Tuesday, February 11, 2014

Jimi Hendrix merchandise sales shows two risks all creators face when basing characters on real people

Yes, I'll admit it, that title is a horrible and tortured pun. You should never have to experience anything like it again. (Okay, I'll stop.) But one seller of Jimi Hendrix merchandise had an experience in Washington State that teaches two valuable lessons to creators of content using the name, image, or likeness of real people.

(Okay, I promise, I'll really stop now.)

Experience Hendrix is one of two companies formed by the estate of Jimi Hendrix to exploit the rights to his name, image, and likeness through a series of trademarks the company has registered on certain images of Hendrix, his name, and his signature. They use these marks for basically every Jimi Hendrix product you've ever seen: their business is prolific and quite profitable. But of course as with all famous brands Experience Hendrix isn't the only entity trying to profit from Jimi Hendrix. Andrew Pitsicalis owns or has licenses to several works of art either created by Hendrix or showing him in them, and through various websites (including HendrixLicensing.com) he would sell copies of these works of art, onto which he had placed Hendrix's name, signature, and/or headshot.

Experience Hendrix sued Pitiscalis for state and federal trademark infringement, and Pitsicalis countersued seeking a declaration that Washington's right of publicity statute (which gives Experience Hendrix the right to be the only one to benefit from Hendrix's right of publicity even after death) was unconstitutional. At trial the judge held that the Washington right of publicity statute was unconstitutional. Each side appealed to the Ninth Circuit Court of Appeals.

I'm not going to look at the portions of the judgment dealing with trademark infringement. They don't really say much other than if you take a trademark belonging to someone else and use it to sell items of your own, you're probably bad at business. But the right of publicity statute is more interesting. I'll spend some time with that, then discuss two lessons this case should teach content creators.

The Court specifically dodged the big question of whether Washington's statute is unconstitutional. Since Jimi Hendrix was domiciled in New York when he died, ordinarily it would be New York law to govern his post-mortem rights of publicity, and New York doesn't recognize such a right. So Pitsicalis had argued the statute was unconstitutional because it looked at the estate from the perspective of Washington and not New York law. But the Court limited itself to asking whether Pitsicalis was selling merchandise inside Washington state and, holding that he was, the Court found that Washington law should apply to those sales. And since that Washington right of publicity statute would have prohibited those sales, the Court held that Pitsicalis had no right to make them and he owed damages to Experience Hendrix.

I'm not sure I agree with that result, but it's not implausible. The general rule is that if you book sales through a website, you've accepted that the place where the purchaser lives has jurisdiction over you - Terms of Use might bind the purchaser but not any third party who might suffer damages from it. Think of it this way: if you're dating someone with a roommate, your partner might be okay with you drinking the last of the coffee, but if it's the roommate's coffee that permission is worthless and you owe them some coffee. Same kind of idea here: the purchaser on the website might have agreed the transaction would be governed by laws other than Washington's but that doesn't mean Experience Hendrix agreed that too. They get to benefit from Washington's laws.

Okay. You might be justified in thinking that a conflict of laws issue around t-shirt and poster sales is a long way from interesting. But if you're a creator of content and not just t-shirts, there are two principles you need to take away from this case.

1. Legal at home doesn't mean legal everywhere. Even if your use of a famous person's name, image, or likeness is legal in one state, it might be illegal in another. Remember: Hendrix himself wasn't subject to Washington law, but sales of merchandise bearing his image were, and when Pitsicalis sold other merchandise in Washington that competed with the official product he broke Washington's law.

Take this principle and remember it in your own work. For example an older work might be in the public domain in the USA because of a weird quirk in copyright registrations. But in the rest of the world, where registration has never been required to create copyright, it may still be protected. As you consider where to distribute your content, be alive to these kinds of issues. Better to leave money on the table than to spend it on lawyers (I know, it's like biting the hand that feeds me, but it's true).

2. Libel in fiction may be back. There's a legal doctrine called libel in fiction that is impacted by this case. I've previously written about that doctrine (see below for the link), which deals with situations where you take a person and convert them into a fictional character but you do so in a way that's defamatory. When I wrote about this last time I said that based on recent judgments the doctrine is gutted to the point of being useless. Today I'm not so sure.

Washington's personality rights statute grants a pre- and post-death property interest in the use of your name, image, and likeness. The key word in that sentence is "property". If we're supposed to take this statute at face value then that strongly suggests damage to the value of a person's name and reputation is damage to their property. The name of this title of the Revised Code of Washington supports this interpretation: "Personal Property".

Here's why that matters. Truth might be a defense to libel. But libel is a tort, not damage to property. So defenses to a libel claim aren't relevant to a claim of damage to personal property. And that means if you use someone's name, image, likeness, etc. in your own creative work and they believe that you have damaged them as a result, even if what you said is true it won't help. Even if they're dead their heirs can come after you. And even if none of you lives in Washington they may still be able to sue you there if your creation was purchased by an in-state purchaser. This is a stretch, but I'll admit: I wouldn't have thought Experience Hendrix would win this suit either.

You learn something new every day... and not always from experience.

(Okay, I couldn't resist.)

Judgment in Experience Hendrix v. HendrixLicensing.com:
Legal Minimum post on libel in fiction:
Washington state personality rights statute (note: the statute is 63.60.010-080, this is the most relevant provision for this discussion):

Full disclosure: I know Experience Hendrix's lawyer, but he didn't put me up to this article and I didn't even tell him I was writing it.


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