United States District Court, S.D. New York
[Copyrighted Material Omitted]
For A.V.E.L.A., Inc., Plaintiff, Counter Defendant: Michael Ray Adele, LEAD ATTORNEY, Anaheim, CA.
For The Estate of Marilyn Monroe, LLC, Defendant, Counter Claimant: Paul Wendell Garrity, LEAD ATTORNEY, Sheppard, Mullin, Richter & Hampton, LLP (NYC), New York, NY; Gina I. Durham, Nicole A. Chaudhari, PRO HAC VICE, DLA Piper U.S. LLP (Chicago), Chicago, IL; Tamar Y. Duvdevani, DLA Piper U.S. LLP (NY), New York, NY.
For Leo Valencia, Counter Defendant: Michael Ray Adele, LEAD ATTORNEY, Anaheim, CA.
MEMORANDUM AND ORDER
JAMES C. FRANCIS IV, UNITED STATES MAGISTRATE JUDGE.
The counter-plaintiff in this dispute over who may rightfully license the likeness of film actress Marilyn Monroe requests leave to file an amended counterclaim, adding alter ego allegations and claims of infringement against three entities it seeks to add as new counter-defendants.
The plaintiff in this action, A.V.E.L.A., Inc. (" AVELA" ), is a company that creates and licenses artwork featuring pop culture figures in the public domain, for use on clothing, novelty items, and other consumer products. (Complaint (" Compl." ), ¶ 1; Answer and Counterclaims (" Answer" ) at 17, ¶ 20). In June 2011, the Estate of Marilyn Monroe, LLC (the " Estate" ), which holds certain trademarks associated with Marilyn Monroe, including her name and signature, and claims to have protectable rights in her image, persona, and likeness, sent AVELA a cease and desist letter regarding AVELA-licensed products bearing the image of Marilyn Monroe. (Compl., ¶ 9; Answer at 14-16, ¶ ¶ 9-15). AVELA then sued the Estate, seeking declaratory judgment that the products that AVELA licenses do not infringe on any intellectual property owned by the Estate and also asserting claims of tortious interference. The Estate countersued AVELA and its owner, Leo Valencia, bringing claims of unfair competition, false association, trademark infringement, dilution, and violation of state law. (Answer at 20-28, ¶ ¶ 39-89).
The Estate now seeks to add three proposed corporate counter-defendants -- IPL, Inc. (" IPL" ), X One X Movie Archives Inc. (" X One X" ), and V. International Fine Arts Publishing, Inc. (" V. International" ) -- that it alleges are the alter-egos of the current counter-defendants, AVELA and Mr. Valencia. According to the proposed amended counterclaim, Mr. Valencia " conducts business under a number of assumed names" and corporations " for the purpose of dissipating the liability of any given entity associated with the licensing business." (First Amended Counterclaim (" First Am. Counterclaim" ) at 7, ¶ 23, attached as Exh. A to Defendant/Counter-Plaintiff The Estate of Marilyn Monroe, LLC's Memorandum of Law in Support of Motion for Leave to File First Amended Counterclaim and to Add Counter-Defendants (" Counter-Pl. Memo." )). The Estate alleges that it first learned of these three additional parties during discovery, and that without the amendment, any potential injunctive relief or damages will be inadequate. (Counter-Pl. Memo. at 5). The proposed amendment also includes updated information regarding the trademarks owned and registered by the Estate, and omits certain allegations that AVELA improperly contacted a licensee of the Estate. (Counter-Pl. Memo. at 4).
The latter changes are not contested by the ...