Experience Hendrix L.L.C. v. Hendrixlicensing.Com LTD

• Decision Date: 08 August 2014
• Docket Number: Nos. 11–35858,11–35872.,s. 11–35858
• Parties: EXPERIENCE HENDRIX L.L.C., a Washington Limited Liability Company, and Authentic Hendrix L.L.C., a Washington Limited Liability Company, Plaintiffs–Appellants/Cross–Appellees, v. HENDRIXLICENSING.COM LTD, a Nevada Corporation, DBA Hendrix Artwork, dba Hendrixartwork.com; Andrew Pitsicalis, an individual; CHRISTINE RUTH FLAHERTY, Defendants–Appellees/Cross–Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

762 F.3d 829

EXPERIENCE HENDRIX L.L.C., a Washington Limited Liability Company, and Authentic Hendrix L.L.C., a Washington Limited Liability Company, Plaintiffs–Appellants/Cross–Appellees,

v.HENDRIXLICENSING.COM LTD, a Nevada Corporation, DBA Hendrix Artwork, dba Hendrixartwork.com; Andrew Pitsicalis, an individual; CHRISTINE RUTH FLAHERTY, Defendants–Appellees/Cross–Appellants.

Nos. 11–35858, 11–35872.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted March 7, 2013.

Filed Jan. 29, 2014.

Amended Aug. 8, 2014.

Bennett Bigelow & Leedom, Seattle, WA, for Plaintiffs–Appellants/Cross–Appellees.

Thomas T. Osinski, Jr., Osinski Law Offices, P.L.L.C., Tacoma, WA, for Defendants–Appellees/Cross–Appellants.

Duncan Crabtree–Ireland and Danielle Van Lier, Screen Actors Guild, Inc., Los Angeles, CA, for Amicus Curiae Screen Actors Guild, Inc., American Federation of Television & Radio Artists, AFL–CIO, Luminary Group LLC, and the Estate of Marilyn Monroe, LLC.

Appeal from the United States District Court for the Western District of Washington, Thomas Zilly, Senior District Judge, Presiding. D.C. No. 2:09–CV–00285–TSZ.

Before: DAVID M. EBEL,^*WILLIAM A. FLETCHER, and JOHNNIE B. RAWLINSON, Circuit Judges.

ORDER AND AMENDED OPINIONORDER

The Opinion filed January 29, 2014, appearing at 742 F.3d 377, is amended sua sponte to remove footnote 6.

A copy of the our amended decision and original concurrence is attached to this Order and filed concurrently with this Order.

With this amendment, the panel has voted unanimously to DENY the petition for REHEARING and the petition for REHEARING EN BANC. The full court has been advised of the petition for rehearing en banc, and no judge has requested a vote on whether to rehear the matter. Fed. R.App. P.35.

The petition for rehearing and the petition for rehearing en banc are DENIED. No further petitions for panel rehearing or for rehearing en banc will be entertained.

OPINION

EBEL, Circuit Judge:

This litigation stems from a dispute over the commercial use of a deceased celebrity's image, likeness, and name. The sole heir of deceased rock legend Jimi Hendrix formed two companies, Plaintiffs Experience Hendrix, L.L.C., and its wholly owned subsidiary, Authentic Hendrix, L.L.C. (collectively “Experience Hendrix”). Among other things, Experience Hendrix owns trademarks that it uses to sell and license products related to Jimi Hendrix. In this litigation, Experience Hendrix succeeded on its claims alleging that Defendants Andrew Pitsicalis and his company, Hendrixlicensing.com, L.L.C. (collectively “Pitsicalis” ¹), were licensing Hendrix-relatedmerchandise that infringed Experience Hendrix's trademarks. As a result, the district court permanently enjoined Pitsicalis's infringing conduct, and a jury awarded Experience Hendrix damages under two statutes, the federal Lanham Act and Washington's Consumer Protection Act. The district court, however, significantly reduced the jury's award and, alternatively, ordered a new trial on damages. On the claims of Experience Hendrix, we VACATE the district court's permanent injunction so that one paragraph in the injunction may be clarified and reissued. We REVERSE the court's reduction of the damages award. We AFFIRM the district court's decision to grant a new trial. Finally, we REMAND Experience Hendrix's claims for further proceedings.

For his part, Pitsicalis sought a declaratory judgment declaring that a third statute, Washington's Personality Rights Act, does not afford the heir of Jimi Hendrix any postmortem publicity rights. The district court held that the Act does purport to give the heir of Jimi Hendrix post-mortem publicity rights, which Experience Hendrix would own. But the district court went on to hold that those portions of the Washington Personality Rights Act affording those publicity rights are unconstitutional. We AFFIRM the district court's decision interpreting the Act to give post-mortem publicity rights to Jimi Hendrix's heir, but REVERSE and VACATE the holding that the statute is unconstitutional as applied to the narrow circumstances presented here. Thus, we REMAND Pitsicalis's claims as well for further proceedings.

I. Background

Experience Hendrix holds a number of trademarks associated with Jimi Hendrix, including the names “Hendrix” and “Jimi Hendrix” and Jimi Hendrix's signature, as well as logos incorporating a “headshot” of Hendrix. Experience Hendrix uses these trademarks to market, sell and license Hendrix-related merchandise, including apparel, posters, and artwork sold to the public through Internet websites and brick-and-mortar retail stores throughout the United States, including the state of Washington.

Pitsicalis has also used Jimi Hendrix's celebrity status commercially. Pitsicalis owns, or has licenses to use, photographs and original pieces of art depicting Hendrix, as well as visual artwork created by Hendrix himself. In 2008, Pitsicalis began licensing the right to use these images to produce and sell Hendrix-related merchandise, including apparel, posters and household items. Like Experience Hendrix, Pitsicalis's licensees sold this merchandise over the Internet and in brick-and-mortar stores. Pitsicalis placed marks on his licensed products that used the names “Hendrix” and “Jimi Hendrix,” as well as Jimi Hendrix's signature and a logo of Hendrix's headshot with a guitar. In conducting his business, Pitsicalis also used two websites with the domain names hendrixlicensing. com and hendrixartwork. com.

In March 2009, Experience Hendrix sued Pitsicalis under two statutes. First, Experience Hendrix alleged that Pitsicalis was infringing Experience Hendrix's trademarks in violation of the federal Lanham Act, see15 U.S.C. §§ 1051–1127. Second, Experience Hendrix alleged that this trademark infringement also amounted to an unfair or deceptive trade practice proscribed by Washington's Consumer Protection Act (“WCPA”), seeWash. Rev.Code §§ 19.86.010–19.86.920. The district court granted Experience Hendrix partial summary judgment on the federal Lanham Act claim, concluding that Pitsicalis had infringed Experience Hendrix's trademarks. The court permanently enjoined Pitsicalis's infringing activity. At trial, a jury found that Pitsicalis's trademark infringement also amounted to an unfair or deceptive trade practice under the WCPA. Although the jury awarded Experience Hendrix damages under both statutes totaling $1,723,300, the district court reduced the jury's award to $60,000.

Pitsicalis, in turn, asserted counterclaims against Experience Hendrix, seeking a judgment declaring that a third statute, Washington's Personality Rights Act (“WPRA”), Wash. Rev.Code §§ 63.60.010–63.60.080, does not provide Experience Hendrix with Hendrix's post-mortem publicity rights. ² The district court granted Pitsicalis summary judgment on these counterclaims, concluding that, while the WPRA does afford Jimi Hendrix post-mortem publicity rights belonging to Experience Hendrix, those portions of the WPRA providing those rights are unconstitutional. These cross-appeals followed.

II. DISCUSSION

We address first Pitsicalis's counterclaims regarding the WPRA, before turning to Experience Hendrix's claims.

A. Jimi Hendrix's post-mortem publicity rights under the WPRA1. Standing

Through his counterclaims, Pitsicalis sought a judgment declaring that 1) the WPRA “does not apply to publicity rights in Jimi Hendrix” and, therefore, 2) “it is possible to trade in original images and likenesses of Jimi Hendrix without creating a per se infringement of Experience [Hendrix's] trademark rights.” As a threshold matter, Experience Hendrix contends that Pitsicalis lacks Article III standing to assert these declaratory judgment claims.

However, there is no doubt that an actual controversy exists between Pitsicalis and Experience Hendrix under the federal Lanham Act, in light of this ongoing litigation Experience Hendrix initiated against Pitsicalis. As a result of this litigation, Experience Hendrix has notified potential customers of Pitsicalis-licensed products as to Experience Hendrix's trademark rights. And there is no question about Experience Hendrix's standing to assert its Lanham Act claims against Pitsicalis for trademark infringement.

It is within this same litigation that Pitsicalis sought a judgment declaring that, under the WPRA, Experience Hendrix has acquired from Jimi Hendrix no post-mortem publicity rights, which Experience Hendrix could use to sue or threaten to sue Pitsicalis and his licensees, customers and potential customers. Experience Hendrix has in fact previously asserted Jimi Hendrix's publicity rights, albeit under an earlier version of the WPRA, in prior litigation which resulted in a final ruling that the initial version of the WPRA was inapplicable to Jimi Hendrix. That ruling was based upon choice-of-law principles which required application of New York law. New York was the domicile of Jimi Hendrix at the time of his death and it did not recognize these post-mortem rights. Experience Hendrix, LLC v. Electric Hendrix, LLC, No. C07–0338 TSZ, 2008 WL 3243896, at *2–*4 (W.D.Wash. Aug. 7, 2008) (unreported).

In 2008, however, the Washington legislature amended the WPRA to apply it “to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.” Wash. Rev.Code § 63.60.010. The amended WPRA recognizes that every person “has a property right in the use of his or her name, voice, signature, photograph, or likeness.” Id. That right existed or exists “before, on, or after June 11, 1998,” the date the WPRA originally took effect, and does not expire upon a person's death. Id. §§ 63.60.010, 63.60.030(3). The amended WPRA recognizes such a right of publicity “regardless of whether the law of the domicile, residence, or citizenship of the individual or personality at the time of death or otherwise recognizes a similar or identical property...