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Experience Hendrix L.L.C. v. Hendrixlicensing.Com, Ltd.

United States Court of Appeals, Ninth Circuit

January 29, 2014

EXPERIENCE HENDRIX L.L.C., a Washington Limited Liability Company, and AUTHENTIC HENDRIX L.L.C., a Washington Limited Liability Company, Plaintiffs-Appellants/Cross-Appellees,
HENDRIXLICENSING.COM LTD, a Nevada Corporation, DBA Hendrix Artwork, DBA; ANDREW PITSICALIS, an individual; CHRISTINE RUTH FLAHERTY, Defendants-Appellees/Cross-Appellants

Argued and Submitted March 7, 2013, Seattle, Washington

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[Copyrighted Material Omitted]

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Appeal from the United States District Court for the Western District of Washington. D.C. No. 2:09-CV-00285-TSZ. Thomas Zilly, Senior District Judge, Presiding.

John D. Wilson, Jr. and Alfred E. Donohue, Wilson Smith Cochran Dickerson, Seattle, Washington; Michael Madden, Bennett Bigelow & Leedom, Seattle, Washington, for Plaintiffs-Appellants/Cross-Appellees.

Thomas T. Osinski, Jr., Osinski Law Offices, P.L.L.C., Tacoma, Washington, for Defendants-Appellees/Cross-Appellants.

Duncan Crabtree-Ireland and Danielle Van Lier, Screen Actors Guild, Inc., Los Angeles, California, for Amicus Curiae Screen Actors Guild, Inc, American Federation of Television & Radio Artists, AFL-CIO, Luminary Group LLC, and the Estate of Marilyn Monroe, LLC.

Before: David M.[*] William A. Fletcher, and Johnnie B. Rawlinson, Circuit Judges, Partial Concurrence and Partial Dissent by Judge Rawlinson.


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EBEL, Circuit Judge.

This litigation stems from a dispute over the commercial use of a deceased celebrity's image, likeness, and name. The sole heir of deceased rock legend Jimi Hendrix formed two companies, Plaintiffs Experience Hendrix, L.L.C., and its wholly owned subsidiary, Authentic Hendrix, L.L.C. (collectively " Experience Hendrix" ). Among other things, Experience Hendrix owns trademarks that it uses to sell and license products related to Jimi Hendrix. In this litigation, Experience Hendrix succeeded on its claims alleging that Defendants Andrew Pitsicalis and his company,, L.L.C. (collectively " Pitsicalis" [1]), were licensing Hendrix-related merchandise that infringed Experience Hendrix's trademarks. As a result, the district court permanently enjoined

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Pitsicalis's infringing conduct, and a jury awarded Experience Hendrix damages under two statutes, the federal Lanham Act and Washington's Consumer Protection Act. The district court, however, significantly reduced the jury's award and, alternatively, ordered a new trial on damages. On the claims of Experience Hendrix, we VACATE the district court's permanent injunction so that one paragraph in the injunction may be clarified and reissued. We REVERSE the court's reduction of the damages award. We AFFIRM the district court's decision to grant a new trial. Finally, we REMAND Experience Hendrix's claims for further proceedings.

For his part, Pitsicalis sought a declaratory judgment declaring that a third statute, Washington's Personality Rights Act, does not afford the heir of Jimi Hendrix any post-mortem publicity rights. The district court held that the Act does purport to give the heir of Jimi Hendrix post-mortem publicity rights, which Experience Hendrix would own. But the district court went on to hold that those portions of the Washington Personality Rights Act affording those publicity rights are unconstitutional. We AFFIRM the district court's decision interpreting the Act to give post-mortem publicity rights to Jimi Hendrix's heir, but REVERSE and VACATE the holding that the statute is unconstitutional as applied to the narrow circumstances presented here. Thus, we REMAND Pitsicalis's claims as well for further proceedings.

I. Background

Experience Hendrix holds a number of trademarks associated with Jimi Hendrix, including the names " Hendrix" and " Jimi Hendrix" and Jimi Hendrix's signature, as well as logos incorporating a " headshot" of Hendrix. Experience Hendrix uses these trademarks to market, sell and license Hendrix-related merchandise, including apparel, posters, and artwork sold to the public through Internet websites and brick-and-mortar retail stores throughout the United States, including the state of Washington.

Pitsicalis has also used Jimi Hendrix's celebrity status commercially. Pitsicalis owns, or has licenses to use, photographs and original pieces of art depicting Hendrix, as well as visual artwork created by Hendrix himself. In 2008, Pitsicalis began licensing the right to use these images to produce and sell Hendrix-related merchandise, including apparel, posters and household items. Like Experience Hendrix, Pitsicalis's licensees sold this merchandise over the Internet and in brick-and-mortar stores. Pitsicalis placed marks on his licensed products that used the names " Hendrix" and " Jimi Hendrix," as well as Jimi Hendrix's Signature and a logo of Hendrix's headshot with a guitar. In conducting his business, Pitsicalis also used two websites with the domain names and

In March 2009, Experience Hendrix sued Pitsicalis under two statutes. First, Experience Hendrix alleged that Pitsicalis was infringing Experience Hendrix's trademarks in violation of the federal Lanham Act, see 15 U.S.C. § § 1051-1127. Second, Experience Hendrix alleged that this trademark infringement also amounted to an unfair or deceptive trade practice proscribed by Washington's Consumer Protection Act (" WCPA" ), see Wash. Rev. Code § § 19.86.010-19.86.920. The district court granted Experience Hendrix partial summary judgment on the federal Lanham Act claim, concluding that Pitsicalis had infringed Experience Hendrix's trademarks. The court permanently enjoined Pitsicalis's infringing activity. At trial, a jury found that Pitsicalis's trademark infringement also amounted to an unfair or

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deceptive trade practice under the WCPA. Although the jury awarded Experience Hendrix damages under both statutes totaling $1,723,300, the district court reduced the jury's award to $60,000.

Pitsicalis, in turn, asserted counterclaims against Experience Hendrix, seeking a judgment declaring that a third statute, Washington's Personality Rights Act (" WPRA" ), Wash. Rev. Code § § 63.60.010-63.60.080, does not provide Experience Hendrix with Hendrix's post-mortem publicity rights.[2] The district court granted Pitsicalis summary judgment on these counterclaims, concluding that, while the WPRA does afford Jimi Hendrix post-mortem publicity rights belonging to Experience Hendrix, those portions of the WPRA providing those rights are unconstitutional. These cross-appeals followed.


We address first Pitsicalis's counterclaims regarding the WPRA, before turning to Experience Hendrix's claims.

A. Jimi Hendrix's post-mortem publicity rights under the WPRA

1. Standing

Through his counterclaims, Pitsicalis sought a judgment declaring that 1) the WPRA " does not apply to publicity rights in Jimi Hendrix" and, therefore, 2) " it is possible to trade in original images and likenesses of Jimi Hendrix without creating a per se infringement of Experience [Hendrix's] trademark rights." As a threshold matter, Experience Hendrix contends that Pitsicalis lacks Article III standing to assert these declaratory judgment claims.

However, there is no doubt that an actual controversy exists between Pitsicalis and Experience Hendrix under the federal Lanham Act, in light of this ongoing litigation Experience Hendrix initiated against Pitsicalis. As a result of this litigation, Experience Hendrix has notified potential customers of Pitsicalis-licensed products as to Experience Hendrix's trademark rights. And there is no question about Experience Hendrix's standing to assert its Lanham Act claims against Pitsicalis for trademark infringement.

It is within this same litigation that Pitsicalis sought a judgment declaring that, under the WPRA, Experience Hendrix has acquired from Jimi Hendrix no post-mortem publicity rights, which Experience Hendrix could use to sue or threaten to sue Pitsicalis and his licensees, customers and potential customers. Experience Hendrix has in fact previously asserted Jimi Hendrix's publicity rights, albeit under an earlier version of the WPRA, in prior litigation which resulted in a final ruling that the initial version of the WPRA was inapplicable to Jimi Hendrix. That ruling was based upon choice-of-law principles which required application of New York law. New York was the domicile of Jimi Hendrix at the time of his death and it did not recognize these post-mortem rights. Experience Hendrix, LLC v. Electric Hendrix, LLC, No. C07-0338 TSZ, 2008 WL 3243896, at *2-*4 (W.D. Wash. Aug. 7, 2008) (unreported).

In 2008, however, the Washington legislature amended the WPRA to apply it " to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death." Wash. Rev. Code § 63.60.010. The amended WPRA recognizes that every person " has a property right in the use of his or her

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name, voice, signature, photograph, or likeness." Id. That right existed or exists " before, on, or after June 11, 1998," the date the WPRA originally took effect, and does not expire upon a person's death. Id. § § 63.60.010, 63.60.030(3). The amended WPRA recognizes such a right of publicity " regardless of whether the law of the domicile, residence, or citizenship of the individual or personality at the time of death or otherwise recognizes a similar or identical property right." Id. § 63.60.010. The WPRA protects such a right by providing, in part, that " [a]ny person who uses or authorizes the use of a... deceased... personality's name, voice, signature, photograph, or likeness, on or in goods, merchandise, or products entered into commerce in this state... without written or oral, express or implied consent of the owner of the right, has infringed such [personality] right." Id. § 63.60.050. As amended, then, the WPRA created a new possibility that Experience Hendrix would renew its efforts to assert Jimi Hendrix's post-mortem publicity rights against Pitsicalis, his licensees, customers, and potential customers.

The record here does not reveal any evidence that Experience Hendrix has explicitly threatened Pitsicalis, or his licensees, customers or potential customers with suit under the amended WPRA. But Pitsicalis alleged that Experience Hendrix, relying on rights that go beyond its federally protected trademarks, interfered with the sale, by one of Pitsicalis's licensees to the retailer Spencer's Gifts, of Pitsicalis-licensed Hendrix-related merchandise that did not infringe Experience Hendrix's trademarks.[3] In light of all of these circumstances, Pitsicalis has a sufficiently legitimate concern that Experience Hendrix will renew its efforts to assert rights under the amended WPRA against Pitsicalis and related parties, given Experience Hendrix's past aggressive assertion of its rights related to Jimi Hendrix, and given the 2008 amendment to the WPRA that removes the previous impediment to Experience Hendrix's judicial efforts to enforce Jimi Hendrix's post-mortem publicity rights under that Act. See Rhoades v. Avon Prods., Inc., 504 F.3d 1151, 1157-58 & 1157 n.4 (9th Cir. 2007) (noting that, under the Ninth Circuit's " reasonable apprehension" test, concrete or explicit threats of litigation are not necessary for a plaintiff to have standing).

2. The WPRA is constitutional as applied to the narrow set of non-speculative circumstances at issue here

The parties do not dispute that the amended WPRA recognizes post-mortem personality rights belonging to Jimi Hendrix, notwithstanding that 1) he died in 1970, before Washington originally enacted the WPRA; 2) he was domiciled in New York at the time of his death; and 3) New York law does not recognize a post-mortem right of publicity that would survive Jimi Hendrix's death and descend to his heir. The parties also do not dispute that, under the WPRA, Experience Hendrix owns Jimi Hendrix's post-mortem personality rights. Notwithstanding that the WPRA thus on its face provides Experience Hendrix with Jimi Hendrix's post-mortem personality rights, the district court granted Pitsicalis summary judgment, declaring that the provisions of the

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WPRA that recognize those post-mortem personality rights are unconstitutional. We review that decision de novo. See Lopez-Valenzuela v. Cnty. of Maricopa, 719 F.3d 1054, 1059 (9th Cir. 2013). Under the narrow, non-speculative circumstances presented by this case, we disagree with the district court's ruling and accordingly reverse.

The narrow, non-speculative WPRA controversy before us, as Pitsicalis has alleged it, involves only (1) Pitsicalis's " reasonable apprehension" that Experience Hendrix will use the WPRA to stop his attempts to license unofficial Hendrix-related products for sale in Washington, and (2) Pitsicalis's licensee's unsuccessful attempt to introduce into Washington, through his licensee's dealings with Spencer's Gifts, Pitsicalis-licensed goods that bore Hendrix's image and likeness, but that did not carry marks that infringed Experience Hendrix's trademarks.

Washington's approach to post-mortem personality rights raises difficult questions regarding whether another state must recognize the broad personality rights that Washington provides. But we need not resolve that issue. Here, the limited controversy before us, as Pitsicalis has alleged it, involves only Experience Hendrix's interference with the sale in Washington of Pitsicalis-licensed, unofficial but non-infringing goods bearing Hendrix's likeness, as well as Pitsicalis's " reasonable apprehension" that Experience Hendrix will attempt to stop such targeted sales in Washington in the future.[4]

a. Due Process/Full Faith and Credit Clauses

The district court held that applying Washington's WPRA here, instead of the law of New York, the state where Jimi Hendrix was domiciled at the time of his death, violated choice-of-law principles protected by the Due Process and Full Faith and Credit Clauses of the U.S. Constitution. Those Clauses require that, " for a State's substantive law to be selected [and applied to a particular case] in a constitutionally permissible manner, that State must have a significant contact or significant aggregation of contacts, creating state interests, such that choice of its law is neither arbitrary nor fundamentally unfair." Allstate Ins. Co. v. Hague, 449 U.S. 302, 312-13, 101 S.Ct. 633, 66 L.Ed.2d 521 (1981).[5]

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. 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 WPRA here.[6] See id.;

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see also AT & T Mobility LLC v. AU Optronics Corp., 707 F.3d 1106, 1111 (9th Cir. 2013) (noting that " Allstate places only 'modest restrictions on the application of forum law,' and most commentators have viewed Allstate as setting a highly permissive standard" (internal citation omitted)).

b. Dormant Commerce Clause

The district court also held that applying the WPRA to this case would violate the dormant Commerce Clause, which limits the power of states to enact laws imposing substantial burdens on interstate commerce. See Nat'l Ass'n of Optometrists & Opticians v. Harris, 682 F.3d 1144, 1148-50 (9th Cir. 2012). The district court reasoned that, although the WPRA does not discriminate against out-of-state interests, to apply the WPRA to the controversy at issue here would, nevertheless, give the WPRA an impermissible extraterritorial reach, encompassing " a variety of transactions occurring 'wholly outside' Washington's borders." However, the limited, non-speculative controversy at issue here, does not affect transactions occurring wholly outside Washington. Cf. Am. Trucking Ass'ns, Inc. v. Mich. Pub. Serv. Comm'n, 545 U.S. 429, 434, 125 S.Ct. 2419, 162 L.Ed.2d 407 (2005) (holding Michigan's flat tax on activities taking place exclusively within that state did not ...

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