Hendrix v. Hendrixlicensing.Com, C09–285Z.

766 F.Supp.2d 1122

98 U.S.P.Q.2d 1046

39 Media L. Rep. 1449

EXPERIENCE HENDRIX, L.L.C., et al., Plaintiffs,

v.HENDRIXLICENSING.COM, LTD, et al., Defendants.

No. C09–285Z.

United States District Court, W.D. Washington,at Seattle.

Feb. 8, 2011.

OPINION TEXT STARTS HEREWest CodenotesHeld UnconstitutionalWest's RCWA 63.60.010, 63.60.020(1, 2), 63.60.030(1)(a), (1)(b)(iv) William A. Drew, Elliott Ostrander & Preston, Portland, OR, Karen Wetherell Davis, Elliott Ostrander & Preston, Alfred E. Donohue, John D. Wilson, Jr., Shilpa Bhatia, Wilson, Smith, Cochran & Dickerson, Michael Madden, Bennett Bigelow & Leedom, Seattle, WA, for Plaintiffs.Thomas T. Osinski, Jr., Osinski Law Offices, Tacoma, WA, for Defendants.

ORDER

THOMAS S. ZILLY, District Judge.

THIS MATTER comes before the Court on defendants' motion for partial summary judgment, docket no. 67, which the Court previously granted in part, denied in part, and deferred in part, see Order (docket no. 102), and on plaintiffs' motion (as counterclaim defendants) for partial summary judgment, docket no. 64, as to defendants' state law counterclaims. Having reviewed all materials submitted in support of, and in opposition to, each motion, and having considered the oral arguments of counsel, the Court now enters the following Order.

Background

This case is part of a continuing saga of litigation concerning the legendary performer Jimi Hendrix. When he died intestate in 1970, Jimi Hendrix was domiciled in the State of New York. Under New York law, prior to his death, Jimi Hendrix enjoyed a statutory right not to have his name, portrait, or picture used for advertising or trade purposes without his written consent. See Order at 5–7 (docket no. 47), Experience Hendrix, L.L.C. v. The James Marshall Hendrix Foundation, Case No. C03–3462Z (W.D.Wash. Apr. 15, 2005) (citing N.Y. Civ. Rights Law §§ 50 & 51 ¹), aff'd, 240 Fed.Appx. 739 (9th Cir.2007) [the “ Foundation ” case]. In New York, this right is explicitly denominated a “right of privacy,” but it is also commonly referred to as a “right of publicity.”

In the Foundation case, the Court concluded that, pursuant to the law of New York, Jimi Hendrix's right of publicity did not survive his passing and did not descend to his father and sole heir, James A. Hendrix (“Al Hendrix”). See id. at 7. As a result, whatever rights were subsequently assigned by Al Hendrix to plaintiffs Experience Hendrix, L.L.C. and Authentic Hendrix, LLC (collectively, “Experience”) did not include Jimi Hendrix's right of publicity. Experience, however, owns copyrights in various songs written by Jimi Hendrix. See R. Hendrix Decl. at ¶ 2 (docket no. 83). Experience also has several federally registered trademarks incorporating Jimi Hendrix's name, image, signature, song titles, and/or lyrics. See Ex. 1 to Davis Decl. (docket no. 10–2).² Finally, Experience operates websites (“www. jimihendrix. com,” “www. authentic hendrix. com”) through which Jimi Hendrix related merchandise is sold. See J. Hendrix Decl. at ¶ 11 (docket no. 8). On at least one of these websites, Experience proclaims, contrary to the Court's earlier ruling, that it is “the sole controlling entity overseeing all aspects and uses of Jimi Hendrix's name, likeness, and image.” See Ex. D to Shea Decl. (docket no. 65–2).

Shortly after the Ninth Circuit affirmed this Court's ruling in the Foundation case that Experience has no right of publicity associated with Jimi Hendrix, the Washington legislature amended the Washington Personality Rights Act (“WPRA”). In 2008, RCW 63.60.010 was revised to provide inter alia that the property right in an individual's or a personality's “name, voice, signature, photograph, or likeness” “does not expire upon the death of the individual or personality, 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 right.”

Defendants ³ Andrew Pitsicalis and HendrixLicensing.com, LTD distribute or seek to distribute posters, fine art prints, apparel, and other novelty items bearing the likeness of, or art created by, Jimi Hendrix, accompanied with his name. Pitsicalis was formerly associated with Craig Dieffenbach and Electric Hendrix, LLC (collectively, “Dieffenbach”), as to whom the Court previously issued a permanent injunction against commercial use of the phrases JIMI HENDRIX ELECTRIC, JIMI HENDRIX ELECTRIC VODKA, HENDRIX ELECTRIC, and HENDRIX ELECTRIC VODKA. See Order at 5 and Suppl. Judgment & Permanent Injunction ( Case No. C07–338Z, docket nos. 104 & 127). Pitsicalis is undisputedly aware of the prior suit between Experience and Dieffenbach, and his current business endeavors are not alleged to be in violation of the Court's earlier injunction.

Instead, in this action, Experience contends that defendants have violated the Lanham Act, as well as the Washington Consumer Protection Act (“CPA”) and state common law, by using certain business names (“Hendrix Licensing,” “Hendrix Artwork”), domain names (www. hendrix licensing. com, www. hendrix artwork. com), and logos (“guitar and headshot,” “signature”).⁴ Experience also seeks to inhibit defendants from employing various song titles and lyrics (AXIS: BOLD AS LOVE, PURPLE HAZE, CASTLES MADE OF SAND, FIRE, FOXY LADY, STONE FREE, HIGHWAY CHILE, THE WIND CRIES MARY), as well as stylized renditions of the names “HENDRIX” and “JIMI HENDRIX.” Experience contends that defendants' references to Jimi Hendrix and use of his likeness “create a false association between [Experience] and [d]efendants' products, to the benefit of [d]efendants, and the detriment of [Experience] and [its tradem]arks.” Amended Complaint at 21, ¶ 38(g) (docket no. 5).

After commencing this lawsuit, counsel for Experience sent a letter, along with a copy of the complaint, to Spencer Gifts, LLC, one of defendants' customers. See Ex. E to Shea Decl. (docket no. 65–2). The letter identified one of plaintiffs' registered marks, namely the design mark “AUTHENTIC HENDRIX BUST,” and indicated that suit had been commenced against defendants for “unauthorized use and licensing” of “similar or identical” marks. Id. The letter summarized Experience's understanding that Spencer Gifts “sells, advertises, and distributes goods that use the allegedly infringing marks.” Id.

Also after initiating this action, Experience issued a press release accusing defendants of “purposefully committ[ing] gross trademark infringements and other illegal acts through their marketing and licensing of Jimi Hendrix branded merchandise.” Ex. 1 to Minutes (docket no. 103) (emphasis added). The press release further indicated that Experience Hendrix, L.L.C. and Authentic Hendrix LLC “are the family owned companies entrusted with preserving and protecting Jimi's Legacy.” Id.

Experience subsequently sought a preliminary injunction. The Court denied Experience's motion in part, concluding that defendants' use of the names “HENDRIX” or “JIMI HENDRIX” to identify either (i) the individual portrayed in an image, or (ii) the author of certain artwork, falls within the category of nominative fair use. The Court declined to preclude such nominative fair uses of “HENDRIX” or “JIMI HENDRIX.” See Order (docket no. 27).

After the preliminary injunction issued, counsel for Experience sent another letter to Spencer Gifts, enclosing a copy of the preliminary injunction; counsel did not, however, include the related order in which the Court declined to enjoin any nominative fair use of the names “HENDRIX” and “JIMI HENDRIX.” See Ex. F to Shea Decl. (docket no. 65–2 at 31–32). In subsequent discussions with counsel for Spencer Gifts, counsel for Experience allegedly took “the position that the court's injunction prohibits [Spencer Gifts] from selling any merchandise from HendrixLicensing or related companies.” Ex. 1 to Osinski Decl. (docket no. 79–1) (emphasis added).

Having learned of these communications, counsel for defendants requested that counsel for Experience issue an opinion letter (or retraction) clarifying that Spencer Gifts may sell products featuring images and likenesses of Jimi Hendrix without running afoul of the Court's preliminary injunction or risking liability for trademark infringement. See Ex. 3 to Osinski Decl. (docket no. 79–3). The requested “retraction” was allegedly never made. See Amended Answer & Counterclaims at 13, ¶ 14 (docket no. 52). As a result, despite having a keen interest in arguably noninfringing products bearing images of Jimi Hendrix that would be licensed by Andrew Pitsicalis, Spencer Gifts did not place any orders for these products. See Rosenberg Decl. (docket no. 78).

Defendants allege that Experience's press release and communications with Spencer Gifts are actionable under one or more of the following theories: trade libel or defamation, tortious interference with business expectancy, or tortious interference with contractual relations. In addition, defendants contend that Experience's public misrepresentations concerning exclusive control over the “name, likeness, and image” of Jimi Hendrix violate the CPA. In their motion for partial summary judgment, Experience Hendrix, L.L.C. and Authentic Hendrix, LLC, as counterclaim defendants, seek dismissal of all of these state law counterclaims.

Experience did not, however, move for partial summary judgment as to defendants' declaratory judgment counterclaims. In those counterclaims, defendants seek judicial declarations that the 2008 amendments to the WPRA do not apply to Jimi Hendrix and that defendants may “trade in original images and likenesses of Jimi Hendrix” without infringing plaintiffs' trademark rights. Amended Answer and Counterclaims at ¶¶ 19 & 23 (docket no. 52). Unlike Experience, defendants have moved for partial summary judgment on these two counterclaims, but not on the four state law counterclaims. Defendants also seek dismissal of plaintiffs' claim for false...