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  • 8/11/2019 Virtual Marilyn v. Estate of Marilyn Monroe.pdf

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    J S 44C/SDNYREV. 4 /2014

    CIVIL COVER SHEET

    edhereBneitrjBeplaceftrMpImentthefilingarSsecefJiprovid*by Aiules oAoudVhisform,approveBbySnf QJ1974, iiBMiuireaCruse oHlre Clerk ofCourtfor therurpow*f

    The JS-44 civil cover sheet and the information containedpleadingsorotherpapersas required by law, exceptasJudicial Conference ofthe United States in Septemberinitiating the civil docket sheet.

    P L A I N T I F F S

    vSrv iM>rtTiucW&y ^iul toK*M^AM,ucATTORNEYS FIRM NAME,ADDRESS, ANDTELEPHONENUMBER ATTORNEYS IF KNOWN)

    tikf ofRtctofpUlftl lk p tm - y* V~ Vv* /* Ttt:m-tfi osn6

    CAUSEOF ACTIOl CITETHEU.S.CIVILSTATUTEUNDERWHICHYOUAREFILINGANDWRITEABRIEFSTATEMENTOF CAUSEDO NOT CITEJURISDICTIONALSTATUTESUNLESS DIVERSITY

    2 USCfltfl <

    I ] 375 FALSE CLAIMSf J400 STATE

    REAPPORTIONMENT

    [ ]410 ANTITRUST[ j430 BANKS&BANKING[ ]450 COMMERCE[ ] 460 DEPORTATION[ ] 470 RACKETEER INFLU

    E N C E D & C O R R U P T

    fciffiO COPYRIGHTS ORGANIZATION ACT[1 830 PATENT[ ] 840 TRADEMARK

    (RICO)[ ] 480 CONSUMERCREDIT[ ] 490 CABLE/SATELLITETV

    S O C I A L S E C U R I T Y [ ] 850 SECURITIES/COMMODITIES/

    L A B O R

    [ ] 710 FAIRLABORSTANDARDS AC T

    [ ] 7 20 LABOR/MGMTRELATIONS

    [ ] 7 40 RAILWAY LABOR ACT[ ] 751 FAMILY MEDICAL

    [ ] 861 HIA(1395ff)[ ] 8 62 BLACK LUNG(923)[ ] 863 DIWC/DIWW(405(g))[ ] 864 SSID TITLEXVI[ ] 865 RSI (405(g))

    FEDERAL TA X SUITS

    E X C H A N G E

    [ ] 890 OTHER STATUTORYA C T I O N S

    [ ] 8 91 AGRICULTURAL ACTS

    LEAVEACT (FMLA)

    [ ]790 OTHER LABORLITIGATION

    [ ]791 EMPLRETINCSECURITY AC T

    [ ] 870 TAXES (U.S. PlaintifforDefendant)

    [ J871 IRS-THIRD PARTY26 US C 76 9

    [ ] 8 93 ENVIRONMENTALMATTERS

    [ ]895 FREEDOMOFI N F OR M AT IO N A C T

    [ ] 896 ARBITRATION

    IMMIGRATION[ ] 899 ADMINISTRATIVE

    PROCEDURE ACT/REVIEW

    [ ] 4 62 NATURALIZATIONAPPLICATION

    [ ]465 OTHER IMMIGRATIONA C T I O N S

    APPEAL OF AGENCY DECISI

    [ ] 9 50 CONSTITUTIONALITYS TAT E S TAT U T E S

    [ ] 2 1 0

    22

    23 0

    24

    24 5

    [ ]290

    LAND

    CONDEMNATIONF O R E C L O S U R ER E N T L E A SE &E J E C T M E N T

    T O RT S T O LANDT O RT P R O DU C TLIABILITY

    ALL O T H E R

    R E A L P R O P E RT Y

    Checkifdemanded in complaint:

    CHECK IFTHIS IS ACLASS ACTIONUNDER F.R.C.P. 2 3

    DEMAND $_ O T H E R

    Check YESonlyifdemandeain complaintJURY DEMAND: 5/YES LNO

    PRISONER CIVIL RIGHTS

    [ ] 550 CIVILRIGHTS[ ]555 PRISON CONDITIONI 56 0 CIVIL DETAINEE

    CONDITIONS OF CONFINEMENT

    DOYOU CLAIM THIS CASE IS RELATED TO A CIVIL CASE NOWPENDINGINS.D.N.Y.?

    JUDGE DOCKET NUMBER

    A

    NOTE:You must also submit at the time of filing the Statement of Relatedness form(Form IH-

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    ^

    (PLACEANxINONEBOXONLY) ORIGIN

    JSTl Original 2 Removedfrom 3 RemandedD 4 Reinstated orQ 5 TransferredfromQ6 Multidistrict 7AppealtoDistr^ Proceeding stateCourt from Reopened SpecifyDistrict LitigationXistraTjud a. allpartiesrapreianted Appellate Judgment

    | | b. At leastoneparty is pr o se .

    PLACEANxINONEBOXONLY BASISOF JURISDICTION IFDIVERSITY,INDICATE 1US PLAINTIFF 2 U.S.DEFENDANTJ3 FEDERALQUESTIOND4 DIVERSITY CITIZENSHIPBELOW(U.S. NOT A PARTY) ,

    CITIZENSHIPOFPRINCIPALPARTIES FORDIVERSITYCASESONLY) /VrVT(Place an [X] inone boxfor Plaintiffand one boxfor Defendant)

    PTF DEF PTFDEF PTF DEFCITIZEN OF THIS STATE [11 [11 CITIZEN OR SUBJECT OFA [ ]3 [ ]3 INCORPORATED and PRINCIPAL PLACE [ ]5 [ ]5

    FOREIGN COUNTRY OF BUSINESS IN ANOTHER STATE

    CITIZEN OFANOTHER STATE []2 [ ]2 INCORPORATED or PRINCIPAL PLACE [ ]4 [ ]4 FOREIGN NATION [ ]6 [ ]6O F B U S IN E S S IN THIS STATE

    PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)

    DEFENDANT(S) ADDRESS(ES) ANDCOUNTY(IES)

    DEFENDANT(S) ADDRESS UNKNOWNREPRESENTATION IS HEREBY MADETHAT,AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE,TO ASCERTAIN

    RESILIENCE ADDRESSES OF TH E FOLLOWING DEFENDANTS:

    Checkone: THIS ACTIONSHOULD E ASSIGNEDTO WHITEPLAINS j^MANHATTAN(DO NOT check either boxifthis a PRISONER PETITION/PRISONERCIVIL RIGHTSCOMPLAINT.) J yl

    DATE O/lhoiU SIGNATURE OF ATTORNEY OFRECOBdVAU ^/S/6/s' ADMITTEDTOPRACTICEINTHIS DISTRICT/ / jq. YES DATE ADMITTEDMo. P Yr.W^2RECEIPT AttorneyBarCode 22*72. J*/A/*=

    Magistrate Judge is to be designated bythe Clerkof the Court.

    Magistrate Judge MAH TTmHP TOTT isso Designated.

    Ruby J. Krajick, Clerk of Court by Deputy Clerk, DATED .

    UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)

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    O

    U N IT E D S TAT E S D I S TR I CT COURT

    SOUTHERN DISTRICT OF NEW YORK _ .JUDGESQWUN

    VIRTUAL MARILYN, LLC, Case No:

    Plaintiff, Date Filed: October 1,2014

    -against-

    T H E E STATE O F M A RI LY N MONROE,

    Defendant. J U RY T R I A L REQUESTED

    4 CV 7 9 3 8LTX, COMPLAINT * ^

    N T U R E A N D S U M M R Y O F T I O N

    This is a declaratory judgment actionto adjudicate the rights and legal relationsofthe parties regarding, inter alia, their conflicting claims to ownership anduseof different

    r

    types of intellectual property rights involvingthe persona ofthe deceased human beingcd

    Marilyn Monroe. In2012, the United States CourtofAppeals for the Ninth Circuijh _|_ zg

    determined, inter alia that (a)Marilyn Monroe's personarightsexpired 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.3d 983,

    999-1000 9thCir. 2012) (the Persona Ruling ). Although the Persona Ruling indicates

    that MarilynMonroe's persona rights fell into the public domainwhen she died in 1962,

    Marilyn Monroe's Estate, which is controlled by a commercial licensingcompany(not

    by herheirs), continues to assertownership and use rightsto Marilyn Monroe's persona.

    Indeed, notwithstandingthe Persona Ruling, Defendant continues to extract (improperly)significant licensing fees from various persons and entities in returnfor Defendant

    allowing those persons and entities to use Marilyn Monroe's persona.

    o r

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    Plaintiff is the current owner of a federally registered copyrightin a fictional,

    computer-generated character called VM2-Virtual Marilyn or Virtual Marilyn (the

    Fictional VM Character ). The Fictional VM Character is described onits copyright

    registrationas encompassing,inter alia, audiovisual work and character artwork

    depicting acomputergeneratedvirtual actress adoptingthe persona ofMarilyn Monroe.

    Plaintiffalso is the currentownerof a separate federally registered copyright in a

    fictional story called VM2and The Legion of Vactors (the Fictional VM Story ). The

    Fictional VM Story is described on its copyrightregistration as encompassing,inter alia,

    a treatment for creationand exploitation of original computer generated characters

    adopting the personas of celebrated people.

    On July 29, 2014, Defendant publically assertedthat The Monroe Estate is a

    premier brand developmentand licensing company with exclusive ownership of

    intellectual propertyrights related to Marilyn Monroe. Defendanthas also asserted that

    (a) the useand licensing ofthe Virtual Marilyn isan infringement ofthe Monroe

    Estate's rightsin Ms. Monroe's identity andpersonathat is likelyto confuse consumers

    as to the Monroe Estate's association with or endorsement of Virtual Marilyn and/or any

    goods or services withwhich 'she' is associated ; (b) the use of Marilyn Monroe's

    identity andpersonawithoutthe Monroe Estate's priorauthorization constitutes unfair

    competition and false designation of origin ; and(c) the Monroe Estate demandsthat

    [thecopyright claimant] agreeto ceaseall current, if any, and future useand licensing ofVirtual 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

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    courses of action, including filinga federal lawsuit, if you do, in fact, use or license

    Virtual Marilyn.

    Plaintiff believes thereare several independentlegal reasons that provide Plaintiff

    with the right to use its federally registered copyrights inthe Fictional VM Characterand

    the FictionalVM Story - - as well as the right to use trademarks that derive from or relate

    to such federally registered copyrights- - without violatingDefendant's asserted

    trademark rightsin Marilyn Monroe's persona. For instance,due to the Persona Ruling,

    Plaintiffbelievesthat Defendantdoesnot have an enforceable trademarkright to use and

    license Marilyn Monroe s persona.

    Plaintiff, however, does not wishto be exposed to therisk of trademark damages

    to Defendant in the event the Court were to disagreewith Plaintiffs position regarding

    the nature, scope andextent of Plaintiffs asserted rights. In a situation where, as here,

    the parties have conflicting claims to ownership and use of different types of intellectual

    property rights involvingthe persona of the deceased human being MarilynMonroe,

    federal lawauthorizes the adjudication of those conflicting claims, issuesandrights

    through a declaratoryjudgment action.

    P R T I E S

    1. Plaintiff Virtual Marilyn, LLC ( Plaintiff), a Delaware limited liability company,

    isthe current copyright owner ofthe federally registered copyrights for the Fictional VMCharacter and the Fictional VM Story. Plaintiff also is the current owner of the right to

    use trademarks that derive from or relate to th e Fictional VM Character a nd t he Fictional

    VM Story.

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    2. Upon informationand belief, DefendantThe Estate ofMarilyn Monroe, LLC

    ( Defendant or Monroe Estate ) is a Delaware limitedliabilitycompanycontrolled by

    a commercial licensing companycalled The Authentic Brands Group, with a place of

    business located at 100 West 33rd Street, Suite 1007, New York, New York 10001. On

    July 29, 2014, Defendantpublicallyasserted that The Monroe Estate is apremierbrand

    developmentand licensing company with exclusiveownershipof intellectualproperty

    rights related to Marilyn Monroe. Defendanthas also asserted that, notwithstandingthe

    Persona Ruling,it remains the ownerofvarious enforceable trademarks involvingthe

    persona of the deceased human being MarilynMonroe. Defendanthas also demandedthecessation of all useand licensing of the Fictional VM Character, or any other marks,

    names, logos, designs, avatars,or the like based upon the identity and persona of Marilyn

    Monroe, failing which Defendant wouldconsider such useand licensing to be an

    infringement of the Monroe Estate's rights in Ms. Monroe's identity and persona that is

    likely to confuse consumersasto the Monroe Estate's association with or endorsementof

    Virtual Marilyn and/orany 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.

    J U R IS D I T I O N N D V E N U E

    3. Since this action involves a determination of federally-created rights under the

    federal Copyright Act and the federal LanhamAct, subject matterjurisdictionis vestedinthis Courtpursuantto 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.

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    4. Since this action involves federally-created copyrightsand Defendant is subject to

    personaljurisdictionin New York, venue isproper inthe SouthernDistrictofNew York

    pursuant to 28U.S.C. 1400. Venue also is proper in the SouthernDistrict ofNew York

    pursuant to 28 U.S.C. 1391because Defendanthas a place ofbusiness in the Southern

    District of New York and/or a substantial partof the events or omissions that form the

    basis of the claims against Defendantoccurred in the Southern Districtof New York.

    F T U L B A C K G R O U N D

    5. In 2012, the United States CopyrightOffice issued the following federal copyrightregistrationsfor the following Virtual Marilynworks to the original owner thereof:

    Copyright Registration Number: PA0001773872Effective Registration Date: February 23,2012Titleof Copyrighted Fictional Character: VM2 - Virtual MarilynCopyright Registration refersto the Copyrighted Fictional Characteras part ofan audiovisual work and character artwork depicting a computer generated virtual actressadopting the persona of Marilyn Monroe(the Fictional VM Character Copyright )

    - and -

    CopyrightRegistrationNumber: TXu 1-827-427Effective Registration Date: September 25,2012Title of Copyrighted Story: VM2 and The Legion of VactorsCopyright Registration refers to the Copyrighted Storyaspartof a treatment for creationandexploitation of original computer generated characters adopting the personas ofcelebrated people(the Fictional VM Story Copyright )

    (theFictional VM Character Copyright andthe Fictional VM StoryCopyright are

    collectivelydefined herein as the Virtual Marilyn Copyrights ).

    6. Pursuant to a written copyright assignment for the Virtual Marilyn Copyrights

    executed by the original ownerthereof, Plaintiffpurchased andacquired ownership of the

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    Virtual Marilyn Copyrights, and Plaintiffbecame the assignee and transferee for the

    Virtual Marilyn Copyrights,effective asof August 15, 2014.

    7. On August 22, 2014, Plaintiffnotified Defendantby letter, inter alia, as follows:

    (a) Plaintiffhad acquired ownership of the Virtual MarilynCopyrights;

    (b) Plaintiffs legal research indicates there is no legal impediment tothe use, developmentand exploitationofthe copyrightable expressioninvolving the copyrightedVirtual MarilynCharacter and such use,development and exploitationofthe copyrighted Virtual MarilynCharacterdoes not violate any purported 'persona rights' that theMonroe Estate may assert under trademark law ;

    (c) Since the Persona Ruling issued bythe United States Courtof

    Appeals fortheNinthCircuit indicates that Marilyn Monroe'spersona is part of the Public Domain,andthatthe Monroe Estatenever inherited Marilyn Monroe's persona rights, the MonroeEstate wouldbe legallyunable to enforce anytrademark registrationsinvolving Marilyn Monroe's 'persona' to inhibitor impedePlaintiffs copyright ownership rights involvingthe VirtualMarilyn Character; and

    (d) Even if the Ninth Circuit had not issuedthe Persona Rulingagainst the Monroe Estate, thereare independent legal groundswhy Plaintiffs use, development and exploitation of the

    copyrighted Virtual Marilyn Character would not violateany purported persona rights that Defendant may assertunder trademark law. One of those independent legal groundsis that the Ninth Circuit and Second Circuit have previouslyruled that an 'expressive work' (such as the copyrightedVirtual Marilyn Character) is entitled to 'First Amendmentprotection' and so long as a 'trademark or other identifyingmaterial is artistically relevant to the expressive work,' andsuch artistically relevant use does not 'explicitly mislead'consumers as to authorship, sponsorship or endorsement bythe trademark holder, then the artistically relevant use does

    not v io late the Lanham Act. Brown v. Electronic Arts 72 4F.3d 1235 9thCir. 2013); Rogers v. Grimaldi, 875 F.2d 994(2dCir. 1989).

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    8. Plaintiffs August 22,2014 letter asked Defendantto communicateits position on

    the situation inan effort to avoid litigation. Defendantdidnot provide a substantive

    response to Plaintiffs August 22, 2014 letter.

    9. On September3, 2014, PlaintiffnotifiedDefendant in a follow-up letter that if

    Plaintiffdid not receive a substantive response by September 12, 2014, then Plaintiff

    will have no choice butto conclude that litigation would likelybe needed to resolve

    the precise nature and scope of the intellectual property rightsto Marilyn Monroe's

    persona.

    10. Plaintiffs September3, 2014 letter notified Defendant,inter alia, as follows:(a) Since the Ninth Circuit's Persona Ruling determinedthat theMonroe Estate never inherited Marilyn Monroe's persona rightswhenshe died in 1962, it appearsher persona rights fell into thepublic domain and we are ata loss to understand the legal basisfrom which the Monroe Estate, despite the Ninth Circuit's ruling,continues to assert a posthumous trademark interest in somecommercial uses of Marilyn Monroe's persona ;

    (b) Significantly, the United States Supreme Courthas indicated

    that(1)the public hasa constitutionally-based rightto copy anduseintellectualproperty that falls into the public domain, for free andwithout attribution,once the time-period for private protection ofsuch intellectual property has expired and (2) this federally-created,public domain righthas the effect of limiting the length of privateprotection fora trademark tothe time-period that governs theunderlying copyright or patent from which the trademark interestderives. See Dastar Corp. v Twentieth Century FoxFilm Corp.,539U.S.23, 33-34 (2003) (conflict between lengthof trademarkprotection and lengthof copyright protection); TrafFix Devices,Inc. v Marketing Displays, Inc.,532 U.S. 23, 29 (2001) (conflict

    betweenlengthof trademarkprotectionand lengthof patentprotection). Prior to these Supreme Courtprecedents, the UnitedStatesCourtof Appeals had reached a similar conclusionthat thelength of private protection fora trademark cannotexceed the time-period that governs the underlying intellectual property asset fromwhich the trademark interest derives. See Comedy IIIProductionsInc. v NewLine Cinema, 200 F.3d 593, 595 (9th Cir. 2000) ( [T]heLanham Act cannot be used to circumvent copyright law. If material

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    covered by copyright law has passed into the public domain, itcannot then be protected by the Lanham Act without renderingtheCopyright Act a nullity [cit. om.]. ). Accordingly, in view of theseappellate precedents, itis difficult to fathom that the courts wouldsomehowaccord a longer periodof private protectionfor a trademark

    than the time-period that governs the underlying publicity/personarights from which the trademark interest derives. ; and

    (c) Plaintiffs intent to use, and obtain federal trademark protectionfor, the branding rights arising from useof the copyrightedVirtual Marilyn Character would not violate Defendant'spurportedtrademark rights in Marilyn Monroe's persona --not only for thereasons identified above but also because there is a fracturedownership situation where different groups owndifferent types ofintellectual propertyrights involving MarilynMonroe (see, e.g.,Universal City Studios, Inc. v Ninetendo Co. Ltd., 578F. Supp.

    911 (S.D.N.Y. 1983) (Lanham Act liability rejectedbecause differentgroups owneddifferent types of intellectual property in the nameand likenessof 'King Kong' and, therefore, the trademarkdid notconnote a single source of originto consumers) and appropriatelyhighlighted disclaimerscan always be usedto make it cleartoconsumers that th e Monroe Estate has no affiliation with th eVirtualMarilyn characteror the Virtual Marilyn brand.

    11. Plaintiffs September 3, 2014 letter asked Defendant to communicate its position

    on the situation by September 12,2014in an effortto avoid litigation. AlthoughDefendant's general counsel acknowledgedreceipt of Plaintiffs 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 sentwritten statements to a prior owner of the Virtual

    Marilyn Copyrights in which Defendantassertedthat the use thereof would infringe

    [Defendant's] alleged trademark rights involving MarilynMonroe's persona whether for

    copyright purposes or trademark purposes; (b) the conflicting positions of the parties

    shows there is a sufficient dispute and controversy that warrantsjudicial interventionto

    8

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    declare and adjudicate the rights and duties of the parties in connection with, inter alia,

    the intellectual property rightsto Marilyn Monroe's persona ; and (c) if Defendantdid

    not contact Plaintiffby September 19, 2014 in an effort to avoid litigation, then Plaintiff

    would proceed accordingly with the preparation of appropriate litigation papers to protect

    Plaintiffs rights. Defendant did not providea substantive response to Plaintiffs letters

    by September19, 2014. On September24, 2014, Plaintiffprovided Defendant witha

    draft complaint in contemplationof this declaratoryjudgment litigation and, in

    connectiontherewith, Plaintiffnotified Defendant inan accompanying letterthat if

    Defendant didnot contact Plaintiffby September 30, 2014 in an effortto avoid litigation,then Plaintiff would file a complaintand pursue the declaratoryjudgment litigation.

    Defendantdid not provide a substantive responsetothe draft complaintby September 30,

    2 0 1 4 .

    13. On July 29, 2014, Defendantfiled a pleading seekingaffirmative reliefin

    enforcementofits alleged trademarkrights in Marilyn Monroe's persona in connection

    with a separate action pendingin this Court against other parties. See The Estate of

    Marilyn Monroe, LLC (Defendant/Counter-Plaintiff)vs. A. V.E.L.A., Inc.

    (Plaintiff/Counter-Defendant) andLeo Valencia IPL, Inc., XOne XMovieArchives Inc.

    and V International Fine Arts Publishing, Inc. (Counter-Defendants),United States

    District Court, Southern District of New York, Case No: 12 Civ. 4828 (KPF)(JCF)

    (the Monroe Estate PersonaAllegations ). The Monroe Estate Persona Allegationsareincorporated hereinby reference andmadea part hereof. TheMonroe Estate Persona

    Allegations set forth the grounds on which Defendantbases its alleged trademark rights

    in Marilyn Monroe s persona.

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    14. Upon informationand belief, when MarilynMonroe was alive, she never

    registered anyaspect ofher personaas a trademark. Such persona elementsare intended

    to include, inter alia, Marilyn Monroe's name, image, likeness, signature,voice, etc.

    15. Upon information and belief, when Marilyn Monroewas 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 exclusivemanner that would provide an

    exclusive monetaryprofitfor her probate estate or heirs.

    16. Upon informationand belief, when Marilyn Monroe wasalive, she intended for

    her persona to become part of the public domain upon her deathand this intention isevidencedby, inter alia, her quoted statements that I knew I belonged to the public and

    to the world, not because I wastalented or evenbeautiful, but because I had never

    belonged to anything or anyoneelse and I am not interested in money. I just want to be

    wonder fu l .

    17. Upon informationand belief, when Marilyn Monroe was alive, she was

    photographedso widely by photographers,who hold separate copyrights in such

    photographic images, suchthat no particular image or likeness of Marilyn Monroefrom

    her lifetime is capable of satisfying the trademark purposes of the Lanham Act.

    18. As set forth above, Plaintiff believesthere are several independent legal reasons

    that provide Plaintiff with the right to use its federally registered Virtual Marilyn

    Copyrights - - a s well asthe right to use trademarks that derive from or relate totheVirtual Marilyn Copyrights- - without violatingDefendant's asserted trademark rights in

    Marilyn Monroe's persona. For instance, due to the Persona Ruling,Plaintiff believes

    that Defendant does not have an enforceable trademark right to use and license Marilyn

    1 0

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    Monroe s persona.

    19. Plaintiff, however, doesnot wish to be exposed to the risk of trademark damages

    to Defendant inthe event the Court were to disagree withPlaintiffs position regarding

    the nature, scopeand extent ofPlaintiffs asserted rights. In a situationwhere, as here,

    the parties have conflictingclaims to ownershipand use ofdifferent types ofintellectual

    property rights involvingthe personaof the deceased human being MarilynMonroe,

    federal law authorizes the adjudicationof those conflicting claims, issues and rights

    througha declaratory judgment action.

    F I R S T L I M F O R R E L I E F

    Declaration Of Non-Infringement: PursuantTo 28 U.S.C.2201, Plaintiffs Use And Licensing Of Its Virtual MarilynCopyrights Does Not And Will Not InfringeOn Defendant sAlleged Trademark Rights In Marilyn Monroe s Persona

    20. Plaintiffrepeats and realleges each and every allegation of paragraphs 1to 19

    above as though fully set forth herein.21. Based uponone or more of the legal reasons set forthabove, or any other legal

    reasons advancedbyPlaintiff in this action, the Court should issue a declaratory

    judgment, pursuantto 28 U.S.C. 2201,determiningthat Plaintiffs use and licensingof its

    Virtual MarilynCopyrights does not (and will not) infringe on Defendant's alleged

    trademark rights in Marilyn Monroe's persona.

    11

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    S E O N D L I M F O R R E L I E F

    Declaration O f Non-Infringement: Pursuant To 28 U.S.C.2201, Plaintiffs Use A nd Licensing O f Trademarks ThatDerive From Or Relate To Plain ti f fs Vir tual Mari lyn

    Copyrights Does No t A n d Wil l Not) Infringe On Defendant sAlleged 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.

    T H I R D L I M F O R R E L I E F

    Declaration O f Unenforceability O f Defendant s Alleged

    Trademark Righ ts In Marilyn Monroe s Persona: PursuantTo 28 U.S.C. 2201, Defendant Does No t Have A ny EnforceableTrademark Righ ts In Marilyn Monroe s Persona)

    24. Plaintiffrepeats 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.

    1 2

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    D E M N D F O R J U R Y T R I L

    26. Plaintiffrespectfully requests a jury trial on any issues that are determined to be

    covered by Plaintiff s jury trial rights at any potential trial herein.

    P R Y E R F O R R E L I E F

    WHEREFORE, Plaintiffrespectfully 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 reliefas the Court deems just and proper herein.

    Respectfully submitted,

    Dated: October 1,2014New York, New York

    Law Office of Mjcha^l B. Wolk, P.C.

    By:

    13

    570 Lexington Avenue, 16thFloorNew York, New York 10022Te l : 9 1 7 - 2 3 8 - 0 5 7 6

    Email: michael.wolk(S>wolkgroup.comAttorneys for PlaintiffVirtual Marilyn, LLC