A recent opinion by the Ninth Circuit Court of Appeals concerning a dispute over the use of trademarks associated with Jimi Hendrix, even though deceased, should remind those thinking of using the images, likenesses or names of celebrities, whether alive or dead, to proceed with caution.
In an earlier blog I discussed a court decision in which the football celebrity, James Brown, did not fare well with respect to the First Amendment rights of a game developer using his likeness as an avatar.(Link to prior post.)
But in Experience Hendrix LLC v Hendrixlicensing.com Ltd, the court ruled in favor of the plaintiff who holds trademarks that it uses to license and sell products related to Jimi Hendrix. (See full opinion.)
Andrew Pitsicalis and his company, Hendrixlicensing.com, LLC, the defendants, (collectively “Pitsicalis”), were licensing Hendrix-related merchandise. In contrast to the facts in the James Brown case, the defendants here were not creating anything new. Rather, Pitsicalis sought to cash in on the fame of Jimi Hendrix by relying on an argument that, because the celebrity was dead, the heir did not have post-mortem publicity rights and therefore could not prevent Pitsicalis from trading in original images and likenesses of Mr. Hendrix because there was no per se infringement of the plaintiff’s trademark rights.
Pitsicalis’ argument did not prevent a jury from hearing the case and finding for the plaintiff. The trial court entered a permanent injunction in favor of the plaintiff. However the judge gave Pitsicalis somewhat of a reprieve by reducing the jury’s damages award, which was in excess of $1.7 million, to $60,000 and by limiting the attorney fees award to one tenth of the requested $500,000.
On appeal, the Ninth Circuit Court of Appeals, while remanding the case for a new trial on damages, telegraphed its willingness to allow the higher jury award and suggested that the trial court reconsider its decision about attorney fees.
From a business person’s point of view, this case screams “Be Careful” if you are considering the use of images, likenesses or names of the famous, whether dead or alive.