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May 23, 2017

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Las Vegas Jimi Hendrix merchandiser wins round in lawsuit

Image

AP Photo/EMP/Authentic Hendrix LLC, Graham Page

Jimi Hendrix performs in this 1969 image released by Sony Records.

A Las Vegas company co-owned by Leon Hendrix, brother of rock icon Jimi Hendrix, has scored a legal victory in trademark litigation with the company that licenses Hendrix music and trademarks.

U.S. District Judge Thomas Zilly in Seattle on Tuesday declared unconstitutional a Washington state law that would have provided a "right of publicity" to Experience Hendrix LLC and Authentic Hendrix LLC, companies controlled by Leon Hendrix's sister by adoption Janie Hendrix.

Zilly's ruling appears to strengthen the rights of the Las Vegas company -- formerly known as HendrixLicensing.com, doing business as Hendrix Artwork and Hendrixartwork.com -- to sell Hendrix merchandise.

Because of earlier court rulings in the case against HendrixLicensing.com, it now does business as Rockin Artwork.

Rockin Artwork is owned by Leon Hendrix and Las Vegas businessman Andrew Pitsicalis, the defendant in a 2009 lawsuit filed by Janie Hendrix's companies.

The origin of the legal disputes pitting Janie Hendrix against her brother Leon Hendrix and Pitsicalis date to 1970 with the death at age 27 in London of Jimi Hendrix -- known as a revolutionary electric guitarist and for psychedelic songs like "Purple Haze," "All Along the Watchtower" and "Foxy Lady."

Hendrix was a resident of New York at the time of his death and his father Al Hendrix inherited his estate. After Al's death in 2002, Al's adopted daughter Janie took over the Jimi Hendrix licensing companies.

Those companies control the Jimi Hendrix music, recordings and artistic properties and have federally-registered trademarks including rights to the phrases "Jimi Hendrix," "The Jimi Hendrix Experience" and certain design marks.

In 2009, Janie Hendrix's companies sued Pitsicalis, HendrixLicensing.com, Hendrix Artwork and Hendrixartwork.com in federal court in Seattle, alleging trademark infringement because those companies were using the Hendrix name and selling Hendrix-oriented merchandise, allegedly in a manner "designed to capitalize on the goodwill and source recognition associated with the Hendrix family companies' marks and rights."

The goods at issue include artwork, posters, t-shirts and home decor items, the lawsuit charged.

Leon Hendrix is not a defendant in the lawsuit -- he and Pitsicalis created RockinArtwork LLC after the suit was filed.

As the case progressed, Zilly issued an injunction barring the Las Vegas company from using website domain names using the Hendrix name, a certain Hendrix artwork guitar and headshot logo and Jimi Hendrix's signature.

But Zilly found it would be fair use for the Las Vegas company to continue using the Jimi Hendrix name to describe items it could legally sell.

And he found that under New York law, Janie Hendrix's companies had "no post-mortem rights of publicity and they cannot preclude anyone from creating and then selling sketches, portraits, caricatures, dolls, bobbleheads or other likenesses of Jimi Hendrix."

In Tuesday's ruling, Zilly struck down amendments the Washington Legislature made in 2008 to the Washington Personality Rights Act (WAPRA).

Those amendments would have strengthened the case of Janie Hendrix by allowing anyone, regardless of their home state, to sue in Washington state to enforce their rights.

The amendments provided a retroactive property right "in an individual's or a personality's name, voice, signature, photograph or likeness," court records show. That right would supersede the law in New York, where there was no such right at the time of Hendrix's death.

"The legislation is accompanied by an expression of intent 'to apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death,'" the judge noted in his ruling.

"To select, as the WAPRA suggests, the law of a state to which the individual or personality is a stranger (is controlling), constitutes no less random an act than blindly throwing darts at a map on the wall," Zilly wrote in his ruling.

"Given the arbitrary and unfair nature of the WAPRA's choice-of-law directive concerning the existence of a post-mortem right of publicity ... such provision violates the due process and full faith and credit clauses of the United States Constitution," Zilly wrote, later adding it also violated the Constitution's commerce clause regulating interstate commerce.

Zilly wrote "that defendants are not constrained by any right of publicity from trading in images or likenesses of Jimi Hendrix, and ... that use of the names 'Hendrix' or 'Jimi Hendrix' to identify the subject of an image or the author of a particular work of art constitutes nominative fair use of those names or marks."

Pitsicalis, who had halted sales of Hendrix merchandise because of the lawsuit, will now resume those sales, his Las Vegas attorney Andre Lagomarsino said.

Given that Janie Hendrix's companies gross tens of millions of dollars annually in licensing fees and music revenue, Lagomarsino called Tuesday's decision "a victory for the little guy."

Pitsicalis, in an interview, said that he and Leon Hendrix intend to grow the company to generate revenue to benefit the Hendrix family members he claims have been unfairly deprived of their share of the Jimi Hendrix fortune -- and to generate revenue for their charitable causes.

The trademark lawsuit will continue and is headed toward a trial in May. Issues remaining in the lawsuit include counterclaims Pitsicalis made against Janie Hendrix's companies.

Pitsicalis says that after he was ordered to stop using the Jimi Hendrix name for his website, Janie Hendrix distributed false information to retailers of his products claiming he had no right to sell Jimi Hendrix items -- costing him substantial lost sales.

Michael Atkins, a Seattle trademark attorney, commented on Zilly's ruling on his blog.

"I would imagine the order is certain to be appealed," Atkins said on his blog.

"I am deeply gladdened that the court has vindicated our long-held position that Washington’s Publicity Rights Act does not apply to Jimi Hendrix," said Thomas Osinski Jr., the Tacoma, Wash., attorney who represented Pitsicalis and his companies in the litigation.

"It was a well thought out and thorough opinion that explained in detail how publicity rights, like so many other rights, need to be determined under the law of the state a famous person resided in at the time of their death. Washington’s statute tried to upset that majority and common sense rule, and was struck down as a result," Osinski said.

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