Judge Reduces TM Jury Verdict Award To Hendrix

Experience Hendrix, LLC v. Hendrixlicensing.com, Ltd. et al., No. 2:09-cv-00285 (W.D. Wash. filed Sep. 21, 2011) [Doc. 160].

Plaintiffs own various tradmarks incorporating Jimi Hendrix's name, image, signature, song titles and/or lyrics. Defendants used one or more of these federally registered markes on products bearing Hendrix's image or art he created. The case proceeded to trial on three issues: damages for trademark infringement, defendants' liability for violation of Washington's Consumer Protection Act, and upon a finding of liability, actual damages for the consumer protection violation. After trial, the jury deliberated and rendered a verdict in favor of plaintiffs awarding, on the infringement claim, actual damages of $306,650 and defendants' profits of $60,000.

The Court concluded that the evidence, when construed in the light most favorable to plaintiffs, permitted only one reasonable conclusion, which was contrary to the jury's verdict concerning lost profits. "Having entirely failed to carry their burden proving expenses, plaintiffs are not entitled, as a matter of law, to an award of lost profits."

The Court further concluded that the jury's awards for injury to reputation and injury to goodwill were contrary to the Court's instructions and unsupported by the evidence.

The Court denied plaintiffs' motion for attorney fees under the Lanham Act in light of defendants' overall success and lack of bad faith. However, Plaintiffs were entitled to attorneys fees under the state consumer protection claim -- which the Court limited to $50,000 (or 10% of the amount requested by Plaintiffs).

Lastly, the Court entered a limited permanent injunction.

Right Of Publicity In Washington State Hendrix Case

Experience Hendrix, LLC v. Hendrixlicensing.com, Ltd., No C09-285Z (W.D. Wash. Feb. 8, 2011). Decision here.

Washington State enacted a law that rights of publicity do not expire upon the death of the individual. Defendants distribute merchandise bearing Jimi Hendrix's likeness, accompanied with his name. If applied in the litigaiton, the statue would deem all rights to the use of Jimi Hendrix's name, voice, signature, photograph, or likeness in plaintiff (as assignee of Hendrix's intestate heir). Such result would preclude defendants, absent plaintiff's consent, from commercially distributing images of Jimi Hendrix, at least in the State of Washington.

Although plaintiff sought to avoid the "constitutional thicket" concerning the Washington statute by not pleading a cause of action thereunder, the Court held that plaintiff's allegations implicate the right of publicity. Thus, plaintiff could not avoid "the fundamental issue in this case, namely whether [the statue] " had the effect of vesting in [plaintiff] any right of publicity relating to JImi Hendrix such that [plaintiff] may preclude defendants from trading in images of, or art created by, Jimi Hendrix."

In analyzing the constitutionality of the statute, the Court noted that the statute purports to govern whether a right of publicity exists, whether it continues post-mortem, and how it may be transferred during life and after death, regardless of where the particular individual or personality is or was domiciled. The Court held that the statute violated the Due Process and Full Faith and Credit clauses of the Constitution and consequently, under New York law, plaintiff had no publicity rights. The court stressed that the statute purports to govern advertising and fundraising activities everywhere. Also, under the Due Process Clause, to apply its own law, Washington must have a significant contact or significant aggregation of contacts, creating state interests, such that choice of its law is neither arbitrary nor fundamentally unfair. The Court held that applying Washington law to the issue of descendbility was arbitrary and unfair because the domicile at death has substantial relevant contacts.

The court also found that application of the Washington statute would cause forum shopping by having plaintiffs divert sales to Washington, and would require users of the rights (potential defendants) to attempt to restrict commercial activity to avoid application of the statute. Applying the domicile-at-death rule would avoid these problems and provide certainty.

Miami Heat: Hendrix, Now Beatles

Fuego Entertainment, whom OTCS reported plans to release Jimi Hendrix recordings without authorization from Experience Hendrix, is back in the news: the independent label plans to release 15 never-before-heard Beatles live recordings (the first to feature then new-drummer Ringo) made in 1962 at the Star Club in Hamburg, Germany.

However, there is no set release-date, based on what Billboard quotes as "legalities".

If 6 Was 9

Experience Hendrix -- who since 1995 has owned and administered all the music and related rights created by the legendary guitarist, singer and songwriter Jimi Hendrix -- is in a legal battle to suppress over 200 bootlegged recordings purchased by Fuego Entertainment. The bootlegged recordings were previously marketed in the UK, and Fuego Entertainment intends to resume their unauthorized exploitation despite appellate decisions in England rejecting claims that the UK distributor had rights to distribute and license the recordings.

If OTCS may direct a Hendrix quote to Fuego, "You're just like crosstown traffic - so hard to get through to you!"