Why Marilyn Monroe Is a Counterfeiter's Best Friend

There are the posters, mugs, T shirts, jewelry, and other products that attest to the power of her brand. And there are the fakes as well. Dozens of virtual storefront cell counterfeit Monroe Goods and Authentic Brand's group uses an allowed at and often covert operation to identify the counterfeitters, even filing lawsuits under seal in a cat and mouse game. Joining me is Susan Decker, Bloomberg patent reporter. So sue,

just how popular is Marilyn Monroe. She's so popular that counterfeiters loved to put her name on T shirts, and the owner of her trademarks loves to file suit to stop them. So who owns the right to her picture? Who owns the right to her name? Well, Authentic Brands Group, which is possibly going for an IPO later this year, owns her name and the phrase diamonds are a Girl's Best Friend, which of course is the famous song from Gentleman Prefer Blonde. But her image is actually public record.

There was a rather famous case back in two thousand and twelve where it was decided that she did not have any right of publicity. This is one of those make sure you pay your taxes situations. When she passed in nineteen sixty two, they argued that she lived in New York because they didn't want to pay California inheritance taxes, so they said she was a resident of New York. Fast forward years later and she's very popular and they

want to take advantage of the right of publicity. And they said, oh, no, she was domiciled in California when she passed. And the court said, no, you can't say she lived in New York for purposes of taxes and then say she lived in California for write a publicity. We stick with the first one, which is New York. So there is no right a publicity for Marilyn Monroe, but the trademarks of her name are still owned. Her

estate was divvied up. Yeah, so when she passed, obviously she had no children, there was some bequests, but after that of her estate went to her therapist, who then later donated the money to a hospital in London for children with mental health issues that's named after Sigmund Freud's

daughter Anna. Of her estate went to her acting coach, the named Lee Strasburg, and he owned the rights until his death and his third wife, who was actually I think younger than Maryland, inherited it the rights from Lee Strasburg. So Anna Strasburg. There was a number of lawsuits over the scope of the rights and things like that, and she eventually sold the rights to a branding company SAMG, which then later got them to authentic brands. It's had

a rather winding history. So the counterfeiters in this instance center only using her name or that phrase diamonds are a girl's best friend. So yes, they could actually print T shirts with her face on it and it wouldn't matter, nobody would be able to do anything about it. But they were putting a name on them. Yes, and no matter how you dice it, Marlon Murrow is popular. She

has inspired legions of imitators. You know Madonna with the material Girls songs, You've got Anna, Nicole Smith, You've got drag queens everywhere. So everybody wants a piece of Maryland and authentic brands has one portion of it that's very valuable is her actual name and this phrase diamonds are a girl's best friend. Just think about it. If you're selling jewelry, isn't that a phrase you want to use

all the time. Or you want to put the image, but you want to put the name because maybe some of the gen Z kids don't know who she is that you put the name. They police that very strongly. There were dozens and dozens of virtual retail stores that they tracked down, and it was actually really complicated work to identify who was running these stores, try and contact

who they were. The way they laid it out in the quick documents, it's really kind of a cat and mouse game between these brand owners and the virtual storefronts. It's not enough in these instances just to seize the goods. If you can even get to the goods, well, you can't see the goods, and in some instances like Amazon, that the goods will be kept at an Amazon warehouse. And you know, there's a lot of debate over whether the places like Amazon or Ali Baba or at the

or eBay are doing enough to police. And that's kind of side issue. How do you kind of go after these virtual storefronts in the pocketbook and you can't see the goods. You're not going to go around to, you know, anybody who buys a T shirts and say give me that T shirt back because it's a counterfeit. So what they have to do is they do everything in secret, behind the scenes, and they try and track down surreptitiously. They have lawyers who are specialized in this identify who

are the people behind the websites. Then they file John Doe lawsuit. And the law firm that does the work actually doesn't file the lawsuits anymore because they know that the counterfeiters are on the lookout for lawsuits that they filed, So they outsourced the lawsuit to another firm that won't be associated with the authentic brands, and they file the entire lawsuit under steal It's ABC versus d e F And then they go to the judge and they lay out and say, we have this problem, and we have

all these counterfeits. They have to provide a lot of information to the judge because judges don't generally like anonymous lawsuits, So they lay out all the information. They get a restraining order that not only says, oh, these platforms can't allow these store fronts to sell the information, but also directs the platform to freeze the assets. You know, all the money is being funneled through Amazon and Ali Baba, and those assets are frozen. And that's what the Maryland

Morrow folks were able to do. Now they have to go back and figure out, okay, how much of those assets were from the counterfeit goods, and then get a court order to take that amount of money. You don't want to be too greedy and ask for the entire storefronts assets. You just want to be able to get the part you say is attributed to the counterfeiting, so

the judge will go along with it. I'm surprised that they were even able to do that, because I would think that the counterfeiters would just close up shop and

get another website exactly. And that's the reason why they file under seal is that they're trying to get these orders to the platforms before the storefronts realize that anybody notices that they're there, because the minute that they realized that, oh there's a target on our back, they're going to shut down and open in another site, are opened under another name. So you do all of this very nefarious James Bondish under steal behind closed doors, and then boom

come forward and with this asset freeze. The next thing you know, you go to your website, collect the money or handle sales and you realize, oh my gosh, it's been frozen by the court. And also, it's not like handbags or shoes where when the consumer gets them or sees them can tell that they're counterfeiting a lot of instances because in this you wouldn't know if it was a counterfeit or not. No, because it's all virtual. It's

over the web. I mean, how many times have you bought something over the web, even through a legitimate store and it's not exactly what you wanted. You wanted a red shirt and it counted orange many times, or you wanted large and it's small, So there's no way of knowing and quite frankly, a lot of people. You have a rising number of people who are shopping online on the internet because the pandemic, and a lot of people hurt and financially, so I'm not sure they would even

care whether it's legit or not. In some instances, there are a lot of efforts that are being made by the International Trademark Association. Philip Morris has just set up a new group with a whole bunch of other companies and law enforcement to try and educate people that that counterfeit is much like movie piracy, is not a victimless crime. You're going to have these problems with quality, You're going to have problems with if you want to return something,

who's gonna who's going to get it? You know, obviously the brand owners are being ripped off and they're losing the value of their brand. And there are some allegations that because of the scale of counterfeiting involved, that it

involves organized crime. So this is you know, cheap and easy money for them to fund other things that they're doing the various deeds and is counterfeiting on the increase since the COVID shutdown tremendously, there's not an official word on exactly how much, but the people that I spoke to said that it's actually something that they are not sure how to quantify. The International Trademark Association had projected that digital piracy would reach one point nine trillion annually

next year. They actually think it's already passed that number because of the sheer volume of online shopping because of the pandemic. You talked to Professor J. Kennedy who told you that just about every product on the market has a counterfeit version sold on the cheap. Yes. And I did an interview with someone years ago who told me that he was over in China and he looked and there was a Porsche. Every single part of that Porsche was counterfeit, like from the engine, that tires, the body,

the seeds, everything. You could make an entire Porsche out of counterfeits. There are problems with counterfeit parts for your cars, and sometimes, you know, there's a debate for car parts, for instance, on legitimate replacement parts versus counterfeit parts and what's authorized and what's not. So it's a really complicated issue.

But you know, software gets pirated. There's literally nothing that doesn't you know, there's somebody who can make it cheaper without paying for the brand or paying for all the safety requirements. Somebody will do it. Tell us about this. There's a bill being discussed by the House Panel that

would increase liability for platforms like Amazon and eBay. Yes, there's a lot of efforts to try and figure out how do you deal with this problem, And some people say that, you know, Amazon, eBay, they're just not doing enough. They say that they're working on these and that they'll shut down the shops when they find out there's counterfeits. But there's a lot of arguments that they're not really doing enough. Conversely, there are actually some people saying they're

doing too much. But there is a lobbying fight that would require these third party marketplaces, the internet platforms that connect the sellers to the buyers like eBay and Amazon to verify the identity of who's selling the products and provide transparency who's behind the curtain, so to speak. It's a multifaceted problem and I'm not sure that there's going to be any solution anytime soon. Thanks Sue. That's Susan Decker, Bloomberg Patent Reporter. And that's it for this edition of

the Bloomberg Law Show. I'm June Grosso and you're listening to Bloomberg