Milton H. Greene Archives, Inc. v. Cmg Worldwide

• Decision Date: 31 July 2008
• Docket Number: No. CV 05-02200 MMM (MCx).,CV 05-02200 MMM (MCx).
• Citation: 568 F.Supp.2d 1152
• Parties: The MILTON H. GREENE ARCHIVES, INC., Plaintiff, v. CMG WORLDWIDE, INC., an Indiana Corporation, and Marilyn Monroe, LLC, a Delaware Limited Liability Company, Anna Strasberg, an individual, Defendants. And Consolidated Actions.
• Court: U.S. District Court — Central District of California

568 F.Supp.2d 1152

The MILTON H. GREENE ARCHIVES, INC., Plaintiff, v. CMG WORLDWIDE, INC., an Indiana Corporation, and Marilyn Monroe, LLC, a Delaware Limited Liability Company, Anna Strasberg, an individual, Defendants.

And Consolidated Actions.

No. CV 05-02200 MMM (MCx).

United States District Court, C.D. California.

July 31, 2008.

COPYRIGHT MATERIAL OMITTED

Douglas E. Mirell, Loeb & Loeb, Los Angeles, CA, Glenn H. Johnson, Leo Edward Lundberg, Jr., Mark L. Sutton, Michael Danton Richardson, Surjit P. Soni, Soni Law Firm, Pasadena, CA, R. Lawrence Bragg, Law Office of Sheila F. Gonzalez, Sacramento, CA, for Plaintiff.

Theodore J. Minch, Sovich Minch LLP, Mccordsville, IN, Michael Danton Richardson, Surjit P. Soni, Soni Law Firm, Pasadena, CA, William E. Wegner, Gibson Dunn and Crutcher, Douglas E. Mirell, Laura A. Wytsma, Benjamin R. King, Loeb & Loeb, Julian Wing-Kai Poon, Los Angeles, CA, for Defendants.

AMENDED ORDER GRANTING DEFENDANTS' MOTION FOR RECONSIDERATION

MARGARET M. MORROW, District Judge.

Defendants The Milton H. Greene Archives, Inc. and Tom Kelley Studios, Inc. have moved under Local Rule 7-18 for reconsideration of the court's January 7, 2008 order finding that plaintiffs are not collaterally or judicially estopped from claiming that Marilyn Monroe died a domiciliary of California.

I. FACTUAL AND PROCEDURAL BACKGROUND

A. Past Proceedings

The Milton H. Greene Archives, Inc. filed this action against CMG Worldwide Inc., Marilyn Monroe LLC, and Anna Strasberg on March 25, 2005. On May 3, 2005, the court consolidated the case with two other actions filed in this district— Shirley De Dienes et al. v. CMG Worldwide, Inc. et al. (CV 05-2516)¹ and Tom Kelley Studio, Inc. v. CMG Worldwide, Inc. et al. (CV 05-2568).² On December 14, 2005, the court consolidated two additional actions with the pending case—CMG Worldwide, Inc., et al. v. Tom Kelley Studios (CV 05-5973) and CMG Worldwide, Inc., et al. v. The Milton H. Green Archives, Inc. (CV 05-7627).³ These actions were originally filed by CMG Worldwide, Inc. and Marilyn Monroe, LLC (the "CMG Parties" or "plaintiffs") in the United States District Court for the Southern District of Indiana, and were transferred to this district pursuant to 28 U.S.C. § 1404(a) on August 9, 2005.⁴ All of the actions seek to have the court resolve competing claims to ownership of the legal right to use, license, and distribute certain photographs of Marilyn Monroe.

In their complaints against The Milton H. Green Archives, Inc. and Tom Kelley Studios, Inc. (the "MHG Parties" or "defendants"), the CMG Parties assert that they own the "Right of Publicity and Privacy in and to the Marilyn Monroe name, image, and persona" that was created by "the Indiana Right of Publicity Act, I.C. § 32-36-1-1 et seq., and other applicable right of publicity laws." The CMG Parties contend that defendants have infringed this right by using Marilyn Monroe's name, image and likeness "in connection with the sale, solicitation, promotion, and advertising of products, merchandise, goods and services" without their consent or authorization.⁵

On October 6, 2006, the MHG Parties filed a motion for summary judgment. They argued, inter alia, that plaintiffs' right of publicity claims were preempted by the Copyright Act, 28 U.S.C. §§ 101-1332, and that, even if they were not preempted, plaintiffs had failed to adduce evidence that they had standing to assert claims based on Marilyn Monroe's right of publicity. In essence, defendants argued that, even if a posthumous right of publicity in Monroe's name, image and likeness exists, plaintiffs could not show that they were presently in possession of that right. Defendants also argued that MMLLC was judicially and collaterally estopped from claiming that Monroe was domiciled anywhere other than New York at the time of her death.

On May 14, 2007, the court granted defendants' motion for summary judgment, concluding that plaintiffs lacked standing to assert Monroe's right of publicity.⁶ The court found that Marilyn Monroe could not have devised a non-statutory right of publicity through her will, and also could not have devised a statutory right that was created only decades after her death. This conclusion was supported, in part, by the court's interpretation of the California right of publicity statute, Civil Code § 3344.1. The court determined that under the statute, a deceased personality who had died before the measure was enacted was deemed not to have had the capacity to transfer the subsequently created right, which was denominated a "property right[ ]," prior to death. See CAL. CIVIL CODE § 3344.1(b) (providing that a "deceased personality" could, "before [his or her] death," transfer the statutory right of publicity "by contract or by means of trust or testamentary documents," but that "after the death of the deceased personality," the statutory publicity right "vest[ed]" directly in specified statutory beneficiaries (emphasis added)). Consequently, the court held that plaintiffs could not show they were entitled to assert Marilyn Monroe's posthumous right of publicity.

On November 21, 2007, plaintiff MMLLC filed a motion for reconsideration of the court's order. MMLLC based its motion on the fact that, six weeks after the order was entered, California State Senator Sheila Kuehl amended Senate Bill 771 ("SB 771") to include provisions designed to abrogate the court's ruling and clarify the meaning of California's right of publicity statute. SB 771 passed both houses of the California Legislature in September 2007, and was signed by Governor Schwarzenegger on October 10, 2007. The bill expressly provided that the statutory right of publicity created by § 3344.1 was deemed to exist at the time of death of any deceased personality who died before January 1, 1985. It also stated: "The rights recognized under this section are property rights, freely transferable, in whole or in part, by contract or by means of trust or testamentary documents, whether the transfer occurs before the death of the deceased personality, by the deceased personality or his or her transferees, or, after the death of the deceased personality, by the person or persons in whom the rights vest under this section or the transferees of that person or persons." The bill explained that, in the absence of an express provision in a will or other testamentary instrument transferring a deceased personality's right of publicity, "disposition of the publicity right[ ] would be in accordance with the disposition of the residue of the deceased personality's assets."

Citing this measure, MMLLC asked the court to reverse its conclusions (1) that "under either California or New York law, Marilyn Monroe had no testamentary capacity to devise, through the residual clause of her will, statutory rights of publicity that were not created until decades after her death"; (2) that alternatively, even if Marilyn Monroe's estate was open at the time the statutory rights of publicity were created, it "was not [an] entity capable of holding title to the rights"; and (3) that MMLLC and CMG had "no standing to assert the publicity rights they seek to enforce in this action."⁷

B. The Court's January 7, 2008 Order

1. Marilyn Monroe's Posthumous Right of Publicity

On January 7, 2008, the court granted plaintiff's motion for reconsideration. It noted that SB 771 clearly expressed the California legislature's intent to clarify § 3344.1 as originally enacted, explicitly outlining that intent in the bill and emphasizing it in the legislative history. The court observed that the bill had been passed promptly after, and in response to, the court's May 14, 2007 order, a factor of significance under California Supreme Court law addressing when subsequently passed bills should be considered clarifications, rather than modifications, of existing law. Finally, in light of SB 771, the court reconsidered the text of § 3344.1 as originally enacted, and found there was a potential ambiguity that the clarifying legislation addressed. It concluded that the definition of "deceased personality" in § 3344.1(h) injected ambiguity into the court's earlier construction of § 3344.1(b), i.e., its conclusion that subsection (b) permitted transfer of the statutory right of publicity after a personality's death only by the personality's heirs. Because the statute defined a "deceased personality" as "any ... natural person who ... died within 70 years prior to January 1, 1985," and because subsection (b) provided that a "deceased personality" could transfer the statutory right before his or her death, the court concluded that whether the legislature intended to provide that a predeceased personality could transfer the right through his or her will was ambiguous. The court noted that this potential ambiguity had caused beneficiaries, particularly charitable beneficiaries, of deceased personalities to act in a manner that conflicted with its earlier interpretation of the statute, and that it had resulted in court decisions that were at odds with what the 2007 legislature believed the earlier legislature had intended.

In combination, the court found that these circumstances supported a finding that SB 771 clarified existing law by making explicit the fact that the right of publicity of a personality who died before January 1, 1985 was deemed to have existed at the time the personality died, such that it could pass through the residual clause of her will. As a result, the court determined that it was appropriate to reconsider its ruling that MMLLC lacked standing to assert claims for infringement of Marilyn Monroe's statutory right of publicity. Interpreting § 3344.1 as clarified, the court held that because Marilyn Monroe's statutory right of publicity was deemed to have existed at the time of her death, and because it was not expressly bequeathed in her will, it was transferred under the residual clause of the will to Lee...