Use of Jimi Hendrix's signature constitutes trademark infringement, says court

In Experience Hendrix LLC v Hendrixlicensing.com Ltd (Case C09-285Z, July 2 2009), the US District Court for the Western District of Washington has granted, in part, a motion for a preliminary injunction against Hendrixlicensing.com Ltd’s use of Jimi Hendrix's signature  on its products.

Experience Hendrix LLC claims on its website to be “the official family company charged with managing the name, likeness, image and 100% of the music of Jimi Hendrix's legacy”. It owns US trademark registrations for, among other things, the names Hendrix and Jimi Hendrix and the artist’s signature for a broad range of goods, including key chains and t-shirts. Hendrixlicensing was founded by a former associate of a defendant in a previous case (Experience Hendrix LLC v Electric Hendrix LLC (Case C07-338Z)) and sells reprints of Jimi Hendrix’s original artwork, as well as posters, t-shirts, pub glasses and novelty items bearing Jimi Hendrix’s name, signature or likeness.

Experience Hendrix’s motion sought, among other things, to prevent Hendrixlicensing’s continued sales of items bearing the name or a signature of the artist based on its trademark rights. Experience Hendrix was precluded from asserting a claim based on the right of publicity because that right was previously determined to have ceased after the artist died intestate. Hendrixlicensing claimed that its actions were non-infringing under the doctrines of either classic fair use or nominative fair use.

Classic fair use in the Ninth Circuit is determined by the extent to which another’s mark is:

• not used as a trademark;
• used in good faith; and
• used only for descriptive purposes (see Cairns v Franklin Mint Co (292 F3d 1139 [2002])).

Nominative fair use applies where:

• the plaintiff’s product is not identifiable without using its mark;
• only as much of the plaintiff’s mark is used as necessary; and
• the defendant does nothing to suggest endorsement by the plaintiff. 

Nominative fair use is frequently used in cases of comparative advertising, where businesses are allowed to reference each other’s marks in connection with the sale of their own goods. Unlike classic fair use, nominative fair use displaces the factors normally considered when determining whether a likelihood of confusion is present. 

In the present case, the court ruled that Hendrixlicensing's use of the names Hendrix and Jimi Hendrix was a nominative fair use, while use of the signature was likely to be infringing. In its finding of nominative fair use, it first stated that the names were necessary to refer to the artist, which it deemed to be Experience Hendrix’s "product" for purposes of the analysis. Next, it held that Hendrixlicensing used the names only as much as was necessary to identify the artist because consumers - not all of whom may be presumed to be Jimi Hendrix fans - cannot be expected to recognize Hendrix’s likeness or artwork. Lastly, the court stated that mere use of a name is insufficient to suggest sponsorship or endorsement.

Experience Hendrix argued that Hendrixlicensing’s use of a psychedelic font to identify its products amounted to trademark use. However, the court dismissed this contention as “lacking merit,” explaining that:

“distinctive lettering alone does not a trademark make. No amount of fancy text or extraneous flourish will bestow upon a generic or merely descriptive term or phrase the protections accorded to a trademark or service mark.”

Because Hendrixlicensing's use of Hendrix’s name on its products - even in a stylized type face - simply identified or named the images in the products, such use was allowed under nominative fair use.

Interestingly, by characterizing the use of a psychedelic font as non-trademark, descriptive use, the court allowed such stylization as a classic fair use. At the same time, by characterizing the use of registered word marks as mere reference or identification, it allowed such use as a nominative fair use. The court ultimately found infringing use because the signature looked “virtually identical” to - and therefore likely to cause confusion with - Experience Hendrix’s registered signature. Even if the signatures were significantly different, allowing two different versions of an individual’s signature, linked to separate businesses, would invite “the type of confusion that trademark laws were designed to prevent”. The signature was not a classic fair use because such use, as opposed to the use of the psychedelic letters, was considered to be “trademark use” and not merely descriptive of the goods. The signature also failed under nominative fair use because it went beyond what was necessary to identify the “product” and implied authorization from the mark owners or from Jimi Hendrix himself.

The court characterized the situation as follows: “Jimi Hendrix is [Experience Hendrix]’s, and not [Hendrixlicensing]’s, ‘product’; [Hendrixlicensing]’s products are posters, fine art prints, T-shirts and […] other novelty items.”  While this abstraction may hold in a limited sense, it is not entirely accurate. Experience Hendrix owns over 60 Hendrix-related trademarks for goods such as t-shirts and key chains. In this case, the characterization of Experience Hendrix's “product” as the artist himself, rather than the goods covered by the registered marks, determined the outcome that nominative fair use in the Ninth Circuit serves a broader role than simply to allow comparative advertising by competitors. While the court’s characterization suggests that protection is as broad as it might have been if the rights of publicity had not been lost, its holding actually constrained Experience Hendrix’s scope of protection. The court suggests that the lack of a right of publicity enables anyone to produce goods featuring Hendrix’s likeness, while nominative fair use allows Hendrixlicensing to identify those goods for sale, and classic fair use even allows Hendrixlicensing to use stylized letters - but not a signature - to do so.

To the extent that this case concerns the right to sell t-shirts and posters featuring Jimi Hendrix, it may be more accurately classified as a right of publicity case rather than a fair use case. In that light, Experience Hendrix was trying to use trademark law to 'claw back' the rights of publicity that no longer existed after Hendrix’s death. Similarly, Hendrixlicensing was using nominative fair use to enable a business that could exist only in the absence of publicity rights. The court, in combining the effects of nominative fair use and lack of publicity rights, restricted Experience Hendrix's protection to the “use as a trademark” boundary. It focused less on Experience Hendrix's “product - whether it was the goods covered by its trademarks or Jimi Hendrix’s very essence - and more on Hendrixlicensing's use of Experience Hendrix's marks - when it was fair and when it was not. The boundary between fair and unfair was defined by where mere identification ended and the suggestion of authorization began.

According to this case, use of psychedelic letters to reference a person without publicity rights is allowed as nominative fair use, perhaps combined with classic fair use, but using the person’s signature crosses the boundary into infringing use by suggesting authorization or endorsement.

Matthew D Asbell, Ladas & Parry LLP, New York