Lewis Schiff
Lewis Schiff
Marilyn Monroe’s Intangible Assets

What you can learn from them and how they can help you help your clients.

January 21, 2010
by Lewis Schiff

Some clients may either intentionally or inadvertently skip certain asset information in discussions with their advisors. With other clients, they may give wildly wrong estimates of the value of their assets. When it comes to intangible assets, however, it’s not surprising that clients don’t necessarily understand what assets they own or their market value.

Intangible assets can take the form of copyrights, patents, trademarks, royalty rights, publicity rights and more. Copyrights not only cover books and music, but also works of art and computer software. Since some rights do not require formal applications to government agencies, the client may not be aware that they own them or that these assets have commercial value and potential implications in estate planning. As with many other examples of working with the affluent, financial planners creating the comprehensive plan for the client needs to include a member with experience relevant to the client’s situation — in this case, someone who understands intellectual property, such as a patent attorney, entertainment attorney or software attorney.

Intangible property can have very real planning consequences, even if these assets weren’t commercially exploited during the client’s lifetime. The task of the team is to identify the intangible assets, determine the value and create a strategy for their financial and tax management. Unlike such tangible assets as real estate, company stock or a business, the valuation and planning for intangible assets is not so clear cut. Even indentifying them can take some detective work.

Marilyn Monroe’s Intangible Assets

The death of Marilyn Monroe in 1962 lead to a pivotal case in post-mortem rights to publicity — and created unexpected estate planning consequences for many others with these valuable rights. It also demonstrates the potential interplay with the intangible rights of others and their descendants. When she died, Monroe left the bulk of her estate to Lee Strasberg, the famous acting coach. At Strasberg’s death two decades later, most of his estate went to this third wife Anna, who asserted her sole right to control the rights to publicity — the actress’s likeness and image, which still had commercial value.

In particular, Anna Strasberg sued the corporations set up by the descendents of photographers who had used Monroe as a subject, Milton H. Greene, a Look magazine photographer and Tom Kelley, Sr, who had taken a nude photo in 1949 that became the first Playboy centerfold. Strasberg claimed the corporations had no right to further exploit Monroe’s likeness and image. Since the photographers and Strasberg herself sold images prior to the lawsuit, her main interest was preventing the use of photographs in ways that she didn’t approve. Her son was quoted at the time as saying, “We don’t want Marilyn on cigarettes.”

The photographers’ copyrights in the images did not preclude Strasberg’s claim to rights to publicity, according to a court ruling, which determined that postmortem publicity rights and rights in an image itself were separate. In another case, Strasberg sued the heirs of another photographer, Sam Shaw, for the use of an image on T-shirts sold at Target stores. Shaw was best known for the photograph of Monroe standing on a New York subway grate with her dress billowing from the rush of air.

Courts in New York and California ultimately ruled against Strasberg. In response, however, the California legislature responded to a revision of the state Civil Code that Governor Arnold Schwarzenegger (R-CA) signed asserting rights to publicity even to those who died before the date of enactment, January 1, 1985. Those rights extend to their heirs, as well.

In his analysis of the case, Mitchell M. Gans, a professor of tax law at Hofstra University School of Law, sees a potential problem of the rights of publicity accounted for in an estate exceeding the value of liquid assets. Legislators in California (and in New York, where a similar update is pending) need to make adjustments to account for the estate tax impact, according to Gans and his co-authors Bridget J. Crawford & Jonathan G. Blattmachr, in “Postmortem Rights to Publicity: The Federal Estate Tax Consequences of New State Law Property Rights,” 117 Yale Law Journal. Pocket Part 203 (2008). Until that time, advanced planning teams need to consider the estate impact of these rights when developing plans.

Types of Intangible Assets

Identifying a client’s intangible assets may be obvious when he or she has kept good records and is devoted to a related career. When records are skimpy or the rights aren’t related to current business interests or hobbies, the team will spend more time digging for details.

Copyrights: The creator of the work is generally considered the owner of the copyright. In fact,
copyright protection exists even if the work isn’t published or registered with the U.S. Copyright Office. Copyrighted works exist in many forms: paintings, published books, manuscripts, photographs, recordings, film, video, etc.

Copyrighted works may have commercial value even if they haven’t been exploited at the time of creator’s death. For a well-established writer, artists or musician, the value of previously unknown works is understandable. In the case of undiscovered artists, unpublished works can also have serious value. John Kennedy Toole’s Confederacy of Dunces was published 11 years after the author’s death. The book won the Pulitzer for fiction in 1981 and earned substantial royalties.

Patents: Your client may not have been a full-time inventor, but they could own valuable patents as a result of a hobby or a career-related development. Most employers require the assignment of invention rights to them. Nevertheless, your client may still own patent rights that may need enforcement, even if there has been no commercial exploitation of them. For example, the owner of a manufacturing business may develop a new piece of machinery for use in his own facility, patent the invention, but not sell it to others.

Each year the U.S. Patent and Trademarks Office receives about 350,000 patent applications, which fall in to three main types: utility, design and plant. The statute declares that any person who “invents or discovers any new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law.

Utility and plant patents based on applications filed after June 8, 1995 have a term of 20 years from the filing date. For applications that were pending on or issued by that date, the term is the longer of 17 years from the date of issue or 20 years from the date of filing. Design patents have a term of 14 years from the date of grant.

Publicity Rights: As demonstrated in the Marilyn Monroe case, the rights to publicity for well-known personalities lasts well beyond their death and can be quite valuable. Rights to publicity, however, are based on state law, so their full scope is not uniform. A client’s image (photographically accurate or artistically interpreted), signature, name or a voice may have commercial value.

Royalty Rights: An author with a popular book may continue to receive royalties many years after publication from the book’s domestic and international publishers. In a similar way, ASCAP and BMI pay royalties to songwriters.

Some royalty rights are determined by state law. In California, the creator of ‘fine art” has the right to receive a royalty of five percent of the selling price upon the resale of the piece. Designed to provide the artist with the right to participate in the appreciation in value of a created work, the statute applies when a work of art is sold in California or the seller resides in the state. The artist can receive more than five percent if an agreement exists in writing and they can assign their royalty rights to others.

Trade Secrets: According to the Uniform Trade Secrets Act, a trade secret is a formula, pattern, compilation, program, device, method, technique or process. Your client would need to derive independent economic value from a trade secret by the fact that it’s not being generally known or to be readily ascertainable by others who could benefit from its use. Your client would also need to demonstrate efforts to maintain its secrecy. The formula for Coca-Cola is a well-protected trade secret, as is the technique used by a small bourbon distiller in Kentucky to toast the insides of the oak barrels in which the beverage ages for many years. Most, but not all states, have adopted the Act.

Trademark and Service Mark Rights: If your client owns a business that uses a trademark (™) or service mark (SM) on marketing materials or products, then this asset may have value in itself independent of the value of the enterprise. Getting approved for a trademark and service mark designations involves several layers of requirements. For example, a single work, such as a cookbook, cannot be trademarked, but a series of creative works may be eligible.

Service mark applications require a distinction between identifying a product, device or instrument used (e.g., a special hamburger grill) and the service itself (e.g., “Grilled to Please”). Moody’s, for example, wanted to designate its ratings (Aaa, Aa, A, etc.) as service marks, but the application was not approved since the ratings themselves are not the ratings services the company provides.

In future columns, we’ll examine some techniques for advanced planning with intangibles assets.

Traps in Determining Intellectual Property Rights

  1. Ownership of a work of authorship (e.g., a painting or a book) does not include ownership of the copyrights.
  2. Registered copyrights in pre-1978 works may exist even if a copyright registration certificate suggests they have expired.
  3. Copyrighted works created after 1977 need not be registered in order for copyright protection to exist.
  4. Although an authorís copyrights are transferable, the ownership of renewal and termination rights is regulated by law.
  5. When determining the existence of intellectual property assets, be aware that in community property states, intellectual property assets may be treated as marital property.

(Source: Intellectual Property Deskbook for the Business Lawyer, Sharon K. Sandeen, American Bar Association, 2008)

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Lewis Schiff is a senior managing principal of Advanced Planning Group, a family office network for advisors.