Intellectual Property Law

It's "Plausible" that Right of Publicity Amendments Apply to Hendrix Case

By Michael Atkins

Do last year’s amendments to Washington’s right of publicity statute affect the ongoing case between the Jimi Hendrix Estate’s licensing company and the seller of Jimi Hendrix artwork? Western District Judge Thomas Zilly concluded it’s “plausible.”

In Experience Hendrix, LLC v. HendrixLicensing.com, Ltd., the defendant art sellers asserted counterclaims against plaintiffs for an order declaring that “the current revised RCW 63.60 et seq. does not apply to publicity rights in Jimi Hendrix” and “it is possible to trade in original images and likenesses of Jimi Hendrix without creating a per se infringement of Plaintiffs’ trademark rights.” (STL posts on the amendments here and here.)

Plaintiffs moved to dismiss, arguing the counterclaims did not allege an “actual case or controversy.”

In a minute order, the court concluded otherwise:

“Plaintiffs own several trademarks incorporating the names HENDRIX or JIMI HENDRIX. In an Order issued in April 2005 in Experience Hendrix, L.L.C. v. The James Marshall Hendrix Found., the Court held that the Washington Personality Rights Act, RCW 63.60.010- .080, did not apply, and that under New York law, Jimi Hendrix’s right of publicity did not, upon his death, pass to his heir or, as a consequence, to plaintiffs. Order (C03-3462Z, docket no. 47), aff’d 240 Fed. Appx. 739 (9th Cir. 2007) [STL post on Ninth Circuit Decision here]. The Washington Personality Rights Act was amended in 2008, and now contains inter alia the following provision: ‘This chapter is intended to apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.’ RCW 63.60.010. Defendants seek declaratory judgments concerning (i) whether the amendments to the Washington Personality Rights Act affect plaintiffs’ rights in Jimi Hendrix’s ‘name, voice, signature, photograph, or likeness,’ see RCW 63.60.010 (defining a property right in such items), and (ii) whether defendants’ trade in likenesses of Jimi Hendrix infringe plaintiffs’ trademarks. Given the nature of defendants’ business and the historically adverse positions of the parties, the Court cannot conclude that defendants’ counterclaims are not ‘plausibly’ justiciable.”

The case cite is Experience Hendrix, LLC v. HendrixLicensing.com, No. 09-285 (W.D. Wash. July 30, 2009) (Zilly, J.).

Full post as published by Seattle Trademark Lawyer on August 19, 2009 (boomark / email).