Jimi Hendrix performs in this 1969 image released by Sony Records.
A Las Vegas company co-owned by Leon Hendrix of the Jimi Hendrix family has won a second victory in a trademark lawsuit with the Hendrix marketing company.
Whether the victory will stand, though, is an open question. A spokesman for the marketing company said Tuesday it plans to appeal a judge’s ruling slashing its lawsuit award against the Las Vegas company from $1.4 million to just $110,000.
For two years, Las Vegas businessman Andrew Pitsicalis and his Las Vegas company Rockin Artwork have been tied up in trademark litigation with Hendrix licensing companies in Seattle controlled by Leon Hendrix's sister by adoption Janie Hendrix.
Leon Hendrix was not a party to the litigation, though he’s now a board member and part owner of Rockin Artwork.
Jimi Hendrix died at age 27 in London in 1970. He’s remembered as a revolutionary electric guitarist and for psychedelic songs like "Purple Haze," "All Along the Watchtower" and "Foxy Lady."
After his death, Hendrix’s father Al Hendrix inherited his estate. After Al's death in 2002, Al's adopted daughter Janie took over the Jimi Hendrix licensing companies. Disputes later broke out between she and Leon Hendrix.
Janie Hendrix’s companies in Seattle are called Experience Hendrix LLC and Authentic Hendrix LLC.
After they sued Pitsicalis in 2009 over the sale of Hendrix items like artwork and T-shirts, Pitsicalis and Rockin Artwork scored a significant court victory in February when a federal judge in Seattle invalidated a Washington state law that would have provided a "right of publicity" to the Hendrix name for the Janie Hendrix companies.
This significantly undermined her trademark infringement claims against other entities selling Hendrix merchandise, attorneys said.
After the February ruling, a jury awarded $1.4 million in damages against Pitsicalis and Rockin Artwork for counts including trademark infringement that allegedly resulted in lost profits for the Janie Hendrix companies; as well as violations of Washington’s Consumer Protection Act including injury to reputation and goodwill.
But the case judge, Thomas Zilly, last week closed the case as he slashed the jury award to just $60,000 for lost profits – and awarded the Janie Hendrix companies just $50,000 in attorney’s fees vs. the $500,000 requested.
In demanding the attorney’s fees and enhanced damages against Pitsicalis, attorneys for the Janie Hendrix companies charged: "Mr. Pitsicalis has a pattern and practice of using plaintiff’s rights for his own gain."
But Zilly found the jury had erred in awarding damages for lost profits as this was unsupported by the evidence.
For instance, records showed that the Janie Hendrix companies saw their revenue from certain vendors for items like apparel and posters fall from about $514,000 in 2008 to about $116,000 in 2009 – a decline Janie Hendrix blamed mainly on the Las Vegas company allegedly selling infringing products.
Yet, Zilly noted, revenue for music and similar non-apparel merchandise similarly fell, from $1.33 million to $622,000 – even though the Las Vegas company didn’t sell these types of products.
"The evidence presented by plaintiffs actually undermines their contention that their loss of royalties on apparel and posters was attributable to defendants’ activities," Zilly’s ruling said. "As indicated in (an) exhibit, ‘image use’ revenue dropped dramatically from $197,400 in 2006 to $77,250 in 2007, a 60.9 percent reduction. This decrease cannot be linked to defendants’ infringing behavior, which did not commence until sometime in 2008. Instead, the sharp decline is best explained as the expected result of judicial rulings concerning plaintiffs’ lack of exclusive rights in Jimi Hendrix’s name and likeness."
As for the jury’s award of $1.05 million for injury to reputation and goodwill, Zilly said these damages are based "entirely on speculation."
"The jury was provided no evidence from which it could determine the diminution in value, if any, of plaintiffs’ goodwill as a result of defendants’ violation of the Consumer Protection Act. Plaintiffs proffered no estimate, by way of expert testimony or otherwise, of the value of their goodwill either before or after defendants’ wrongful conduct," the judge’s order said.
In closing the case, last week, Zilly issued a permanent injunction upholding the status quo. It bars Pitsicalis and his company from using website domain names or any business name using the word "Hendrix" in connection with the sale of posters, artwork, fine art prints, apparel, merchandise, memorabilia or other Hendrix-related novelty items.
The injunction also covered a certain Hendrix guitar and headshot logo and a Hendrix signature.
But in backing up the Las Vegas defendants’ right to sell Hendrix merchandise, Zilly’s injunction said they and anyone else can continue "creating, reproducing, advertising, distributing, selling, or otherwise commercially trading in images or likenesses of Jimi Hendrix" and can use the Hendrix name to identify these images.
Leon Hendrix praised the judge’s order in a statement issued Monday.
"Today I feel vindicated in the ongoing saga of my struggle to define my place as Jimi Hendrix’s brother and to play a role in his, and my, legacy," Leon Hendrix said. "My business partner, Andrew, and I have won the unambiguous right to deal in Jimi Hendrix products, and now the judgment for my stepsister, Janie, and her companies Experience and Authentic Hendrix reflects a fair and reasonable amount.
"More importantly, nothing about this verdict affects our new company, Rockin Artwork, and its ability to deal in images and likenesses of Jimi Hendrix, as well as his original artwork. Nor does it change the ability to use Jimi’s name or song titles in association with those works, which we were also awarded earlier," Leon Hendrix said. "As a result, Rockin Artwork is a company with a strong future and viable business model that will allow me to play an important and vital role in shaping Jimi’s legacy from my perspective as his brother who grew up with him."
Pitsicalis said in a statement, "I am honored and humbled that the system worked and this chapter is now over with a fair and just outcome."
"I am only saddened that it took two and half years, nine lawyers, and over a million dollars in fees on the estate’s part when we have been offering her everything she won and to work with her from before the beginning," he said. "All I ever wanted was to help Leon play his role in Jimi’s legacy, not fighting legal battles with his stepsister."