In Experience Hendrix L.L.C. v. HendrixLicensing.com LTD, Nos. 11–35858, 11–35872 (9th Cir. Jan. 29, 2014), the Ninth Circuit Court of Appeals upheld the constitutionality of Washington State’s Personality Rights Act (WPRA), thereby protecting the post-mortem publicity rights of Jimi Hendrix from unauthorized usage of his name and likeness. By holding the WPRA constitutional, the court ruled in favor of the heir of Jimi Hendrix’s estate in an infringement action filed against an entity affiliated with Jimi’s younger brother, Leon Hendrix.
By way of background, Jimi Hendrix, who is widely recognized as one of the best guitarists to ever strap on a Stratocaster, is famous for writing songs such as “Purple Haze” and “The Wind Cries Mary.” Making his legacy more extraordinary was the fact that Jimi was left-handed, but learned to play a right-handed guitar upside-down. In September 1970, at the height of his career, Jimi died without a will from barbiturate intoxication.
After Jimi’s passing, his estate was controlled entirely by his father, Al Hendrix. On behalf of the estate, Al formed several entities, including Experience Hendrix, L.L.C. (Experience Hendrix), which owned several trademarks to Jimi’s image, likeness and name. Through Experience Hendrix, Al sold and licensed products related to Jimi Hendrix on behalf of the estate. At the time of Al’s death in 2002, the estate was estimated to be worth between $150 million and $240 million. In his will, Al left virtually everything to his adopted daughter, and Jimi’s stepsister, Janie Hendrix. In contrast, Jimi’s younger brother, Leon Hendrix, reportedly received only a souvenir gold record.
In the following years, Leon partnered with businessman Andrew Pitsicalis to create HendrixLicensing.com, L.L.C., for the purpose of selling unofficial but non-infringing goods bearing Jimi Hendrix’s likeness. In 2008, the company began licensing the rights to these visual works to retailers who began selling licensed products in stores and over the Internet.
In March 2009, Experience Hendrix filed a lawsuit styled Experience Hendrix L.L.C. v. HendrixLicensing.com LTD, 766 F. Supp. 2d 1122 (W.D. Wash. 2011), against Hendrix Licensing.com, L.L.C. and Pitsicalis (collectively, HendrixLicensing) asserting claims for trademark infringement under the Lanham Act, and for unfair business practices under the State of Washington Consumer Protection Act (WCPA). (Leon Hendrix was not named as a defendant.) Specifically, Experience Hendrix alleged that the defendants unlawfully were using certain business names, domain names and logos that infringed upon its trademarks. HendrixLicensing asserted a counterclaim seeking a judicial declaration that WPRA did not provide Jimi Hendrix’s post-mortem publicity rights to Experience Hendrix.
The district court analyzed that portion of the WPRA, which provides, in pertinent part, that every person “has a property right in the use of his or her name, voice, signature, photograph, or likeness . . . 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.” Furthermore, the enforcement provisions of the WPRA provide that “[a]ny person who uses or authorizes the use of a . . . deceased . . . personality’s name, voice, signature, photograph, or likeness, on or in goods, merchandise, or products entered into commerce in [Washington] . . . without . . . consent of the owner of the right, has infringed such [personality] rights.”
The district court granted partial summary judgment in favor of Experience Hendrix on its Lanham Act claim, finding that HendrixLicensing did, in fact, infringe on trademarks held by the plaintiff. Additionally, the WCPA claim was tried before a jury, which found in favor of Experience Hendrix on the grounds that the trademark infringement also amounted to an unfair or deceptive trade practice under the WCPA.
With regard to HendrixLicensing’s counterclaim, the district court found that the WPRA does provide for post-mortem publicity rights. However, it also found that the portions of the WPRA providing such rights were unconstitutional. The district court reasoned that, since Jimi was domiciled in the State of New York at the time of his death, applying the WPRA instead of New York law would violate the provisions of the due process and full faith and credit clauses of the U.S. Constitution.
HendrixLicensing filed an appeal contending that it had a reasonable apprehension that it will be sued in the future by Experience Hendrix based upon the district court’s interpretation of the WPRA. According to HendrixLicensing, such an action would interfere with the sales of HendrixLicensing’s unofficial but non-infringing goods bearing Hendrix’s likeness in the State of Washington. In analyzing the issues on appeal, the Ninth Circuit found that since HendrixLicensing had narrowly tailored its appeal to sales of goods within the State of Washington, the state had a significant interest in the outcome of this matter. As such, the Ninth Circuit reasoned that the WPRA could be enforced without restricting the protections set forth in the due process and full faith and credit clauses. Accordingly, the Ninth Circuit found the WPRA to be constitutional and reversed the district court’s decision on the defendant’s summary judgment, with instructions that the district court should enter summary judgment in favor of Experience Hendrix.
The Ninth Circuit’s ruling has garnered much attention from performers, athletes and other public figures alike. Indeed, the Screen Actors Guild-American Federation of Television and Radio Artists and the Estate of Marilyn Monroe filed an amicus brief to lend support to the arguments being made by Experience Hendrix, and in favor of post-mortem publicity rights. The parties were concerned that the district court’s finding that the WPRA is unconstitutional created further uncertainty regarding the status of post-mortem publicity rights, purely based upon where the decedent was domiciled at the time of death. Furthermore, this decision could lead to unjust results where, for years, an artist like Jimi Hendrix created valuable publicity rights in a state like Washington, only for his beneficiaries to lose them when the artist dies while residing in a state without such protections. While the Ninth Circuit’s decision is narrowly tailored to address only those goods sold within the borders of Washington, it still manages to provide some clarity regarding the state’s right-of-publicity law.