A lawsuit over the licensing rights to Jimi Hendrix's likeness in Washington state threatened to place many undergraduate dorm rooms' decoration decisions in jeopardy. Thankfully, the Ninth Circuit stepped in to resolve the dispute so that there will be no shortage of Hendrix posters in college towns across America come move-in day.
Experience Hendrix owns Jimi Hendrix's post-mortem publicity rights in Washington state, and other Hendrix trademarks nationally. It licenses these to people like Andrew Pitsicalis, who create or license original art featuring depicting Hendrix. Pitsicalis, in turn, began licensing this artwork to others and also bought the domain names hendrixlicensing.com and hendrixartwork.com.
Statutes Made of Sand
Pitsicalis argued that Washington's Personality Rights Act (WPRA), which protects the post-mortem personality rights of deceased persons, was unconstitutional. The District Court agreed, on the grounds that the statute violated the Full Faith and Credit Clause by purporting to regulate conduct in another state even though the conduct had nothing to do with Washington state (Hendrix died in New York). But the Ninth Circuit reversed, holding that Washington had sufficient contacts with this case to make the law constitutional.
The court also found that the WPRA didn't violate the dormant commerce clause, as it doesn't affect transactions "occurring wholly outside Washington."
The Wind Cries Lanham Act
Of course, the major issue here was trademark infringement. The U.S. District Court for the Western District of Washington found in favor of Experience Hendrix on the trademark violations, and on appeal, Pitsicalis challenged only those trademark violations that applied to the domain names.
Pitsicalis cried "fair use" in the face of trademark infringement, but the Ninth Circuit agreed with the district court that Pitsicalis was referring to his own licensing services and not using the Hendrix name in passing -- something that's not protected by fair use.
Still Concurring, Still Dissenting
Judge Johnnie Rawlinson concurred for the most part, but "absolutely and positively" disagreed on remanding for a new trial on damages. Following the verdict, the district court decided to hold a new trial on the jury's damage award, finding that Experience Hendrix's lost profits could also be due to the recession, not the loss of licensing royalties.
In Judge Rawlinson's opinion, there was plenty of evidence permitting the jury to conclude that Experience Hendrix's lost profits were the direct result of Pitsicalis' infringement.
I guess you could say that Andrew Pitsicalis is Mr. Bad Luck. OK, I'll stop now.
Editor's Note, October 10, 2014: This post has been updated to clarify that the post-mortem publicity rights at issue apply only to Washington state.
- Judge Settles Long Family Feud Over Jimi Hendrix's Estate (The New York Times)
- EXPERIENCE HENDRIX v. HENDRIXLICENSING COM LTD (FindLaw's Cases & Codes)
- Lapp Factors Weigh In Favor of Plaintiff in Trademark Infringement Suit (FindLaw's U.S. Third Circuit Blog)
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