Fake itch scratched after court drops bombshell on Marilyn merch

Nearly six decades after her death, Marilyn Monroe is still a popular choice for mugs, T-shirts, jewellery and other products using her name — even illegally.

Authentic Brands Group, which owns the rights to the late movie star’s name and the phrase “Diamonds are a Girl’s Best Friend”, popularised by her most famous song, has won a court order freezing the assets of dozens of virtual storefronts selling counterfeit goods.

The company said in court documents it works with marketplaces such as Amazon.com, Alibaba, eBay, Joom and Wish to shut down the sites, but it’s not enough. Court filings lay out an elaborate and often covert operation to identify the counterfeiters, file lawsuits and seek judicial orders before the shopfronts knew they were being targeted.

“If it’s suspected that the defendant is operating offshore and you’re operating in the whack-a-mole territory, you have to get creative,” said Anthony Dreyer, a trademark lawyer in Washington. Seizing the illicit goods isn’t always possible and doesn’t solve the problem, he said.

“You want to go further up the chain and you want to make it harder for them to do business,” Dreyer said. “The sophistication of varied payment methods makes it harder to freeze the assets and ultimately seize the assets.”

Lawsuits like this are becoming increasingly common as consumers shop online with little understanding or concern of what’s real and fake.

“Within the last year, especially with Covid-19 and more consumers shopping online, counterfeiters have gotten really smart and taken advantage of that,” said Tiffany Pho, manager of anti-counterfeiting at the International Trademark Association (ITA).

Monroe was 36 when she died on August 4 1962, at the height of her career, which included hit movies such as 'Gentlemen Prefer Blondes', 'Bus Stop' and 'The Seven Year Itch'.

The organisation has projected that, by next year, the estimated value of counterfeit goods, including digital piracy, will reach at least $1.9-trillion annually. Internet sales are particularly popular because the counterfeiters can have a 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 movies such as Gentlemen Prefer Blondes, Bus Stop and The Seven Year Itch. The actress has inspired generations of entertainers and remains one of the most valuable brands, ranking 13th on the Forbes list of “highest paid dead celebrities”.

Her estate, including certain intellectual property rights, was split, with 25% going to her therapist and 75% to famed acting coach Lee Strasberg. After Strasberg died in 1982 the rights transferred to his third wife, Anna, and Authentic Brands eventually became owner of that share. The scope of those intellectual property rights have been litigated heavily over the decades, but the ownership of Monroe’s name and the title of her most famous song are owned by Authentic Brands.

“She’s got a timeless beauty that even today still resonates,” 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 this history and the culture of this country that people identify with.”

That makes her name and image profitable with legitimate companies that license the rights from Authentic Brands and those that don’t. And Monroe isn’t alone. Just about every product on the market has a counterfeit version sold on the cheap, Kennedy said.

“As a consumer, if you go online and look for a product, we don’t know what’s trademarked, what’s copyrighted, we just know the product we’re looking for,” he said. “One of our partners at the centre joked that if you’re a company and you manufacture a product and you don’t have counterfeits, you’re making a really crappy product.”

Companies, including cigarette-maker Philip Morris, and trade groups last month set up a group, United to Safeguard America from Illegal Trade, or USA-IT, to come up with new ideas for enforcement and public education. The US Congress is also considering legislation that would force sellers to provide more information so consumers know what they’re buying.

Monroe’s estate was able to extract settlements with some of the websites. On June 25, Atlanta district court judge Michael granted the estate’s request for an order freezing assets of companies which didn’t respond to the suit. Efforts to reach those that had reached agreements were unsuccessful or they would only say the issue had been resolved.

Authentic Brands, which also represents the estates of Elvis Presley and Muhammad Ali, declined to comment on the dispute. It is exploring going public, people with knowledge of the matter said in May.

— Bloomberg News. More stories like this are available on bloomberg.com