Experience Hendrix LLC v. hendrixlicensing.com Ltd

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
EXPERIENCE HENDRIX L.L.C., a Nos. 11-35858
Washington Limited Liability 11-35872
Company, and AUTHENTIC
HENDRIX L.L.C., a Washington D.C. No.
Limited Liability Company, 2:09-CV-00285-
Plaintiffs-Appellants/ TSZ
Cross-Appellees,
ORDER AND
v. AMENDED
OPINION
HENDRIXLICENSING.COM LTD, a
Nevada Corporation, DBA
Hendrix Artwork, DBA
Hendrixartwork.com; ANDREW
PITSICALIS, an individual;
CHRISTINE RUTH FLAHERTY,
Defendants-Appellees/
Cross-Appellants.
Appeal from the United States District Court
for the Western District of Washington
Thomas Zilly, Senior District Judge, Presiding
Argued and Submitted
March 7, 2013—Seattle, Washington
Filed January 29, 2014
Amended August 8, 2014
2 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
Before: David M. Ebel,* William A. Fletcher,
and Johnnie B. Rawlinson, Circuit Judges
Opinion by Judge Ebel;
Partial Concurrence and Partial Dissent by Judge
Rawlinson
SUMMARY**
Trademark
The panel filed an order amending its previous opinion,
and in the amended opinion the panel affirmed in part,
reversed in part and vacated in part the district court’s
decision in trademark litigation concerning a dispute over
the commercial use of a deceased celebrity’s image, likeness,
and name.
Experience Hendrix, LLC, which owns trademarks that
it uses to sell and license products related to deceased
rock legend Jimi Hendrix, alleged that defendants were
licensing merchandise that infringed Experience Hendrix’s
trademarks.
The panel reversed the district court’s determination that
Washington’s Personality Rights Act is unconstitutional, and
*
The Honorable David M. Ebel, Senior Circuit Judge for the United
States Court of Appeals for the Tenth Circuit, sitting by designation.
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 3
remanded defendant’s declaratory judgment claims
pertaining to the Act with instructions to enter summary
judgment on those claims in favor of Experience Hendrix.
The panel affirmed the district court’s decision granting
Experience Hendrix partial summary judgment on its claim
that defendant’s use of “Hendrix” in its domain names
infringed Experience Hendrix’s mark “Hendrix.” The panel
vacated the permanent injunction and remanded so that the
district court could revise language in the injunction to clarify
what conduct is and is not enjoined. The panel reversed in its
entirety the district court’s Fed. R. Civ. P. 50(b)(3) decision
to strike most of the jury’s award of damages under both the
federal Lanham Act and Washington’s Consumer Protection
Act. The panel affirmed the district court’s order granting a
new trial on damages under both of these statutes and
remanded for a new trial on such damages. The panel
vacated the district court’s award of attorney’s fees under
Washington’s Consumer Protection Act and remanded the fee
request for further proceedings.
Judge Rawlinson concurred in part, and dissented in part.
Judge Rawlinson concurred in much of the majority’s
opinion, but dissented from the majority’s holding that a new
trial is warranted on the issue of damages. Judge Rawlinson
would remand for reinstatement of the damages awarded by
the jury, and for an award of attorney’s fees to Experience
Hendrix as the prevailing party.
COUNSEL
John D. Wilson, Jr. and Alfred E. Donohue, Wilson Smith
Cochran Dickerson, Seattle, Washington; Michael Madden,
4 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
Bennett Bigelow & Leedom, Seattle, Washington, for
Plaintiffs-Appellants/Cross-Appellees.
Thomas T. Osinski, Jr., Osinski Law Offices, P.L.L.C.,
Tacoma, Washington, for Defendants-Appellees/Cross-
Appellants.
Duncan Crabtree-Ireland and Danielle Van Lier, Screen
Actors Guild, Inc., Los Angeles, California, for Amicus
Curiae Screen Actors Guild, Inc, American Federation of
Television & Radio Artists, AFL-CIO, Luminary Group LLC,
and the Estate of Marilyn Monroe, LLC.
ORDER
The Opinion filed January 29, 2014, appearing at
742 F.3d 377, is amended sua sponte to remove footnote 6.
A copy of the our amended decision and original
concurrence is attached to this Order and filed concurrently
with this Order.
With this amendment, the panel has voted unanimously
to DENY the petition for REHEARING and the petition for
REHEARING EN BANC. The full court has been advised of
the petition for rehearing en banc, and no judge has requested
a vote on whether to rehear the matter. Fed. R.App. P.35.
The petition for rehearing and the petition for rehearing
en banc are DENIED. No further petitions for panel
rehearing or for rehearing en banc will be entertained.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 5
OPINION
EBEL, Circuit Judge:
This litigation stems from a dispute over the commercial
use of a deceased celebrity’s image, likeness, and name. The
sole heir of deceased rock legend Jimi Hendrix formed two
companies, Plaintiffs Experience Hendrix, L.L.C., and its
wholly owned subsidiary, Authentic Hendrix, L.L.C.
(collectively “Experience Hendrix”). Among other things,
Experience Hendrix owns trademarks that it uses to sell and
license products related to Jimi Hendrix. In this litigation,
Experience Hendrix succeeded on its claims alleging that
Defendants Andrew Pitsicalis and his company,
Hendrixlicensing.com, L.L.C. (collectively “Pitsicalis”1),
were licensing Hendrix-related merchandise that infringed
Experience Hendrix’s trademarks. As a result, the district
court permanently enjoined Pitsicalis’s infringing conduct,
and a jury awarded Experience Hendrix damages under two
statutes, the federal Lanham Act and Washington’s Consumer
Protection Act. The district court, however, significantly
reduced the jury’s award and, alternatively, ordered a new
trial on damages. On the claims of Experience Hendrix, we
VACATE the district court’s permanent injunction so that
one paragraph in the injunction may be clarified and reissued.
We REVERSE the court’s reduction of the damages award.
We AFFIRM the district court’s decision to grant a new trial.
Finally, we REMAND Experience Hendrix’s claims for
further proceedings.
1
Often we refer to Pitsicalis as an individual because he acted
individually during portions of the relevant time.
6 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
For his part, Pitsicalis sought a declaratory judgment
declaring that a third statute, Washington’s Personality Rights
Act, does not afford the heir of Jimi Hendrix any post-
mortem publicity rights. The district court held that the Act
does purport to give the heir of Jimi Hendrix post-mortem
publicity rights, which Experience Hendrix would own. But
the district court went on to hold that those portions of the
Washington Personality Rights Act affording those publicity
rights are unconstitutional. We AFFIRM the district court’s
decision interpreting the Act to give post-mortem publicity
rights to Jimi Hendrix’s heir, but REVERSE and VACATE
the holding that the statute is unconstitutional as applied to
the narrow circumstances presented here. Thus, we
REMAND Pitsicalis’s claims as well for further proceedings.
I. Background
Experience Hendrix holds a number of trademarks
associated with Jimi Hendrix, including the names “Hendrix”
and “Jimi Hendrix” and Jimi Hendrix’s signature, as well as
logos incorporating a “headshot” of Hendrix. Experience
Hendrix uses these trademarks to market, sell and license
Hendrix-related merchandise, including apparel, posters, and
artwork sold to the public through Internet websites and
brick-and-mortar retail stores throughout the United States,
including the state of Washington.
Pitsicalis has also used Jimi Hendrix’s celebrity status
commercially. Pitsicalis owns, or has licenses to use,
photographs and original pieces of art depicting Hendrix, as
well as visual artwork created by Hendrix himself. In 2008,
Pitsicalis began licensing the right to use these images to
produce and sell Hendrix-related merchandise, including
apparel, posters and household items. Like Experience
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 7
Hendrix, Pitsicalis’s licensees sold this merchandise over the
Internet and in brick-and-mortar stores. Pitsicalis placed
marks on his licensed products that used the names “Hendrix”
and “Jimi Hendrix,” as well as Jimi Hendrix’s signature and
a logo of Hendrix’s headshot with a guitar. In conducting his
business, Pitsicalis also used two websites with the domain
names hendrixlicensing.com and hendrixartwork.com.
In March 2009, Experience Hendrix sued Pitsicalis under
two statutes. First, Experience Hendrix alleged that Pitsicalis
was infringing Experience Hendrix’s trademarks in violation
of the federal Lanham Act, see 15 U.S.C. §§ 1051–1127.
Second, Experience Hendrix alleged that this trademark
infringement also amounted to an unfair or deceptive trade
practice proscribed by Washington’s Consumer Protection
Act (“WCPA”), see Wash. Rev. Code §§ 19.86.010–
19.86.920. The district court granted Experience Hendrix
partial summary judgment on the federal Lanham Act claim,
concluding that Pitsicalis had infringed Experience Hendrix’s
trademarks. The court permanently enjoined Pitsicalis’s
infringing activity. At trial, a jury found that Pitsicalis’s
trademark infringement also amounted to an unfair or
deceptive trade practice under the WCPA. Although the jury
awarded Experience Hendrix damages under both statutes
totaling $1,723,300, the district court reduced the jury’s
award to $60,000.
Pitsicalis, in turn, asserted counterclaims against
Experience Hendrix, seeking a judgment declaring that a third
statute, Washington’s Personality Rights Act (“WPRA”),
Wash. Rev. Code §§ 63.60.010–63.60.080, does not provide
Experience Hendrix with Hendrix’s post-mortem publicity
8 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
rights.2 The district court granted Pitsicalis summary
judgment on these counterclaims, concluding that, while the
WPRA does afford Jimi Hendrix post-mortem publicity rights
belonging to Experience Hendrix, those portions of the
WPRA providing those rights are unconstitutional. These
cross-appeals followed.
II. DISCUSSION
We address first Pitsicalis’s counterclaims regarding the
WPRA, before turning to Experience Hendrix’s claims.
A. Jimi Hendrix’s post-mortem publicity rights under the
WPRA
1. Standing
Through his counterclaims, Pitsicalis sought a judgment
declaring that 1) the WPRA “does not apply to publicity
rights in Jimi Hendrix” and, therefore, 2) “it is possible to
trade in original images and likenesses of Jimi Hendrix
without creating a per se infringement of Experience
[Hendrix’s] trademark rights.” As a threshold matter,
Experience Hendrix contends that Pitsicalis lacks Article III
standing to assert these declaratory judgment claims.
However, there is no doubt that an actual controversy
exists between Pitsicalis and Experience Hendrix under the
federal Lanham Act, in light of this ongoing litigation
Experience Hendrix initiated against Pitsicalis. As a result of
2
Pitsicalis’s wife, Christine Flaherty, is a party to Pitsicalis’s
counterclaims against Experience Hendrix, asserting the same claims as
Pitsicalis.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 9
this litigation, Experience Hendrix has notified potential
customers of Pitsicalis-licensed products as to Experience
Hendrix’s trademark rights. And there is no question about
Experience Hendrix’s standing to assert its Lanham Act
claims against Pitsicalis for trademark infringement.
It is within this same litigation that Pitsicalis sought a
judgment declaring that, under the WPRA, Experience
Hendrix has acquired from Jimi Hendrix no post-mortem
publicity rights, which Experience Hendrix could use to sue
or threaten to sue Pitsicalis and his licensees, customers and
potential customers. Experience Hendrix has in fact
previously asserted Jimi Hendrix’s publicity rights, albeit
under an earlier version of the WPRA, in prior litigation
which resulted in a final ruling that the initial version of the
WPRA was inapplicable to Jimi Hendrix. That ruling was
based upon choice-of-law principles which required
application of New York law. New York was the domicile of
Jimi Hendrix at the time of his death and it did not recognize
these post-mortem rights. Experience Hendrix, LLC v.
Electric Hendrix, LLC, No. C07-0338 TSZ, 2008 WL
3243896, at *2–*4 (W.D. Wash. Aug. 7, 2008) (unreported).
In 2008, however, the Washington legislature amended
the WPRA to apply it “to all individuals and personalities,
living and deceased, regardless of place of domicile or place
of domicile at time of death.” Wash. Rev. Code § 63.60.010.
The amended WPRA recognizes that every person “has a
property right in the use of his or her name, voice, signature,
photograph, or likeness.” Id. That right existed or exists
“before, on, or after June 11, 1998,” the date the WPRA
originally took effect, and does not expire upon a person’s
death. Id. §§ 63.60.010, 63.60.030(3). The amended WPRA
recognizes such a right of publicity “regardless of whether the
10 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
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.” Id. § 63.60.010. The
WPRA protects such a right by providing, in part, that “[a]ny
person who uses or authorizes the use of a . . . deceased . . .
personality’s name, voice, signature, photograph, or likeness,
on or in goods, merchandise, or products entered into
commerce in this state . . . without written or oral, express or
implied consent of the owner of the right, has infringed such
[personality] right.” Id. § 63.60.050. As amended, then, the
WPRA created a new possibility that Experience Hendrix
would renew its efforts to assert Jimi Hendrix’s post-mortem
publicity rights against Pitsicalis, his licensees, customers,
and potential customers.
The record here does not reveal any evidence that
Experience Hendrix has explicitly threatened Pitsicalis, or his
licensees, customers or potential customers with suit under
the amended WPRA. But Pitsicalis alleged that Experience
Hendrix, relying on rights that go beyond its federally
protected trademarks, interfered with the sale, by one of
Pitsicalis’s licensees to the retailer Spencer’s Gifts, of
Pitsicalis-licensed Hendrix-related merchandise that did not
infringe Experience Hendrix’s trademarks.3 In light of all of
these circumstances, Pitsicalis has a sufficiently legitimate
concern that Experience Hendrix will renew its efforts to
assert rights under the amended WPRA against Pitsicalis and
related parties, given Experience Hendrix’s past aggressive
3
The district court ruled, at the summary judgment stage of this
litigation, that Pitsicalis had Article III standing to assert his declaratory
judgment counterclaims. Pitsicalis submitted adequate evidence to the
district court to support his allegations that Experience Hendrix interfered
with Pitsicalis’s licensee’s sale of non-infringing goods to Spencer’s Gifts.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 11
assertion of its rights related to Jimi Hendrix, and given the
2008 amendment to the WPRA that removes the previous
impediment to Experience Hendrix’s judicial efforts to
enforce Jimi Hendrix’s post-mortem publicity rights under
that Act. See Rhoades v. Avon Prods., Inc., 504 F.3d 1151,
1157–58 & 1157 n.4 (9th Cir. 2007) (noting that, under the
Ninth Circuit’s “reasonable apprehension” test, concrete or
explicit threats of litigation are not necessary for a plaintiff to
have standing).
2. The WPRA is constitutional as applied to the
narrow set of non-speculative circumstances at
issue here
The parties do not dispute that the amended WPRA
recognizes post-mortem personality rights belonging to Jimi
Hendrix, notwithstanding that 1) he died in 1970, before
Washington originally enacted the WPRA; 2) he was
domiciled in New York at the time of his death; and 3) New
York law does not recognize a post-mortem right of publicity
that would survive Jimi Hendrix’s death and descend to his
heir. The parties also do not dispute that, under the WPRA,
Experience Hendrix owns Jimi Hendrix’s post-mortem
personality rights. Notwithstanding that the WPRA thus on
its face provides Experience Hendrix with Jimi Hendrix’s
post-mortem personality rights, the district court granted
Pitsicalis summary judgment, declaring that the provisions of
the WPRA that recognize those post-mortem personality
rights are unconstitutional. We review that decision de novo.
See Lopez-Valenzuela v. Cnty. of Maricopa, 719 F.3d 1054,
1059 (9th Cir. 2013). Under the narrow, non-speculative
circumstances presented by this case, we disagree with the
district court’s ruling and accordingly reverse.
12 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
The narrow, non-speculative WPRA controversy before
us, as Pitsicalis has alleged it, involves only (1) Pitsicalis’s
“reasonable apprehension” that Experience Hendrix will use
the WPRA to stop his attempts to license unofficial Hendrix-
related products for sale in Washington, and (2) Pitsicalis’s
licensee’s unsuccessful attempt to introduce into Washington,
through his licensee’s dealings with Spencer’s Gifts,
Pitsicalis-licensed goods that bore Hendrix’s image and
likeness, but that did not carry marks that infringed
Experience Hendrix’s trademarks.
Washington’s approach to post-mortem personality rights
raises difficult questions regarding whether another state must
recognize the broad personality rights that Washington
provides. But we need not resolve that issue. Here, the
limited controversy before us, as Pitsicalis has alleged it,
involves only Experience Hendrix’s interference with the sale
in Washington of Pitsicalis-licensed, unofficial but
non-infringing goods bearing Hendrix’s likeness, as well as
Pitsicalis’s “reasonable apprehension” that Experience
Hendrix will attempt to stop such targeted sales in
Washington in the future.4
a. Due Process/Full Faith and Credit Clauses
The district court held that applying Washington’s WPRA
here, instead of the law of New York, the state where Jimi
Hendrix was domiciled at the time of his death, violated
choice-of-law principles protected by the Due Process and
Full Faith and Credit Clauses of the U.S. Constitution. Those
4
Pitsicalis argues that the WPRA has a much broader potential
application. But the actual, non-speculative controversy before this court
does not implicate those possible broader applications of the WPRA.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 13
Clauses require that, “for a State’s substantive law to be
selected [and applied to a particular case] in a constitutionally
permissible manner, that State must have a significant contact
or significant aggregation of contacts, creating state interests,
such that choice of its law is neither arbitrary nor
fundamentally unfair.” Allstate Ins. Co. v. Hague, 449 U.S.
302, 312–13 (1981).5
Washington has sufficiently significant contacts with the
actual, non-speculative controversy at issue here, which
involves the loss of sales in Washington of Pitsicalis-licensed
goods. Therefore, because these contacts are sufficient to
give Washington an interest in applying its own law to this
controversy, it is not arbitrary or unfair to apply the WPRA
here. See id.; see also AT & T Mobility LLC v. AU Optronics
Corp., 707 F.3d 1106, 1111 (9th Cir. 2013) (noting that
“Allstate places only ‘modest restrictions on the application
of forum law,’ and most commentators have viewed Allstate
as setting a highly permissive standard” (internal citation
omitted)).
b. Dormant Commerce Clause
The district court also held that applying the WPRA to
this case would violate the dormant Commerce Clause, which
limits the power of states to enact laws imposing substantial
burdens on interstate commerce. See Nat’l Ass’n of
Optometrists & Opticians v. Harris, 682 F.3d 1144, 1148–50
5
In the choice-of-law context, the Supreme Court has directed courts to
apply this analysis regardless of whether the constitutional challenge is
brought under the Due Process or Full Faith and Credit Clause. See
Allstate, 449 U.S. at 308 n.10. Therefore, we treat the Due Process and
Full Faith and Credit arguments together.
14 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
(9th Cir. 2012). The district court reasoned that, although the
WPRA does not discriminate against out-of-state interests, to
apply the WPRA to the controversy at issue here would,
nevertheless, give the WPRA an impermissible
extraterritorial reach, encompassing “a variety of transactions
occurring ‘wholly outside’ Washington’s borders.” However,
the limited, non-speculative controversy at issue here, does
not affect transactions occurring wholly outside Washington.
Cf. Am. Trucking Ass’ns, Inc. v. Mich. Pub. Serv. Comm’n,
545 U.S. 429, 434 (2005) (holding Michigan’s flat tax on
activities taking place exclusively within that state did not
violate the dormant Commerce Clause). Nor does the record
suggest that the application of the WPRA to the limited,
non-speculative controversy at issue here would otherwise
impermissibly burden interstate commerce. See id. at
434–38.
3. Conclusion as to Pitsicalis’s declaratory judgment
claims
For the foregoing reasons, we conclude that the WPRA
can be applied constitutionally to the narrow controversy at
issue here. We, therefore, reverse the district court’s decision
to grant Pitsicalis summary judgment on his declaratory
judgment claims and we remand those claims to the district
court with instructions for the district court to enter summary
judgment in favor of Experience Hendrix. See Gospel
Missions of Am. v. City of Los Angeles, 328 F.3d 548, 553
(9th Cir. 2003) (“Even when there has been no cross-motion
for summary judgment, a district court may enter summary
judgment sua sponte against a moving party if the losing
party has had a full and fair opportunity to ventilate the issues
involved in the matter.” (internal quotation marks omitted)).
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 15
B. Trademark infringement and deceptive trade practices
We turn now to the claims Experience Hendrix asserted
against Pitsicalis. Experience Hendrix’s claims against
Pitsicalis are premised on allegations that Pitsicalis infringed
several of Experience Hendrix’s trademarks related to Jimi
Hendrix. Experience Hendrix asserted trademark
infringement claims under two different statutes. First,
Experience Hendrix brought a claim under the federal
Lanham Act specifically alleging trademark infringement.
The district court ultimately ruled as a matter of law that
Pitsicalis had in fact infringed several of Experience
Hendrix’s trademarks.
Second, Experience Hendrix brought a claim against
Pitsicalis under the Washington Consumer Protection Act
(“WCPA”), which prohibits unfair or deceptive trade
practices. Under the WCPA, Experience Hendrix alleged that
Pitsicalis’s conduct in infringing Experience Hendrix’s
trademarks amounted to an unfair or deceptive trade practice
proscribed by the WCPA. A jury found that Pitsicalis had in
fact committed an unfair trade practice by infringing
Experience Hendrix’s trademarks.
On appeal, Pitsicalis challenges only one aspect of the
district court’s conclusion that he is liable for infringing
Experience Hendrix’s trademarks: Pitsicalis argues that his
domain names hendrixlicensing.com and hendrixartwork.com
did not violate the federal Lanham Act by infringing
Experience Hendrix’s trademark “Hendrix.” We uphold the
district court’s determination that the domain names did
infringe Experience Hendrix’s trademark “Hendrix.”
16 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
Experience Hendrix sought several remedies to redress
Pitsicalis’s infringing conduct under both the federal Lanham
Act and WCPA. First, Experience Hendrix sought an
injunction permanently enjoining Pitsicalis from further
infringing Experience Hendrix’s trademarks. The district
court entered such a permanent injunction, but Experience
Hendrix, nevertheless, challenges language the court included
in that injunction. We conclude that one sentence of the
injunction is sufficiently unclear to require a remand so the
district court can clarify what conduct is and is not enjoined.
Experience Hendrix also sought damages, under both the
federal Lanham Act and the WCPA, to compensate
Experience Hendrix for Pitsicalis’s past infringement. The
jury awarded Experience Hendrix several different measures
of damages under both acts, totaling over $1.7 million. The
district court struck all but $60,000 of that award. On appeal,
Experience Hendrix seeks reinstatement of the jury’s entire
damages award. We agree with Experience Hendrix that it
was error for the district court, under Fed. R. Civ. P. 50(b)(3),
to set aside all but $60,000 of the jury’s award. There was
legally sufficient evidence to support that award. However,
the district court, alternatively, ruled that, if our court
reinstated the jury’s damages award, as we do here, then a
new trial on damages is warranted under Rule 59. We
conclude that the district court’s alternative ruling for a new
trial was not an abuse of discretion and we, therefore, remand
for a new trial limited to the issue of damages.
Finally, Experience Hendrix requested an award of
attorney’s fees in the amount of over $500,000. The district
court awarded a much smaller amount, $50,000. Experience
Hendrix challenges the court’s denial of much of its attorney
fee request. We vacate the fee award and remand for the
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 17
district court’s reconsideration because many of the factors
on which the district court based its attorney fee decision
have now changed.
1. Pitsicalis’s liability under the federal Lanham Act
for using domain names that infringed Experience
Hendrix’s trademark “Hendrix”
The district court granted Experience Hendrix partial
summary judgment, concluding Pitsicalis had infringed
several of Experience Hendrix’s trademarks. On appeal,
Pitsicalis challenges only one aspect of that ruling, arguing
that the district court erred in determining that his domain
names, hendrixlicensing.com and hendrixartwork.com,
infringed Experience Hendrix’s trademark “Hendrix.” We
review that determination de novo.6 See Lopez-Valenzuela,
719 F.3d at 1059.
Pitsicalis defended his use of the trademark “Hendrix” in
his domain names only as nominative fair use. “Nominative
fair use applies where a defendant has used the plaintiff’s
mark to describe the plaintiff’s product.” Fortune Dynamic,
6
We reject Experience Hendrix’s contention that Pitsicalis waived this
argument. While Pitsicalis stopped using these domain names after
Experience Hendrix initiated this litigation, and he indicated in his
pleadings before the district court that he did not intend to resume using
these domain names, Pitsicalis expressly did not concede that his domain
names infringed Experience Hendrix’s trademarks, and he opposed
Experience Hendrix’s partial summary judgment motion by asserting
arguments in defense of his use of “Hendrix” in the domain names. Cf.
San Luis & Delta-Mendota Water Auth. v. Salazar, 638 F.3d 1163, 1174
n.7 (9th Cir. 2011) (rejecting argument that litigant had abandoned claim
where opposing party’s summary judgment motion placed the issue before
the district court, the district court ruled on that issue, and the litigant
adequately raised the issue on appeal).
18 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d
1025, 1031 (9th Cir. 2010) (internal quotation marks
omitted). The district court rejected Pitsicalis’s nominative
fair use defense, concluding that Pitsicalis used “Hendrix” in
his domain names to refer, not to Experience Hendrix’s
products (as is required for a nominative fair use defense), but
only to Pitsicalis’s own product or service, licensing and
marketing Hendrix-related goods (which is not protected
under the nominative fair use defense).7 On appeal, Pitsicalis
does not argue that his domain names refer to Experience
Hendrix’s products. Nor does he contend that Jimi Hendrix
is Experience Hendrix’s product. See Cairns v. Franklin
Mint Co., 292 F.3d 1139, 1152–53 (9th Cir. 2002). We,
therefore, affirm the district court’s decision to enter partial
summary judgment for Experience Hendrix.
2. Paragraph 5 of the permanent injunction is
inadequate
After concluding that Pitsicalis infringed several of
Experience Hendrix’s trademarks, the district court issued
injunctive relief under the Lanham Act, permanently
enjoining Pitsicalis’s infringing conduct. Experience
Hendrix, the beneficiary of that injunction, argues that
Paragraph 5 of the injunction fails to state clearly the terms of
the injunction and does not describe in reasonable detail the
acts that are and are not restrained. See Fed. R. Civ. P.
65(d)(1). We agree with Experience Hendrix in part.
7
A defendant’s use of a plaintiff’s mark to describe only the defendant’s
goods is addressed by the “classic” fair use defense, but Pitsicalis did not
assert a classic fair use defense here.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 19
Briefly summarized, paragraph 1(iii)–(iv) of the
challenged injunction permanently enjoins Pitsicalis from
using Pitsicalis’s “‘guitar and headshot’ logo or any similar
mark, brand, or logo,” and from using the Jimi Hendrix
signature set forth in the injunction, “or any similar signature,
mark, brand, or logo.” But then, contrary to that provision,
the first sentence in the challenged Paragraph 5 states that
“[n]othing in this Permanent Injunction shall be construed as
enjoining, prohibiting, or otherwise inhibiting [Pitsicalis] or
any other entity or person from creating, reproducing,
advertising, distributing, selling, or otherwise commercially
trading in images or likenesses of Jimi Hendrix.” These two
provisions appear to be in some conflict or at least are
ambiguous when read together. Thus, in this particular, the
injunction does not clearly state what conduct is and is not
restrained. We, therefore, vacate the permanent injunction
and remand to the district court to revise the permanent
injunction in order to clarify what conduct is and is not
restrained.
We reject Experience Hendrix’s challenges to the rest of
Paragraph 5. The second sentence of Paragraph 5 states that
“[t]he Court makes no ruling concerning whether . . . images
or likenesses [of Jimi Hendrix] might be otherwise protected
by copyright laws.” The district court did not abuse its
discretion in including this language in the permanent
injunction, see Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d
1105, 1110 (9th Cir. 2012), because this language only
clarified that the district court had not ruled on any possible
infringement of Experience Hendrix’s copyrights because
Experience Hendrix never alleged a copyright claim. See id.
at 1116 (“An injunction should be tailored to eliminate only
the specific harm alleged.” (internal quotation marks
omitted)).
20 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
The third and final sentence of Paragraph 5 states that
“nothing in this Permanent Injunction shall be construed as
enjoining, prohibiting, or otherwise inhibiting Defendants or
any other entity or person from using the names or marks
‘Jimi Hendrix’ or ‘Hendrix’ to identify the subject of an
associated image or the author or creator of an associated
work of art.” This language does not conflict with the
injunction’s earlier language specifically precluding Pitsicalis
from using “Hendrix” in its business and domain names. Nor
does this third sentence, contrary to Experience Hendrix’s
argument, affirmatively permit Pitsicalis or anyone else to
infringe Experience Hendrix’s trademarks “Hendrix” and
“Jimi Hendrix.” Instead, this language accurately indicates
that the district court never ruled on Experience Hendrix’s
claims, abandoned in the district court, which alleged that
Pitsicalis’s use of the names “Hendrix” and “Jimi Hendrix”
to describe the images Pitsicalis used in his unofficial
Hendrix-related products infringed Experience Hendrix’s
trademarks “Hendrix” and “Jimi Hendrix.” In this regard, the
district court again properly limited the terms of the
injunction to the specific claims before it, and then only to
those claims on which Experience Hendrix prevailed. See
Skydive Ariz., 673 F.3d at 1116; see also Toyota Motor Sales,
U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010)
(noting that court must tailor injunction “to eliminate only the
specific harm alleged”) (quoting E. & J. Gallo Winery v.
Gallo Cattle Co., 967 F.2d 1280, 1297 (9th Cir. 1992)); cf.
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d
1335, 1344 (Fed. Cir. 2012) (noting, in patent infringement
case, the frequent admonishment that district courts are “not
to issue sweeping injunctions against potentially infringing
activities . . . , but to restrict the scope of the injunction to the
particular adjudicated infringing activity”).
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 21
In sum, the first sentence in Paragraph 5 of the permanent
injunction—stating that “[n]othing in this Permanent
Injunction shall be construed as enjoining, prohibiting, or
otherwise inhibiting Defendants or any other entity from
creating, reproducing, advertising, distributing, selling, or
otherwise commercially trading in images or likenesses of
Jimi Hendrix”—conflicts with the earlier provisions of the
injunction restraining Pitsicalis from using a Jimi Hendrix
“guitar and headshot” logo or any similar mark, brand or
logo. We, therefore, vacate the permanent injunction and
remand to the district court to clarify what conduct is and is
not enjoined.
3. Damages under both the federal Lanham Act and
the WCPA
In addition to seeking an injunction permanently
enjoining Pitsicalis from infringing Experience Hendrix’s
trademarks, Experience Hendrix also sought damages to
compensate it for Pitsicalis’s past infringement. There are
two related issues involving damages that we must address,
one involving the district court’s order entering a greatly
reduced damages award under Fed. R. Civ. P. 50(b)(3), and
the other involving the district court’s alternative order
granting a new trial on damages under Fed. R. Civ. P. 59.8
8
During trial, Pitsicalis made a Rule 50(a) motion for judgment as a
matter of law. See EEOC v. Go Daddy Software, Inc., 581 F.3d 951, 961
(9th Cir. 2009). That motion was sufficient to preserve Pitsicalis’s
renewed motion for judgment as a matter of law, under Rule 50(b)(3),
made after the jury’s verdict. The district court granted that Rule 50(b)(3)
motion, striking most of the jury’s damages award. We refer to
Pitsicalis’s post-verdict motion, as well as the district court’s order
granting that motion, as being made under Rule 50(b)(3). In addition to
his Rule 50(b)(3) motion, Pitsicalis alternatively sought a new trial under
22 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
As to the first damages issue, the jury awarded
Experience Hendrix a total of over $1.7 million, which
represented measures of damages under both the federal
Lanham Act and the WCPA. The district court, however,
struck most of that award under Fed. R. Civ. P. 50(b)(3) and
entered a substantially reduced damages award. Experience
Hendrix appeals that decision. As explained in greater detail
below, the legal standard applicable to Rule 50(b)(3) motions
requires that a court uphold the jury’s award if there is any
legally sufficient basis to do so. Application of that particular
standard here dictates that we reverse the district court and
reinstate the jury’s entire damages award.
The second issue regarding damages involves the same
damages awards, but this time under Rule 59’s new-trial
provisions. Rule 59 provides a different legal standard for
both the district court and for us. Regarding a Rule 59
motion, the district court can weigh the evidence, make
credibility determinations, and grant a new trial for any
reason necessary to prevent a miscarriage of justice. The
appellate court reviews the district court’s determination of
these matters for an abuse of discretion. Those standards
require that we affirm here the district court’s grant of a new
trial under Rule 59, even though we reverse the district
court’s decision to grant Pitsicalis judgment as a matter of
law under Rule 50(b)(3).
Fed. R. Civ. P. 59. Rule 50(c)(1) requires a court granting a Rule 50(b)(3)
motion for judgment as a matter of law, as the district court did here, to
rule conditionally on any Rule 59 new-trial motion. We refer to
Pitsicalis’s new trial motion, as well as the district court’s order
conditionally granting that motion, as being made under Rule 59.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 23
a. Overview of the jury’s award of damages
under the federal Lanham Act and the WCPA
Based on Pitsicalis’s infringing Experience Hendrix’s
trademarks in violation of the Lanham Act, the jury awarded
Experience Hendrix 1) $60,000, representing the profits
Pitsicalis made from licensing his infringing goods; and
2) $306,650 to compensate Experience Hendrix for the profits
Experience Hendrix lost because of Pitsicalis’s infringing
conduct.9 See 15 U.S.C. § 1117(a) (providing that party
establishing trademark infringement can recover the
“defendant’s profits” from infringing the trademark and “any
damages sustained by the plaintiff”).
Finding that this same trademark infringement also
amounted to an unfair or deceptive trade practice under the
WCPA, the jury further awarded Experience Hendrix a total
of $1,365,650 in damages under that statute. The WCPA
award represented apparently the same $306,650 in lost
profits for Experience Hendrix as a result of Pitsicalis’s unfair
trade practices, $750,000 for injury to Experience Hendrix’s
reputation, and $300,000 for Experience Hendrix’s loss of
goodwill.
After the jury’s verdict, the district court granted
Pitsicalis’s Fed. R. Civ. P. 50(b)(3) motion and struck, as
unsupported by the evidence, all of the damages awarded
except the $60,000 award under the Lanham Act for the
profits Pitsicalis made from infringing Experience Hendrix’s
9
“[T]he recovery of both plaintiff’s lost profits and disgorgement of
defendant’s profits is generally considered a double recovery under the
Lanham Act.” Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007,
1010 (9th Cir. 1994).
24 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
trademarks.10 Alternatively, the district court conditionally
granted Pitsicalis a new trial under Fed. R. Civ. P. 59, in the
event this court reinstated the jury’s damages award. Here,
we reinstate the damages award, but then affirm the district
court’s alternative ruling under Rule 59 that the award of
damages should be vacated and set for a new trial.
At first glance, our resolution—first reinstating the jury’s
damages award and then affirming the district court’s
decision to have a new trial on damages—may seem
contradictory. But our decision is consistent with the
differing standards that governed the district court’s
consideration of Pitsicalis’s Rule 50(b)(3) and Rule 59
motions, as well as the differing standards by which we
review the district court’s determination of those motions.
In considering a Rule 50(b)(3) motion for judgment as a
matter of law, the district court must uphold the jury’s award
if there was any “legally sufficient basis” to support it. Costa
v. Desert Palace, Inc., 299 F.3d 838, 859 (9th Cir. 2002). In
making that determination, the district court considers all of
the evidence in the record, drawing all reasonable inferences
in favor of the nonmoving party, Experience Hendrix; the
court may not make any credibility determinations or reweigh
the evidence. See Reeves v. Sanderson Plumbing Prods., Inc.,
530 U.S. 133, 150 (2000). Because we review the district
court’s Rule 50(b)(3) decision de novo, we apply those same
legal standards on appeal. See Go Daddy Software, 581 F.3d
at 961.
10
The jury’s award of $60,000 for Pitsicalis’s profits earned by
infringing Experience Hendrix’s trademarks is not challenged on appeal.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 25
Unlike with a Rule 50 determination, the district court, in
considering a Rule 59 motion for new trial, is not required to
view the trial evidence in the light most favorable to the
verdict. Instead, the district court can weigh the evidence and
assess the credibility of the witnesses. See Kode v. Carlson,
596 F.3d 608, 612 (9th Cir. 2010) (per curiam). The district
court also is not limited to the grounds a party asserts to
justify a new trial, but may sua sponte raise its own concerns
about the damages verdict. See Fed. R. Civ. P. 59(d).
Ultimately, the district court can grant a new trial under Rule
59 on any ground necessary to prevent a miscarriage of
justice. See Murphy v. City of Long Beach, 914 F.2d 183, 187
(9th Cir. 1990). We afford considerable deference to the
district court’s new trial decision and will not overturn the
district court’s decision to grant a new trial absent an abuse
of discretion, meaning “only when the district court reaches
a result that is illogical, implausible, or without support in the
inferences that may be drawn from the record.” Kode,
596 F.3d at 612.
With these different legal standards in mind, we consider
first the district court’s Rule 50(b)(3) decision to vacate most
of the jury’s damages award, and then we address the district
court’s Rule 59 new trial decision.
b. The district court erred in striking under Fed.
R. Civ. P. 50(b)(3) most of the damages
awarded by the jury
To recap, the district court, acting under Rule 50(b)(3),
struck the jury’s award of lost profits under both the federal
Lanham Act and the WCPA, and it struck the damages
awards, made under the WCPA, for loss of goodwill and
reputation. We review the district court’s determination de
26 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
novo, and we will uphold the jury’s award if there was any
“legally sufficient basis” to support it. Costa, 299 F.3d at
859.
i. The jury’s damages award for Experience
Hendrix’s lost profits
For the amount of profits Experience Hendrix lost as the
result of Pitsicalis’s infringing conduct, the jury returned two
identical awards of $306,650, one under the federal Lanham
Act and one under the WCPA.11 On appeal, no one contends
that a different analysis applies to the calculation of lost
profits under the WCPA than applies under the federal
Lanham Act. In fact, “the parties already stipulated that [lost
profits under the WCPA] are the same as the Lost Profits
under the Lanham Act for the purposes of awarding double
recovery.” Therefore, we address here the jury’s identical
awards for lost profits under the Lanham Act and the WCPA
together. In doing so, we conclude that, under the
circumstances of this case and in light of our standard of
review, the evidence was sufficient to permit a reasonable
jury to calculate the profits Experience Hendrix lost due to
Pitsicalis’s infringing conduct. See Skydive Ariz., 673 F.3d at
1112 (“In a trademark action, the nature of the proof required
to support a jury award depends on the circumstances of the
case . . . .”).12
11
The parties and the district court agreed before the jury’s verdict that
Experience Hendrix could not recover twice for its lost profits. We will
discuss this later in the opinion, as one of the bases for granting a new
trial.
12
Our review of the record does not reveal any evidence that would
support duplicative damages of $306,650 under both the Lanham Act and
the WCPA. Were that the only problem with the jury’s damages award,
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 27
The district court instructed jurors that they were to
calculate profits “by deducting all expenses from gross
revenue.” It was Experience Hendrix’s burden to prove its
damages. See Lindy Pen Co. v. Bic Pen Corp., 982 F.2d
1400, 1407 (9th Cir. 1993) (applying 15 U.S.C. § 1117(a)).
In striking the jury’s award for Experience Hendrix’s lost
profits, the district court held that, while Experience Hendrix
had presented evidence of its lost revenue, it had failed to
offer any evidence as to its expenses, which the jury was
required to deduct from the lost revenue in order to calculate
Experience Hendrix’s lost profits.
During the jury instruction conference, after the close of
evidence, Experience Hendrix acknowledged that it had not
presented the jury with any evidence of its expenses. This
was because Experience Hendrix mistakenly believed that it
bore the burden of proving only its lost revenue and that, once
it had made that showing, the burden shifted to Pitsicalis to
prove any expenses that jurors should deduct in order to
calculate Experience Hendrix’s lost profits. The Lanham Act
applies this burden-shifting framework to proof of the
defendant infringer’s lost profits. See 15 U.S.C. § 1117(a).
But the burden remained with Experience Hendrix, as the
plaintiff, to prove its actual damages, including its own lost
profits. See Lindy Pen, 982 F.2d at 1407.
Notwithstanding Experience Hendrix’s confusion as to
the burdens of proof, there was sufficient evidence before the
jurors from which they could calculate the profits Experience
Hendrix lost due to Pitsicalis’s infringing conduct. That
it could be easily cured. But because the damages awarded are rife with
ambiguity and duplicity, we agree with the district court that the best
solution is simply to grant Rule 59 relief for a new trial on damages.
28 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
evidence included the following: There was undisputed
evidence that, at the same time that Pitsicalis was licensing
his infringing goods, Experience Hendrix suffered a
significant decline in its own licensing revenue earned from
products similar to Pitsicalis’s infringing merchandise. There
was also testimony describing the nature of licensing revenue
generally as a licensee’s payment to the licensor of a
percentage of the licensee’s revenue in return for the use of
the licensor’s intellectual property. In addition, the jury had
before it financial documents, including Exhibit 60, which
summarized and compared Experience Hendrix’s licensing
revenue from 2006 through 2009. Exhibit 60 referred to
Experience Hendrix’s licensing revenue as “total income,”
“gross profits,” “net ordinary income,” and “net income,”
without reflecting any deductions from the licensing revenue
for expenses. The terms “net income”and “net ordinary
income” in Exhibit 60 suffice to support the jury’s finding
that those figures were after adjustment for costs and were, as
represented, net income. Testimony describing licensing
revenues generally further suggested that there were no
incremental costs saved in connection with the loss of that
revenue attributed to Pitsicalis. From this evidence, then, a
reasonable jury could have found that, because much of
Experience Hendrix’s revenue was licensing revenue, there
were no incremental expenses that the jury had to deduct
from the relevant licensing revenue before jurors calculated
Experience Hendrix’s lost profits, or if there were
incremental costs, they had already been taken into account
in preparing Exhibit 60. Cf. DSPT Int’l, Inc. v. Nahum,
624 F.3d 1213, 1223–24 (9th Cir. 2010) (recognizing that the
“nature of the proof” as to damages under 15 U.S.C.
§ 1117(a) “depends on the circumstances of the case,” and
upholding a jury’s award of actual damages, based in part on
testimony and financial statements indicating a decline in
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 29
“gross profits”). There was, thus, sufficient evidence
presented at trial to enable the jury’s award of Experience
Hendrix’s lost profits to survive the Rule 50(b)(3) motion. So
we conclude that the district court erred in granting the Rule
50(b)(3) motion to vacate the damages of $306,650 in
Experience Hendrix’s lost profits.13
ii. The jury’s damages award for Experience
Hendrix’s loss of goodwill and reputation
The jury also awarded Experience Hendrix $750,000 in
damages for harm Pitsicalis caused to its reputation and
$300,000 for the loss of goodwill. The jury awarded these
measures of damages only under the WCPA. See Wash. State
Physicians Ins. Exch. & Ass’n v. Fisons Corp., 858 P.2d
13
The district court also granted Pitsicalis Rule 50(b)(3) relief from the
jury’s lost profits award for two other reasons. First, the district court held
that the evidence was insufficient to establish that Pitsicalis’s infringing
conduct had actually caused any of Experience Hendrix’s lost profits.
Second, the district court held that, even if there was evidence to support
the jury’s finding that Pitsicalis’s infringing conduct caused some of the
drop in Experience Hendrix’s profits, there was insufficient evidence to
support the jury’s awarding Experience Hendrix the entire amount of
$306,650. Because, as we have already explained, the evidence presented
at trial provided a “legally sufficient basis” to support the jury’s damages
award for lost profits, Costa, 299 F.3d at 859, we also reject these other
grounds for the district court to grant Pitsicalis Rule 50(b)(3) relief from
the jury’s damages award for lost profits. Moreover, it does not appear
that the district court, in any event, had authority to grant Pitsicalis Rule
50(b)(3) relief on these alternate grounds because Pitsicalis did not raise
them in either his pre-verdict Rule 50(a) or his post-verdict Rule 50(b)(3)
motion. It appears that the district court sua sponte raised these two
alternative grounds for Rule 50(b)(3) relief. See Murphy, 914 F.2d at
185–86 (reversing entry of judgment notwithstanding the verdict, under
prior version of Rule 50(b), on a ground that the district court raised sua
sponte).
30 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
1054, 1063 (Wash. 1993) (en banc) (“[D]amage to business
reputation and loss of goodwill are [also] compensable
damages under the [W]CPA.”). The district court, in granting
Pitsicalis’s Rule 50(b) motion, struck these awards of
damages after concluding there was no evidence to support
them. Again, we reverse in light of the standards governing
Rule 50(b)(3).
There was significant evidence to support the jury’s
finding of the fact that Pitsicalis’s deceptive trade practices
injured Experience Hendrix’s reputation and goodwill. As to
the amount of that harm, the jury had evidence regarding the
total licensing revenue that Experience Hendrix earned during
the period of time before and during Pitsicalis’s infringing
activity. From this information, jurors could have calculated
the amount of harm Pitsicalis caused to Experience Hendrix’s
business reputation and goodwill “with reasonable certainty.”
Lewis River Golf, Inc. v. O.M. Scott & Sons, 845 P.2d 987,
990 (Wash. 1993) (en banc); see Wash. State Physicians,
858 P.2d at 1071 (“Damages for loss of professional
reputation are not the type of damages which can be proved
with mathematical certainty and are usually best left as a
question of fact for the jury.”) Specifically, this evidence
indicated that Experience Hendrix’s overall licensing revenue
declined by $1,022,351.70 during 2009, the period during
which Pitsicalis was infringing Experience Hendrix’s
trademarks. That information provided a legally sufficient
basis for the jury’s award of a total of $1,050,000 in damages
for harm to Experience Hendrix’s reputation and goodwill,14
14
An award based on Experience Hendrix’s decline in total licensing
revenue would seemingly duplicate, in part, the jury’s damages award for
the profits Experience Hendrix lost on licensing revenue specifically for
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 31
and thus permitted these damage awards to survive
Pitsicalis’s Rule 50(b)(3) motion.15
c. The district court did not abuse its discretion
in conditionally granting Experience Hendrix
a new trial on damages
The district court conditionally granted Pitsicalis a new
trial on damages under both the federal Lanham Act and the
WCPA in the event, which has now occurred, that this court
reinstated the jury’s damages awards. See Fed. R. Civ. P.
50(c)(1), 59. We affirm the district court’s decision granting
a new trial, in light of the significant deference we owe the
district court’s determination that a new trial is warranted.
See Kode, 596 F.3d at 612. Unlike with the district court’s
Rule 50(b) analysis, the district court, in considering
Pitsicalis’s motion for a new trial, was not required to draw
all inferences in favor of the verdict and could reweigh the
evidence and make credibility determinations. Id. The
district court also was not limited to the grounds Pitsicalis
raised in support of his new trial motion, but instead could
(and did) sua sponte raise its own concerns about the damages
award. See Fed. R. Civ. P. 59(d). And our standard of review
goods similar to Pitsicalis’s infringing goods. The parties do not argue
about this, but we discuss it as a basis for granting a new trial.
15
The district court, acting sua sponte, alternatively struck these
damages for loss of reputation and goodwill after concluding that the
jury’s verdict in this regard was contrary to the court’s supplemental
instruction to jurors that these two measures of damages were “essentially
the same thing.” That reason, however, cannot support Rule 50(b) relief
for Pitsicalis because he did not raise that ground in either his pre-verdict
Rule 50(a) motion or in his post-verdict motion for Rule 50(b) relief. See
Murphy, 914 F.2d at 186.
32 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
of the district court’s ruling also differs from the de novo
standard governing our review of a district court’s Rule
50(b)(3) decision. The district court’s decision on a Rule 59
motion for a new trial “will be overturned on appeal only for
abuse of discretion.” Kode, 596 F.3d at 611.
The district court can grant a new trial under Rule 59 on
any ground necessary to prevent a miscarriage of justice. See
Murphy, 914 F.2d at 187. In this case, the district court
specifically concluded that a new trial was warranted because
the damages awards were “against the clear weight of the
evidence and the product of speculation, error, and disregard
of the Court’s instructions.” “We must uphold the district
court if any of its grounds for granting a new trial are
reasonable.” United States v. 4.0 Acres of Land, 175 F.3d
1133, 1139 (9th Cir. 1999). For the following reasons, we
conclude the district court’s reasons are sufficient to warrant
a new trial on both Experience Hendrix’s lost profits and
damages for its loss of reputation and goodwill.
i. New trial on damages for lost profits
The district court concluded that the jury’s damages
award of $306,650, representing the profits Experience
Hendrix lost as the result of Pitsicalis’s infringement of
Experience Hendrix’s trademarks, was against the clear
weight of the evidence. Briefly stated, the district court was
not convinced that the references on Experience Hendrix’s
Exhibit 60 to “total income,” “gross profits,” “net ordinary
income,” and “net income” should be equated to profits,
without further evidence indicating that there were, in fact, no
expenses that should be deducted from Experience Hendrix’s
licensing revenue before it is deemed a measure of lost
profits. This determination alone might not have been
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 33
sufficient to support the district court’s decision to grant a
new trial on damages. See Ace v. Aetna Life Ins. Co.,
139 F.3d 1241, 1248 (9th Cir. 1998) (recognizing that a more
stringent standard of review applies to grants of new trials
predicated on insufficiency of the evidence). But the district
court also disbelieved the testimony of one of Experience
Hendrix’s corporate officers, Robert Hendrix, that 77% of
Experience Hendrix’s drop in licensing revenues during the
relevant time period, 2009, was the result of Pitsicalis’s
infringing products and not attributable to the general market
economic downturn that occurred during this same time
period. The district court based its credibility determination
in part on the fact that Experience Hendrix’s licensing
revenues on its other products, which would not have been
affected by Pitsicalis’s infringing goods, fell by more than
23% during this same time. We cannot say that the district
judge, who heard the evidence presented at trial, abused its
discretion in ordering a new trial on lost profits on these
bases.16
16
In upholding the district court’s decision to grant a new trial in a
criminal case, the Ninth Circuit noted that an appellate court’s deference
to the district court’s new trial decision is appropriate because “[c]ircuit
judges, reading the dry pages of the record, do not experience the tenor of
the testimony at trial. The balance of proof is often close and may hinge
on personal evaluations of witness demeanor. And, because an order
directing a new trial leaves the final decision in the hands of the jury, it
does not usurp the jury’s function . . . .” United States v. Alston, 974 F.2d
1206, 1212 (9th Cir. 1992). Those reasons also bolster our deferring to
the district court’s new trial determination here.
34 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
ii. New trial on damages for loss of reputation
and goodwill
As previously stated, the jury awarded Experience
Hendrix, under the WCPA, $750,000 for harm to its
reputation and $300,000 for the loss of goodwill. The district
court granted a new trial on these damages as well,
concluding that these damage awards were both contrary to
the clear weight of the evidence and contrary to the district
court’s instruction to the jury that these measures of damages
were “essentially the same thing.”
The evidence Experience Hendrix presented at trial to
support the amount of these damages, though sufficient to
provide a legal basis for the jury’s award, was minimal at
best. Further, the jury’s award of differing amounts of
damages for loss of reputation ($750,000) and for loss of
goodwill ($300,000) directly contradicted the court’s
supplemental instruction to jurors that these two measures of
damages are “essentially the same.” Cf. Jorgensen v.
Cassiday, 320 F.3d 906, 918 (9th Cir. 2003) (considering the
merits of an argument that the jury disobeyed trial court’s
instructions, before rejecting that argument, concluding that
“[t]he jury did not disobey the court’s instructions and did not
return a verdict that was unreasonable or unfair”).
Moreover, reading the court’s supplemental instruction in
light of the district court’s instructions as a whole, jury
confusion appears likely. See Overseas Private Inv. Corp. v.
Metro. Dade Cnty., 47 F.3d 1111, 1116 (11th Cir. 1995)
(granting new trial on damages where jury instructions were
confusing, resulting in a confusing damages award). The
court’s original instructions told jurors to consider these two
measures of damages separately, and the verdict form
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 35
provided separate places to insert damages for loss of
reputation and damages for loss of goodwill. The court
further instructed jurors to award each measure of damages
to which they found Experience Hendrix was entitled,
without regard to whether any award was duplicative,
because the court would later correct any duplication of
damages. And when, during the jury’s deliberations, the
court told jurors that harm to reputation and loss of goodwill
were “essentially the same thing,” the court also reminded
jurors that all of the court’s previous instructions, including
the instruction to consider each measure of damages
separately, remained important. These instructions,
considered together, likely fostered confusion among jurors.
Based on the minimal evidence of the amount of harm
Pitsicalis’s infringing activity caused to Experience Hendrix’s
reputation and goodwill, the fact that the jury’s award of two
different amounts for these damages directly contradicted the
court’s supplemental jury instruction that these measures of
damages were “essentially the same,” and the confusion
likely created by the instructions as a whole, we cannot say
that the district court abused its discretion in granting a new
trial on these measures of damages.
iii. Duplication of damages awards
In addition to the district court’s concerns about the
damages awards, we also have concerns about the duplicative
nature of several of the awards. Those apparent duplicative
awards include damages, under the Lanham Act, for both
Pitsicalis’s profits earned from infringing Experience
Hendrix’s trademarks and Experience Hendrix’s profits lost
due to Pitsicalis’s infringing activity; an award of Experience
Hendrix’s lost profits under both the Lanham Act and the
36 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
WCPA; and an award of lost licensing revenue specifically
for Experience Hendrix’s goods that are similar to Pitsicalis’s
infringing merchandise, which appears to have been double-
counted as part of the total award for lost reputation and
goodwill. The district court instructed jurors to consider and
award each measure of damages to which Experience
Hendrix was entitled, without regard to the duplicative nature
of any of the awards, because the trial court would later
eliminate any duplication. Here, however, other than the two
identical lost profit awards under the Lanham Act and the
WCPA, the district court did not address any possible
duplication of remedies. While we have discretion to remand
for the district court to correct duplicative awards, see Ace,
139 F.3d at 1248, we conclude that doing so here would still
not address all of the concerns about the damages awards that
the district court raised, and that we share. We, therefore,
defer to the district court’s determination that a new trial on
damages is warranted.
iv. Conclusion as to new trial
For the foregoing reasons, then, we uphold the district
court’s decision to order a new trial on damages, other than
the $60,000 in damages on Pitsicalis’s profits for trademark
infringement under the Lanham Act.17 Our decision is
bolstered by the conclusion that a new trial on these measures
of damages would be just under these circumstances.
Experience Hendrix’s supporting evidence underlying each
of these measures of damages, while providing a legally
17
Because the district court did not strike the jury’s $60,000 award
under the Lanham Act for the profits Pitsicalis earned by infringing
Experience Hendrix’s trademarks, that damages award remains. That
measure of damages, then, is not included in the new trial on damages.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 37
sufficient basis to survive a Rule 50(b)(3) directed verdict,
was minimal and, in the eyes of the district court, not very
credible. Further, the jury’s award of damages for loss of
reputation and goodwill contradicted the court’s supplemental
instruction that those measures of damages are “essentially
the same.” And the jury instructions, especially on the
damages for loss of reputation and goodwill, were likely
confusing. Finally, the apparent duplication of a number of
these damages awards, which the district court told jurors it
would correct, raises other concerns about the damages
awarded. In light of the numerous concerns that the district
court had with the damages award, which we share, we agree
that the just result is a new trial on these particular measures
of damages.
4. Attorney’s fees under the WCPA
Finally, the district court awarded Experience Hendrix
attorney’s fees under the WCPA, see Wash. Rev. Code
§ 19.86.090, but reduced that requested fee from $504,673 to
$50,000. The district court did so for several reasons,
including the following: The WCPA claim was only one of
six claims Experience Hendrix asserted against Pitsicalis, and
only one of two claims on which Experience Hendrix
prevailed; Experience Hendrix did not establish any damages
under the WCPA; and Experience Hendrix sought fees for
motions and pleadings on which it did not prevail or which
did not pertain to its WCPA claim. While no doubt some of
the district court’s reasons for reducing the requested fee
award remain valid, our decision here has changed several of
the factors on which the district court relied to reduce the fee
request. We, therefore, vacate the fee award in its entirety
and remand to permit the district court to reconsider
Experience Hendrix’s fee request in full. See Silver Sage
38 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
Partners, Ltd. v. City of Desert Hot Springs, 251 F.3d 814,
826 (9th Cir. 2001).18
III. CONCLUSION
For the foregoing reasons, we REVERSE the district
court’s determination that Washington’s Personality Rights
Act is unconstitutional and REMAND Pitsicalis’s declaratory
judgment claims pertaining to the WPRA with instructions to
enter summary judgment on those claims in favor of
Experience Hendrix. We AFFIRM the district court’s
decision granting Experience Hendrix partial summary
judgment on its claim that Pitsicalis’s use of “Hendrix” in its
domain names infringed Experience Hendrix’s mark
“Hendrix.” We VACATE the permanent injunction and
REMAND so the district court can revise language in the
injunction to clarify what conduct is and is not enjoined. We
REVERSE in its entirety the district court’s Rule 50(b)(3)
decision to strike most of the jury’s award of damages, under
both the federal Lanham Act and Washington’s Consumer
Protection Act. We AFFIRM the district court’s order
granting a new trial on damages under both of these statutes
and REMAND for a new trial on such damages. And we
VACATE the district court’s award of attorney’s fees under
the WCPA and REMAND the fee request for further
proceedings consistent with this decision. Each side shall
bear its own costs.
AFFIRMED IN PART, REVERSED IN PART,
VACATED IN PART AND REMANDED.
18
In its briefs, Experience Hendrix requests an award of appellate
attorney’s fees under the WCPA. Such a request must be made by
separate motion pursuant to 9th Cir. R. 39-1.6, and so we do not consider
that request here.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 39
RAWLINSON, Circuit Judge, concurring in part and
dissenting in part:
I concur in much of the majority’s opinion. I agree with
the majority’s conclusion that the district court erred when it
determined that the Washington Personality Rights Act
(WPRA) is unconstitutional. I also agree that the district
court correctly determined that Defendant Pitsicalis’s use of
“Hendrix” infringed Experience Hendrix’s “Hendrix” mark.
I concur in the determination that the permanent injunction
should be vacated and remanded for clarification of precisely
what conduct is permanently enjoined. In addition, I join the
majority’s conclusion that the jury’s damages award was
improperly decreased by the district court. Finally, but for
different reasons as discussed below, I share the majority’s
view that the district court’s award of attorney’s fees should
be vacated and remanded.
Although there is much of the majority opinion with
which I agree, I absolutely and positively disagree with the
majority’s conclusion that a new trial is warranted on the
issue of damages. In my view, the majority opinion on this
point, like the district court decision, strays from the
appropriate standard of review and essentially re-tries the
case. I respectfully dissent from that portion of the majority
opinion.
It is helpful at the outset to outline the standard of review
that governed the district court’s decision and governs our
review of that decision. That standard of review authorizes
a new trial only if the record contains no evidence in support
of the jury’s verdict. See E.E.O.C. v. Go Daddy Software,
Inc., 581 F.3d 951, 962 (9th Cir. 2009). This standard
incorporates considerable deference to the jury’s
40 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
determination. See Kode v. Carlson, 596 F.3d 608, 612 (9th
Cir. 2010) (per curiam). The majority opinion adheres to this
standard when resolving Pitsicalis’s motion for judgment as
a matter of law, but completely abandons this standard when
considering Pitsicalis’s motion for a new trial.
As the majority acknowledges, the determination that
sufficient evidence supported the jury verdict for the purposes
of Pitsicalis’s Rule 50(a) motion undermines the opposite
conclusion reached by the majority in resolving Pitsicalis’s
Rule 50(b) motion. See Majority Opinion, p. 24. See also Go
Daddy Software, 581 F.3d at 962 (instructing that a new trial
is warranted “only if the record contains no evidence in
support of the verdict”) (citation omitted).
It cannot be disputed that damages evidence was
presented for the jury’s consideration. Robert Hendrix, Chief
Operations Officer for Plaintiff Experience Hendrix testified
regarding the dramatic decrease in royalty payments in 2009,
at precisely the same time Pitsicalis was infringing the
“Hendrix” trademark by selling counterfeit Hendrix items.
Robert described 2009 as the year “the bottom fell out.”
Referring to a trial exhibit, Robert pointed out the
dramatic decrease in royalties from one licensee in 2008–09
to demonstrate the extent of the damages caused by
Pitsicalis’s infringement. In 2006, Experience Hendrix
received $384,000 in royalties from the licensee. In 2007,
Experience Hendrix was paid $394,000 in royalties.
Royalties decreased to $262,000 in 2008, and plummeted to
$40,000 in 2009. Robert also described decreased royalties
from five licensee companies in his testimony: “I did
$514,000 in 2008, and in 2009, I did $116,000 of licensing of
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 41
merchandising from these five companies. That’s almost a
$400,000 drop in revenue.”
In response to the suggestion that the decreased royalties
were attributable to the recession, Robert noted that
historically Experience Hendrix had “maintained” its sales
numbers during the previous recession, when other licensors
of trademarked items were experiencing a decrease in sales
due to the recession. For that reason, Robert did not attribute
the dramatic decrease in royalties to the recession.
Robert also testified that its licensees were unable to sell
merchandise in brick and mortar stores such as J.C. Penney
in 2009, once Pitsicalis had flooded the store shelves with
infringing merchandise. This testimony was consistent with
the dramatic decrease in royalty payments in 2009, after
Experience Hendrix realized increased royalties “every single
year until 2008.” Robert Hendrix estimated that
approximately seventy-seven percent of the decrease in
royalties was attributable to Pitsicalis’s infringing activity.
Richard Hendrix’s testimony was corroborated by
Richard Yalch, Experience Hendrix’s expert witness, and a
thirty-seven-year Ph.D. professor of marketing at the
University of Washington. Dr. Yalch confirmed that lost
royalties due to Pitsicalis’s infringing sales constituted
damages to Experience Hendrix.
Despite this unrefuted testimony, the district court and the
majority have concluded that the jury’s award of damages
was against the weight of the evidence. Yet, the majority
acknowledges this undisputed evidence of the significant
decline in Experience Hendrix’s licensing revenue and
concedes that this evidence was sufficient to allow the jury to
42 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
calculate Experience Hendrix’s lost profits. See Majority
Opinion, pp. 27–28. The majority’s acknowledgment simply
cannot be reconciled with the standard of review we must
apply to the district court’s ruling. See United States v. 4.0
Acres of Land, 175 F.3d 1133, 1139 (9th Cir. 1999) (noting
that a district court abuses its discretion in granting a new
trial “if the jury’s verdict is not against the clear weight of the
evidence”) (citation omitted); see also Ace v. Aetna Life Ins.
Co., 139 F.3d 1241, 1248 (9th Cir. 1998), as amended
(explaining that a jury verdict may be set aside on the basis of
insufficient supporting evidence only if it “is against the great
weight of the evidence or it is quite clear that the jury has
reached a seriously erroneous result”) (citations omitted)
(emphases added). We have characterized this standard as
“stringent.” Id. (citation omitted).
According to the majority, the district court did not
believe Robert Hendrix’s testimony regarding Experience
Hendrix’s lost revenue. See Majority Opinion, p. 33.
However, the district court did not rule that Robert Hendrix
lacked credibility. Rather, the district court interpreted his
testimony differently than the jury, which the court is not
permitted to do. See 4.0 Acres of Land, 175 F.3d at 1139
(“[A] district court may not grant . . . a new trial merely
because it would have arrived at a different verdict. . . .)
(citation omitted).
The majority also concludes that a new trial is warranted
due to the confusing jury instructions. See Majority Opinion,
pp. 34–35. The majority opinion focuses on the instruction
from the district court that damages for injury to reputation
and loss of goodwill “were essentially the same thing.” Id.
(internal quotation marks omitted). But “essentially the same
thing” and “exactly the same thing” are different concepts.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 43
And the jury could have reasonably awarded damages for
injury to reputation and loss of goodwill under the district
court’s instruction. See WMX Technologies v. Miller, Inc.,
197 F.3d 367, 374 (9th Cir. 1999) (“Reputation is not the
equivalent of the goodwill of a business. . . .”) (emphasis
added); id., (“[T]he goodwill of a business is its value as a
going concern . . .”). Robert Hendrix’s testimony established
that Pitsicalis’s infringement not only damaged Experience
Hendrix’s reputation for providing authentic Jimmy Hendrix
items, but also decreased the value of Experience Hendrix as
a going concern. See id.
The majority concludes that a new trial is warranted due
to “likely” jury confusion stemming from the district court’s
instructions. See Majority Opinion, pp. 34–35. However, as
discussed above, the jury’s verdict was supported by the
evidence and consistent with the court’s instruction. In any
event, as the majority recognizes, to the extent the damages
award is duplicative, we could remand for correction of the
award rather than requiring a new trial. See Majority
Opinion, p. 36.
In sum, applying the proper standard should result in
retention of the jury’s verdict, including the award of
damages. This might be a different case if Pitsicalis had
submitted some evidence to refute the damages evidence
submitted by Experience Hendrix. However, in the absence
of countervailing evidence from Pitsicalis, there was nothing
for the district court to weigh when deciding the motion for
a new trial. All the evidence was on Experience Hendrix’s
side of the scale, and supported the jury’s verdict. For that
reason, I would reverse the district court’s grant of a new
trial. See DSPT Int’l Inc. v. Nahum, 624 F.3d 1213, 1218 (9th
Cir. 2010) (“A district court may grant a new trial only if the
44 EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM
jury verdict is contrary to the clear weight of the
evidence. . . . A jury’s verdict must be upheld if it is
supported by substantial evidence, which is evidence
adequate to support the jury’s conclusion, even if it is also
possible to draw a contrary conclusion. . . . A jury verdict
should be set aside only when the evidence permits only one
reasonable conclusion, and that conclusion is contrary to the
jury’s verdict.”) (footnote references and internal quotation
marks omitted).1
As for the attorney’s fees, I agree with the majority that
the fee award should be vacated and remanded, but not for the
reasons stated by the majority. Because I am of the view that
the jury’s verdict, including the damages award, should stand,
I would remand the attorney’s fee order for the district court
to award fees to Experience Hendrix as the prevailing party
on the matters tried to the jury and on the matters resolved in
its favor by the district court. See TrafficSchool.com v.
Edriver, Inc., 653 F.3d 820, 834 (9th Cir. 2011) (remanding
the denial of attorney fees).
CONCLUSION
I agree with the majority that we should reverse the
district court’s ruling that the WPRA is unconstitutional. I
also concur in the affirmance of the district court’s decision
granting summary judgment to Experience Hendrix on its
1
The majority cites Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400,
1407 (9th Cir. 1993), for the proposition that Experience Hendrix had to
present proof of its expenses as part of its evidence of damages. See
Majority Opinion, p. 27. However, Lindy contains no language to that
effect. In any event, Robert Hendrix’s testimony informed the jury of
Experience Hendrix’s lost profits, as contemplated in Lindy.
EXPERIENCE HENDRIX V. HENDRIXLICENSING.COM 45
infringement claims against Pitsicalis’s use of the “Hendrix”
marks. I concur in the vacatur and remand of the permanent
injunction. I join the majority in reversing the district court’s
decision to decrease the damages awarded by the jury. I also
join the majority’s vacatur of the attorney fee award. I differ
from the majority in that I would NOT remand for a new trial
on damages. I would remand for reinstatement of the
damages awarded by the jury, and for an award of attorney’s
fees to Experience Hendrix as the prevailing party. In short,
the district court should reinstate the jury’s verdict, award
attorney’s fees to Experience Hendrix, and let this case be
done.