Speaker 1: This is Bloomberg Law with June Brusso from Bloomberg Radio.
Speaker 1: Her kiss the hand baby quite continental, but a kiss
Speaker 1: maybe Graham. Marilyn Monroe an icon of pop culture. The actress,
Speaker 1: known for her blonde hair and curvy figure, was one
Speaker 1: of the most popular sex symbols of the fifties and sixties.
Speaker 1: She died at the height of her career at the
Speaker 1: age of thirty six. Monroe has inspired generations of entertainers,
Speaker 1: and she remains popular nearly sixty years after her death.
Speaker 1: There are the posters, mugs, T shirts, jewelry, and other
Speaker 1: products that attest to the power of her brand. And
Speaker 1: there are the fakes as well. Dozens of virtual storefront
Speaker 1: cell counterfeit Monroe Goods and Authentic Brand's group uses an
Speaker 1: allowed at and often covert operation to identify the counterfeitters,
Speaker 1: even filing lawsuits under seal in a cat and mouse game.
Speaker 1: Joining me is Susan Decker, Bloomberg patent reporter. So sue,
Speaker 1: just how popular is Marilyn Monroe. She's so popular that
Speaker 1: counterfeiters loved to put her name on T shirts, and
Speaker 1: the owner of her trademarks loves to file suit to
Speaker 1: stop them. So who owns the right to her picture?
Speaker 1: Who owns the right to her name? Well, Authentic Brands Group,
Speaker 1: which is possibly going for an IPO later this year,
Speaker 1: owns her name and the phrase diamonds are a Girl's
Speaker 1: Best Friend, which of course is the famous song from
Speaker 1: Gentleman Prefer Blonde. But her image is actually public record.
Speaker 1: There was a rather famous case back in two thousand
Speaker 1: and twelve where it was decided that she did not
Speaker 1: have any right of publicity. This is one of those
Speaker 1: make sure you pay your taxes situations. When she passed
Speaker 1: in nineteen sixty two, they argued that she lived in
Speaker 1: New York because they didn't want to pay California inheritance taxes,
Speaker 1: so they said she was a resident of New York.
Speaker 1: Fast forward years later and she's very popular and they
Speaker 1: want to take advantage of the right of publicity. And
Speaker 1: they said, oh, no, she was domiciled in California when
Speaker 1: she passed. And the court said, no, you can't say
Speaker 1: she lived in New York for purposes of taxes and
Speaker 1: then say she lived in California for write a publicity.
Speaker 1: We stick with the first one, which is New York.
Speaker 1: So there is no right a publicity for Marilyn Monroe,
Speaker 1: but the trademarks of her name are still owned. Her
Speaker 1: estate was divvied up. Yeah, so when she passed, obviously
Speaker 1: she had no children, there was some bequests, but after
Speaker 1: that of her estate went to her therapist, who then
Speaker 1: later donated the money to a hospital in London for
Speaker 1: children with mental health issues that's named after Sigmund Freud's
Speaker 1: daughter Anna. Of her estate went to her acting coach,
Speaker 1: the named Lee Strasburg, and he owned the rights until
Speaker 1: his death and his third wife, who was actually I
Speaker 1: think younger than Maryland, inherited it the rights from Lee Strasburg.
Speaker 1: So Anna Strasburg. There was a number of lawsuits over
Speaker 1: the scope of the rights and things like that, and
Speaker 1: she eventually sold the rights to a branding company SAMG,
Speaker 1: which then later got them to authentic brands. It's had
Speaker 1: a rather winding history. So the counterfeiters in this instance
Speaker 1: center only using her name or that phrase diamonds are
Speaker 1: a girl's best friend. So yes, they could actually print
Speaker 1: T shirts with her face on it and it wouldn't matter,
Speaker 1: nobody would be able to do anything about it. But
Speaker 1: they were putting a name on them. Yes, and no
Speaker 1: matter how you dice it, Marlon Murrow is popular. She
Speaker 1: has inspired legions of imitators. You know Madonna with the
Speaker 1: material Girls songs, You've got Anna, Nicole Smith, You've got
Speaker 1: drag queens everywhere. So everybody wants a piece of Maryland
Speaker 1: and authentic brands has one portion of it that's very
Speaker 1: valuable is her actual name and this phrase diamonds are
Speaker 1: a girl's best friend. Just think about it. If you're
Speaker 1: selling jewelry, isn't that a phrase you want to use
Speaker 1: all the time. Or you want to put the image,
Speaker 1: but you want to put the name because maybe some
Speaker 1: of the gen Z kids don't know who she is
Speaker 1: that you put the name. They police that very strongly.
Speaker 1: There were dozens and dozens of virtual retail stores that
Speaker 1: they tracked down, and it was actually really complicated work
Speaker 1: to identify who was running these stores, try and contact
Speaker 1: who they were. The way they laid it out in
Speaker 1: the quick documents, it's really kind of a cat and
Speaker 1: mouse game between these brand owners and the virtual storefronts.
Speaker 1: It's not enough in these instances just to seize the goods.
Speaker 1: If you can even get to the goods, well, you
Speaker 1: can't see the goods, and in some instances like Amazon,
Speaker 1: that the goods will be kept at an Amazon warehouse.
Speaker 1: And you know, there's a lot of debate over whether
Speaker 1: the places like Amazon or Ali Baba or at the
Speaker 1: or eBay are doing enough to police. And that's kind
Speaker 1: of side issue. How do you kind of go after
Speaker 1: these virtual storefronts in the pocketbook and you can't see
Speaker 1: the goods. You're not going to go around to, you know,
Speaker 1: anybody who buys a T shirts and say give me
Speaker 1: that T shirt back because it's a counterfeit. So what
Speaker 1: they have to do is they do everything in secret,
Speaker 1: behind the scenes, and they try and track down surreptitiously.
Speaker 1: They have lawyers who are specialized in this identify who
Speaker 1: are the people behind the websites. Then they file John
Speaker 1: Doe lawsuit. And the law firm that does the work
Speaker 1: actually doesn't file the lawsuits anymore because they know that
Speaker 1: the counterfeiters are on the lookout for lawsuits that they filed,
Speaker 1: So they outsourced the lawsuit to another firm that won't
Speaker 1: be associated with the authentic brands, and they file the
Speaker 1: entire lawsuit under steal It's ABC versus d e F
Speaker 1: And then they go to the judge and they lay
Speaker 1: out and say, we have this problem, and we have
Speaker 1: all these counterfeits. They have to provide a lot of
Speaker 1: information to the judge because judges don't generally like anonymous lawsuits,
Speaker 1: So they lay out all the information. They get a
Speaker 1: restraining order that not only says, oh, these platforms can't
Speaker 1: allow these store fronts to sell the information, but also
Speaker 1: directs the platform to freeze the assets. You know, all
Speaker 1: the money is being funneled through Amazon and Ali Baba,
Speaker 1: and those assets are frozen. And that's what the Maryland
Speaker 1: Morrow folks were able to do. Now they have to
Speaker 1: go back and figure out, okay, how much of those
Speaker 1: assets were from the counterfeit goods, and then get a
Speaker 1: court order to take that amount of money. You don't
Speaker 1: want to be too greedy and ask for the entire
Speaker 1: storefronts assets. You just want to be able to get
Speaker 1: the part you say is attributed to the counterfeiting, so
Speaker 1: the judge will go along with it. I'm surprised that
Speaker 1: they were even able to do that, because I would
Speaker 1: think that the counterfeiters would just close up shop and
Speaker 1: get another website exactly. And that's the reason why they
Speaker 1: file under seal is that they're trying to get these
Speaker 1: orders to the platforms before the storefronts realize that anybody
Speaker 1: notices that they're there, because the minute that they realized that,
Speaker 1: oh there's a target on our back, they're going to
Speaker 1: shut down and open in another site, are opened under
Speaker 1: another name. So you do all of this very nefarious
Speaker 1: James Bondish under steal behind closed doors, and then boom
Speaker 1: come forward and with this asset freeze. The next thing
Speaker 1: you know, you go to your website, collect the money
Speaker 1: or handle sales and you realize, oh my gosh, it's
Speaker 1: been frozen by the court. And also, it's not like
Speaker 1: handbags or shoes where when the consumer gets them or
Speaker 1: sees them can tell that they're counterfeiting a lot of
Speaker 1: instances because in this you wouldn't know if it was
Speaker 1: a counterfeit or not. No, because it's all virtual. It's
Speaker 1: over the web. I mean, how many times have you
Speaker 1: bought something over the web, even through a legitimate store
Speaker 1: and it's not exactly what you wanted. You wanted a
Speaker 1: red shirt and it counted orange many times, or you
Speaker 1: wanted large and it's small, So there's no way of
Speaker 1: knowing and quite frankly, a lot of people. You have
Speaker 1: a rising number of people who are shopping online on
Speaker 1: the internet because the pandemic, and a lot of people
Speaker 1: hurt and financially, so I'm not sure they would even
Speaker 1: care whether it's legit or not. In some instances, there
Speaker 1: are a lot of efforts that are being made by
Speaker 1: the International Trademark Association. Philip Morris has just set up
Speaker 1: a new group with a whole bunch of other companies
Speaker 1: and law enforcement to try and educate people that that
Speaker 1: counterfeit is much like movie piracy, is not a victimless crime.
Speaker 1: You're going to have these problems with quality, You're going
Speaker 1: to have problems with if you want to return something,
Speaker 1: who's gonna who's going to get it? You know, obviously
Speaker 1: the brand owners are being ripped off and they're losing
Speaker 1: the value of their brand. And there are some allegations
Speaker 1: that because of the scale of counterfeiting involved, that it
Speaker 1: involves organized crime. So this is you know, cheap and
Speaker 1: easy money for them to fund other things that they're
Speaker 1: doing the various deeds and is counterfeiting on the increase
Speaker 1: since the COVID shutdown tremendously, there's not an official word
Speaker 1: on exactly how much, but the people that I spoke
Speaker 1: to said that it's actually something that they are not
Speaker 1: sure how to quantify. The International Trademark Association had projected
Speaker 1: that digital piracy would reach one point nine trillion annually
Speaker 1: next year. They actually think it's already passed that number
Speaker 1: because of the sheer volume of online shopping because of
Speaker 1: the pandemic. You talked to Professor J. Kennedy who told
Speaker 1: you that just about every product on the market has
Speaker 1: a counterfeit version sold on the cheap. Yes. And I
Speaker 1: did an interview with someone years ago who told me
Speaker 1: that he was over in China and he looked and
Speaker 1: there was a Porsche. Every single part of that Porsche
Speaker 1: was counterfeit, like from the engine, that tires, the body,
Speaker 1: the seeds, everything. You could make an entire Porsche out
Speaker 1: of counterfeits. There are problems with counterfeit parts for your cars,
Speaker 1: and sometimes, you know, there's a debate for car parts,
Speaker 1: for instance, on legitimate replacement parts versus counterfeit parts and
Speaker 1: what's authorized and what's not. So it's a really complicated issue.
Speaker 1: But you know, software gets pirated. There's literally nothing that
Speaker 1: doesn't you know, there's somebody who can make it cheaper
Speaker 1: without paying for the brand or paying for all the
Speaker 1: safety requirements. Somebody will do it. Tell us about this.
Speaker 1: There's a bill being discussed by the House Panel that
Speaker 1: would increase liability for platforms like Amazon and eBay. Yes,
Speaker 1: there's a lot of efforts to try and figure out
Speaker 1: how do you deal with this problem, And some people
Speaker 1: say that, you know, Amazon, eBay, they're just not doing enough.
Speaker 1: They say that they're working on these and that they'll
Speaker 1: shut down the shops when they find out there's counterfeits.
Speaker 1: But there's a lot of arguments that they're not really
Speaker 1: doing enough. Conversely, there are actually some people saying they're
Speaker 1: doing too much. But there is a lobbying fight that
Speaker 1: would require these third party marketplaces, the internet platforms that
Speaker 1: connect the sellers to the buyers like eBay and Amazon
Speaker 1: to verify the identity of who's selling the products and
Speaker 1: provide transparency who's behind the curtain, so to speak. It's
Speaker 1: a multifaceted problem and I'm not sure that there's going
Speaker 1: to be any solution anytime soon. Thanks Sue. That's Susan Decker,
Speaker 1: Bloomberg Patent Reporter. And that's it for this edition of
Speaker 1: the Bloomberg Law Show. I'm June Grosso and you're listening
Speaker 1: to Bloomberg