marilyn, LLC ("Plaintiff), a Delaware limited liability company,
is the current copyright owner of the federally registered copyrights for the Fictional VM
Character and the Fictional VM Story. Plaintiff also is the current owner of the right to
use trademarks that derive from or relate to the Fictional VM Character and the Fictional
VM Story.
2. Upon information and belief, Defendant The Estate ofMarilyn Monroe, LLC
("Defendant" or "Monroe Estate") is aDelaware limited liability company controlled by
acommercial licensing company called The Authentic Brands Group, with aplace of
business located at 100 West 33rd Street, Suite 1007, NewYork, NewYork 10001. On
July 29, 2014, Defendant publically asserted that "The Monroe Estate is apremier brand
development and licensing company with exclusive ownership ofintellectual property
rights related to Marilyn Monroe." Defendant has also asserted that, notwithstanding the
Persona Ruling, it remains the owner ofvarious enforceable trademarks involving the
persona ofthe deceased human being Marilyn Monroe. Defendant has also demanded
the cessation of all use and licensing of the Fictional VMCharacter, "or anyothermarks,
names, logos, designs, avatars, orthe like based upon the identity and persona of Marilyn
Monroe," failing which Defendant would consider such useandlicensing to be "an
infringement of the Monroe Estate's rights inMs. Monroe's identity and persona that is
likely toconfuse consumers as tothe Monroe Estate's association with or endorsement of
Virtual Marilyn and/or any goods or services with which "she' is associated." Defendant
has alsoasserted that "if you do, in fact, use or license Virtual Marilyn," then Defendant
"will seriously consider all courses of action, including filing a federal lawsuit."
JURISDICTION AND VENUE
3. Since this action involves a determination of federally-created rights under the
federal Copyright Act and the federal Lanham Act, subject matterjurisdictionis vestedin
this Court pursuant to 28 U.S.C. 1331 and 28 U.S.C. 1338, as part of this declaratory
judgment action under 28 U.S.C. 2201-2202.
4. Since this action involves federally-created copyrights and Defendant is subject to
personal jurisdiction in New York, venue is proper in the Southern District ofNew York
pursuant to 28 U.S.C. 1400. Venue also is proper in the Southern District ofNew York
pursuant to 28 U.S.C. 1391 because Defendant has aplace ofbusiness inthe Southern
District of NewYork and/or a substantial part of the events or omissions that form the
basis ofthe claims against Defendant occurred inthe Southern District ofNew York.
FACTUAL BACKGROUND
5. In2012, theUnited States Copyright Office issued the following federal copyright
registrations for the following Virtual Marilyn works to the original owner thereof:
Copyright Registration Number: PA0001773872
Effective Registration Date: February 23,2012
Titleof Copyrighted Fictional Character: VM2 - Virtual Marilyn
Copyright Registration refers tothe Copyrighted Fictional Character as part of an
"audiovisual work and character artwork depicting a computer generated virtual actress
adopting the persona of Marilyn Monroe"
(the "Fictional VM Character Copyright")
-and-
Copyright RegistrationNumber: TXu 1-827-427
Effective Registration Date: September 25,2012
Title of CopyrightedStory: VM2 and The Legion of Vactors
Copyright Registration refers to the Copyrighted Story as part of a "treatment for creation
andexploitation of original computer generated characters adopting the personas of
celebrated people"
(the "Fictional VM Story Copyright")
(the Fictional VMCharacter Copyright andthe Fictional VMStoryCopyright are
collectivelydefined herein as the "Virtual Marilyn Copyrights").
6. Pursuant to a written copyright assignment for the Virtual Marilyn Copyrights
executed bythe original ownerthereof, Plaintiffpurchased and acquired ownership of the
Virtual Marilyn Copyrights, and Plaintiff became the assignee and transferee for the
Virtual Marilyn Copyrights, effective as of August 15, 2014.
7. On August 22, 2014, Plaintiff notified Defendant by letter, inter alia, as follows:
(a) Plaintiff had acquired ownership ofthe Virtual Marilyn Copyrights;
(b) Plaintiffs legal research indicates "there is no legal impediment to
theuse, development and exploitation of thecopyrightable expression
involving thecopyrighted Virtual Marilyn Character and such use,
development and exploitation of thecopyrighted Virtual Marilyn
Characterdoes not violate any purported'persona rights' that the
Monroe Estate may assert under trademark law";
(c) Since the Persona Ruling issued bytheUnited States Court of
Appeals for the NinthCircuit indicates that Marilyn Monroe's
persona is part of the Public Domain, andthat the Monroe Estate
never inherited Marilyn Monroe's persona rights, "the Monroe
Estate wouldbe legallyunable to enforce any trademark registrations
involving Marilyn Monroe's 'persona' to inhibit or impede"
Plaintiffs copyright ownership rights involvingthe Virtual
Marilyn Character; and
(d) Even if the Ninth Circuit had not issuedthe Persona Ruling
against the Monroe Estate, there are independent legal grounds
why Plaintiffs use, development and exploitation of the
copyrightedVirtual Marilyn Character would not violate
any purported "persona rights" that Defendant may assert
under trademark law. One of those independent legal grounds
is that "the Ninth Circuit and Second Circuit have previously
ruled" that "an 'expressive work' (such as the copyrighted
Virtual Marilyn Character) is entitled to 'First Amendment
protection' and so long as a 'trademark or other identifying
material is artistically relevant to the expressive work,' and
such artistically relevant use does not 'explicitly mislead'
consumers as to authorship, sponsorship or endorsement by
the trademark holder, then the artistically relevant use does
not violate the Lanham Act. Brown v. Electronic Arts, 724
F.3d 1235 (9th Cir. 2013); Rogers v. Grimaldi, 875 F.2d 994
(2dCir. 1989)."
8. Plaintiffs August 22,2014 letter asked Defendant to communicate its position on
the situation inaneffort to avoid litigation. Defendant didnot provide a substantive
response to Plaintiffs August 22, 2014 letter.
9. On September 3, 2014, Plaintiff notified Defendant in afollow-up letter that if
Plaintiff didnot receive a substantive response bySeptember 12, 2014, then Plaintiff
"will have no choice but to conclude" that litigation would "likelybe needed to resolve
the precise nature and scope ofthe intellectual property rights to Marilyn Monroe's
persona."
10. Plaintiffs September 3, 2014 letter notified Defendant, inter alia, asfollows:
(a) Since the Ninth Circuit's Persona Ruling determined that the
Monroe Estate never inherited Marilyn Monroe's persona rights
when she died in 1962, "it appearsher personarights fell into the
public domain" and "we are at a loss tounderstand the legal basis
fromwhich the Monroe Estate, despite the Ninth Circuit's ruling,
continues to assert a posthumous trademark interest in some
commercial uses of Marilyn Monroe's persona";
(b) "Significantly, theUnited States Supreme Court hasindicated
that (1)thepublic hasa constitutionally-based right to copy anduse
intellectual property that falls into thepublic domain, for free and
without attribution, once the time-period for private protection of
such intellectual property has expired and(2) this federally-created,
public domain right has theeffect of limiting thelength of private
protection for a trademark tothetime-period that governs the
underlying copyright or patent from which the trademark interest
derives. See DastarCorp. v. Twentieth Century Fox FilmCorp.,
539U.S. 23, 33-34 (2003) (conflict between lengthof trademark
protection and lengthof copyright protection); TrafFix Devices,
Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001) (conflict
betweenlengthof trademarkprotectionand lengthof patent
protection). Prior to these Supreme Court precedents, theUnited
StatesCourt of Appeals had reacheda similar conclusionthat the
length of private protection for a trademark cannot exceed the time-
period that governs the underlying intellectual property asset from
which the trademark interest derives. See ComedyIII Productions,
Inc. v. New Line Cinema, 200 F.3d 593, 595 (9th Cir. 2000) ("[T]he
Lanham Act cannot be used to circumvent copyright law. If material
covered bycopyright law has passed into the public domain, it
cannot then beprotected bythe Lanham Act without rendering the
Copyright Act a nullity [cit. om.]."). Accordingly, inview ofthese
appellate precedents, it isdifficult tofathom that the courts would
somehow accord a longer period of private protection for a trademark
than thetime-period that governs theunderlying publicity/persona
rights from which the trademark interest derives."; and
(c) Plaintiffs intent touse, and obtain federal trademark protection
for, the "branding rights" arising from use of the copyrighted
Virtual Marilyn Character would not violate Defendant's purported
trademark rights inMarilyn Monroe's persona - - not only for the
reasons identified above but also because there is a "fractured
ownership situation where different groups own different types of
intellectual propertyrights involving MarilynMonroe(see, e.g.,
Universal City Studios, Inc. v. Ninetendo Co. Ltd., 578 F. Supp.
911 (S.D.N.Y. 1983) (Lanham Act liability rejected because different
groups owned different types of intellectual property in thename
and likenessof 'King Kong' and, therefore, the trademarkdid not
connote a single source of originto consumers) and appropriately
highlighted disclaimers canalways be usedto make it clearto
consumers that the Monroe Estate has no affiliation with the
Virtual Marilyncharacteror the Virtual Marilynbrand."
11. Plaintiffs September 3, 2014 letter asked Defendant to communicate its position
on the situation by September 12, 2014 in an effort to avoidlitigation. Although
Defendant's general counsel acknowledged receipt of Plaintiff s August 22, 2014 letter
andPlaintiffs September 3, 2014letter, Defendant did not provide a substantive response
to Plaintiffs letters by September 12, 2014.
12. On September 15,2014, Plaintiff notified Defendant in a follow-up letter, inter
alia, that (a) Defendant had sent written statements to a prior owner of the Virtual
Marilyn Copyrights in which Defendantassertedthat the use thereof "would infringe
[Defendant's] alleged trademark rights involving Marilyn Monroe's persona" whether for
copyright purposes or trademark purposes; (b) "the conflicting positions of the parties
shows there is a sufficient dispute and controversythat warrants judicial interventionto
8
declare and adjudicate the rights and duties ofthe parties in connection with, inter alia,
the intellectual property rights to Marilyn Monroe's persona"; and (c) ifDefendant did
not contact Plaintiff by September 19, 2014 inan effort toavoid litigation, then Plaintiff
would proceed accordingly with the preparation ofappropriate litigation papers toprotect
Plaintiffs rights. Defendant did not provide a substantive response toPlaintiffs letters
by September 19, 2014. On September 24, 2014, Plaintiff provided Defendant with a
draft complaint incontemplation ofthis declaratory judgment litigation and, in
connection therewith, Plaintiffnotified Defendant in an accompanying letterthat if
Defendant didnot contact Plaintiffby September 30, 2014 in an effort to avoid litigation,
then Plaintiff would file a complaint andpursue the declaratory judgment litigation.
Defendant didnot provide a substantive response tothedraft complaint by September 30,
2014.
13. OnJuly 29, 2014, Defendant filed a pleading seeking affirmative reliefin
enforcement of its alleged trademark rights in Marilyn Monroe's persona in connection
with a separate action pending inthis Court against other parties. See The Estate of
Marilyn Monroe, LLC (Defendant/Counter-Plaintiff) vs. A. V.E.L.A., Inc.
(Plaintiff/Counter-Defendant) and Leo Valencia IPL, Inc., XOneXMovie Archives Inc.
and V. International FineArts Publishing, Inc. (Counter-Defendants), United States
District Court, Southern District of New York, Case No: 12 Civ. 4828 (KPF)(JCF)
(the "Monroe Estate Persona Allegations"). The Monroe Estate Persona Allegations are
incorporated hereinby reference and madea part hereof. The Monroe Estate Persona
Allegations set forth the grounds onwhich Defendant bases its alleged trademark rights
in Marilyn Monroe's persona.
14. Upon information and belief, when Marilyn Monroe was alive, she never
registered any aspect of her persona as atrademark. Such persona elements are intended
to include, inter alia, Marilyn Monroe's name, image, likeness, signature, voice, etc.
15. Upon information and belief, when Marilyn Monroe was alive, she never
authorized any aspect ofher persona to be used, licensed or exploited after her death - -
whether by her probate estate or heirs - - in an exclusive manner that would provide an
exclusive monetary profit for her probate estate or heirs.
16. Upon information and belief, when Marilyn Monroe was alive, she intended for
her persona to become part ofthe public domain upon her death and this intention is
evidenced by, inter alia, her quoted statements that "Iknew I belonged to the public and
to theworld, not because I wastalented or evenbeautiful, but because I had never
belonged to anything or anyone else" and "I am not interested inmoney. Ijust want to be
wonderful."
17. Upon information and belief, when Marilyn Monroe was alive, she was
photographed so widely by photographers, who hold separate copyrights insuch
photographic images, such that no particular image or likeness ofMarilyn Monroe from
her lifetime is capable of satisfying the trademark purposes of the Lanham Act.
18. As set forth above, Plaintiff believes there are several independent legal reasons
that provide Plaintiff with theright to use its federally registered Virtual Marilyn
Copyrights - - as well as theright to use trademarks thatderive from or relate to the
Virtual Marilyn Copyrights - - without violating Defendant's asserted trademark rights in
Marilyn Monroe's persona. For instance, due tothe Persona Ruling, Plaintiff believes
that Defendant does not have an enforceable trademark right to use and license Marilyn
10
Monroe's persona.
19. Plaintiff, however, does not wish tobe exposed tothe risk oftrademark damages
to Defendant inthe event the Court were to disagree with Plaintiffs position regarding
the nature, scope and extent ofPlaintiffsasserted rights. In a situation where, as here,
the parties have conflicting claims to ownership and use ofdifferent types ofintellectual
property rights involving the persona ofthe deceased human being Marilyn Monroe,
federal law authorizes the adjudication of those conflicting claims, issues and rights
througha declaratory judgment action.
FIRST CLAIM FOR RELIEF
(Declaration Of Non-Infringement: PursuantTo 28U.S.C.
2201, Plaintiffs Use And Licensing Of Its Virtual Marilyn
Copyrights Does Not (And Will Not) InfringeOn Defendant's
Alleged Trademark Rights In Marilyn Monroe's Persona)
20. Plaintiff repeats and realleges each and every allegation of paragraphs 1to 19
above as though fully set forth herein.
21. Based upon one ormore ofthe legal reasons set forth above, or any other legal
reasons advanced byPlaintiff inthis action, theCourt should issue a declaratory
judgment, pursuant to 28 U.S.C. 2201, determining that Plaintiffs use and licensing ofits
Virtual Marilyn Copyrights does not (and will not) infringe onDefendant's alleged
trademark rights in Marilyn Monroe's persona.
11
SECOND CLAIM FOR RELIEF
(Declaration Of Non-Infringement: Pursuant To 28 U.S.C.
2201, Plaintiffs Use And Licensing Of Trademarks That
Derive From Or Relate To Plaintiffs Virtual Marilyn
Copyrights Does Not (And Will Not) Infringe On Defendant's
Alleged Trademark Rights In Marilyn Monroe's Persona)
22. Plaintiff repeats and realleges each and every allegation of paragraphs 1 to 21
above as though fully set forth herein.
23. Based upon one or more of the legal reasons set forth above, or any other legal
reasons advanced by Plaintiff in this action, the Court should issue a declaratory
judgment, pursuant to 28 U.S.C. 2201, determining that Plaintiffs use and licensing of
trademarks that derive from or relate to Plaintiffs Virtual Marilyn Copyrights does not
(and will not) violate Defendant's alleged trademark rights in Marilyn Monroe's persona.
THIRD CLAIM FOR RELIEF
(Declaration Of Unenforceability Of Defendant's Alleged
Trademark Rights In Marilyn Monroe's Persona: Pursuant
To 28 U.S.C. 2201, Defendant Does Not Have Any Enforceable
Trademark Rights In Marilyn Monroe's Persona)
24. Plaintiff repeats and realleges each and every allegation of paragraphs 1 to 23
above as though fully set forth herein.
25. Based upon one or more of the legal reasons set forth above, or any other legal
reasons advanced by Plaintiff in this action, the Court should issue a declaratory
judgment, pursuant to 28 U.S.C. 2201, determining that Defendant does not have any
enforceable trademark rights in Marilyn Monroe's persona.
12
DEMAND FOR JURY TRIAL
26. Plaintiff respectfully requests a jury trial on any issues that are determined to be
covered by Plaintiffs jury trial rights at any potential trial herein.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff respectfully requests that the Court (a) issue a
declaratory judgment, pursuant to 28 U.S.C. 2201, determining that (1) Plaintiffs use and
licensing of its Virtual Marilyn Copyrights does not (and will not) infringe on
Defendant's alleged trademark rights in Marilyn Monroe's persona; (2) Plaintiffs use
and licensing of trademarks that derive from or relate to Plaintiffs Virtual Marilyn
Copyrights does not (and will not) infringe on Defendant's alleged trademark rights in
Marilyn Monroe's persona; and (3) Defendant does not have any enforceable trademark
rights in Marilyn Monroe's persona; (b) direct Defendant to pay for the reasonable
amount of attorney's fees and costs incurred by Plaintiff, pursuant to the Copyright Act
(17 U.S.C. 505) and the Lanham Act (15 U.S.C. 1117); and (c) award such other and
further relief as the Court deems just and proper herein.
Respectfully submitted,
Dated: October 1,2014
New York, New York
Law Office of Mjcha^l B. Wolk, P.C.
By:
13
570 Lexington Avenue, 16th Floor
New York, New York 10022
Tel: 917-238-0576
Email: michael.wolk(S>wolkgroup.com
Attorneys for Plaintiff
Virtual Marilyn, LLC