*1 history and characteristics of and the tions
the defendant.” record, our review of the
Based on the district court did not
conclude or commit clear error
abuse its discretion violating his su- sentencing Goodon
pervised release and his sentence was
substantively reasonable. For these rea-
sons we affirm. L.L.C.,
EXPERIENCE HENDRIX Liability
Washington Compa Limited
ny, L.L.C., and Authentic
Washington Liability Company, Limited aintiffs-Appellants/Cross-Appel
Pl
lees, LTD,
HENDRIXLICENSING.COM Corporation,
Nevada dba
Artwork, Hendrixartwork.com; dba Pitsicalis, individual;
Andrew Flaherty, Ruth Defendants-
Christine
Appellees/Cross-Appellants. 11-35858,
Nos. 11-35872. Appeals,
United States Court of
Ninth Circuit.
Argued and Submitted March 2013.
Filed Jan. *3 Osinski, Jr., Osinski Law Of-
Thomas T. Tacoma, fices, P.L.L.C., WA, for Defen- dants-Appellees/Cross-Appellants. and Danielle Duncan Crabtree-Ireland Guild, Inc., Lier, Screen Actors Los Van CA, Angeles, for Amicus Curiae Screen Guild, Inc, American Federation of Actors Artists, AFL-CIO, Lu- Television & Radio LLC, minary Group and the Estate of Marilyn Monroe, LLC. *4 EBEL,*
Before: DAVID M. WILLIAM FLETCHER, B. A. and JOHNNIE RAWLINSON, Judges. Circuit OPINION EBEL, Judge: Circuit dispute from a over litigation This stems of a the commercial use deceased celebri likeness, ty’s image, The and name. sole legend heir of deceased rock Jimi companies, Experi formed two Plaintiffs Hendrix, L.L.C., wholly ence and its Hendrix, subsidiary, Authentic owned Hendrix”). (collectively “Experience L.L.C. Among things, Experience Hendrix other trademarks that it uses to sell and owns products license related to Jimi Hendrix. litigation, Experience In this Hendrix suc alleging on its claims that Defen ceeded company, dants Andrew Pitsicalis and his Wilson, (collectively Hendrixlicensing.com, John D. Jr. and Alfred E. Dono- L.L.C. hue, Dickerson; 1), licensing Hendrix-re Smith Cochran “Pitsicalis” were Wilson Madden, Bigelow infringed Experi & Lee- lated merchandise that Michael Bennett WA, result, dom, Seattle, As a Plaintiffs-Appel- ence Hendrix’s trademarks. permanently enjoined lants/Cross-Appellees. the district court * Ebel, we an individual Honorable David M. Senior Circuit 1. Often refer to Pitsicalis as individually during portions Judge Appeals he acted for the United States Court of because Circuit, sitting by designation. time. for the Tenth of the relevant conduct, merchandise, including Hendrix-related and posters, apparel, un and artwork sold to the Experience Hendrix statutes, public through Act Internet websites and the federal Lanham der two throughout brick-and-mortar retail stores Consumer Protection Washington’s States, however, court, including the United the state of signifi Act. The district and, Washington. alter cantly reduced trial on natively, ordered a new Pitsicalis has also used Jimi Hendrix’s Hendrix, On the claims of celebrity commercially. status Pitsicalis permanent the district court’s VACATE owns, use, or has photographs licenses to injunction paragraph so that one original pieces depicting of art injunction may be clarified and reissued. drix, as well as visual artwork created court’s reduction of We REVERSE the began Hendrix himself. In award. AFFIRM the licensing right images to use these a new district court’s decision produce sell Hendrix-related merchan- Finally, trial. we REMAND dise, including apparel, posters and house- proceedings. Hendrix’s claims for further hold items. Like Pit- licensees sold this sicalis’s merchandise sought a part, For his declara- *5 over the and in Internet that a stat- tory judgment declaring third brick-and-mortar li- ute, Act, placed stores. Pitsicalis marks on his Washington’s Personality Rights products censed that used the names does not afford the heir of Jimi Hendrix Hendrix,” “Hendrix” and “Jimi as well as any postmortem publicity rights. The dis- signature logo Jimi Hendrix’s and a purport trict court held that the Act does guitar. Hendrix’s headshot with a In con- post- give to heir Jimi Hendrix business, ducting his Pitsicalis also used publicity rights, Experience mortem which hen- two websites with the domain names Hendrix would own. But the district court drixlicensing.com and hendrixartwork.com. portions that those went on to hold Personality Washington Rights Act afford- 2009, Experience In March Hendrix rights are unconstitu- ing publicity those First, sued Pitsicalis under two statutes. tional. AFFIRM the district court’s alleged Hendrix that Pitsicalis Experience interpreting give post- decision the Act to infringing Experience Hendrix’s publicity rights mortem to Jimi Hendrix’s in violation of the federal Lan- trademarks heir, and but REVERSE VACATE Act, §§ ham 1051-1127. see U.S.C. holding that the statute is unconstitutional Second, alleged that Experience Hendrix circumstances applied as to narrow infringement also amount- this trademark Thus, presented here. we REMAND Pit- deceptive practice ed to an unfair or trade proceed- sicalis’s claims as well for further proscribed by Washington’s Consumer ings. (“WCPA”), Protection Act see Wash. Rev. §§ The district Code 19.86.010-19.86.920. Background
I.
partial
Hendrix
granted Experience
court
summary judgment on the federal Lanham
Experience Hendrix holds a number of
Hendrix,
claim, concluding
Act
that Pitsicalis had
trademarks associated with Jimi
trade-
infringed Experience
“Jimi
Hendrix’s
including the names “Hendrix” and
enjoined
signature,
permanently
Hendrix’s
as marks. The court
Hendrix”
Jimi
trial,
activity. At
a “headshot” of Pitsicalis’s
logos incorporating
well as
jury
uses these
found that Pitsicalis’s trademark
Experience
Hendrix.
Hendrix
market,
amounted to an unfair or
fringement
trademarks
sell and license
also
However,
actu-
there is no doubt that an
under the WCPA.
deceptive
practice
trade
controversy
al
exists between
Experience
Although
federal
Experience Hendrix under the
to-
under both statutes
Act,
litiga-
light
ongoing
Lanham
of this
court reduced
$1,728,300,the district
taling
against
Experience Hendrix initiated
tion
$60,000.
litigation,
Pitsicalis. As a result of this
turn,
Pitsicalis,
counter-
asserted
potential
Hendrix has notified
Experience
Hendrix, seek-
Experience
against
claims
products
of Pitsicalis-licensed
as
customers
a third stat-
judgment declaring
ing
rights.
trademark
Experience
Act
ute,
Personality Rights
Washington’s
question
there
no
about
And
(“WPRA”),
§§
Rev.Code
63.60.010-
Wash.
standing to assert
its Lanham
63.60.080,
provide Experience
does
Pitsicalis for trademark
Act claims
post-mortem pub-
Hendrix with Hendrix’s
infringement.
granted
licity rights.2 The district
litigation that Pit-
It is within this same
summary judgment on these
that,
sought
judgment declaring
sicalis
counterclaims,
that,
concluding
while the
WPRA,
has
under the
post-mor-
does afford Jimi Hendrix
WPRA
post-mor-
no
acquired from Jimi Hendrix
Experi-
publicity rights belonging to
tem
publicity rights,
tem
portions
those
of the WPRA
ence
or threaten to
Hendrix could use
sue
rights are unconstitutional.
providing those
licensees,
sue Pitsicalis and his
customers
cross-appeals followed.
These
potential
customers.
previously
Hendrix has
fact
asserted
un-
publicity rights,
Jimi Hendrix’s
albeit
II. DISCUSSION
WPRA,
version of the
der
earlier
*6
Pitsicalis’s counter-
We address first
in a final
prior litigation which resulted
WPRA,
regarding the
turn-
claims
before
the initial version of the
ruling that
WPRA
ing Experience
Hendrix’s claims.
inapplicable to Jimi Hendrix. That
was
ruling
upon
princi-
choice-of-law
based
post-mortem publici-
A. Jimi Hendrix’s
required application of New
ples which
ty rights under the WPRA
York law. New York was the domicile of
Jimi Hendrix at the time of his death and
Standing
recognize
post-mortem
it
not
these
did
Hendrix,
rights. Experience
LLC v. Elec-
counterclaims,
Through his
Pitsi
Hendrix, LLC,
TSZ,
tric
No. C07-0338
1)
declaring that
sought
judgment
calis
a
(W.D.Wash.
3243896,
*2-4
at
WL
apply
publicity
“does not
the WPRA
2008)
Aug.
(unreported).
2)
and, therefore,
rights in Jimi Hendrix”
possible
original images
“it is
to trade in
2008, however, Washington legis-
and
of Jimi Hendrix without
likenesses
it “to
apply
lature amended the WPRA to
creating
per
infringement
Experi
a
se
personalities, living
all
individuals and
rights.”
deceased,
a
ence
trademark
As
regardless
place
[Hendrix’s]
domicile
matter,
con
place
threshold
of domicile at time of death.”
or
§
that
lacks Article III
The amended
tends
Wash. Rev.Code 63.60.010.
declaratory
every
standing
judg
recognizes
person
to assert these
that
“has
WPRA
property right
a
in the use of his or her
ment claims.
Hendrix,
wife,
par-
asserting
claims as
Flaherty, is a
ence
the same
2. Pitsicalis’s
Christine
'
against Experi-
ty to
counterclaims
Pitsicalis.
Pitsicalis's
that
voice,
gitimate
or
concern
name,
signature, photograph,
rights
existed or exists
right
Id. That
will renew its efforts to assert
under
likeness.”
11, 1998,” the
“before, on, or after June
the amended WPRA
Pitsicalis and
effect, and
originally took
the WPRA
date
parties, given Experience
related
death.
Id.
upon person’s
expire
does not
past aggressive
drix’s
assertion of its
63.60.030(3).
63.60.010,
The amended
§§
rights
given
related to Jimi
right
publicity
recognizes such
WPRA
amendment to the
that
the 2008
WPRA
the law of the dom-
“regardless of whether
previous impediment
Expe-
removes the
residence,
icile,
citizenship of the indi-
or
judicial
to enforce
rience Hendrix’s
efforts
time of death
personality
or
at the
vidual
post-mortem publicity
Jimi
recognizes a similar or identi-
or otherwise
that Act.
Rhoades v.
rights
§
The
property right.”
cal
Id.
63.60.010.
Prods., Inc.,
1157-58
Avon
right by providing,
such a
protects
WPRA
(9th Cir.2007)
that,
(noting
1157 n. 4
&
who
or
“[a]ny person
in
uses
part,
ap-
under the Ninth Circuit’s “reasonable
...
use
a ... deceased
authorizes the
test,
explicit
or
prehension”
concrete
name, voice,
photo-
signature,
personality’s
necessary
for a
litigation
threats of
are
likeness,
mer-
goods,
or
on or
graph,
plaintiff
standing).
to have
chandise,
products
or
entered into com-
...
written or
merce
this state
without
ap-
2. The
is constitutional as
WPRA
oral,
express
implied
or
consent of
plied
of non-
narrow set
infringed
[per-
has
such
right,
owner of the
speculative
at
circumstances
issue
§
As
sonality]
right.”
Id.
63.60.050.
here
amended, then, the
created a new
WPRA
dispute
do not
parties
Hendrix would
possibility
recognizes post-mortem
amended WPRA
to assert Jimi Hendrix’s
renew its efforts
rights belonging to Jimi Hen-
personality
publicity rights against Pitsi-
post-mortem
1)
drix,
calis,
licensees, customers,
notwithstanding that
he died
poten-
originally
Washington
before
enacted
tial customers.
2)
WPRA;
he was domiciled New
here does not reveal
The record
3)
death;
York at the time of his
and New
Hendrix has ex-
evidence
recognize
post-mor-
York law does not
*7
Pitsicalis, or
licen-
plicitly threatened
his
that would survive
right
publicity
tem
sees,
customers
potential
customers or
and descend to his
Jimi Hendrix’s death
But
under the amended WPRA.
with suit
that,
dispute
parties
The
also do not
heir.
alleged
Pitsicalis
that
WPRA, Experience Hendrix
go beyond
that
its feder-
relying
rights
post-mortem person-
owns Jimi Hendrix’s
trademarks,
interfered with
ally protected
Notwithstanding that
ality rights.
sale, by
one of Pitsicalis’s licensees to
provides Experi-
face
WPRA thus on its
Gifts, of Pitsicalis-
Spencer’s
the retailer
post-
with
Hendrix’s
ence Hendrix
Jimi
that
Hendrix-related merchandise
licensed
personality rights,
mortem
infringe Experience Hendrix’s
did not
summary judg-
Pitsicalis
granted
of all of these cir-
light
trademarks.3
ment,
provisions of the
cumstances,
sufficiently
declaring that the
has a
le-
Pitsicalis
ruled,
allegations
summary
support
that
to
his
3. The district court
at the
litigation,
judgment stage
that Pitsicalis
licensee’s
of this
Hendrix interfered with Pitsicalis’s
standing
declara-
Article III
to assert his
goods
Spencer’s
had
non-infringing
to
sale of
tory judgment counterclaims.
Pitsicalis sub-
Gifts.
adequate
to
district court
mitted
evidence
appre-
as
as Pitsicalis’s “reasonable
recognize
post-mortem
those
well
WPRA
unconstitutional.
Hendrix will at-
personality rights
are
hension” that
that decision de novo. See
in
tempt
stop
targeted
We review
to
such
sales Wash-
Cnty. Maricopa,
Lopez-Valenzuela
ington in the future.4
(9th Cir.2013).
1054, 1059
Under
Faith
a. Due Process/Full
narrow, non-speculative circumstances
and Credit Clauses
case,
disagree with
presented
this
ruling
accordingly
the district court’s
ap
court held that
The district
reverse.
here,
plying Washington’s WPRA
instead
York,
the state
of the law New
where
narrow, non-speculative WPRA con-
at the time of
us,
Jimi Hendrix was domiciled
alleged
as
has
troversy before
death,
(1)
principles
his
violated choice-of-law
it,
involves
Pitsicalis’s “reasonable
protected by the Due Process and Full
apprehension”
Faith and Credit Clauses of the U.S. Con
stop
attempts
use the
will
WPRA
that,
require
stitution. Those Clauses
“for
products
license unofficial Hendrix-related
(2)
selected
State’s substantive law
be
Washington,
for sale
applied
particular
to a
attempt
[and
case]
unsuccessful
to intro-
licensee’s
manner,
constitutionally permissible
Washington, through
duce into
his licen-
Gifts,
significant
State must have a
contact or
dealings
Spencer’s
see’s
Pitsi-
contacts,
significant aggregation of
creat
goods that bore Hendrix’s
calis-licensed
interests,
likeness,
ing state
such that choice of its
carry
that did not
image and
but
arbitrary
fundamentally
is neither
nor
law
infringed Experience
marks that
Hague,
unfair.” Allstate Ins. Co. v.
trademarks.
302, 312-13, 101
S.Ct.
66 L.Ed.2d
U.S.
Washington’s approach
post-mortem
(1981).5
personality rights
questions
raises difficult
regarding
Washington
sufficiently significant
whether another state must rec-
has
actual,
ognize
personality rights
non-speculative
the broad
contacts with the
here,
controversy
Washington provides. But we need not
at issue
involves
Here,
Washington
of Pitsical-
resolve that issue.
the limited con-
the loss
sales
us,
Therefore,
troversy
alleged
goods.
as Pitsicalis has
is-licensed
because
before
it,
give
only Experience Hendrix’s
these contacts are sufficient to
Wash-
involves
Washington
ington
in applying
terference with the sale
interest
its own law
Pitsiealis-licensed,
controversy,
arbitrary
unofficial but non-in-
to this
it is not
or
likeness,
id.;
fringing goods bearing
apply
unfair to
the WPRA here.6 See
York,
argues
that the WPRA has a much
6.The Southern District of New
address-
actual,
act,
potential application.
broader
But
ing
personality rights
Indiana’s
reached
*8
non-speculative controversy
WPRA,
before this court
contrary
conclusion.
Like the
implicate
possible
ap-
broader
does not
those
rights
''applie[s]
personality
act
to
Indiana's
plications of the WPRA.
regardless
all sales made into Indiana
of the
person.
pur-
domicile of
famous
It also
context,
Supreme
5.
In the choice-of-law
ports]
right
publicity
a
on fa-
to bestow
of
analy-
apply
to
Court has directed courts
this
people (personalities’)
living
mous
both
regardless
sis
of whether the constitutional
deceased, regardless of their domicile on the
challenge
brought
under the Due Process
Archives,
Family
date of their death.” Shaw
Allstate,
or Full Faith and Credit Clause. See
Worldwide,Inc.,
F.Supp.2d
v. CMG
589
Ltd.
10,
385 Mobility v. AU as to de- AT & T LLC 3. Conclusion see also 1106, 1111 Corp., Optronics claratory judgment claims Cir.2013) (noting places that “Allstate reasons, foregoing For the conclude of application on the ‘modest restrictions applied can be constitu- WT’RA law,’ have and most commentators forum tionally controversy to the narrow at issue highly permis- a setting Allstate as viewed We, therefore, here. reverse the district omitted)). (internal citation standard” sive
court’s decision to Pitsicalis sum- Clause b. Dormant Commerce mary on judgment declaratory judg- ment claims and we remand those claims applying The district court also held that to this case would violate court instructions for the WPRA to Clause, limits Commerce dormant summary judg- the district court to enter imposing laws power of states enact ment in favor of Hendrix. See on interstate com substantial burdens City Gospel Missions Am. Los of of Optometrists Nat’l Ass’n & merce. See (9th Cir.2003) Angeles, Harris, Opticians v. 1148- (“Even when there has been no cross- (9th Cir.2012). rea The district court summary judgment, a district motion that, not although the WPRA does soned may summary judgment court enter sua interests, against discriminate out-of-state if sponte against moving party losing apply controversy to the at WPRA party opportunity has had a full and fair would, nevertheless, give the issue here ventilate the issues involved the mat- impermissible extraterritorial WPRA (internal omitted)). quotation ter.” marks reach, encompassing variety “a of transac occurring “wholly Washing tions outside’ infringement decep- B. Trademark However, limited, non-
ton’s borders.” practices tive trade here, controversy at speculative issue does occurring wholly affect transactions not We turn now to the claims Trucking Washington. outside Am. Cf. Expe- Pitsicalis. against Hendrix asserted Comm’n, Ass’ns, Pub. Inc. v. Mich. Serv. rience Hendrix’s claims 429, 434, 545 U.S. 125 S.Ct. premised allegations are that Pitsicalis (2005) flat (holding Michigan’s L.Ed.2d 407 infringed several exclusively taking place tax on activities Ex- trademarks related Jimi Hendrix. the dor within state did violate trademark in- perience Hendrix asserted Clause). Nor does the mant Commerce fringement claims under two different suggest application record that the First, Experience statutes. limited, non-speculative WPRA to the con the federal Lanham brought a claim under troversy at here otherwise im issue would alleging Act trademark specifically permissibly burden interstate commerce. 434-38, 125 ultimately fringement. at The district See id. S.Ct. person already express opinion appropri- about the dead had Id. We no whether famous pre- language under the facts ateness of this managed behind heirs to leave for his/her case, apply in that but we decline to sented right publicity descendible is not particular facts and that absolute rule to the course, (unless, law function of Indiana case before us. We claims at issue conclude, instead, person domiciliary died a the famous *9 Washington does have Indiana). it a function of where Instead is rights recognizing personality an interest in person happened that famous to be domi- deceased, images people, living all whose ciled at the time of death. may upon within its borders. be traded Experience Hendrix law that Pitsicalis had The ruled as a matter of infringed Experience un- in fact several several different measures of acts, trademarks. totaling over million. der both $1.7 $60,000 The district court struck all but Second, Experience brought Hendrix appeal, Experience On award. Washing- under the claim Pitsicalis reinstatement of the en- drix seeks (“WCPA”), Act Protection ton Consumer Ex- agree tire award. We trade deceptive unfair or prohibits Hendrix that it was error for the perience WCPA, Experience practices. Under 50(b)(3), court, under Fed.R.Civ.P. alleged that Pitsicalis’s conduct Hendrix $60,000 to set aside all but Hendrix’s trade- infringing Experience legally award. There was sufficient evi- deceptive to an unfair or marks amounted However, support dence to that award. by the A practice proscribed trade WCPA. court, that, alternatively, the district ruled had in fact com- jury found that Pitsicalis jury’s damages if our court reinstated the by infring- practice mitted an unfair trade award, here, as we do then a new trial on trademarks. ing Experience Hendrix’s damages is warranted under Rule 59. We appeal, challenges one On court’s alterna- conclude of the district court’s conclusion aspect ruling tive for a new trial was not an abuse infringing Experience that he is liable we, therefore, of discretion and remand argues Hendrix’s trademarks: Pitsicalis a new trial limited to the issue of domain names hendrixlicens- that his did not ing.com hendrixartwork.com Finally, Experience requested Hendrix by infring- the federal Lanham Act violate attorney’s in the amount an award of fees ing Experience Hendrix’s trademark $500,000. of over The district court uphold “Hendrix.” the district court’s amount, $50,000. We awarded a much smaller that the names did determination domain Experience challenges the court’s infringe Experience Hendrix’s trademark attorney request. of much of fee denial its “Hendrix.” vacate fee award and remand for We the district court’s reconsideration because
Experience sought several rem- many of the factors on which the district con- edies redress attorney court based its fee decision have duct under both the federal Lanham Act changed. now First, Experience Hendrix and WCPA. injunction enjoin- sought permanently liability under the fed- 1. Pitsicalis’s
ing infringing Expe- from further using eral Lanham Act for domain rience Hendrix’s trademarks. The district infringed Experience names that injunction, permanent court entered such a Hendrix’s trademark “Hendrix” nevertheless, but challenges language the court included granted Experi The district court injunction. conclude that one sen- summary judgment, partial ence Hendrix injunction sufficiently un- tence of the is infringed concluding Pitsicalis had several require clear to a remand so the district trademarks. On clarify can conduct is and what challenges only one as appeal, Pitsicalis enjoined. ruling, arguing of that that the dis pect determining trict court erred in that his sought Hendrix also dam- names, hendrixlicensing.com domain ages, Lanham Act under both federal hendrixartwork.com, WCPA, infringed compensate Experience and the re- infringement. Hendrix’s trademark “Hendrix.” We past Hendrix for Pitsicalis’s *10 trademarks, Lo- the district court issued in- de novo.7 See that determination view at 1059. Act, pez-Valenzuela, junctive per- relief under the Lanham manently enjoining Pitsicalis’s his use of Pitsicalis defended Hendrix, the Experience conduct. benefi- in his domain names trademark “Hendrix” ciary injunction, argues that Para- “Nominative nominative fair use. only as graph injunction 5 of the fails to state has where a defendant applies fair use clearly injunction the terms of the plaintiffs mark to describe used Dynamic, Fortune plaintiff’s product.” does not describe reasonable detail the Brand Inc. v. Victoria’s Secret Stores that are and are not restrained. See acts Inc., Cir. Mgmt., 65(d)(1). Ex- agree Fed.R.Civ.P. We omitted). 2010) (internal marks quotation perience part. Hendrix in nom rejected The district court Pitsicalis’s l(iii)-(iv) summarized, Briefly paragraph defense, concluding that inative fair use challenged injunction permanently “Hendrix” in his domain Pitsicalis used enjoins “ refer, using Pitsicalis from Hen Experience names to not (as required is for a nomi products ‘guitar logo any drix’s and headshot’ or similar defense), only to Pitsi native fair use but mark, brand, logo,” using or and from service, product licensing or calis’s own signature set forth Jimi goods marketing Hendrix-related mark, injunction, any signature, “or similar (which the nomi protected is not brand, then, logo.” contrary or But defense).8 appeal, native fair use On Pitsi the first sentence in the provision, that his domain names argue calis does not challenged Paragraph 5 states Experience products. Hendrix’s refer Injunction Permanent “[njothing this that Jimi is Nor does he contend enjoining, prohibit- shall be construed as product. or ing, inhibiting or otherwise [Pitsicalis] Co., 292 F.3d Cairns v. Franklin Mint entity person creating, other or from (9th Cir.2002). We, there 1152-53 reproducing, advertising, distributing, sell- fore, affirm the court’s decision to commercially trading in ing, or otherwise summary judgment Expe partial enter or likenesses of Hendrix.” images Jimi rience Hendrix. provisions appear two to be some These Paragraph permanent 2. 5 of the ambiguous or at least are when conflict
junction inadequate Thus, particular, together. read in this injunction clearly not state what does in concluding
After that Pitsicalis We, conduct is and is restrained. fringed several (9th Cir.2011) (rejecting reject Experience 1174 n. 7 Hendrix’s contention argument. While argument litigant that Pitsicalis waived this had abandoned claim using stopped these domain names summary judgment opposing party's where litiga- after Hendrix initiated this placed the issue before the district motion tion, pleadings in his before and he indicated issue, court, the district court ruled on that the district court that he did not intend to adequately litigant raised the issue on and the names, using these domain resume appeal). expressly did not concede that his domain infringed Experience Hendrix’s trade- names plaintiff’s mark to 8. A use of a defendant's marks, opposed Hendrix's and he goods defendant’s is ad- describe summary by partial judgment motion assert- defense, but dressed the "classic” fair use arguments ing in defense of his use of "Hen- de- not assert a classic fair use Pitsicalis did Luis & drix” in the domain names. San Cf. fense here. Salazar, Water Auth. v. Delta-Mendota *11 388 in injunction images Pitsicalis used
therefore,
describe
permanent
vacate
in
products
court to revise
unofficial Hendrix-related
remand to the district
injunction in
to clari-
Hendrix’s
fringed Experience
order
trademarks
permanent
restrained.
Hendrix.”
In this
fy what conduct is and is not
“Hendrix”
“Jimi
again properly
the district court
regard,
chal-
reject Experience Hendrix’s
injunction
the terms of the
to the
limited
Paragraph
the rest of
5. The
lenges to
it,
only
and then
to
specific claims before
Paragraph
5 states that
second sentence
Experience
on which
those claims
ruling concerning
no
Court makes
“[t]he
Ariz.,
Skydive
673 F.3d at
prevailed. See
images
...
or likenesses
Jimi
[of
whether
Sales, U.S.A.,
1116;
Toyota
see also
Motor
might
protected
be otherwise
Hendrix]
(9th
Inc. v.
610 F.3d
1176
Tabari
court did not
copyright laws.”
district
Cir.2010)
tailor
(noting that court must
including
discretion in
this lan-
abuse its
injunction
only
specific
“to eliminate
injunction,
permanent
in the
see
guage
(quoting E. &
alleged”)
harm
J. Gallo
Ariz.,
Quattrocchi
Inc. v.
673
Skydive
Co.,
Winery v. Gallo Cattle
Cir.2012),
1110
because
(9th Cir.1992));
Aspex Eyewear,
cf.
only clarified that
the dis-
language
this
Inc.,
Eyewear,
Inc. v. Marchon
any possible
trict court had not ruled on
(Fed.Cir.2012)
1335, 1344
(noting,
patent
infringement
Hendrix’s
case,
infringement
frequent
admonish
Experience Hendrix
copyrights because
ment that district courts are “not to issue
alleged a
claim. See id. at
copyright
never
in
sweeping injunctions against potentially
(“An injunction should be tailored to
...,
to
fringing activities
but
restrict
specific
alleged.”
eliminate
harm
scope
injunction
particular
of the
to the
omitted)).
(internal quotation marks
adjudicated
activity”).
and final sentence of Para-
The third
sum,
Paragraph
first sentence in
“nothing
in this Perma-
graph states
injunction stating
the permanent
5 of
—
Injunction shall
construed as en-
nent
be
Injunc-
“[n]othing
this Permanent
inhibiting
joining, prohibiting, or otherwise
enjoining, pro-
tion shall be construed as
or
any
entity
person
Defendants or
other
hibiting,
inhibiting
or otherwise
Defen-
using
from
the names or marks ‘Jimi Hen-
any
entity
creating,
dants or
other
from
identify
subject
drix’ or ‘Hendrix’
reproducing, advertising, distributing, sell-
image
an associated
or the author or cre-
ing,
commercially trading
or
otherwise
ator of an associated work of art.” This
images or
Hendrix”—
likenesses
Jimi
language
injunc-
does not conflict
provisions
the earlier
conflicts with
language specifically preclud-
tion’s earlier
injunction restraining
using
Pitsicalis from
using
ing Pitsicalis from
“Hendrix”
its
“guitar
logo
and headshot”
a Jimi Hendrix
business and domain names. Nor does
mark,
We,
logo.
or
or
similar
brand
sentence, contrary
this third
therefore,
permanent injunction
vacate the
argument, affirmatively permit
Hendrix’s
clarify
court to
and remand to the district
anyone
infringe Expe-
Pitsicalis or
else to
enjoined.
what conduct is and is not
rience Hendrix’s trademarks
“Hendrix”
Instead,
this lan-
and “Jimi Hendrix.”
Damages
under both the federal
guage accurately indicates that the district
Lanham Act and the WCPA
court never ruled on
claims,
court,
injunction
seeking
per-
in the
In addition to
abandoned
from
manently enjoining
infring-
use of the
alleged
that Pitsicalis’s
trademarks, Ex-
ing
names “Hendrix” and “Jimi Hendrix”
evidence,
weigh
court can
make credi-
sought
Hendrix also
perience
determinations,
bility
past infringe-
it for Pitsicalis’s
a new trial
compensate
*12
necessary
prevent
issues involv-
to
a mis-
any
There are two related
for
reason
ment.
address,
carriage
justice.
appellate
that we must
one
of
The
court
ing damages
entering
court’s order
involving the district
reviews the district court’s determination
damages
under
greatly
reduced
award
of
of these matters for
abuse
discretion.
50(b)(3), and the other involv-
Fed.R.Civ.P.
that we affirm
require
Those standards
alternative order
the district court’s
ing
of
grant
here the district court’s
a new
damages
trial on
under
granting
new
though
trial
Rule
re-
under
even
we
59.9
Fed.R.Civ.P.
court’s decision
verse
as a matter of law
judgment
Pitsicalis
issue,
jury
damages
first
As to the
50(b)(3).
under Rule
Experience Hendrix a total of
awarded
million,
represented
meas-
over $1.7
a. Overview of the
award of
the federal
damages
ures of
under both
damages
the federal
under
Lan-
Act
The district
Lanham
and WCPA.
ham Act and the WCPA
court, however, struck most of that award
infringing
on Pitsicalis’s
Ex
Based
50(b)(3) and entered a
under Fed.R.Civ.P.
perience Hendrix’s trademarks
violation
substantially
damages
reduced
award.
Act,
jury
the Lanham
Ex
awarded
that
appeals
decision.
1) $60,000, representing
perience Hendrix
below,
explained
greater
As
detail
licensing
made from
profits
Pitsicalis
50(b)(3)
applicable to Rule
legal standard
2) $306,650
infringing goods; and
uphold
a court
requires
motions
that
Experience Hendrix for the
compensate
any legally
if there is
suffi-
jury’s award
profits Experience Hendrix lost because
Application
to do so.
of that
cient basis
conduct.10 15
that
particular standard here dictates
1117(a)
party
§
(providing
U.S.C.
es
reinstate the
reverse the district court and
can re
tablishing
infringement
trademark
damages award.
jury’s entire
profits” from in
cover the “defendant’s
in-
regarding damages
second issue
fringing
“any damages
the trademark and
awards,
damages
same
but this
volves the
plaintiff’).
sustained
provisions.
Rule
new-trial
time under
59’s
Finding that
this same trademark
provides
legal
a different
standard
Rule 59
amounted to an unfair or
fringement
for
also
for both the district court and
us.
WCPA,
motion,
deceptive
practice
trade
under the
a Rule 59
Regarding
trial,
50(a)
50(b)(3)
judgment
for
as a matter
During
made a Rule
motion
9.
here,
law,
judgment
a matter of law. See
motion for
as
court did
to rule
as the district
Inc.,
Daddy Software,
v. Go
EEOC
conditionally
new-trial mo-
Rule 59
(9th Cir.2009). That motion was
to Pitsicalis’s new trial mo-
tion. We refer
preserve
Pitsicalis’s renewed mo-
sufficient
tion,
con-
well as the district court's order
as
law,
judgment
a matter of
under
tion for
as
motion,
being
ditionally granting
as
50(b)(3),
jury's
made
verdict.
Rule
after
under Rule 59.
made
50(b)(3)
granted
The district court
that Rule
motion,
striking
most of the
prof
recovery
plaintiff’s lost
of both
"[T]he
post-verdict
to Pitsicalis’s
award.
refer
profits
disgorgement
of defendant’s
its
motion,
well
the district court's order
as
as
recovery
generally
a double
under
considered
motion,
being
granting
made under
as
Am.,
Nintendo
Inc.
the Lanham Act.”
50(b)(3).
Rule
In addition to his Rule
Int'l,
Dragon
Pac.
motion,
50(b)(3)
alternatively sought
1994).
Cir.
a new trial under Fed.R.Civ.P. 59. Rule
50(c)(1) requires
granting a Rule
a court
determination, the district
making
Hen-
further
in the
all of the evidence
court considers
$1,365,650
drix a total
record,
inferences
drawing all reasonable
repre-
The WCPA
that statute.
nonmoving party, Experi-
in favor of
$306,650 in
apparently the same
sented
Hendrix;
may
not make
ence
Hendrix as a
profits
for
lost
reweigh
or
any credibility determinations
practices,
unfair trade
of Pitsicalis’s
result
Reeves v. Sanderson
the evidence. See
$750,000
injury
Prods., Inc.,
133, 150,
Plumbing
530 U.S.
$300,000
Experi-
reputation, and
drix’s
*13
(2000).
2097,
120
Act and the
jurors
court instructed
The district
WCPA,
awards,
made under
“by deduct
they
profits
were to calculate
reputation.
goodwill
for loss
It
ing
expenses
gross
all
from
revenue.”
*14
determination
the district court’s
review
Experience
prove
Hendrix’s burden to
was
novo,
uphold
jury’s
and we will
de
Lindy Pen Co. v. Bic
damages.
its
See
any “legally
if
sufficient
award
there was
(9th
1400, 1407
Cir.
Corp.,
Pen
982 F.2d
Costa,
at
it.
support
basis” to
1117(a)).
1993)
§
(applying
U.S.C.
Experience
for
striking
jury’s
profits,
the district court
Hendrix’s lost
jury’s damages award
i. The
that,
had
Experience Hendrix
held
while
Experience Hendrix’s
revenue, it
lost
evidence of its
presented
profits
lost
any evidence as to its
had failed to offer
profits Experi
amount of
For the
jury
required to
which the
expenses,
Pitsical
lost as the result of
ence Hendrix
in order to
from the lost revenue
deduct
,
conduct,
jury
returned
is’s
profits.
lost
Experience Hendrix’s
calculate
$306,650,
un
awards of
one
two identical
conference,
jury
instruction
During
Act and one under
the federal Lanham
der
evidence, Experience
after the close
appeal, no one contends
On
WCPA.12
pre-
that it had not
acknowledged
analysis applies to the
that a different
jury
any
with
evidence
its
sented the
profits
lost
under the WCPA
calculation of
Experience
expenses. This was because
the federal Lanham
applies
than
that it bore
mistakenly believed
fact,
already stipulated
parties
Act. In
“the
proving only its lost revenue
the burden of
under the
are
profits
WCPA]
that [lost
that,
showing,
it had made that
once
the Lan
the Lost Profits under
same as
prove
to Pitsicalis to
the burden shifted
awarding
purposes
ham Act for the
deduct in
jurors
that
should
Therefore,
any expenses
address
recovery.”
we
double
Experience
calculate
order to
awards for lost
here the
identical
this
applies
Lanham Act
profits.
lost
the Lanham Act and
profits under
prob-
Were that the
agreed
Act and the WCPA.
parties
district court
12. The
and.the
award,
Experience
jury’s damages
it could
jury's verdict that
before the
lem with
prof-
twice for its lost
drix could not recover
easily
But because the
be
cured.
opinion,
will discuss this later in the
its. We
duplici-
ambiguity and
are
with
rife
granting
a new trial.
as one of the bases
that the
ty,
agree with the district court
simply
grant Rule 59 relief
best solution
not reveal
13. Our review of the record does
trial on
for new
support duplicative
that would
evidence
$306,650
Lanham
under both the
ordinary
burden-shifting
proof
framework to
of the
“net
income” Exhibit 60 suffice
infringer’s
profits.
lost
15 to
support
finding
See
those
defendant
1117(a).
§
But
re-
figures
adjustment
U.S.C.
burden
were after
for costs
were,
as the
represented,
mained
net
as
income.
prove
damages,
actual
plaintiff, to
its
Testimony describing licensing revenues
profits.
Lindy
cluding its own lost
generally
suggested
further
there
Pen,
14. The district court present- also have the evidence 50(b)(3) jury’s prof- Rule relief from the lost provided "legally ed at trial sufficient ba- First, its award for two other reasons. the support jury's damages to sis” award for district court held that the evidence was in- Costa, 859, profits, lost 299 F.3d at we also infring- sufficient to establish that Pitsicalis’s reject grounds these other for the district ing actually any Expe- conduct had caused of 50(b)(3) Pitsicalis Rule relief Second, profits. rience Hendrix's lost jury’s damages prof- from the award for lost that, district court held even if there was evi- Moreover, appear its. it does not jury’s finding support dence to that Pitsi- court, event, authority district in had infringing calis’s conduct caused some of the 50(b)(3) grant Pitsicalis Rule relief on these drop Experience profits, in Hendrix's there grounds alternate because Pitsicalis did not support insufficient evidence to pre-verdict raise in either his them Rule jury's awarding Experience Hendrix en- 50(a) 50(b)(3) post-verdict or his Rule mo- $306,650. Because, tire amount of as
393 Golf, Inc. v. certainty.” Lewis River O.M. damages for award The ii. Sons, 712, loss of 120 845 P.2d Experience Hendrix’s Scott & Wash.2d (1993) (en reputation banc); goodwill 987, see State 990 Wash. (“Damages Physicians, P.2d at jury also awarded The reputation of are professional for loss harm $750,000 damages in for damages proved which can be type reputation caused to its certainty and are usual- mathematical jury The $300,000 goodwill. the loss of fact for the question left as a ly best damages these measures this evidence indicat- jury.”) Specifically, Physi State See Wash. under WCPA. overall li- Experience Hendrix’s ed that Corp., v. Fisons Exch. & Ass’n cians Ins. $1,022,351.70 revenue declined censing P.2d 122 Wash.2d banc) (1993) (en (“[D]amage period during to business which Pitsi- during goodwill are [also] and loss reputation calis was damages
compensable provided That information trademarks. [W]CPA.”). court, granting for the legally sufficient basis 50(b) motion, struck these Rule Pitsicalis’s $1,050,000 damages of a total of concluding after there awards reputation harm to Again, them. support was no evidence permitted and thus these goodwill,15 light gov of the standards we reverse Pitsicalis’s Rule damage awards survive 50(b)(3). erning Rule 50(b)(3) motion.16 sup- evidence to significant There was fact that jury’s finding of the port its The district court did not abuse c. practices trade deceptive conditionally granting discretion reputation and
jured Experience Hendrix’s trial on Experience Hendrix a new harm, to the amount of goodwill. As the total regarding evidence had conditionally granted The district court licensing revenue *16 damages under trial on Pitsicalis a new of time before during period the earned Lanham Act and the federal both infringing activity. during Pitsicalis’s event, now oc- in the which has WCPA information, jurors could have this From curred, that this court reinstated of harm Pitsicalis calculated the amount Fed.R.Civ.P. damages awards. See Hendrix’s business Experience caused 50(c)(1), affirm the district court’s 59. We “with reasonable goodwill reputation court, acting sponte, alter- sua 16. The district appears court sua It that district tion. repu- grounds damages of natively two alternative for loss sponte raised these struck these 50(b)(3) Murphy, See concluding Rule relief. that the goodwill after tation and entry judgment (reversing of at 185-86 F.2d regard contrary to was jury’s verdict in this verdict, notwithstanding prior ver- jurors supplemental instruction the court’s 50(b), ground on a of Rule sion damages were these two measures sponte). court raised sua reason, thing.” “essentially That the same however, 50(b) relief for support Rule cannot Experience Hendrix’s 15. An award based on ground did not raise that because he licensing would seem- in total revenue decline 50(a) pre-verdict Rule motion or in either damages jury's ingly duplicate, part, in 50(b) post-verdict for Rule re- motion in his profits Experience Hendrix lost for the award Murphy, F.2d at 186. See lief. goods licensing specifically for revenue on infringing goods. The to Pitsicalis's similar this, argue but we dis- parties do not about granting a new trial. it as a basis for cuss trial, i. New trial on granting light decision new profits for lost significant deference we owe the dis- trial trict court’s determination a new The district court concluded that Kode, at is warranted. See 612. $306,650, jury’s damages rep 50(b) Unlike with the district court’s Rule resenting the profits Experience Hendrix court, analysis, in considering infringe lost as the result of Pitsicalis’s trademarks, trial, ment of Hendrix’s Pitsicalis’s motion for a new was not weight the clear of the evi required to draw all inferences favor of stated, Briefly dence. the district court reweigh the verdict and could the evidence was not convinced that the references on credibility and make determinations. Id. Experience Hendrix’s Exhibit 60 to “total The district court also was not limited to income,” “gross profits,” ordinary “net in grounds in support raised come,” equat and “net income” should be motion, trial his new but instead could profits, ed to without further evidence indi (and did) sponte sua raise its own concerns were, fact, cating that expenses there no about award. See Fed. that should be deducted from 59(d). our R.Civ.P. And standard of re- licensing Hendrix’s it revenue before ruling view of the district court’s also dif- profits. deemed a measure of lost This governing fers from the de novo standard might determination alone not have been our review of a district court’s Rule to support sufficient the district court’s 50(b)(3) decision. The district court’s deci- grant decision to a new trial on sion on Rule 59 motion for a new trial Co., See Ace v. Aetna Ins. Life “will be on appeal overturned (9th Cir.1998) 1241, 1248 (recognizing Kode, abuse of discretion.” at a more stringent ap standard of review 611. plies grants predicated of new trials evidence). insufficiency of the But The district court can trial new district court also disbelieved the testimo any ground under Rule 59 on necessary to ny of one of corpo prevent a miscarriage justice. officers, rate Robert that 77% of ease, Murphy, 914 F.2d at this drop licensing specifically district court concluded that a revenues during period, the relevant time new trial was warranted because the dam 2009, was the result of infring ages “against awards were the clear ing products and not attributable to the weight product of the evidence and the of general market economic downturn that *17 error, speculation, disregard and occurred during period. this same time Court’s uphold instructions.” “We must The district court credibility based its de any grounds the district court if of its for part termination in on Expe the fact that granting a trial new are reasonable.” licensing rience Hendrix’s revenues on its Land, v. United States Acres 175 4.0 of products, other which would not have been (9th Cir.1999). F.3d For the by affected infringing goods, reasons, following we conclude the district by than during fell more 23% this same court’s reasons are sufficient to warrant a say time. We cannot that the district new trial on both Experience Hendrix’s judge, who presented heard the evidence profits damages lost and for trial, its loss of at ordering abused its discretion in reputation goodwill. and profits new trial on lost on these bases.17 case, upholding 17. In the district court’s decision a new trial in a criminal the award). damages damages original for The court’s in- ii. on loss New trial goodwill reputation and these jurors of structions told to consider two damages separately, measures of and the stated, jury the previously As separate places form provided verdict Hendrix, under the damages insert reputation for loss of and WCPA, $750,000 to its reputation for harm damages for The goodwill. loss of court $300,000 goodwill. of for the loss and jurors further instructed to award each a new trial these granted district on court damages they measure of to which found well, concluding that these damages as entitled, Experience Hendrix was without contrary both to the damage awards were duplica- regard any whether award was contrary weight clear of the evidence tive, court’s instruction to the because the court would later correct jury damages when, measures of were And duplication damages. that these of thing.” “essentially deliberations, the same during the jury’s court jurors reputation told that harm to pre The evidence “essentially the goodwill loss of were same support sented at trial to amount of jurors thing,” the also reminded court though pro these sufficient to damages, instructions, all of the previous court’s award, legal vide for basis cluding the to consider instruction each Further, minimal at best. of damages separately, measure remained differing damages amounts of award of instructions, important. These considered ($750,000) of loss for loss of reputation together, likely among fostered confusion ($300,000) directly goodwill contradicted jurors. ju instruction to supplemental the court’s of damages
rors that these two measures Based on minimal evidence of “essentially Jorgensen are the same.” Cf. of ac- amount harm Pitsicalis’s (9th Cir. Cassiday, 320 tivity rep- caused to 2003) (considering argu the merits fact goodwill, utation and jury disobeyed ment trial court’s that the jury’s award of two different amounts instructions, rejecting argu before directly these contradicted the damages ment, jury concluding “[t]he did supplemental jury instruction that court’s disobey court’s instructions and did not damages these were “essen- measures return that was unreasonable or a verdict same,” tially likely confusion and the unfair”). whole, as a created the instructions Moreover, reading supple- the court’s say cannot that the district abused light mental instruction a new granting its discretion in trial on whole, jury court’s as a confu- instructions these measures appears likely. See Private sion Overseas Cnty., Inv. Dade Corp. v. Metro. Duplication damages iii. awards Cir.1995) (granting new court’s addition to the district con- trial where instructions awards, about we also resulting confusing in a cerns confusing, were *18 And, directing order a appellate meanor. because an Ninth noted that an court’s Circuit decision new trial leaves the final in the to the district court’s new trial deci deference usurp jury’s the judges, jury, hands of the it does not "[c]ircuit sion is because appropriate Alston, record, function....” States v. reading dry pages of the do not United the 1992). (9th Cir. Those experience testimony the rea the tenor of at trial. deferring the may also district proof The is often close and sons bolster our balance of here. hinge personal of de court’s new trial determination evaluations witness duplicative about the nature the that a trial have concerns conclusion new on these apparent of the awards. Those just of several damages measures of would be under damages, awards include under duplicative Experience these circumstances. Act, Lanham for Pitsicalis’s prof- the both supporting underlying drix’s evidence each infringing Experience its earned from of of damages, pro- these while measures Experience Hendrix’s trademarks and viding legally sufficient basis survive due to profits lost Pitsicalis’s 50(b)(3) verdict, Rule directed was minimal activity; an infringing Experi- award of and, court, eyes in the of the district profits ence under the Hendrix’s lost both Further, very credible. the award WCPA; Lanham Act and the and an damages of reputation for loss of and specifically revenue licensing award lost goodwill supple- contradicted the court’s goods are mental instruction that those measures of similar to merchan- damages “essentially are the same.” And dise, appears to have been double- instructions, especially on the total part counted as award for lost damages reputation for loss of good- and reputation goodwill. and The district will, likely confusing. Finally, were jurors court instructed to consider and apparent duplication of a number these damages award each measure of to which awards, damages which the district court entitled, Experience Hendrix was without correct, jurors told it would raises other regard duplicative any to the nature of damages concerns about the awarded. awards, because the trial court would light of the numerous concerns that Here, later duplication. eliminate award, damages had with the however, than other the two identical lost share, agree which we we just profit awards under the Lanham Act and particular result new trial on these WCPA, the district court did not ad- damages. measures of any possible dress duplication of remedies. we have discretion While to remand for Attorney’s fees under the WCPA duplicative the district court to correct Finally, the district court awarded Ex- Ace, awards, 139 F.3d at see we perience attorney’s Hendrix fees under the that doing conclude so here would still not WCPA, 19.86.090, § see Wash. Rev.Code address all of the concerns about the dam- requested but reduced that fee from ages raised, awards that the district court $504,673 $50,000. The district court did We, therefore, we share. defer to reasons, including so for several the follow- the district court’s determination that a ing: only claim WCPA one of six damages new trial on is warranted.
claims Hendrix asserted iv. Conclusion as to new trial Pitsicalis, one two claims pre- on which reasons, then, For foregoing up- vailed; Experience Hendrix did not estab- hold district court’s decision order a WCPA; any damages lish trial on under the damages, new other than the $60,000 sought profits on Pitsicalis’s fees for mo- infringement pleadings trademark under tions and on which it did not Lanham Act.18Our decision is prevail bolstered or which did not pertain to its 18. Because the district court did not strike award remains. That measure of $60,000 then, Lanham damages, is not included in the new profits by infring- Act for the Pitsicalis earned trial on trademarks, ing Experience Hendrix’s *19 consistent with this decision. ceedings some of no doubt claim. While WCPA its own costs. Each side shall bear reducing the reasons court’s district valid, our de- remain fee award requested PART, IN REVERSED AFFIRMED of the changed has several here cision PART, PART AND IN IN VACATED court relied the district on which factors REMANDED. We, therefore, request. the fee reduce entirety and in its the fee award vacate RAWLINSON, Judge, Circuit to re- district court permit remand dissenting part: part and concurring request fee consider majority’s opin- I concur in much of Partners, Ltd. Sage in full. See Silver majority’s conclusion agree I with the ion. Springs, 251 Desert Hot City it deter- court erred when that the district Cir.2001).19 Personality Washington mined that (WPRA) I unconstitutional. Act is Rights III. CONCLUSION correctly that the district court agree also reasons, RE- foregoing For use that Defendant Pitsicalis’s determined determination the district court’s VERSE Experience Hen- infringed of “Hendrix” Act Personality Rights Washington’s I concur in the “Hendrix” mark. drix’s REMAND Pitsical- and is unconstitutional injunc- permanent that the determination pertain- claims declaratory judgment is’s and remanded tion should be vacated to en- instructions ing to WPRA what conduct precisely clarification of claims on those summary judgment ter addition, join In I enjoined. permanently AF- Hendrix. We favor of majority’s conclusion grant- decision district court’s FIRM the decreased improperly award was summary partial ing Experience Finally, but for dif- court. by the district use claim that Pitsicalis’s judgment on its below, I share discussed reasons as ferent infring- names in its domain of “Hendrix” the district court’s majority’s view that mark “Hendrix.” ed attorney’s should be vacated fees injunction permanent We VACATE remanded. and court can so the district and REMAND majority is much of Although there clarify injunction in the language revise absolutely I agree, I with which opinion enjoined. We is and is what conduct majority’s disagree with the positively entirety the district its REVERSE trial is warranted that a new conclusion 50(b)(3) to strike Rule decision court’s view, the my the issue of damages, un- jury’s award of of the most like the point, on this majority opinion Act and Lanham the federal der both decision, strays ap- from the Act. Protection Washington’s Consumer of review and essential- standard propriate court’s order AFFIRM the district dissent respectfully I re-tries the case. ly damages under a new trial on granting majority opinion. portion from that REMAND for of these statutes both outset to outline helpful at the It is damages. And we trial on such a new the dis- governed standard of review of at- court’s award VACATE re- governs our decision and RE- trict court’s under the WCPA torney’s fees That standard decision. of that pro- further view request for the fee MAND Cir. R. 39- briefs, pursuant to 9th separate motion requests Experience Hendrix In its 1.6, request not consider and so we do attorney’s appellate fees award of here. request be made Such a must the WCPA. *20 398 $40,000 authorizes a new trial if the in 2009. Robert also described
review contains no evidence in support royalties record decreased from five licensee com- jury’s verdict. $514,000 See E.E.O.C. v. Go panies testimony: in “I did in Inc., 951, Daddy Software, 962 2008, 2009, $116,000 and in I did of licens- (9th Cir.2009). incorporates This standard ing merchandising from these com- five jury’s considerable deference deter- $400,000 panies. drop That’s in almost Carlson, mination. See Kode v. revenue.” (9th Cir.2010) curiam). 608, (per In response suggestion to the that the majority opinion adheres to this standard royalties decreased were attributable to resolving judg- when Pitsicalis’s motion for recession, Robert noted that historical- law, ment as a matter of but completely ly Experience Hendrix had “maintained” abandons this considering standard when during previous its sales numbers re- Pitsicalis’s motion for a new trial. cession, when other licensors of trade- majority As the acknowledges, the de- experiencing marked items were a de- termination that sufficient sup- evidence in crease sales due to the recession. For ported verdict for the purposes of reason, Robert did not attribute the 50(a) Pitsicalis’s Rule motion undermines royalties dramatic in decrease to the reces- opposite by conclusion reached the ma- sion. 50(b) jority in resolving Pitsicalis’s Rule Robert also testified that its licensees motion. Majority Opinion, p. See were unable to sell in merchandise brick Daddy Software, also Go at Penney and mortar stores such as in J.C. (instructing that a new trial is war- 2009, once Pitsicalis had flooded the store “only if ranted the record contains no evi- shelves infringing merchandise. This verdict”) (citation support dence in testimony was consistent with the dramat- omitted). ic in royalty payments decrease in It disputed cannot be that damages evi- after Hendrix realized in- presented dence was for the con- royalties “every creased single year until sideration. Opera- Robert Chief 2008.” Robert Hendrix ap- estimated that tions Officer for Plaintiff proximately seventy-seven percent of the regarding testified the dramatic royalties decrease in was attributable to royalty payments decrease in in at infringing activity. Pitsicalis’s precisely the same time Pitsicalis was testimony Richard Hendrix’s was cor- fringing the by “Hendrix” trademark sell- Yalch, by roborated Richard ing counterfeit Hendrix items. Robert witness, expert thirty- and a year described 2009 as the “the bottom seven-year professor Ph.D. marketing fell out.” at University of Washington. Dr. exhibit, Referring to a trial Robert Yalch royalties confirmed that lost due to pointed out the roy- dramatic decrease in Pitsicalis’s sales constituted alties from one licensee 2008-09 to damages to Experience Hendrix. demonstrate the extent of the damages infringement. caused Despite this testimony, unrefuted 2006, Experience majority received district court and the have con- $384,000 royalties from the licensee. In cluded that the of damages 2007, Experience paid Hendrix was weight of the evidence. $394,000 Yet, in royalties. Royalties majority acknowledges decreased this undis- $262,000 plummeted to puted significant evidence of the decline *21 omitted). “essentially But same licensing revenue Hendrix’s thing” are “exactly and the same thing” was suffi this evidence and concedes jury And the could Experi concepts. different jury to calculate allow the cient to damages for in- Majority reasonably awarded profits. See have lost ence Hendrix’s majority’s goodwill ac loss of jury reputation The pp. 391-92. Opinion, cannot be reconciled court’s instruction. See simply under the district knowledgment Inc., Miller, apply we must 197 Technologies of review with the standard WMX Cir.1999) (9th ruling. See United (“Reputation court’s to the district F.3d 374 Land, of a equivalent goodwill v. Acres of the States is not the 4.0 Cir.1999) (9th business....”) id., (noting added); that a district (emphasis granting (“[T]he its discretion court abuses is its value goodwill of a business is not jury’s ”). “if the verdict new trial ... Robert Hen- going as a concern evidence”) weight of the the clear against Pitsical- testimony established that drix’s (citation omitted); also Ace v. Aetna see damaged Expe- infringement only not is’s Co., 1241, 1248 139 F.3d Ins. providing reputation rience Hendrix’s Life Cir.1998), that a (explaining amended as items, also Jimmy Hendrix but authentic on the basis may set aside jury verdict be the value decreased only if evidence supporting of insufficient concern. See id. going drix as a great weight of the evi it “is that a new trial majority The concludes jury has that the quite or it is clear dence jury confusion “likely” due to is warranted ”) (ci seriously erroneous result reached court’s instruc- stemming from the district added). omitted) (emphases tations Majority Opinion, pp. 395-96. tions. See as “strin characterized this standard have However, above, jury’s as discussed omitted). (citation Id. gent.” by the evidence and supported verdict district majority, to the According In with the court’s instruction. consistent Hendrix’s tes not believe Robert court did event, majority recognizes, as the timony regarding duplica- is damages award the extent p. Majority Opinion, revenue. See lost tive, for correction of could remand However, not court did the district trial. requiring a new rather than lacked credibili rule that Robert p. 396. Majority Opinion, See Rather, interpreted court ty. jury, testimony differently than the sum, proper standard applying to do. permitted is not which the court jury’s of the result retention should Land, at 1139 Acres See 4.0 damages. verdict, award of including the (“[A] ... a may if case Pitsicalis might be a different This have merely it would trial because new to refute the evidence some had submitted verdict____”) (cita- at a different arrived by Experi- submitted damages evidence omitted). tion However, in the absence Hendrix. ence Pitsicalis, from countervailing evidence a new concludes that majority The also district court to nothing for the there was confusing due to trial is warranted a new motion for deciding the weigh when Majority Opinion, jury instructions. All the evidence was trial. focuses majority opinion pp. 395-96. scale, supported side of the the district court instruction from
on the reason, I For verdict. injury reputation grant of court’s reverse the district would essentially the same goodwill “were loss v. Na- Int’l Inc. (internal trial. See DSPT marks a new quotation Id. thing.” (9th Cir.2010) hum, court s decision to decrease the (“A may grant by jury. join trial I district court new also the ma- contrary jority’s attorney if the verdict to the vacatur of the fee award. is weight majority clear A I differ from the I evidence.... that would if it upheld supported verdict must be NOT remand for a new trial on *22 evidence, substantial which is evidence ad- I would remand for reinstatement of the conclusion, equate support jury’s by jury, to and for an possible even if it is also a con- attorney’s draw award of fees to trary jury short, A prevailing party. conclusion.... verdict should Hendrix as the In only per- be set aside when the evidence the district court should reinstate the conclusion, verdict, mits jury’s attorney’s one reasonable fees to Ex- contrary that conclusion is perience to the and let this case be (footnote verdict.”) references and internal done. omitted).1
quotation marks fees, attorney’s I agree
As majority that the fee award should be remanded,
vacated and but not for the by
reasons majority. stated Because I verdict,
am of the view that award,
including should
stand, I would attorney’s remand the fee
order for the district court to award fees Hendrix as prevailing
party jury on the matters tried to the Carey Clayton MILLS,
on the matters resolved in its favor Plaintiff- Appellant, district court. See v. TrafficSchool.com Edriver, Inc., (9th Cir. 2011) (remanding attorney the denial of fees). America; Sally UNITED STATES of Jewell, Secretary Department of the
CONCLUSION Interior; Dougan, Acting Julia I agree majority Director, Office; with the that we should State Alaska State ruling Fullmer, reverse the district court’s Supervisor Mark Land Specialist, WPRA is unconstitutional. I also concur Transfer Division of Land Office; in the affirmance of the district court’s Alaska State Robert W. granting Schneider, decision summary judgment Manager, District Fair- Office; Hendrix on infringement Hepler, its banks District Lenore Manager, claims Pitsicalis’s use the “Hen- Field Eastern Interior Field Office; Wood; Doyon Limited; drix” marks. I concur in the vacatur and Scott permanent injunction. Hungwitchin Corporation, remand of the I Defen- join majority reversing dants-Appellees. However, majority Lindy pp.
1. The cites Pen Lindy Co. v. Bic Pen 391-92. contains no lan- 1993), event, Corp., guage Cir. to that effect. Robert proposition testimony Hendrix had informed the of Ex- present proof expenses part perience profits, of its as of its contemplat- Hendrix's lost as Majority Opinion, Lindy. evidence of ed in