Application of Washington Publicity Statute Outside State Would Be Unconstitutional

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• Case Summary: A company founded by the father of late musician Jimi Hendrix to administrate Hendrix's intellectual property rights fails to establish that Hendrix's right of publicity survived his death.

• Key Takeaway: Application of a Washington state right of publicity law regardless of the domicile of the personality whose right of publicity is at issue violates the U.S. Constitution's due process plause, full faith and credit clause, and dormant commerce clause doctrine.

A Washington state law that establishes a post-mortem right of publicity is unconstitutional to the extent that it seeks to protect that right regardless of the domicile of the person whose right of publicity is at issue, the U.S. District Court for the Western District of Washington ruled Feb. 8 ( Experience Hendrix LLC v. Ltd., W.D. Wash., No. 2:09-cv-00285-TSZ, 2/8/11).

Granting summary judgment on the issue of the constitutionality of the choice-of-law provisions of the state statute, the court frustrated the attempts of a company founded by the heirs of rock legend Jimi Hendrix to restrict use of his name, likeness, and image by a competing producer of licensed goods.

Heirs' Seek to Control Use of Hendrix Personality.

Rock musician James Marshall “Jimi” Hendrix died intestate in 1970 as a resident of New York. At the time, New York state law granted Hendrix an interest in restricting use of his name or image in trade or advertisements under its “right of privacy” law, N.Y. Civ. Rights Law §§50 and 51, otherwise known as a right of publicity. Hendrix's sole heir was his father James A. “Al” Hendrix.

In 1995, Al Hendrix, who died in 2002, assigned his interest in Jimi Hendrix's right of publicity as well as Hendrix's interest in copyrighted works to Experience Hendrix LLC. Experience Hendrix also holds interest in several registered trademarks, including the terms “Authentic Hendrix,” “Experience Hendrix,” “Jimi Hendrix,” and “Electric Ladyland,” as well as design marks known as the Authentic Hendrix Bust, I Am Experienced, and Jimi Hendrix Signature. The company also maintains websites offering Jimi Hendrix merchandise for sale associated with the domain names and

In an earlier dispute, the U.S. Court of Appeals for the Ninth Circuit ruled that the New York right of publicity expires at death, and, therefore, no interest under the right of publicity statute existed that could be assigned to Experience Hendrix. Experience Hendrix LLC v. James Marshall Hendrix Foundation, No. C03-3462Z (W.D. Wash. April 15, 2005), aff'd 240 Fed. App'x 739 (9th Cir. 2007).

However, in 2008, the Washington State Legislature amended the Washington Personality Rights Act, Wash. Rev. Code §63.60.010, to specify that an individual's right of publicity “does not expire upon the death of the individual or personality, regardless of whether the law of the domicile, residence, or citizenship of the individual or personality at the time of death otherwise recognizes a similar or identical property right.”

In 2007, Experience Hendrix filed a complaint against Electric Hendrix LLC, a vodka producer, alleging trademark infringement, common law trademark infringement, unfair competition, trademark dilution, and other causes of action. In 2008, the U.S. District Court for the Western District of Washington issued a permanent injunction against Electric Hendrix in that case, barring it from using the terms “Jimi Hendrix Electric,” “Jimi Hendrix Electric Vodka,” “Hendrix Electric,” and “Hendrix Electric Vodka.”

Subsequently, one of the people associated with Electric Hendrix founded Ltd., which markets memorabilia bearing Jimi Hendrix's name or likeness through websites using the domain names and Experience Hendrix brought the instant action against, alleging violations of the Lanham Act, the Washington Consumer Protection Act, and Washington state common law.

Experience Hendrix sought an injunction barring from using the terms “Hendrix Licensing,” “Hendrix Artwork,” logos featuring Hendrix's image or signature or the terms “Hendrix” or “Jimi Hendrix,” song titles and lyrics associated with Jimi Hendrix, and the domain names. The court partially granted Experience Hendrix's motion for a preliminary injunction, declining to bar nominative fair uses of the terms “Hendrix” or “Jimi Hendrix” by

Experience Hendrix then sent a letter to Spencer Gifts LLC, a retailer and customer of, asserting that the court had enjoined sales of any merchandise obtained from Experience Hendrix also issued a press release making similar statements.

HendrixLicensing then asserted state law counterclaims of trade libel or defamation, tortious interference with business expectancy, tortious interference with contractual relations, and violations of the state Consumer Protection Act. Experience Hendrix moved for summary judgment on these claims.

HendrixLicensing also sought a declaration that the protections under the 2008 amendment to the Washington state right of publicity statute did not apply to Jimi Hendrix. HendrixLicensing moved for summary judgment on these claims and moved for dismissal of the false designation of origin claim.

Statute's Mandate Clear.

Judge Thomas S. Zilly began by stating that the “fundamental issue in this case” was whether under the legislation adopted in 2008--nearly 30 years after Hendrix's death--there was a posthumous right of publicity with regard to Hendrix's personality.

The court noted that the statutory amendment comprised three general provisions:

(1) A provision purporting that the right of publicity as created by the Washington Personality Rights Act applies retroactively, and that it is deemed to have been in existence for a particular person since the time of his or her death,

(2) A provision purporting to apply the Washington state statute's right of publicity regardless of whether such right exists under the law of the state where the deceased individual was domiciled, was resided, or held citizenship in, and

(3) A provision making the right of publicity transferable, for example in a will or by some other kind of instrument.

Thus, should the Washington state statute be applicable in this case, then Al Hendrix would have inherited rights in Jimi Hendrix's right of publicity through intestate succession and his interest would have been transferred to Experience Hendrix, the court said. The key question, therefore, was whether the federal court should apply Washington state law in this case.

The textual mandate is unambiguous in the statute, the court said. It requires application of Washington law. Thus, there was no question of statutory interpretation.

Rather, the court said, the question was whether such a directive violates the U.S. Constitution. HendrixLicensing argued that it violated the due process clause of the 14th Amendment, the full faith and credit clause, the privileges and immunities clause, the commerce clause, the takings clause, the right of free speech under the First Amendment, and the copyright clause. Experience Hendrix countered that HendrixLicensing did not have the standing under the Declaratory Judgment Act to bring a constitutional challenge.

Flexible Approach to Declaratory Judgment Standing.

The court first rejected Experience Hendrix's standing argument. The court applied the “flexible approach” to standing set forth in Cheesebrough-Pond's Inc. v. Faberge Inc., 666 F.2d 393, 214 USPQ 44 (9th Cir. 1982). Under this approach, which applies to patent and trademark cases, a plaintiff has standing to bring a declaratory judgment claim based on an apprehension of liability arising from “the position and perceptions of the … plaintiff” and does not necessarily require a finding that the patent or trademark rights holder has taken specific acts or evinced specific intention to file a lawsuit against the plaintiff.

In this case, the court said, a right of publicity claim was sufficiently similar to a patent or trademark claim in order to evoke this standard. The court said:  

Pursuant to the “flexible approach,” defendants here demonstrate the type of fear necessary to proceed on their counterclaims under the DJA. This case does not involve only a remote chance of litigation. To the contrary, Experience sued defendants (albeit on Lanham Act and state law claims) long before defendants filed these counterclaims. Although Experience currently makes no claim under the WPRA, the specter of an alleged “right of publicity” is evident not only in the [complaint], but also on Experience's publicly available website. Thus, defendants can reasonably postulate that, absent a trademark- or copyright-based rationale for suing defendants, Experience would likely resort to litigation under the WPRA. 




Choice-of-Law Provision Unconstitutional.

Turning to the substantive constitutional questions, the court first ruled the choice of law provision ran afoul of the due process clause and the full faith and credit clause.

In Phillips Petroleum Co. v. Shutts, 472 U.S. 797 (1985), the U.S. Supreme Court held that for a state to apply its substantive law to matters occurring outside the state, the state “must have a significant contact or significant aggregation of contacts, creating state interests, such that the choice of its law is neither arbitrary nor fundamentally unfair.” In this case, Experience Hendrix failed entirely to present any argument that such significant contacts were present.

The court concluded that in this case, the application of Washington law to the question of whether a New York resident had a post-mortem right of publicity was indeed arbitrary and fundamentally unfair. Particularly revealing, according to the court, was the contrary nature of the Washington statute's choice-of-law provision, which rejected an almost universal preference in probate law for applying the law of the state of domicile of the deceased. Noting that only Indiana state law had a similar provision, the court said:  

The question appears … to answer itself. In this modern era of fascination with celebrities, many courts have been forced to perform a similar choice-of-law analysis, albeit without the statutory directive present in this case. Virtually all of these courts have applied the law of the domicile to determine whether a right of publicity descended. … 

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.




Among the unjust results, the court said, was that application of the Washington statute would deny a personality the right to the protection of the law of his or her domicile and to order his or her affairs with reference to that state's law, unless he or she somehow was able to avoid all commercial contacts with the outlier jurisdictions, namely, Washington and Indiana.

These same clauses were also in violation of the dormant commerce clause doctrine, the court held, because they sought to “govern a variety of transactions occurring 'wholly outside' Washington's borders, including right-of-publicity transfers between non-residents via contract, testamentary device, or intestate succession, and the creation and dissemination in other forums of advertising incorporating the names or likenesses of non-domiciliaries.”

The court thus granted summary judgment in favor of HendrixLicensing on the issue of the statute's violation of the due process clause and the full faith and credit clause as well as the dormant commerce clause, holding unconstitutional six portions of Wash. Rev. Code §63.60.010.

Re-Litigation of Post-Mortem Right Estopped.

Having rejected the Washington statute's attempt to apply Washington law to the question of Hendrix's post-mortem right of publicity, the court next determined that, because the question of whether such a right existed had been adjudicated in the Experience Hendrix LLC v. James Marshall Hendrix Foundation case, which concluded in 2005, the doctrine of collateral estoppel barred Experience Hendrix from re-litigating the question. The court thus held that, as determined in that previous proceeding, the law of New York was applicable and there was no right of publicity that survived Hendrix's death. Thus, the court granted partial summary judgment in favor of HendrixLicensing on the question of whether right of publicity law constrained its trade in images or likeness of Hendrix or use of Hendrix's name in order to identify the creator of certain creative works.

The court then turned to Experience Hendrix's claim of false designation of origin under the Lanham Act based on HendrixLicensing's use of song titles and lyrics, such as “Purple Haze,” “Stone Free,” and “Foxy Lady.” The court found no evidence to establish that in the minds of the public, such phrases carry secondary meaning identifying the origin of goods or services. Thus, the court granted summary judgment in favor of HendrixLicensing on this claim.

Finally, the court denied Experience Hendrix's motion for summary judgment on HendrixLicensing's state law claims of trade libel and tortious interference.

Experience Hendrix was represented by Shilpa Bhatia of Wilson, Smith, Cochran & Dickerson, Seattle. was represented by Thomas T. Osinski Jr. of Tacoma, Wash.

By Anandashankar Mazumdar