The maker of HENDRIX ELECTRIC vodka infringes three JIMI HENDRIX trademarks owned by the licensing company that controls the late musician’s marks.
That’s what Western District Judge Thomas Zilly found in his August 7 order on the parties’ cross-motions for summary judgment in Experience Hendrix, LLC v. Electric Hendrix, LLC. STL’s post on the parties’ oral argument here.
The decision is the latest in a long battle between two factions of the Hendrix family over Jimi Hendrix’s publicity and trademark rights. The principal plaintiff is owned by Janie Hendrix, the adopted daughter of Jimi Hendrix’s father. The defendant spirits company is owned in part by Leon Hendrix, Jimi’s brother. The case involves a number of other related parties and defendant investor Craig Dieffenbach.
As a threshold matter, the court rejected defendants’ contention that the court’s 2005 decision in Experience Hendrix, LLC v. James Marshall Hendrix Foundation, which the Ninth Circuit affirmed last year, foreclosed plaintiffs from claiming trademark rights in the subject marks. That decision held the musician’s right of publicity did not pass to his estate when he died because he was domiciled in New York at the time of his death and that state did not recognize posthumous rights of publicity.
The Western District instead found that plaintiffs had established trademark rights in Mr. Hendrix’s famous name independent of his publicity rights.
Having made that determination — and after rejecting defendants’ attacks on the validity of plaintiffs’ incontestable registrations based on fraud on the Patent and Trademark Office, abandonment through naked licensing, and unclean hands — the court applied the Sleekcraft factors and concluded that defendants’ HENDRIX ELECTRIC, HENDRIX ELECTRIC VODKA, JIMI HENDRIX ELECTRIC, and JIMI HENDRIX ELECTRIC VODKA trademarks infringe plaintiffs’ AUTHENTIC HENDRIX, EXPERIENCE HENDRIX, and JIMI HENDRIX marks.
The court held:
“Defendants’ opposition to summary judgment of infringement rests on the assumption that Plaintiffs’ lack of ownership of any publicity rights in Jimi Hendrix limited the scope of protection they secured through their trademarks. As a matter of law, no such limitation exists and Plaintiffs have created valid trademarks that do not violate the prohibitions against misrepresentation or use of the trademarks. Plaintiffs have legally acquired the right to use Jimi Hendrix’s fame to sell their products, and they are entitled to all the rights of a trademark holder. Defendants’ primary opposition having failed as a matter of law, the Court has found no genuine issues of material fact remain that precludes summary judgment of infringement. Defendants have produced no evidence that any of the Sleekcraft factors would indicate anything other than a likelihood of confusion between Plaintiffs’ and Defendants’ marks. The most probative Sleekcraft factor applicable to this particular case is the intent of the Defendants. Defendants intended to trade off the good will associated with Jimi Hendrix and intended to have a mark similar to Plaintiffs.”
The court directed plaintiffs to file a proposed permanent injunction consistent with these findings.
The order does not affect plaintiffs’ remaining claims for common law trademark infringement, unfair competition, dilution by blurring, dilution by tarnishment, violations of Washington’s Consumer Protection Act, contributory infringement, unjust enrichment, or for imposition of a constructive trust.The case cite is Experience Hendrix, LLC v. Electric Hendrix, LLC, No. 07-338 (W.D. Wash. Aug. 7, 2008) (Zilly, J.).