Experience Hendrix LLC v. Hendrixlicensing.Com Ltd., 742 F.3d 377

Background

Experience Hendrix (heir’s companies) owns trademarks and licenses Jimi Hendrix marks and imagery nationwide, including Washington.
Pitsicalis licensed and sold Hendrix-related merchandise using images, names, signature, a headshot-with-guitar logo, and domain names hendrixlicensing.com and hendrixartwork.com.
Experience Hendrix sued for trademark infringement under the Lanham Act and for deceptive trade practices under Washington’s Consumer Protection Act (WCPA); district court found infringement and a jury awarded ~$1.7M but district court reduced award to $60,000 and conditionally ordered a new trial.
Pitsicalis counterclaimed seeking declaration that Washington’s Personality Rights Act (WPRA) does not give postmortem publicity rights to Hendrix’s heir; district court held WPRA applies but found those provisions unconstitutional as applied.
Ninth Circuit: affirmed that WPRA can be applied here (reversing district court’s unconstitutionality ruling), affirmed trademark liability for domain names, vacated and remanded the injunction for clarification, reinstated the jury’s damages as legally supportable but affirmed a discretionary new trial on damages, and vacated the fee award for reconsideration.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Washington’s WPRA grants postmortem publicity rights to Hendrix’s heir and is constitutional as applied	WPRA (as amended) grants postmortem publicity rights to Hendrix’s heir and may be applied to protect sales/uses in Washington	WPRA cannot constitutionally be applied to Hendrix because he died domiciled in New York, and applying it violates Due Process/Full Faith & Credit and the Dormant Commerce Clause	WPRA grants postmortem rights and, as applied to the narrow, non‑speculative dispute over sales and threatened enforcement in Washington, is constitutional; reverse district court’s invalidation and remand for summary judgment for Experience Hendrix
Whether Pitsicalis’s domain names infringed the “Hendrix” trademark (Lanham Act)	Experience Hendrix: use of “Hendrix” in domain names created likelihood of confusion and constituted infringement	Pitsicalis: nominative fair use; domain names refer to his own services and are noninfringing	Court affirmed partial summary judgment for Experience Hendrix—nominative fair use inapplicable because domains referred to defendant’s services, not plaintiff’s products
Whether the permanent injunction clearly defines prohibited conduct	Experience Hendrix: injunction should bar infringing marks/l ogos and clarify permitted noninfringing uses	Pitsicalis: injunction should not be overbroad; some language permits non-infringing trade in Hendrix images	Paragraph 5 was ambiguous (one sentence conflicted with specific prohibitions); injunction vacated and remanded for clarification; other limiting language upheld
Whether the jury’s damages awards should stand; whether new trial and attorney’s fees appropriate	Experience Hendrix: jury verdict (~$1.7M) supported by evidence of lost licensing revenue, reputation and goodwill; fees appropriate	Pitsicalis: damages lacked sound evidentiary foundation, were speculative/duplicative; new trial warranted; fee award excessive	Court reversed district court’s Rule 50(b)(3) reduction (reinstating jury award as legally supportable), but affirmed district court’s discretionary Rule 59 grant of a new trial on damages (except the $60,000 defendant profit award); vacated fee award and remanded for reconsideration

Key Cases Cited

Allstate Ins. Co. v. Hague, 449 U.S. 302 (U.S. 1981) (forum state choice-of-law requires significant contacts to avoid arbitrariness)
Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (standing under the "reasonable apprehension" test for declaratory relief)
Lopez-Valenzuela v. County of Maricopa, 719 F.3d 1054 (9th Cir. 2013) (standard of review for summary judgment and Rule 50 issues)
Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (9th Cir. 2010) (nominative fair use doctrine explained)
Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400 (9th Cir. 1993) (plaintiff’s burden to prove damages under the Lanham Act)
DSPT International, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) (nature of proof for trademark damages depends on case circumstances)
Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir. 2012) (injunction scope should be narrowly tailored to the specific harm adjudicated)
Go Daddy Software v. EEOC, 581 F.3d 951 (9th Cir. 2009) (procedural preservation and standard for postverdict Rule 50 review)
Kode v. Carlson, 596 F.3d 608 (9th Cir. 2010) (deference and standard in reviewing district court grants of new trials)
Nintendo of America, Inc. v. Dragon Pacific International, 40 F.3d 1007 (9th Cir. 1994) (double recovery concerns under the Lanham Act)