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Shaw Family Archives, Ltd. v. CMG Worldwide

May 19, 2006

SHAW FAMILY ARCHIVES, LTD., BRADFORD LICENSING INC., JAMES E. DOUGHERTY, AND VALHALLA PRODUCTIONS LLC. PLAINTIFFS/CONSOLIDATED DEFENDANTS,
v.
CMG WORLDWIDE, INC. AND MARILYN MONROE, LLC. DEFENDANTS/CONSOLIDATED PLAINTIFFS.



The opinion of the court was delivered by: McMahon, J

MEMORANDUM DECISION REGARDING CHOICE OF LAW

The facts as alleged by the parties are as follows: Marilyn Monroe LLC ("MMLLC") is a limited liability company organized under Delaware law with its principal place of business in Indiana. It purports to own the rem of the post-mortem right of publicity of Marilyn Monroe, perhaps the most famous American sex symbol of the twentieth century. MMLLC acquired these rights from its creator, Anna Strasberg. She allegedly inherited the rights from her husband Lee Strasberg, one of the sole devisees under Monroe's will.

CMG Worldwide is an Indiana corporation with its principal place of business in Indiana. Its primary business is licensing the names and likenesses of celebrities -- both living and deceased -- for commercial purposes. In 1995, CMG entered into an agreement with MMLLC to manage its rights to the Marilyn Monroe identity. Pinquela Aff. ¶ 5. All licensing agreements pertaining to the Marilyn Monroe publicity rights are now handled through CMG's Indianapolis office. Id. ¶ 8.

The Shaw Family Archives ("SFA") is a limited liability company organized under New York law with its primary place of business in New York. Affidavit of Larry Shaw, ¶ 3. SFA holds the copyrights to various photographs taken by the late Sam Shaw and his son Larry Shaw. Id. ¶ 4. Among these photographs were a series of photographs of Marilyn Monroe, dubbed the "Marilyn Monroe Limited Edition Collection" (the "Marilyn Images"). Id. ¶ 12. The series contains many canonical Marilyn images, including several staged photographs of the famous "subway grate" scene from the movie The Seven Year Itch.

Bradford Licensing Associates ("Bradford") is a New Jersey limited liability company with its principal place of business in Montclair, New Jersey. Affidavit of Len Reiter, ¶ 3.*fn1 Like CMG, Bradford owns no intellectual property of its own; rather, it finds commercial opportunities for the intellectual property of others. Bradford struck a deal with SFA to promote the Marilyn Monroe Limited Edition photographs.

Neither SFA nor Bradford has any office or other permanent presence in the state of Indiana. Neither regularly does business there. At one point prior to the creation of SFA, several of its founders negotiated with CMG for the use of the Marilyn Images; however, those negotiations took place in New York and did not result in any business agreement. Shaw. Aff. ¶ 15.

Both SFA and Bradford operate web sites in connection with the sale and licensing of its copyrights. See http://www.samshaw.com; http://www.bradfordlicensing.com. These sites purport to be non-transactional; that is, they contain text and images, but do not permit potential customers to conduct business with the companies electronically. The Bradford website currently bears a large-print disclaimer reading, "**No Marilyn Monroe images shall be licensed for sale or distribution in Indiana or in any jurisdiction that also requires the consent of the right of publicity holder." See http://www.bradfordlicensing.com/client_overview/norma_jeane.html.

To date, the partnership between SFA and Bradshaw has led to at least two licensing agreements for the Marilyn Images. First, on October 6, 2003, SFA licensed the use of the Marilyn Images to CMZ Handbags and Jewelry ("CMZ"), a California company that manufactures and markets a line of Marilyn handbags. Affidavit of Jonathan Faber, Ex. C-13. During negotiations, SFA allegedly told CMZ that the Indiana plaintiffs possessed no valid right of publicity concerning Marilyn Monroe.*fn2 Faber Aff. ¶ 6.

Second, Bradford entered into an agreement with Valhalla Productions, a New Hampshire business with its principal place of business in New Hampshire, on February 1, 2004.*fn3 Reiter Aff. ¶ 10. At that time, Valhalla was marketing "Marilyn's Man," a documentary film about James Dougherty, Marilyn Monroe's first husband. Id. Pursuant to the Bradford/Valhalla agreement, Bradford brokered an arrangement between Valhalla and SFA for the use of the Marilyn Images. It also assisted Valhalla in marketing the Marilyn's Man property to various foreign entities.

On March 23, 2005, CMG and MMLLC ("the Indiana plaintiffs") filed suit against SFA, Bradford, Valhalla Productions, and James Dougherty ("the Indiana defendants") in the Southern District of Indiana, (No. 05 Cv. 0423), alleging that Bradford's agreements with Valhalla and others violated Indiana's Right of Publicity Law. 32 Ind. Code, Art. 36, Chap. 1, §§ 1--20. The complaint also raised claims of unfair competition, libel, and interference with a business advantage.

On April 19, 2005, apparently prior to being served in the Indiana action, SFA and two surviving Shaw siblings (but not Bradford) filed suit against CMG and MMLLC in the Southern District of New York (No. 05 Civ. 3939), alleging that defendants violated SFA's copyrights by using Marilyn images from the Shaw Archive without permission.

SFA and Bradford then moved to dismiss the Indiana action on the grounds of lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2), or in the alternative to transfer the action to the Southern District of New York pursuant to 28 U.S.C. § 1404(a).*fn4 At the same time, by motion dated June 3, 2005, CMG and MMLLC sought to dismiss, stay or transfer the pending New York action in favor of the Indiana action. This Court, by order dated July 6, 2005, stayed proceedings of the New York action pending resolution of the jurisdictional issue in Indiana. See Memorandum Order Staying Decision, Shaw Family Archives et al. v. CMG Worldwide Inc., No. 05 Civ. 3939 (S.D.N.Y. July 6, 2005).

By order dated March 25, 2006, the Honorable David F. Hamilton granted the Indiana defendants' motion to transfer venue and ordered the action transferred to this District. See Entry on Motions to Dismiss or to Transfer Venue, CMG Worldwide et al. v. Shaw Family Archives et al., No. 05 Civ. 0423 (S.D. Ind. Mar. 25, 2006). It denied the motion to dismiss for lack of personal jurisdiction as moot. With all proceedings between the Indiana plaintiffs and Indiana defendants now in the Southern District of New York, all pending actions were consolidated into a single action. Order, Shaw Family Archives et al. v. CMG Worldwide Inc., No. 05 Civ. 3939 (S.D.N.Y. May 2, 2006).

By letter dated April 21, 2006, the Indiana plaintiffs sought to have the newly-consolidated actions transferred to the Central District of California, where several actions are pending between the Indiana plaintiffs and other photographers who purport to own copyrights ...


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