TRADE MARK / IMAGE RIGHTS
A Las Vegas company co-owned by Leon Hendrix, brother of rock icon Jimi Hendrix, has succeeded in Trade Mark litigation with the company that licenses Hendrix music and trademark – companies controlled by Leon Hendrix’s sister by adoption Janie Hendrix. U.S. District Judge Thomas Zilly said that a 2008 Washington state law that would have provided a “right of publicity” to Experience Hendrix LLC and Authentic Hendrix LLC was unconstitutional. The ruling appears to strengthen the rights of the Las Vegas company — formerly known as HendrixLicensing.com, doing business as Hendrix Artwork and Hendrixartwork.com — to sell Hendrix merchandise.
The Jimi Hendrix licensing companies control the Jimi Hendrix music, recordings and artistic properties and have federally-registered trademarks including rights to the phrases “Jimi Hendrix” “The Jimi Hendrix Experience” and certain logos. In 2009, Janie Hendrix’s companies sued Pitsicalis, HendrixLicensing.com, Hendrix Artwork and Hendrixartwork.com in federal court in Seattle, alleging trademark infringement because those companies were using the Hendrix name and selling Hendrix-oriented merchandise, allegedly in a manner “designed to capitalize on the goodwill and source recognition associated with the Hendrix family companies’ marks and rights.” Merchandise includes artwork, posters, t-shirts and home decor items.
As the case progressed, Zilly issued an injunction barring the Las Vegas company from using website domain names using the Hendrix name, a certain Hendrix artwork guitar and headshot logo and Jimi Hendrix’s signature. But Zilly found it would be fair use for the Las Vegas company to continue using the Jimi Hendrix name to describe items it could legally sell. And he found that under New York law, Janie Hendrix’s companies had “no post-mortem rights of publicity and they cannot preclude anyone from creating and then selling sketches, portraits, caricatures, dolls, bobbleheads or other likenesses of Jimi Hendrix.” Now Judge Zilly struck down amendments the Washington Legislature made in 2008 to the Washington Personality Rights Act (WAPRA) which allowed anyone, regardless of their home state, to sue in Washington state to enforce their rights. Judge Zilly said that as amendments provided a retroactive property right “in an individual’s or a personality’s name, voice, signature, photograph or likeness” that right would supersede the law in New York, where there was no such right at the time of Hendrix’s death saying “the legislation is accompanied by an expression of intent “to apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death” saying “Given the arbitrary and unfair nature of the WAPRA’s choice-of-law directive concerning the existence of a post-mortem right of publicity … such provision violates the due process and full faith and credit clauses of the United States Constitution” adding it also violated the Constitution’s commerce clause regulating interstate commerce.
Zilly wrote “that defendants are not constrained by any right of publicity from trading in images or likenesses of Jimi Hendrix, and … that use of the names ‘Hendrix’ or ‘Jimi Hendrix’ to identify the subject of an image or the author of a particular work of art constitutes nominative fair use of those names or marks.” The trademark lawsuit will continue and is headed toward a trial in May. Issues remaining in the lawsuit include counterclaims Pitsicalis made against Janie Hendrix’s companies.