A federal appeals court reinstated a Washington jury’s trademark violation verdict against the seller of Rock legend Jimi Hendrix memorabilia, but the panel ordered a new trial to determine damages.
The 9th U.S. Circuit Court of Appeals Wednesday overturned the decision by U.S. District Judge Thomas Zilly in Seattle that Washington’s Personality Rights Act is unconstitutional. Zilly found the state law gave the Hendrix heir post-death publicity rights but Zilly went on to strike down the law, saying the post-death publicity rights were unconstitutional.
Washington’s law was amended in 1998 to recognize a property right in the use of anyone’s name, voice, photo or likeness, whether living or dead and regardless of where they live. The electric guitar legend died in 1970 while he was living in New York and that state does not recognize post-death publicity rights.
However, the circuit ruling has limited application to the sale of Hendrix’ items in Washington state.
“Washington’s approach to post-mortem personality rights raises difficult questions regarding whether another state must recognize the broad personality rights that Washington provides,” the opinion states.
The panel said it would not resolve that issue, instead, if held the question of infringement is limited to Experience Hendrix’s attempt to protect sale in Washington of unofficial goods bearing Hendrix’s likeness and sold by accused infringer Andrew Pitsicalis.
The appeals court found Pitsicalis, who is in business with Hendrix’ brother, had violated the Experience Hendrix trademark with the sale of posters, photos clothes, artwork and other items portraying Hendrix. Hendrix brother, Leon Hendrix, was not involved in the lawsuit.
The original jury award in the case found Pitsicalis liable for $1.7 million, but Zilly reduced it to $60,000 and then struck down the state law as unconstitutional.
The appeals court said there should be a new trial on the amount of damages only.
The Experience Hendrix was co-owned by the rock star’s late cousin Robert Hendrix. Jimi’s sister, Janie Hendrix, now controls Experience Hendrix.
“We conclude that the WPRA can be applied constitutionally to the narrow controversy at issue here,” the court said in announcing its reversal of Zilly’s decision to grant Pitsicalis’ request to dismiss the suit.
The appeals court ordered the reinstatement of an infringement finding against Pitsicalis and sent the case back to determine the amount of damages at a new trial.
Pitsicalis sued asking the court to declare that he was not infringing Hendrix trademark or publicity rights, despite the amended Washington state law.
Experience Hendrix countered with its own suit accusing Pitsicalis of infringing Experience Hendrix trademarks by selling Hendrix-related products or licensing others to sell Hendrix materials over the internet.
Pitsicalis argued unsuccessfully the Washington law on publicity rights was unconstitutional as it was applied in this case because Hendrix lived in New York at the time of his death in 1970 and New York’s right-of-publicity law does not extend to the dead.
Hendrix is widely considered the most influential electric guitarist in rock history. He headlined at the Woodstock Music festival in 1968, creating a classic of the era when he performed the US National anthem, “The Star-Spangled Banner” with amplified feedback and distortion. He died in London in 1970 of asphyxia and barbiturate intoxication.
Case: Experience Hendrix v. HendrixLicensing.com, No. 11-35858