Screen shot from defendants’ former Web site depicting Hendrix mark
Defendants’ use of HENDRIX and JIMI HENDRIX was fair use of plaintiffs’ trademarks to describe the images depicted on their products, the Western District preliminarily found on July 2. However, the court also found defendants’ domain names containing those marks, a guitar and “headshot/bust” logo, and Jimi Hendrix’s signature infringe plaintiffs’ trademarks and enjoined further use pending trial.
Defendant Andrew Pitsicalis was formerly associated with Craig Dieffenbach and Electric Hendrix, LLC — defendants the court enjoined from using various JIMI HENDRIX trademarks in connection with the sale of vodka (STL discussion of that case here). In 2008, Mr. Pitsicalis formed HendrixLicensing.com LTD, which markets posters, art prints, apparel, and novelty items bearing the name, signature, likeness, and/or art created by Jimi Hendrix.
Plaintiffs Experience Hendrix, LLC, and Authentic Hendrix, LLC, sought a preliminary injunction against the defendants’ use of their trademarks by maintaining the hendrixlicensing.com and hendrixartwork.com domain names; using a guitar and “headshot/bust” logo; incorporating the HENDRIX and JIMI HENDRIX trademarks in various products; and placing Mr. Hendrix’s signature on various products. (Past STL discussion of the case here.)
After receiving the motion, defendants stopped using the domain names, as well as the guitar and “headshot/bust” logo, and did not dispute the infringing nature of those things. Defendants solely argued they are making fair use of Jimi Hendrix’s name and signature.
The court agreed in part and disagreed in part. With respect to use of the HENDRIX and JIMI HENDRIX names, the court leaned heavily on the the case of Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002), in finding the use was fair. “To the extent the names ‘HENDRIX’ or ‘JIMI HENDRIX’ serve merely to describe the associated image, i.e., to identify plaintiffs’ ‘product’ Jimi Hendrix, who is depicted within, or whose artwork is shown in, defendants’ posters or other products, the use is analogous to that in Cairns. As in Cairns, plaintiffs have 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 addition, plaintiffs offer no evidence that they have trademarks or service marks incorporating fonts similar to the stylized lettering used by defendants, except for Jimi Hendrix’s signature, which will be discussed in the next section. Other than the signature, plaintiffs’ registrations for ‘HENDRIX’ and ‘JIMI HENDRIX’ are in plain typeface. Thus, defendants’ use of distinctive lettering does not itself inappropriately imply a relationship with plaintiffs.”
With regard to Mr. Hendrix’s signature, the court found defendants’ use was not fair. “Defendants have represented to the Court that the signature is authentic, was purchased on ‘eBay’ by Craig Dieffenbach, and was conveyed in electronic form to Mr. Pitsicalis. Defendants use the signature on products, for example, dart game accouterments such as targets, score boards, and dart flights, containing no likeness of Jimi Hendrix. During oral argument, counsel for defendants indicated that defendants are now confining their use of the signature to posters, fine art prints, and apparel. The Court interprets counsel’s remark as a concession that defendants’ use of Jimi Hendrix’s signature constitutes branding, and it is not exempted from infringement liability by either the nominative or the classic fair use doctrine.”
Since neither doctrine applied, the court found defendants’ use of Mr. Hendrix’s signature was likely to cause confusion — an issue defendants did not address. Therefore, the court concluded the requested injunction was appropriate.
The case cite is Experience Hendrix, LLC v. HendrixLicensing.com, LTD, No. 09-285 (W.D. Wash. July 2, 2009) (Zilly, J.).
Response: "Excuse me while I kiss this guy"I think maybe John Hancock’s signature has secondary meaning, but I can’t think of too many other ones, though I am sure there are. But Hendrix’s? Here’s the reasoning, per Mike’s excerpt from the opinion: