Experience Hendrix L.L.C. v. Hendrixlicensing.com Ltd.
2014 U.S. App. LEXIS 15395
| 9th Cir. | 2014Background
- Experience Hendrix (EH), owned by Jimi Hendrix’s heir, owns trademarks (e.g., "Hendrix," signature, headshot/logo) and licenses Hendrix-related merchandise nationwide, including Washington.
- Andrew Pitsicalis (and Hendrixlicensing.com) licensed and sold Hendrix-related goods using Hendrix images and domain names hendrixlicensing.com and hendrixartwork.com; EH sued for trademark infringement (Lanham Act) and unfair/deceptive trade practices (Washington CPA).
- District court granted partial summary judgment finding trademark infringement and entered a permanent injunction; a jury found WCPA liability and awarded over $1.7M but the district court reduced the award to $60,000 and alternatively ordered a new trial on damages; the court also held Washington’s Personality Rights Act (WPRA) unconstitutional as applied.
- Pitsicalis counterclaimed for a declaratory judgment that the WPRA does not give EH postmortem publicity rights; the Ninth Circuit reversed the unconstitutionality ruling and remanded for summary judgment in favor of EH on WPRA claims (i.e., WPRA applies here).
- On trademark issues, the Ninth Circuit affirmed infringement as to use of the mark "Hendrix" in domain names, vacated and remanded the permanent injunction for clarification of Paragraph 5, reinstated the jury’s damages as legally supportable, but affirmed the district court’s grant of a new trial on damages (Rule 59) and vacated the attorney-fee award for reconsideration.
Issues
| Issue | Plaintiff's Argument (Experience Hendrix) | Defendant's Argument (Pitsicalis) | Held |
|---|---|---|---|
| Does the WPRA grant postmortem publicity rights to Hendrix’s heir and is application constitutional? | WPRA as amended applies to all personalities, so EH owns Hendrix’s postmortem rights and may enforce them in WA. | WPRA cannot constitutionally be applied to Hendrix (a New York domiciliary who died 1970); application violates Due Process / Full Faith & Credit and Dormant Commerce Clause. | WPRA recognizes postmortem rights and, as applied to the limited non-speculative WA controversy, is constitutional; reverse district court and remand to enter SJ for EH. |
| Do Pitsicalis’s domain names infringe EH’s trademark “Hendrix”? | Domain names using "Hendrix" infringe; nominative fair use inapplicable. | Use was nominative fair use or non-infringing reference. | Affirmed: domain names infringed; nominative fair use rejected because names referred to defendant’s services, not EH’s products. |
| Is the permanent injunction adequately clear under Rule 65(d)? | Injunction should bar infringing uses but not legitimate uses of images; Paragraph 5 ambiguous. | Paragraph 5 properly preserves non-trademark claims/copyright space and freedom to use images/identify subjects. | Vacated and remanded: Paragraph 5 conflicts with earlier prohibitions and must be clarified. |
| Were the jury’s damages supported and properly reduced by the district court; is a new trial warranted? | Jury’s damages (lost profits, reputation, goodwill, disgorgement) had legally sufficient evidence; district court erred reducing award and should reinstate verdict and fee award. | District court correctly struck most damages under Rule 50(b)(3) for insufficient evidence and/or speculative calculation; alternatively new trial under Rule 59 appropriate. | Reverse the Rule 50(b)(3) reduction (jury verdict had legally sufficient support) but affirm district court’s discretionary grant of a new trial on damages (except $60,000 disgorgement award remains); vacate/reduce attorney-fee award and remand for reconsideration. |
Key Cases Cited
- Allstate Ins. Co. v. Hague, 449 U.S. 302 (U.S. 1981) (constitutional choice-of-law test requires significant contacts/aggregation of contacts)
- Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (reasonable-apprehension standard for declaratory-judgment standing in rights-of-publicity context)
- Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir. 2012) (injunctions tailored to eliminate only the specific harm alleged)
- Go Daddy Software, Inc. v. [EEOC citation context], 581 F.3d 951 (9th Cir. 2009) (standards for Rule 50(a)/(b) JMOL preservation and review)
- Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400 (9th Cir. 1993) (plaintiff’s burden to prove damages under 15 U.S.C. § 1117(a))
- DSPT Int’l, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) (nature of proof for damages under Lanham Act depends on case circumstances)