Having obtained a preliminary injunction against HendrixLicensing.com, Ltd., and its affiliates last July, Jimi Hendrix’s licensing company, Experience Hendrix, L.L.C., and its affiliates moved for summary judgment. (Previous STL post here.)
On May 19, the plaintiffs got their wish.
Western District Judge Thomas Zilly found the defendant sellers of art depicting Mr. Hendrix infringed Experience Hendrix’s registered trademarks.
Defendants argued that they stopped using the complained-of domain names and the Hendrix headshot logo but argued that their use of plaintiffs’ trademarks in their domain names and business names was protected fair use and was not likely to cause confusion.
After discussing the Ninth Circuit’s influential nominative fair use case of Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), the Western District found defendants’ use did not make the grade.
“The Court finds that Defendants’ use of Plaintiffs’ trademarked HENDRIX in Defendants’ URL addresses and business names does not describe Plaintiffs’ product by rather Defendants’ own product — the marketing and licensing of Jimi Hendrix related goods. Thus, the Court concludes that the nominative fair use test does not apply to Defendants’ use of Plaintiffs’ marks in Defendants’ URL addresses and business names.”
In a footnote, the court added: “Even if the Court were to conclude that the nominative fair use test should be applied to Defendants’ use of HENDRIX in Defendants’ URL addresses and business names, the Defendants have not satisfied the nominative fair use test. As to the first part of the test, Defendants’ use of Plaintiffs’ trademarked HENDRIX is not necessary to describe Defendants’ products. Like Welles’ use of ‘PMOY ‘81’ in the wallpaper of her website [in Welles], Defendants’ use of Plaintiffs’ HENDRIX mark in Defendants’ URL addresses and business names does not appear to describe Jimi Hendrix. Defendants’ use does not accompany any image of or created by Jimi Hendrix. Thus, the Defendants’ use of Plaintiffs’ HENDRIX mark in Defendants’ URL addresses and business names fails the first prong of the nominative fair use test.”
The court went on to find that defendants’ use of plaintiffs’ marks in defendants’ URL addresses and business names, their use of defendants’ headshot logo, and their use of their signature mark infringed plaintiffs’ registered trademarks.
The case cite is Experience Hendrix, L.L.C. v. HendrixLicensing.com, Ltd., 2010 WL 2104239, No. 09-285 (W.D. Wash. May 19, 2010) (Zilly, J.).