Seattle Trademark Lawyer

The expansive amendments to Washington’s Personality Rights Act (WPRA) that allowed anyone to sue in Washington to enforce their rights regardless of place of citizenship or domicile is unconstitutional.

That’s what Western District Judge Thomas Zilly decided today in Experience Hendrix LLC v. HendrixLicensing.com.ltd. (Previous posts on the case here, here and here; early posts on the WPRA amendments here and here.)

The statute, RCW 63.60, was amended in 2008 in part at the behest of the Estate of Jimi Hendrix, which sought a way to capture the value associated with the deceased musician’s personality. The Western District and Ninth Circuit previously found the estate possessed no such rights because Mr. Hendrix was domiciled in New York at the time of his death, which at the time did not recognize that a right of publicity was capable of descending to a person’s heirs after death.

The amendment in part stated that Washington recognized a right of publicity “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.”

The defendants challenged the constitutionality of the amendments after being sued for using Mr. Hendrix’s name and signature in connection with the sale of Hendrix-themed artwork without the estate’s permission.

In a 47-page opinion, the court found the amendment’s choice-of-law provision violated the Due Process, Full Faith and Credit, and “dormant” Commerce Clauses of the U.S. Constitution. 

The court explained the bulk of its reasoning as follows:

“Not only is Washington’s choice-of-law directive at odds with the almost unanimous views of courts that have grappled with the survivability of the right of publicity, it also runs contrary to the traditional approach for resolving the testamentary or intestate disposition of personal property. This status as an outlier evidences the arbitrariness of the WPRA’s choice-of-law provision and portends of the potential unfair ramifications of its application. Courts look to the law of the domicile for a reason. The domicile has the requisite contacts with a particular individual or personality to generate a state interest in defining his or her property rights and how they may be transferred. To select, as the WPRA suggests, the law of a state to which the individual or personality is a stranger, constitutes no less random an act than blindly throwing darts at a map on the wall.

“This capriciousness will likely lead to inconsistent and unjust results. Indiana is the only state other than Washington that attempts by statute to disregard the law of the domicile. Thus, with respect to a personality who was domiciled in New York at the time of death, Washington and Indiana would stand alone in disregarding New York law abating such personality’s right of publicity, and any entity using such personality’s likeness for commercial purposes would be subject to contradictory standards.

“Efforts to avoid litigation by, for example, restricting sales to the 48 states honoring New York law would be futile. Under the WPRA, advertisements alone provide a basis for suit, regardless of whether they are disseminated in the forum. In addition, putative plaintiffs will be motivated to divert sales to Washington to obtain the benefits of the WPRA. Finally, under existing case law, specific jurisdiction as to intentional conduct occurring outside the forum may be predicated solely on the ‘effects’ within the forum.

“Applying the law of the domicile produces none of these negative consequences. An individual or personality can have only one domicile at a given time. The domicile at the time of death is a constant, based upon which the scope and survivability of any right of publicity may be derived, even if the law of the domicile is in flux concerning such issues. Once determined under the law of the domicile in effect at the relevant time, the existence or absence of a post-mortem right of publicity is known with respect to all jurisdictions, and an entity seeking to exploit a persona that has passed into the public domain need not engage in any state-specific self-censorship. Moreover, adhering to the ‘majority’ domicile-oriented rule would eliminate the incentive for putative plaintiffs to forum shop. Given the arbitrary and unfair nature of the WPRA’s choice-of-law directive concerning the existence of a post-mortem right of publicity, the Court GRANTS partial summary judgment in favor of defendants on their first declaratory judgment counterclaim and hereby DECLARES that such provision violates the Due Process and Full Faith and Credit Clauses of the United States Constitution.”

The court added: “The same provisions of the WPRA found to be in violation of the Due Process and Full Faith and Credit Clauses, as enumerated earlier, are also deemed unconstitutional pursuant to the extraterritorial doctrine derived from the dormant Commerce Clause.”

The order invalidates the choice-of-forum clauses of RCW 63.60.010, .020(1), .020(2), .030(1)(a), and .030(1)(b)(iv).

I would imagine the order is certain to be appealed.

The case cite is Experience Hendrix, L.L.C. v. HendrixLicensing.Com, Ltd., No. 09-285 (W.D. Wash. Feb. 8, 2011) (Zilly, J.).