Experience Hendrix L.L.C. v. Hendrixlicensing.com Ltd.

Court of Appeals for the Ninth Circuit
762 F.3d 829 (2014)

ELI5:

Rule of Law:

A state may constitutionally apply its post-mortem right of publicity statute to commercial conduct that occurs within its borders, even if the deceased individual was domiciled in another state that does not recognize such a right.

Facts:

Jimi Hendrix, a world-famous musician, was domiciled in New York at the time of his death in 1970. New York law does not recognize post-mortem publicity rights.
Experience Hendrix, L.L.C., formed by Jimi Hendrix's sole heir, owns various trademarks associated with Jimi Hendrix, including his name and signature, which it licenses for merchandise.
Andrew Pitsicalis and his company, Hendrixlicensing.com, owned or licensed photographs and artwork of Jimi Hendrix.
Beginning in 2008, Pitsicalis began licensing the right to use these images to produce and sell Hendrix-related merchandise, such as apparel and posters, which were sold online and in retail stores.
Pitsicalis's licensed products used marks including the names 'Hendrix' and 'Jimi Hendrix,' as well as Hendrix's signature and a headshot logo.
In 2008, Washington state amended its Personality Rights Act (WPRA) to apply to all individuals, living or deceased, 'regardless of place of domicile or place of domicile at time of death.'
After the WPRA amendment, one of Pitsicalis's licensees unsuccessfully attempted to sell merchandise bearing Hendrix's image to Spencer's Gifts, a retailer in Washington, allegedly due to interference from Experience Hendrix asserting rights beyond its trademarks.
Pitsicalis conducted his business using the domain names hendrixlicensing.com and hendrixartwork.com.

Procedural Posture:

Experience Hendrix sued Pitsicalis in the U.S. District Court for the Western District of Washington for federal trademark infringement and violation of Washington's Consumer Protection Act (WCPA).
Pitsicalis asserted counterclaims, seeking a declaratory judgment that Washington's Personality Rights Act (WPRA) did not grant post-mortem publicity rights to Experience Hendrix.
The district court granted partial summary judgment to Experience Hendrix on its trademark infringement claim.
The district court granted summary judgment to Pitsicalis on his counterclaim, ruling that while the WPRA facially applied, its application in this case was unconstitutional.
Following a trial on damages, a jury awarded Experience Hendrix over $1.7 million.
The district court then granted Pitsicalis's post-verdict motion for judgment as a matter of law (Rule 50(b)), drastically reducing the jury's damage award to $60,000.
The district court also conditionally granted Pitsicalis's alternative motion for a new trial on damages (Rule 59).
Both parties cross-appealed to the U.S. Court of Appeals for the Ninth Circuit.

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Issue:

Does Washington's Personality Rights Act, which grants post-mortem publicity rights to individuals regardless of their domicile at death, violate the U.S. Constitution's Due Process, Full Faith and Credit, or dormant Commerce Clauses when applied to prevent the sale of merchandise in Washington bearing the likeness of a celebrity who was domiciled in New York at the time of his death?

Opinions:

Majority - Ebel, J.

No, the application of Washington's Personality Rights Act to this specific controversy does not violate the Constitution. The court holds that because the dispute involves commercial activity within Washington, the state has a sufficient interest to apply its own law. The court's reasoning is as follows: (1) Under the choice-of-law analysis from Allstate Ins. Co. v. Hague, Washington has 'significant contacts' with the controversy because it involves the interference with sales of goods within Washington. This state interest makes the application of its law neither arbitrary nor fundamentally unfair, satisfying the Due Process and Full Faith and Credit Clauses. (2) The WPRA does not violate the dormant Commerce Clause because its application here is limited to a controversy within Washington and does not regulate transactions occurring 'wholly outside' the state's borders. (3) On the trademark claims, the court affirms Pitsicalis's liability, reverses the district court's reduction of the jury's damage award under Rule 50(b) as there was a legally sufficient evidentiary basis for it, but affirms the district court's alternative order for a new trial on damages under Rule 59 because the verdict was against the 'clear weight of the evidence' and a product of jury confusion.

Concurring-in-part-and-dissenting-in-part - Rawlinson, J.

I concur with the majority's conclusions on the constitutionality of the WPRA, Pitsicalis's trademark liability, and the need to clarify the injunction. However, I dissent from the decision to affirm a new trial on damages. The majority correctly found there was legally sufficient evidence to support the jury's verdict under Rule 50, which should preclude a finding that the verdict was against the 'clear weight of the evidence' under the more stringent Rule 59 standard for granting a new trial. Experience Hendrix presented unrefuted testimony and evidence of its lost revenue, and the jury was entitled to credit this evidence. By affirming the new trial, the majority and the district court improperly substituted their own judgment for the jury's, effectively re-trying the case. Any issues with duplicative damages could have been corrected on remand without vacating the entire verdict.

Analysis:

This decision clarifies that a state's interest in regulating commerce within its borders allows it to apply its own post-mortem publicity laws, even to celebrities who were non-residents. By narrowly tailoring its holding to the specific 'as-applied' facts, the court avoided a broader ruling on the extraterritorial reach of such statutes, leaving open questions about their constitutionality in other contexts. The case also serves as a critical lesson on civil procedure, illustrating the distinct standards for motions for judgment as a matter of law (Rule 50) versus motions for a new trial (Rule 59). It demonstrates that a jury verdict can be legally sufficient to survive a Rule 50 challenge, yet still be overturned for a new trial under the district court's discretionary power to weigh evidence and prevent a 'miscarriage of justice' under Rule 59.

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