Seattle Trademark Lawyer

Speaking of rights of publicity (see April 6 post here), the New York Times yesterday ran a piece on Marilyn Monroe’s right of publicity, or lack thereof. Similar to the Western District’s and Ninth Circuit’s decisions involving the Estate of Jimi Hendrix, the Central District of California found Ms. Monroe either was a resident of New York or California at the time she died. (In Mr. Hendrix’s case, the Western District and Ninth Circuit found he was a resident of New York.) Either way, the court found, Ms. Monroe’s right of publicity did not descend to her heirs because the statutes in those states did not recognize that rights of publicity survived a person’s death.

In response, the California legislature amended its statute to recognize the descendability of such a right. Sound familiar? This is similar to what the Washington legislature did last month in response to findings involving the Hendrix Estate. 

Therefore, the Central District of California reconsidered its decision. It remains to be seen whether any such decisions will be reconsidered in cases involving Mr. Hendrix. To the extent any remain open, however, I’m sure they will.

Despite its reconsideration, on March 17, the court came to the same result. It found that because the Monroe Estate previously had argued that Ms. Monroe was a domiciliary of New York for tax purposes, it was judicially estopped from arguing that she was a domiciliary of California for right of publicity purposes. Therefore, Ms. Monroe’s heirs had no right of publicity to inherit.

The New York Times piece notes: “The decision makes it possible to reproduce Monroe’s image without having to pay licensing fees worth millions of dollars to her estate.”

It states the Monroe Estate plans to appeal. Given the amount of money at stake, I’d be surprised if it didn’t.

On April 2, Seattle-based Grand Banks Yachts Pte. Ltd. filed a trademark infringement suit in the Western District against Tacoma-based Aleutian Yachts, LLC. At issue is the parties’ use of ALEUTIAN in connection with their competing yacht building businesses. The complaint alleges that Aleutian’s use of its ALEUTIAN mark is “likely to lead consumers to mistakenly conclude that the yachts marketed and sold by defendants were exclusively or jointly built by, licensed or certified by, or otherwise sponsored or approved by Grand Banks, or that [Aleutian’s] products or websites are somehow affiliated, connected, or associated with Grand Banks.” Grand Banks also alleges that Aleutian wrongly registered the aleutianyachts.com domain name.

Aleutian has not yet filed its answer.

The case cite is Grand Banks Yachts Pte. Ltd. v. Aleutian Yachts, LLC, No. 08-513 (W.D. Wash.).

As stated in my previous post, last month our legislature amended Washington’s right of publicity statute, RCW 63.60.010, et seq. Effective June 12, 2008, the amendment clarifies that the right of publicity in Washington continues after a person’s death, regardless of where the person died, and regardless of whether the jurisdiction where the person died recognized such a right at the time of their death. Assuming personal jurisdiction is satisfied, it also seems to give any person anywhere (whether the person is living or dead, or ever set foot in Washington) a cause of action in Washington for violating his or her right of publicity.

The amendment, Substitute House Bill 2727, passed the House 94-0 and the Senate 46-0. It was signed by Governor Christine Gregoire on March 19.

The amended RCW 63.60.010 provides:

Every individual or personality ((, as the case may be)) has a property right in the use of his or her name, voice, signature, photograph, or likeness ((, and)). Such right exists in the name, voice, signature, photograph, or likeness of individuals or personalities deceased before, on or after June 11, 1998. This right shall be freely transferable, assignable, licensable, in whole or in part, by any otherwise permissible form of inter vivos or testamentary transfer, including without limitation a will or other testamentary instrument, trust, contract, community property agreement, or cotenancy with survivorship provisions or payable-on-death provisions, whether the will or other testamentary instrument, trust, contract, community property agreement, or cotenancy document is entered into or executed before, on, or after June 11, 1998, by the deceased individual or personality or by any subsequent owner of the deceased individual’s or personality’s rights as recognized by this chapter; or, if none is applicable, then the owner of the rights shall be determined under the laws of intestate succession applicable to interests in intangible property. The property right does not expire upon the death of the individual or personality, ((as the case may be)) 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 right exists whether or not it was commercially exploited by the individual or the personality during the individual’s or the personality’s lifetime. The rights recognized under this chapter shall be deemed to have existed before June 11, 1998, and at the time of death of any deceased individual or personality or subsequent successor of their rights for the purpose of determining the person or persons entitled to these property rights as provided in RCW 63.60.030. This chapter is intended to apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.“ 

A new section also states:

“This act applies to all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose. To this extent, this act applies retroactively, but in all other respects it applies prospectively.”

These amendments seem to address recent litigation involving the Estate of Jimi Hendrix. In 2005, the Western District dismissed a right of publicity claim that assignees of Mr. Hendrix’s father brought because Judge Thomas Zilly found Mr. Hendrix was domiciled in New York at the time of his death; that New York law at that time only recognized the right of publicity in living persons; that New York law did not recognize claims made by celebrities’ heirs; and, therefore, that no right of publicity descended to Mr. Hendrix’s father at the time of Mr. Hendrix’s death. (STL post here.) Last year, the Ninth Circuit affirmed Judge Zilly’s decision (STL post here).

The amendment appears to overrule this decision to the extent litigation involving the Hendrix estate continues, such as the dispute over the right to use Mr. Hendrix’s name, likeness, and signature in marketing ELECTRIC HENDRIX vodka (STL post here). If so, that would constitute a remarkable development. (If you can’t beat ‘em at in the Western District, and can’t beat ‘em at the Ninth Circuit, just beat ‘em in Olympia.)

The House Bill Report’s summary of public testimony in support of the bill raised the Hendrix issue, as well as the need for local image licensors Getty Images Inc. and Corbis Corp. to have stronger means to enforce their rights. (No one apparently testified against the bill.) The summary states:

“Ninth Circuit cases have raised some concern over the existing Personality Rights Act. Princess Diana and Jimi Hendrix’s personality rights have not been protected. This bill seeks to tighten up the law to protect deceased personalities who died before 1998. This concerns civil liability and has the potential to cover multiple infringements. People have organized their interests based on the existing law of personality rights, and this bill clarifies and tightens up existing protections. Everyone is protected, but litigation tends to be over unauthorized commercial use. Global business in stock photography and rights service business support this bill, because it protects representation of famous personalities. This bill clarifies the law by confirming the original intent that deceased personalities before 1998 were covered, and their wills were covered, and that Washington covers and provides protection, regardless of whether the deceased personality died in Washington. The clarifications are necessary to ensure protection of this property right. This bill is important in Washington state because of the presence of Getty Images and Corbis, regarding their licensing of rights of publicity.”

The statute continues to remedy infringement of the right of publicity by enabling injured parties to recover the greater of $1,500 or actual damages, plus infringer’s profits, injunctive relief, and attorney’s fees.

Could this amendment make Washington a hotbed for publicity litigation? And will it create years more of litigation involving the Hendix estate?

In the wake of American Apparel’s billboards featuring Woody Allen, and Mr. Allen’s lawsuit in response thereto, Mainstreet.com asks, “Can You Use Britney’s Face To Promote Your Bake Sale?” The short answer is no, not without her permission. The piece cites me as saying statutory and common law rights of publicity tend to protect celebrities and ordinary folks alike from the “un-consented use of someone’s name, voice, signature, and likeness and, it doesn’t only protect celebrities.”

“Celebrities usually deal with these issues the most because their images are everywhere but the law protects all people.”

The reporter asked an interesting question that didn’t make it into print: how can celebrities protect themselves from having their right of publicity violated? I thought that was a darn good question.

Here’s my response: the celebrity should (1) establish a strong licensing program that he or she can refer potential advertisers to (who then can decline the request), since the lack of any such program can encourage infringing look-a-like and sound-a-like ads; and (2) sue vigorously and publicly when his or her rights are invaded in order to deter future infringement. Other than that — and suing to enjoin violations before they occur — celebrities are mostly stuck with suing after the fact, assuming their state’s statute or common law remedies such a harm. Such is life on the A-list.

Washington is one of the twenty-or-so states that has a right of publicity statute. This weekend I’ll discuss our legislature’s recent amendments to RCW 63.60.010, et seq., which become effective in June.

As I write this, the Seattle Mariners are 1-0 in the 2008 season. At this rate, they’ll not only make the playoffs for the first time in seven years — they’ll win the World Series with an undefeated record. Ah, the optimism a new season brings. In recognition of this special time, I thought it would be fun to look at my ball team’s registered trademarks over the years. Turns out they have had 18 total applications and registrations, with eight currently listed as “live.” Only three real logos of note, which roughly divide my years as a kid, teenager, and lawyer. Let’s hope the current one brings them luck this year.