Seattle Trademark Lawyer

Here’s an interesting antitrust theory: Can alleged anticompetitive enforcement of trademark rights constitute an illegal restraint of trade? That’s the question the Eastern District of Washington is considering in Van Well Nursery, Inc. v. MONY Life Ins. Co., No. 04-0245, 2007 WL 716042 (E.D. Wash).

Third-party defendant National Licensing Association, LLC, is a for-profit company whose purpose is to enforce the plant patent and trademark rights of others at standardized rates and to share proceeds of its enforcement efforts with its plant nursery members. Defendant and third-party plaintiff MONY Life Insurance moved for partial summary judgment on its counterclaims against plaintiff Van Well Nursery, and third-party claims against National Licensing, for violations of Section One of the Sherman Act, 15 U.S.C. § 1.

National Licensing’s membership is comprised of 18 plant nurseries who otherwise compete with each other. Each nursery entered into a Plant Patent and Trademark Collection Agreement with National Licensing. In this agreement, each nursery agreed to assign to National Licensing its plant patent and trademark enforcement rights in return for a percentage recovery of the proceeds of National Licensing’s enforcement activities on behalf of all National Licensing members.

Earlier in the proceeding, the Eastern District ruled the plant patent and trademark assignments to National Licensing were invalid. Nonetheless, the court found, National Licensing never re-assigned those rights back to the nurseries or took steps to alter Patent and Trademark Office records, which continue to show that National Licensing has been assigned patent and trademark enforcement rights of various National Licensing members.

MONY’s motion argued that assignment of trademark “rights to sue” were invalid and unenforceable as a form of naked licensing. It also argued that by amassing the patent and trademark rights of individual plant nursery owners under the control of National Licensing, National Licensing gained tactical leverage in obtaining standardized licensing fees and recoveries from agricultural lenders. As a result of these tactics, MONY argued there was an increased unwillingness of agricultural lenders to grant loans, which increased the cost of such loans.

Judge Lonny Suko considered these arguments but declined to decide the issue on summary judgment. In his words:

“MONY argues that the purportedly frivolous [National Licensing] litigation coupled with the improper assignment of indivisible patent and trademark enforcement rights to a collective entity resulted in an impact upon competition thus constituting the antitrust liability. The record is not sufficient to satisfy the Court regarding the impact on the relevant market and competition for MONY to be entitled to partial summary judgment.”

Today’s post is a mix of trademark developments. First, King County today unveiled its new logo, changing from its longstanding “castle” and “crown” designs to the silhouette of the late Martin Luther King, Jr. This is a great way to honor a great man. The only thing giving me pause is something I heard early this morning on the radio. Maybe it was daylight savings time messing with me, but I thought I heard the reporter say the County predicted Dr. King’s family would be happy with the tribute. Wait a second. Tell me someone got the family’s permission before it appropriated Dr. King’s likeness. Imagine if the family didn’t approve. It’s doubtful, but it would be a debacle.

Also today, the 43(B)log discussed the Western District’s refusal to dismiss the plaintiff’s geographic misdescriptiveness claim in Baden Sports, Inc. v. Kabushiki Kaisha Molten, et al., No. 06-0210, 2007 WL 703394 (W.D. Wash.). In this case, which STL discussed in a different context in January, the plaintiff asserted that defendant’s failure to affix a country of origin mark onto its basketballs constituted unfair competition. Judge Marsha Pechman agreed that failing to do so is actionable under the Lanham Act. But the court could not determine on the briefs whether the failure was chargeable to the defendant or a non-party distributor. The
43(B)log’s analysis is available here.

Next, I couldn’t pass up TMBrandingCap’s link to an article entitled, “How the Band Protects Its Brand: The Use of Trademarks to Protect and Promote the Musical Artist.” Having recently posted on the subject (here, here, and here), I can say this is an article I wish I had written. It’s the first of a two-part series. Suffice it to say, I’m looking forward to part two.

Finally, I learned today that Washington’s Consumer Protection Act won’t be amended in this legislative session. Apparently, SB-5815, which would have increased to $50,000 the amount of exemplary damages available to plaintiffs proving unfair competition, ran out of time this weekend and won’t be pursued. STL’s discussion of the bill is available here.

There’s a wealth of trademark law information out there, and it’s not limited to materials written in English. Translation websites now make foreign-language blogs easy for English readers to access. I’ve recently tried two: Babel Fish, a Yahoo! service, and Google. With a few clicks and a few seconds, these sites provide passable (though not perfect) translations to English from Arabic, Chinese, Dutch, French, German, Greek, Italian, Japanese, Korean, Portugese, Russian, and Spanish. For those who have limited themselves to English language sites, these features almost literally open up a whole new world.

Two foreign-language trademark law blogs bear immediate mention. The first is the German-language MarkenBlog (“Marks Blog”). Writing from Kiel, Germany, the Prehm & Klare law firm reports on European trademark law developments in the same tradition that Marty Schwimmer’s The Trademark Blog and Ron Coleman’s Likelihood of Confusion report on such happenings here. In the last few days, MarkenBlog has discussed historic German trademarks, a Swiss court’s rejection of a color mark, and the licensing of the French LOUVRE mark to a museum in the United Arab Emirates.

The other is the French-language Le Petit Musée des Marques (“The Little Museum of Marks”), which provides a fun and sometimes irreverent look at the world of trademark law. It recently has reported on offensive marks in the United Kingdom, a Japanese beer containing milk called BILK, and whether SPEED DATING is registrable as a mark in France. PMDM is published by Frédéric Glaize, an attorney with the Paris-based Meyer & Partenaires. It looks like he’s been at it a while, since PMDM’s archives date back to August 2004.

These are great resources. Not only do they provide additional thoughts on trademark law issues, but they also give Stateside readers insight into what’s going on across the Atlantic. They spot developments that may have gone unnoticed here and highlight resources, including other foreign language blogs, that allow for additional investigation. I’m grateful I now have access to the information they provide.

Of course, these fine blogs are not the only foreign trademark law resources worth reading. In future posts, I’ll discuss other resources — including foreign blogs written in English — that also should not be missed.

When Experience Hendrix and Authentic Hendrix this week sued the makers of HENDRIX ELECTRIC vodka, why didn’t they assert a claim for violating the deceased musician’s right of publicity? The reason probably lies in a 2005 order from the Western District in a suit brought against a foundation run by Jimi Hendrix’s brother concluding that no such right could be assigned to those companies.

That case, Experience Hendrix, LLC, et al. v. The James Marshall Hendrix Foundation, et al., No. C03-3462 (W.D. Wash.), involved the same plaintiffs as in the HENDRIX ELECTRIC vodka case that STL discussed yesterday. 

Plaintiffs in that case claimed Al Hendrix, Jimi Hendrix’s father and the sole heir to the Jimi Hendrix estate, assigned his rights to the plaintiffs before he died in 2002. The defendant foundation was a nonprofit run by Leon Hendrix, Jimi’s brother, whose mission was to help disadvantaged children from the same Seattle neighborhoods where Jimi was raised. In 2003, plaintiffs discovered the foundation was promoting a fund-raising event known as the “James Marshall Hendrix Awards Ceremony” or the “Jimi Awards.” Plaintiffs sued, claiming, among other things, violation of the Washington Personality Rights Act, RCW 63.60.010.

Defendants moved for summary judgment, arguing that no publicity rights survived Jimi’s death and descended to Al.

Western District Judge Thomas Zilly determined that New York law governed whether a right of publicity descended to Al because Jimi was domiciled in New York at the time of his death (though he had died in London). At that time under New York law, the law at the time of death determined what property existed in an estate and whether such property could pass to a decedent’s heirs. Thus, the Western District decided it was New York law as it existed at the time of Jimi’s death in 1970 that governed whether he had a right of publicity, and whether that right, if it existed, descended to his father.

The Western District found New York state courts, up to and including the time of Jimi Hendrix’s death, had limited the right of publicity to the statutory right to privacy applicable only to living persons. The court also found New York courts had consistently refused to recognize claims made by celebrities’ heirs for violations of the common law right of publicity.

For these reasons, the Western District determined that New York’s Civil Rights Law and its statutory right to privacy preempted any common law right to publicity and concluded that no right of publicity had descended to Al Hendrix in 1970. 

If Al Hendrix had no right of publicity, he had no right to assign Experience Hendrix and Authentic Hendrix.

The Western District separately found the Washington Personality Rights Act, which includes in its protection rights of a “deceased personality,” also did not apply. The court reasoned:

“Because the Act does not contain on its face an express choice of law provision, the Act is not a statutory directive as to the choice of law to be applied in aright of publicity case. In addition, Jimi Hendrix was domiciled in New York at the time of his death and New York clearly has a greater interest in what property rights it chooses to recognize in its domiciliaries. Accordingly, Washington does not have such a dominant interest in solving the problem presented by this case that the Court should ignore the traditional choice of law principles and apply the Washington statute.”
(Citations omitted.)

For these reasons, the Western District dismissed plaintiffs’ right of publicity claim. This decision, in connection with collateral estoppel principles, would seem to explain why Experience Hendrix and Authentic Hendrix did not assert a similar claim this week.

Owners of the Jimi Hendrix family of trademarks have sued over use of the deceased musician’s name in connection with the marketing of vodka. Experience Hendrix, LLC, and Authentic Hendrix, LLC, filed suit yesterday in the Western District against Washington-based Electric Hendrix, LLC, Electric Hendrix Apparel, LLC, Electric Licensing, LLC, and Craig Diffenbach. The suit alleges a number of trademark claims, including infringement, dilution by blurring, and dilution by tarnishment.

The complaint alleges Mr. Diffenbach formed Electric Hendrix, LLC, in 2005 for the purpose of selling, bottling and marketing vodka as HENDRIX ELECTRIC, JIMI HENDRIX ELECTRIC, or JIMI HENDRIX ELECTRIC VODKA.

Plaintiffs allege use of those marks, “a similar Jimi Hendrix ‘headshot’ logo and Jimi Hendrix signature, the slogan ‘A JIMI HENDRIX FAMILY COMPANY,’ and Experience Hendrix’s song and album titles, along with other elements, to advertise and sell Mr. Diffenbach’s and Electric Hendrix’s products are intended to deceive and defraud the public and to pass off and palm off their vodka and other merchandise as authorized by the Hendrix family companies and Jimi Hendrix’s heirs.”

Plaintiffs state that Experience Hendrix, LLC, owns the registered trademarks JIMI HENDRIX, AUTHENTIC HENDRIX, and EXPERIENCE HENDRIX (and Design), in connection with clothing, ordering services, magazines, sound recordings, and entertainment services, as well as a number of common law marks associated with the musician.

The Seattle Times reports the Hendrix family especially objects to the use of Mr. Hendrix’s name to sell vodka. 

“In view of the circumstances of my brother Jimi’s death, this attempt to associate his name with the sale of alcohol beverages amounts to a sick joke” stepsister Janie Hendrix said in a statement released yesterday.

The Hendrix family is connected with the plaintiffs in this case.