The U.S. Court of Appeals for the Ninth Circuit, reversing a district court’s ruling finding unconstitutional the provisions of the Washington Personality Rights Act pertaining to post-mortem publicity rights, qualified that its reversal was based on the “narrow set of non-speculative circumstances” at issue in the case.  Experience Hendrix LLC et al. v. HendrixLicensing.com LTD et al., Case Nos. 11-35858; -35872 (9th Cir., Jan. 29, 2014) (Ebel, J.) (Rawlinson, J. concurring-in-part, dissenting-in-part).

Plaintiffs Experience Hendrix and Authentic Hendrix (collectively, Experience Hendrix), formed by the sole heir of rock legend Jimi Hendrix, own trademark rights in Hendrix’s name, signature and images incorporating Hendrix’s likeness.  Defendant HendrixLicensing.com (HendrixLicensing) owns, or has rights to use, certain imagery and artwork depicting Hendrix, and licensed the use of such properties for profit, including through the websites hendrixlicensing.com and hendrixartwork.com.  In 2009, Experience Hendrix sued HendrixLicensing for trademark infringement under the Lanham Act and Washington state law.  Experience Hendrix was awarded $1.7 million in damages by a jury, which was later reduced by the district court to $60,000.  Meanwhile, HendrixLicensing sought a declaratory judgment from the district court that Washington’s right of publicity statute, the Washington Personality Rights Act (WPRA) did not afford the plaintiff Hendrix’s post-mortem rights of publicity.  The district court granted summary judgment in defendant’s favor, holding that while the WPRA did recognize post-mortem rights of publicity, such provisions of the statute were unconstitutional.  Appeals followed.

As amended in 2008, the WPRA broadly applies to “all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.”  The WPRA recognizes a publicity right “regardless of whether the law of the domicile, residence, or citizenship of the individual or personality at the time of death or otherwise recognizes a similar or identical property right.”  A deceased personality’s publicity rights are infringed by any person who uses or authorizes the use of such rights without written or oral, express or implied consent of the owner of such publicity rights.

While acknowledging that the WPRA “raises difficult questions” regarding whether other states must recognize the broad publicity rights created by the Washington statute, the 9th Circuit concluded that under the specific circumstances of the subject case, the provisions of the WPRA pertaining to post-mortem personality rights were not unconstitutional.  The narrow WPRA controversy at issue was HendrixLicensing’s “reasonable apprehension” that Experience Hendrix would rely on the WPRA to interfere with defendant’s and its licensees’ business in Washington.  The court held that it was proper to apply the WPRA  to the case at hand, even though Hendrix died in New York (a state that does not recognize post-mortem rights of publicity), reasoning that the plaintiff had enough ties to Washington such that Washington had an interest in applying its own law to the controversy.  The court also disagreed that the application of the WPRA would violate the Commerce Clause because the controversy at issue did not affect transactions occurring “wholly outside” Washington and would not impermissibly burden interstate commerce.  Thus, the 9th Circuit held that the WPRA could be constitutionally applied to the controversy in the case and remanded defendant’s declaratory judgment claims to the district court with instructions to enter summary judgment in favor of Experience Hendrix.

Addressing the other issues on appeal, the 9th Circuit held that the defendant’s use of the domain names hendrixlicensing.com and hendrixartwork.com did not constitute nominative fair use of the plaintiff’s “Hendrix” trademark, as use of the trademark was not in relation to plaintiff’s products.  In addition, the court both reinstated the jury damage award and affirmed the district court’s decision to grant a new trial on the issue of damages if the jury award was reinstated.

In dissent, Circuit Judge Rawlinson stated that while concurring with the majority’s opinion on most points, he disagreed that a new trial on the issue of damages was warranted.