Ninth Circuit Upholds WA State Publicity Rights Amendment

The U.S. Court of Appeals for the Ninth Circuit upheld the constitutionality of Washington's publicity rights law in a trademark dispute over the rights to singer and guitarist Jimi Hendrix's name and likeness. Experience Hendrix LLC v. Hendrixlicensing.com Ltd., 11-35858.

Experience Hendrix LLC, the Seattle company owned by Hendrix's family members, claimed in a 2009 suit that Hendrixlicensing.com LLC and its owner, Andrew Pitsicalis, were licensing merchandise in violation of its trademarks. Pitsicalis asked for a declaratory judgment that Experience Hendrix could not bring claims under Washington's Personality Rights Act, Wash. Rev. Code ”63.60.010-63.60.080. Although it hadn't sued under the act, Experience Hendrix had done so unsuccessfully in the past ' but the law was amended to grant post-mortem publicity rights regardless of where a person lived or died. Hendrix died in New York in 1970.

Judge Thomas Zilly of the U.S. District Court for the Western District of Washington found in February 2011 that the amended Washington statute violated the due process and full faith and credit clauses of the U.S. Constitution, as well as the dormant commerce clause. The Ninth Circuit reversed that ruling.

“Washington has sufficiently significant contacts with the actual, non-speculative controversy at issue here, which involves the loss of sales in Washington of Pitsicalis-licensed goods,” the appellate panel ruled. “Therefore, because these contacts are sufficient to give Washington an interest in applying its own law to this controversy, it is not arbitrary or unfair to apply the [the act] here.”

Thomas Osinski of Osinski Law Offices in Tacoma, WA, attorney for Hendrixlicensing.com and Pitsicalis, who is the business partner of Hendrix's brother, Leon Hendrix, said in an e-mailed statement that the ruling only affects products sold in the state of Washington. “In a modern economy, allowing one state to elect to control what celebrity-based products can and cannot be sold within its borders is an odd result and will surely lead to further litigation,” Osinski wrote. “Thus my clients will have no choice but pursue legal recourse at the trial and appellate level to restore Judge Zilly's common sense ruling against Washington's outlier status.”

John Wilson of Seattle's Wilson Smith Cochran Dickerson, represents Experience Hendrix.

The case drew the attention of several entertainment and sports trade groups, including the Screen Actors Guild (now SAG-AFTRA) and the American Federation of Television & Radio Artists, which filed an amicus brief asking the panel to reverse Zilly's constitutional finding.

The appellate panel also addressed the underlying trademark claims. In 2011, a jury awarded Experience Hendrix more than $1.7 million in damages under the Lanham Act and Washington's Consumer Protection Act. Zilly reduced the award to $60,000 and ordered a new trial on damages. The Ninth Circuit panel reversed the reduction of the damages, finding “legally sufficient evidence to support that award,” but affirmed Zilly's grant for a new trial given, among other things, possible confusion over jury instructions.

Amanda Bronstad is a Staff Reporter for The National Law Journal, an ALM Media affiliate of The Intellectual Property Strategist.

The U.S. Court of Appeals for the Ninth Circuit upheld the constitutionality of Washington's publicity rights law in a trademark dispute over the rights to singer and guitarist Jimi Hendrix's name and likeness. Experience Hendrix LLC v. Hendrixlicensing.com Ltd., 11-35858.

Experience Hendrix LLC, the Seattle company owned by Hendrix's family members, claimed in a 2009 suit that Hendrixlicensing.com LLC and its owner, Andrew Pitsicalis, were licensing merchandise in violation of its trademarks. Pitsicalis asked for a declaratory judgment that Experience Hendrix could not bring claims under Washington's Personality Rights Act, Wash. Rev. Code ”63.60.010-63.60.080. Although it hadn't sued under the act, Experience Hendrix had done so unsuccessfully in the past ' but the law was amended to grant post-mortem publicity rights regardless of where a person lived or died. Hendrix died in New York in 1970.

Judge Thomas Zilly of the U.S. District Court for the Western District of Washington found in February 2011 that the amended Washington statute violated the due process and full faith and credit clauses of the U.S. Constitution, as well as the dormant commerce clause. The Ninth Circuit reversed that ruling.

“Washington has sufficiently significant contacts with the actual, non-speculative controversy at issue here, which involves the loss of sales in Washington of Pitsicalis-licensed goods,” the appellate panel ruled. “Therefore, because these contacts are sufficient to give Washington an interest in applying its own law to this controversy, it is not arbitrary or unfair to apply the [the act] here.”

Thomas Osinski of Osinski Law Offices in Tacoma, WA, attorney for Hendrixlicensing.com and Pitsicalis, who is the business partner of Hendrix's brother, Leon Hendrix, said in an e-mailed statement that the ruling only affects products sold in the state of Washington. “In a modern economy, allowing one state to elect to control what celebrity-based products can and cannot be sold within its borders is an odd result and will surely lead to further litigation,” Osinski wrote. “Thus my clients will have no choice but pursue legal recourse at the trial and appellate level to restore Judge Zilly's common sense ruling against Washington's outlier status.”

John Wilson of Seattle's Wilson Smith Cochran Dickerson, represents Experience Hendrix.

The case drew the attention of several entertainment and sports trade groups, including the Screen Actors Guild (now SAG-AFTRA) and the American Federation of Television & Radio Artists, which filed an amicus brief asking the panel to reverse Zilly's constitutional finding.

The appellate panel also addressed the underlying trademark claims. In 2011, a jury awarded Experience Hendrix more than $1.7 million in damages under the Lanham Act and Washington's Consumer Protection Act. Zilly reduced the award to $60,000 and ordered a new trial on damages. The Ninth Circuit panel reversed the reduction of the damages, finding “legally sufficient evidence to support that award,” but affirmed Zilly's grant for a new trial given, among other things, possible confusion over jury instructions.

Amanda Bronstad is a Staff Reporter for The National Law Journal, an ALM Media affiliate of The Intellectual Property Strategist.