Bust of Jimi Hendrix in Celebrity Alley in Kielce, Poland (Photo: Paweł Cieśla via Wikimedia Commons)
A federal appeals court has upheld the constitutionality of Washington’s publicity rights law in a trademark dispute over the rights to singer and guitarist Jimi Hendrix’s name and likeness.
Experience Hendrix LLC, a Seattle company owned by Hendrix’s family members, owns the rights to the late rock legend, according to court records. It claimed in a 2009 suit that HendrixLicensing.com LLC and its owner, Andrew Pitsicalis, were licensing merchandise in violation of its trademarks.
Pitsicalis asked for a declaratory judgment that Experience Hendrix could not bring claims under Washington’s Personality Rights Act. Although it hadn’t sued under the act, Experience Hendrix had done so unsuccessfully in the past—but by this time, the law had been amended to grant postmortem publicity rights regardless of where a person lived or died. Hendrix died in New York in 1970.
U.S. District Judge Thomas Zilly found on Feb. 8, 2011, that Experience Hendrix could bring legitimate claims under the act, but that the law itself violated the due process and full faith and credit clauses of the U.S. Constitution, as well as the dormant commerce clause. The U.S. Court of Appeals for the Ninth Circuit reversed that ruling.
“Washington has sufficiently significant contacts with the actual, non-speculative controversy at issue here, which involves the loss of sales in Washington of Pitsicalis-licensed goods,” the panel ruled. “Therefore, because these contacts are sufficient to give Washington an interest in applying its own law to this controversy, it is not arbitrary or unfair to apply the [the act] here.”
John Wilson of Seattle’s Wilson Smith Cochran Dickerson, who represents Experience Hendrix, did not return a call for comment.
Thomas Osinski of Osinski Law Offices in Tacoma, Wash., attorney for HendrixLicensing.com and Pitsicalis, who is the business partner of Hendrix’s brother, Leon Hendrix, said in an emailed statement that the ruling only affects products sold in the state of Washington.
“In a modern economy, allowing one state to elect to control what celebrity-based products can and cannot be sold within its borders is an odd result and will surely lead to further litigation,” he wrote. “Thus my clients will have no choice but pursue legal recourse at the trial and appellate level to restore Judge Zilly’s common sense ruling against Washington’s outlier status.”
The case drew the attention of several entertainment and sports trade groups, including the Screen Actors Guild (now SAG-AFTRA) and the American Federation of Television & Radio Artists, which filed an amicus brief asking the panel to reverse Zilly’s constitutional finding.
Duncan Crabtree-Ireland, general counsel of SAG-AFTRA, said in an emailed statement: “SAG-AFTRA is very pleased that the Ninth Circuit has recognized the constitutionality of Washington’s right of publicity statute as applied in Experience Hendrix. The right of publicity is a longstanding and crucial intellectual property right for all performers and continuing recognition of that right is essential to maintaining the viability of becoming and being a professional performer.”
The panel also addressed the underlying trademark claims. In 2011, a jury awarded more than $1.7 million in damages under the Lanham Act and Washington’s Consumer Protection Act. Zilly reduced the award to $60,000 and ordered a new trial on damages.
The panel reversed the reduction of the damages, finding “legally sufficient evidence to support that award,” but affirmed Zilly’s grant for a new trial given, among other things, possible confusion over jury instructions.
Finding that “many of the factors on which the district court based its attorney fee decision have now changed,” the panel also reversed Zilly’s award of $50,000 in attorney fees. Experience Hendrix had sought more than $504,000.
Contact Amanda Bronstad at firstname.lastname@example.org.