Hendrix Infringement Claims Face Retrial

     (CN) - Though Jimi Hendrix died in New York, publicity rights law in Washington state applies to a dispute there over the guitar legend's rights, the 9th Circuit ruled Wednesday.
     In so ruling, the federal appeals court granted a new damages trial in the copyright action that Experience Hendrix, which the rock god's late cousin Robert Hendrix co-owned, filed against Hendrixlicensing.com and its owner Andrew Pitsicalis, who is in business with Jimi's brother, nonparty Leon Hendrix.
     Tacoma-based attorney Thomas Osinski, who represents Pitsicalis, said Leon Hendrix was "heavily involved" in the company but was not an owner. Pitsicalis and Leon Hendrix now co-own a new company called Rockin Artwork LLC, Osinski added. Jimi's sister, Janie Hendrix, now controls Experience Hendrix.
     A federal jury that found Pitsicalis had infringed on Experience Hendrix's trademarks by selling Hendrix-related products awarded the company $1.7 million. U.S. District Judge Thomas Zilly in Seattle later reduced the jury's award to $60,000, however, and also agreed with Pitsicalis that Washington's Personality Rights Act (WPRA) was unconstitutional as applied to the case because Hendrix had resided in New York at the time of his death in 1970. New York's right-of-publicity law, unlike Washington's, does not extend to the dead.
     Both parties appealed to the 9th Circuit, with Experience Hendrix arguing against the reduction of the award and the constitutional finding, and Pitsicalis claiming that his domain names did not infringe on the Hendrix trademark.
     Affirming the trademark violation, a divided three-judge panel reversed the finding on the statute Tuesday and agreed that a new damages trial was warranted.
     Because the case only involves Pitsicalis' alleged interference with the sale of Hendrix-related products in Washington, the WPRA was properly applied, the panel found.
     "Washington's approach to post-mortem personality rights raises difficult questions regarding whether another state must recognize the broad personality rights that Washington provides," Judge David Ebel wrote for the panel, on which he sat by designation from the 10th Circuit. "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."
     Osinksi, the attorney for Pitsicalis, said Wednesday that this finding would likely inspire more litigation.
     "Although this does not affect my client's rights nationally, the strange result of the 9th Circuit's ruling today would be that a Jimi Hendrix product sold by his brother Leon Hendrix's company within Washington State only may have issues," he said in an email. "In a modern economy allowing one state to elect to control what celebrity-based products can and cannot sell within its borders is an odd result and will surely lead to further litigation. Thus my clients will have no choice but pursue legal recourse at the trial and appellate level to restore Judge Zilly's commonsense ruling against Washington's outlier status."
     The case will also continue because the appeals panel voted 2-1 to uphold Judge Zilly's ruling that there should be a new damages trial in the event that his reduction unravels on appeal.
     This put the panel in the seemingly contradictory position of finding that there was no "legally sufficient" reason for the District Court to change the award, but at the same time directing the lower court to hold a new trial anyway. In the end the panel found that the jury could have been confused by the court's instructions.
     "Based on the minimal evidence of the amount of harm Pitsicalis's infringing activity caused to Experience Hendrix's reputation and goodwill, the fact that the jury's award of two different amounts for these damages directly contradicted the court's supplemental jury instruction that these measures of damages were 'essentially the same,' and the confusion likely created by the instructions as a whole, we cannot say that the district court abused its discretion in granting a new trial on these measures of damages," Judge Ebel wrote.
     As for the underlying trademark claims, the panel disagreed with Pitsicalis' defense of "nominative fair-use," which applies to cases where a trademark is used merely to describe a product.
     "The District Court rejected Pitsicalis's nominative fair use defense, concluding that Pitsicalis used 'Hendrix' in his domain names to refer, not to Experience Hendrix's products (as is required for a nominative fair use defense), but only to Pitsicalis's own product or service, licensing and marketing Hendrix-related goods (which is not protected under the nominative fair use defense)," Ebel wrote (parenthesis in original). "On appeal, Pitsicalis does not argue that his domain names refer to Experience Hendrix's products. Nor does he contend that Jimi Hendrix is Experience Hendrix's product. We, therefore, affirm the District Court's decision to enter partial summary judgment for Experience Hendrix."
     In a dissent to the panel's direction for a new damages trial, Judge Johnnie Rawlinson said her colleagues, and the lower court, had applied the wrong standard of review.
     She noted that there was plenty of evidence offered by Robert Hendrix, who died in 2012, to show a "dramatic decrease in royalty payments in 2009, at precisely the same time Pitsicalis was infringing the 'Hendrix' trademark by selling counterfeit Hendrix items."
     "Despite this unrefuted testimony, the district court and the majority have concluded that the jury's award of damages was against the weight of the evidence," Rawlinson wrote. "Yet, the majority acknowledges this undisputed evidence of the significant decline in Experience Hendrix's licensing revenue and concedes that this evidence was sufficient to allow the jury to calculate Experience Hendrix's lost profits."
     Pitsicalis weighed in on the decision Wednesday via email.
     "We are saddened that Jimi's adopted step-sister continues to litigate to attempt to gain sovereignty of Jimi Hendrix solely in the state of Washington, and monopolize it for herself," he said. "Leon Hendrix is saddened that she already has the estate and the music, he says 'What happens to my Legacy and my children and direct cousins of Jimi who live in Seattle? Who aren't wanted or allowed to be a part of the estate, because of my adopted step-sister's desire to control everything Hendrix in Washington. We have been stripped of rights in our own state where Jimi and his relatives grew up and live? Would that be something Jimi would have wanted his brother, nieces, nephews and cousins not to have the right to benefit from?'"
     Attorneys for Experience Hendrix did not immediately respond to a request for comment.