THOMAS S. ZILLY, District Judge.
THIS MATTER comes before the Court on defendants' motion for partial summary judgment, docket no. 67, which the Court previously granted in part, denied in part, and deferred in part, see Order (docket no. 102), and on plaintiffs' motion (as counterclaim defendants) for partial summary judgment, docket no. 64, as to defendants' state law counterclaims. Having reviewed all materials submitted in support of, and in opposition to, each motion, and having considered the oral arguments of counsel, the Court now enters the following Order.
This case is part of a continuing saga of litigation concerning the legendary performer
In the Foundation case, the Court concluded that, pursuant to the law of New York, Jimi Hendrix's right of publicity did not survive his passing and did not descend to his father and sole heir, James A. Hendrix ("Al Hendrix"). See id. at 7. As a result, whatever rights were subsequently assigned by Al Hendrix to plaintiffs Experience Hendrix, L.L.C. and Authentic Hendrix, LLC (collectively, "Experience") did not include Jimi Hendrix's right of publicity. Experience, however, owns copyrights in various songs written by Jimi Hendrix. See R. Hendrix Decl. at ¶ 2 (docket no. 83). Experience also has several federally registered trademarks incorporating Jimi Hendrix's name, image, signature, song titles, and/or lyrics. See Ex. 1 to Davis Decl. (docket no. 10-2).
Shortly after the Ninth Circuit affirmed this Court's ruling in the Foundation case that Experience has no right of publicity associated with Jimi Hendrix, the Washington legislature amended the Washington Personality Rights Act ("WPRA"). In 2008, RCW 63.60.010 was revised to provide inter alia that the property right in an individual's or a personality's "name, voice, signature, photograph, or likeness" "does not expire upon the death of the individual or personality, regardless of whether the law of the domicile, residence, or citizenship of the individual or personality at the time of death or otherwise recognizes a similar or identical property right."
Instead, in this action, Experience contends that defendants have violated the Lanham Act, as well as the Washington Consumer Protection Act ("CPA") and state common law, by using certain business names ("Hendrix Licensing," "Hendrix Artwork"), domain names (www.hendrixlicensing.com, www.hendrixartwork.com), and logos ("guitar and headshot," "signature").
After commencing this lawsuit, counsel for Experience sent a letter, along with a copy of the complaint, to Spencer Gifts, LLC, one of defendants' customers. See Ex. E to Shea Decl. (docket no. 65-2). The letter identified one of plaintiffs' registered marks, namely the design mark "AUTHENTIC HENDRIX BUST," and indicated that suit had been commenced against defendants for "unauthorized use and licensing" of "similar or identical" marks. Id. The letter summarized Experience's understanding that Spencer Gifts "sells, advertises, and distributes goods that use the allegedly infringing marks." Id.
Also after initiating this action, Experience issued a press release accusing defendants of "purposefully committ[ing] gross trademark infringements and other illegal acts through their marketing and licensing of Jimi Hendrix branded merchandise." Ex. 1 to Minutes (docket no. 103) (emphasis added). The press release further indicated that Experience Hendrix, L.L.C. and Authentic Hendrix LLC "are the family
Experience subsequently sought a preliminary injunction. The Court denied Experience's motion in part, concluding that defendants' use of the names "HENDRIX" or "JIMI HENDRIX" to identify either (i) the individual portrayed in an image, or (ii) the author of certain artwork, falls within the category of nominative fair use. The Court declined to preclude such nominative fair uses of "HENDRIX" or "JIMI HENDRIX." See Order (docket no. 27).
After the preliminary injunction issued, counsel for Experience sent another letter to Spencer Gifts, enclosing a copy of the preliminary injunction; counsel did not, however, include the related order in which the Court declined to enjoin any nominative fair use of the names "HENDRIX" and "JIMI HENDRIX." See Ex. F to Shea Decl. (docket no. 65-2 at 31-32). In subsequent discussions with counsel for Spencer Gifts, counsel for Experience allegedly took "the position that the court's injunction prohibits [Spencer Gifts] from selling any merchandise from HendrixLicensing or related companies." Ex. 1 to Osinski Decl. (docket no. 79-1) (emphasis added).
Having learned of these communications, counsel for defendants requested that counsel for Experience issue an opinion letter (or retraction) clarifying that Spencer Gifts may sell products featuring images and likenesses of Jimi Hendrix without running afoul of the Court's preliminary injunction or risking liability for trademark infringement. See Ex. 3 to Osinski Decl. (docket no. 79-3). The requested "retraction" was allegedly never made. See Amended Answer & Counterclaims at 13, ¶ 14 (docket no. 52). As a result, despite having a keen interest in arguably non-infringing products bearing images of Jimi Hendrix that would be licensed by Andrew Pitsicalis, Spencer Gifts did not place any orders for these products. See Rosenberg Decl. (docket no. 78).
Defendants allege that Experience's press release and communications with Spencer Gifts are actionable under one or more of the following theories: trade libel or defamation, tortious interference with business expectancy, or tortious interference with contractual relations. In addition, defendants contend that Experience's public misrepresentations concerning exclusive control over the "name, likeness, and image" of Jimi Hendrix violate the CPA. In their motion for partial summary judgment, Experience Hendrix, L.L.C. and Authentic Hendrix, LLC, as counterclaim defendants, seek dismissal of all of these state law counterclaims.
Experience did not, however, move for partial summary judgment as to defendants' declaratory judgment counterclaims. In those counterclaims, defendants seek judicial declarations that the 2008 amendments to the WPRA do not apply to Jimi Hendrix and that defendants may "trade in original images and likenesses of Jimi Hendrix" without infringing plaintiffs' trademark rights. Amended Answer and Counterclaims at ¶¶ 19 & 23 (docket no. 52). Unlike Experience, defendants have moved for partial summary judgment on these two counterclaims, but not on the four state law counterclaims. Defendants also seek dismissal of plaintiffs' claim for false designation of origin.
The Court must grant summary judgment if no genuine dispute of material fact exists and the moving party is entitled to judgment as a matter of law. Fed. R.Civ.P. 56(a) (2010). The movant bears the initial burden of demonstrating the absence of a genuine dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317,
Experience has attempted in various ways to steer clear of the constitutional thicket surrounding the 2008 amendments to the WPRA. Not only has Experience omitted from the Amended Complaint any cause of action predicated on the WPRA, Experience has explicitly asserted that the WPRA "has nothing to do with this lawsuit." Motion at 2 n. 1 (docket no. 64). Experience, however, does not appear to concede that Jimi Hendrix's right of publicity expired upon his death. To the contrary, the gravamen of Experience's complaint is that defendants make "explicit and implicit references to Jimi Hendrix," "his musical legacy," and "celebrity status" and use "prominent photographs of Jimi Hendrix." Amended Complaint at 21, ¶ 38(g) (docket no. 5). These allegations implicate the "right of publicity" Experience covets and the very statute Experience wishes this Court to ignore. Thus, despite all efforts to the contrary, Experience cannot escape the fundamental issue in this case, namely whether the 2008 amendments to the WPRA had the effect of vesting in Experience any right of publicity relating to Jimi Hendrix such that Experience may preclude defendants from trading in images of, or art created by, Jimi Hendrix.
Having recognized the pivotal role played in this litigation by the legislative changes that took effect in 2008, which defendants contend are unconstitutional on several grounds, the Court certified to the Washington State Attorney General, pursuant to Federal Rule of Civil Procedure 5.1(b), that a constitutional challenge to the WPRA had been made in this case. Notice (docket no. 91). The Washington State Attorney General has elected not to intervene in this case. Notice (docket no. 101). Because a ruling that Experience now possesses a post-mortem right of publicity associated with Jimi Hendrix would resolve most, if not all, of defendants' counterclaims in Experience's favor, the Court must first address whether the WPRA applies and, if so, whether the 2008 amendments to the statute are constitutional.
The WPRA was first enacted in 1998, almost thirty years after Jimi Hendrix died. When initially adopted, the statute declared that "[e]very individual or personality. . . has a property right in the use of his or her name, voice, signature, photograph, or likeness." Laws of 1998, ch. 274, § 1 (codified as RCW 63.60.010 (1998)). The original statute further provided that such property right "does not expire upon the death of the individual or personality" and exists "whether or not it was commercially exploited . . . during the individual's or the personality's lifetime." Id. A personality is distinguished from an individual
In the Foundation case, the Court observed that the WPRA, as originally enacted, did not contain any choice-of-law provision. See Order at 8 (Case No. C03-3462Z, docket no. 47). The Court therefore declined to apply the WPRA in determining whether Jimi Hendrix's right of publicity descended to Al Hendrix, and instead looked to New York law. Apparently in response to the Ninth Circuit's decision affirming this Court's ruling, the Washington legislature substantially amended the WPRA. See Senate Report, House Bill 2727, 60th Legislature, 2d Regular Session (Feb. 29, 2008) (summarizing "recent court decisions" that "created the need for this bill").
The modifications to the WPRA fall within three general categories. First, the revisions attempt to make the WPRA retroactive, by indicating that the right of publicity "exists in the name, voice, signature, photograph, or likeness of individuals or personalities deceased before, on, or after June 11, 1998," which was the effective date of the WPRA.
Second, the 2008 amendments try to undo the "majority rule" concerning the choice of law applicable to the survivability of the right of publicity. See 2 McCarthy on Rights of Publicity § 11:15 ("Most courts will follow the rule that the existence or non-existence of a post-mortem right of publicity is determined by the law of the state of domicile at the time of death."). The revised statute provides that the right of publicity "does not expire upon the death of the individual or personality, regardless of whether the law of the domicile, residence, or citizenship of the individual or personality at the time of death or otherwise recognizes a similar or identical property right." Laws of 2008, ch. 62, § 1 (codified as RCW 63.60.010). The legislation is accompanied by an expression of intent "to apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death." Id.
Third, the WPRA, as amended, purports to give effect to (i) inter vivos and testamentary transfers of a right of publicity that were executed before such right was recognized in the State of Washington;
If applied in this litigation, the WPRA would deem all rights to the use of Jimi Hendrix's name, voice, signature, photograph, or likeness as having descended via intestate succession to Al Hendrix and as having been transferred via assignment from Al Hendrix to Experience. Such result would preclude defendants, absent Experience's consent, from commercially distributing images of Jimi Hendrix, at least in the State of Washington.
Federal courts must apply the forum state's choice of law rules. Love v. Assoc. Newspapers, Ltd., 611 F.3d 601, 610 (9th Cir.2010). In Washington, courts will not engage in a conflict of laws analysis unless an actual conflict exists between the laws or interests of Washington and the laws or interests of another state. Burnside v. Simpson Paper Co., 123 Wn.2d 93, 100-01, 864 P.2d 937 (1994). In this case, the WPRA undeniably dictates a different result than the law of New York concerning the survivability of Jimi Hendrix's right of publicity.
In determining which of two or more conflicting laws to apply, Washington courts use the methodology outlined in the Restatement (Second) of Conflict of Laws § 6 (1971) [hereinafter "Restatement"]. See Seizer v. Sessions, 132 Wn.2d 642, 650-52, 940 P.2d 261 (1997). Section 6 provides that "[a] court, subject to constitutional restrictions, will follow a statutory directive of its own state on choice of law." Restatement § 6(1).
Defendants contend that such choice-of-law directive violates the following provisions of the United States Constitution: (i) Due Process Clause of the Fourteenth Amendment; (ii) Full Faith and Credit Clause; (iii) Privileges and Immunities Clause; (iv) Commerce Clause; (v) Takings Clause; (vi) Free Speech Clause of the First Amendment; and (vii) Copyright Clause. Experience counters that defendants lack standing to challenge the constitutionality of the WPRA and that, because the WPRA prohibits only infringements occurring within the State of Washington, the statute does not reach beyond the bounds of constitutionality. For the reasons explained below, the Court finds Experience's arguments unpersuasive, and therefore proceeds to a discussion of defendants' constitutional challenges.
Experience contends that defendants lack standing to challenge the WPRA under the auspices of the Declaratory Judgment Act ("DJA"). The Court disagrees. Pursuant to the DJA, the Court "may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought." 28 U.S.C. § 2201. To be justiciable under the DJA, a dispute must be "definite and concrete, touching the legal relations of parties having adverse legal interests," and must be "real and substantial," seeking "specific relief through a decree of conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts." Med-Immune, Inc. v. Genentech, Inc., 549 U.S. 118, 127, 127 S.Ct. 764, 166 L.Ed.2d 604 (2007) (quoting Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240-41, 57 S.Ct. 461, 81 L.Ed. 617 (1937)).
With respect to patents or trademarks, a declaratory judgment action seeking a ruling of invalidity or non-infringement presents the requisite "case or controversy" if the entity initiating suit "has a real and reasonable apprehension that he will be subject to liability if he continues to manufacture his product." Rhoades v. Avon Prods., Inc., 504 F.3d 1151, 1157 (9th Cir.2007) (quoting Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1555-56 (9th Cir.1990)). In these contexts, the Ninth Circuit employs a "flexible approach" that focuses on "the position and perceptions of the [declaratory judgment] plaintiff" and not on "specific acts or intentions of the [declaratory
The right of publicity at issue in this case bears sufficient similarity to the other forms of intellectual property governed by the "flexible approach" that the same doctrine must be applied. Pursuant to the "flexible approach," defendants here demonstrate the type of fear necessary to proceed on their counterclaims under the DJA. This case does not involve only a remote chance of litigation. To the contrary, Experience sued defendants (albeit on Lanham Act and state law claims) long before defendants filed these counterclaims. Although Experience currently makes no claim under the WPRA, the specter of an alleged "right of publicity" is evident not only in the Amended Complaint, but also on Experience's publicly available website. Thus, defendants can reasonably postulate that, absent a trademark—or copyright-based rationale for suing defendants, Experience would likely resort to litigation under the WPRA.
Moreover, as in Seattle Sch. Dist. No. 1 v. Wash., 633 F.2d 1338 (9th Cir.1980), the "circumstances of the dispute provide sufficient guarantees that a genuine case or controversy exists." Id. at 1342 n. 1. Like the initiative at issue in Seattle Sch., the WPRA is "a highly specific statute," id., amended in response to related litigation and dealing directly with the topic in dispute, namely the survivability of a right of publicity. In addition, the WPRA, as amended in 2008, is "a recent statutory enactment and not a law which has lain moribund for years," a fact the Ninth Circuit found particularly relevant in Seattle Sch. Id. Finally, in contrast to a criminal statute, the WPRA, as a civil enactment, "imposes an affirmative duty to comply." Id. As the Ninth Circuit explained in Seattle Sch., the obligation to conform "in and of itself makes [an] attack on the validity of the law a live controversy, and not an attempt to obtain an advisory opinion." Id. (quoting Lake Carriers' Ass'n v. MacMullan, 406 U.S. 498, 507, 92 S.Ct. 1749, 32 L.Ed.2d 257 (1972)).
Defendants assert that they have created products comporting with the Court's preliminary injunction and nominative fair use analysis, but have been unable to distribute them due to the lack of clarity concerning the extent of Experience's rights in Jimi Hendrix's name and likeness. The Court concludes that the validity of the WPRA is squarely at issue, and that defendants have shown a sufficient "personal stake in the outcome of the controversy" to establish standing. See Phillips Petroleum Co. v. Shutts, 472 U.S. 797, 804, 105 S.Ct. 2965, 86 L.Ed.2d 628 (1985).
Historically, when evaluating the constitutionality of a choice-of-law decision, a more exacting standard was applied under the Full Faith and Credit Clause
The Constitution does not compel a state to substitute the laws of other states for its own on subjects "concerning which it is competent to legislate." Sun Oil Co. v. Wortman, 486 U.S. 717, 722, 108 S.Ct. 2117, 100 L.Ed.2d 743 (1988) (quoting Pac. Emp'rs Ins. Co. v. Indus. Accident Comm'n, 306 U.S. 493, 501, 59 S.Ct. 629, 83 L.Ed. 940 (1939)). Thus, on procedural matters, a state may, but is not required to, apply its own laws even when the related substantive issues are governed by the law of another state. Id. at 727, 108 S.Ct. 2117. For example, in Wortman, use of Kansas's statute of limitations with respect to claims arising under Texas, Oklahoma, and Louisiana law did not violate the Due Process or Full Faith and Credit Clauses. Id. at 722-30, 108 S.Ct. 2117. In contrast, with respect to the merits of a claim, to satisfy constitutional requirements, the 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." Shutts, 472 U.S. at 818, 105 S.Ct. 2965 (quoting Allstate, 449 U.S. at 312-13, 101 S.Ct. 633). Because the WPRA speaks to substantive matters, the statute must satisfy this "significant contact" standard.
With respect to individuals or personalities domiciled in other jurisdictions, however, Experience does not even attempt to argue that Washington has sufficient interests in their property rights to justify application of Washington law to the issue whether such individuals' or personalities' rights of publicity survive their deaths. Instead, Experience contends that the WPRA governs only infringements occurring within Washington and is therefore within constitutional limits. Experience's argument ignores both the language of the amended WPRA and the rule of dépeçage, which is applicable in Washington.
The WPRA, as modified, does much more than impose liability for the unauthorized use "of a living or deceased individual's or personality's name, voice, signature, photograph, or likeness, on or in goods, merchandise, or products entered into commerce in this state." RCW 63.60.050. The WPRA purports to govern whether a right of publicity exists, whether it continues post-mortem, and how it may be transferred during life and after death, regardless of where the particular individual or personality is or was domiciled. In addition, although the WPRA requires that allegedly infringing goods, merchandise, or products enter into commerce in Washington, it does not contain a similar restriction concerning infringements occurring in the advertising of goods or services or in fund-raising or solicitation of donations. Rather, the statute defines infringement as unauthorized use in advertising or fund-raising
Moreover, Experience fails to acknowledge that survivability and infringement are distinct issues, and that, under the principle of dépeçage, they may be subject to different choice-of-law decisions.
At least one court has explicitly recognized that, although the law of the domicile applies to survivability, the law of the forum might define the elements of infringement. Acme Circus Operating Co. v. Kuperstock, 711 F.2d 1538 (11th Cir.1983). In Acme Circus, the individual or personality at issue was Clyde Beatty, who had operated the Clyde Beatty Circus, but had sold all of his circus equipment, and licensed his and the circus's name, to Acme Circus. Prior to his death, Beatty assigned all of his rights in the circus to his wife. After Beatty passed away, his wife entered into a 10-year licensing agreement with Acme Circus. After the written contract expired and subsequent licensing negotiations failed, Acme Circus sought a declaratory judgment concerning its right to use the name Clyde Beatty. The Eleventh Circuit concluded that, because Clyde Beatty was domiciled in California at the time of his death, the law of California governed whether his right of publicity survived his death.
In sum, choice of law is a severable inquiry in Washington, which is performed issue by issue. With respect to the existence of any post-mortem right of publicity, the analysis boils down to whether selection of the forum's law rather than the domicile's law is arbitrary or fundamentally unfair. In the various briefs submitted to the Court, Experience never directly confronts this issue. The question appears, however, to answer itself. In this modern era of fascination with celebrities,
This capriciousness will likely lead to inconsistent and unjust results. Indiana is the only state other than Washington that attempts by statute to disregard the law of the domicile. See Ind.Code § 32-36-1-1(a) ("This chapter applies to an act or event that occurs within Indiana, regardless of a personality's domicile, residence, or citizenship.").
Efforts to avoid litigation by, for example, restricting sales to the 48 states honoring New York law, would be futile. Under the WPRA, advertisements alone provide a basis for suit, regardless of whether they are disseminated in the forum. In addition, putative plaintiffs will
Applying the law of the domicile produces none of these negative consequences.
The Commerce Clause, U.S. CONST. art. I, § 8, cl. 3 ("Congress shall have Power ... To regulate Commerce... among the several States"), has been interpreted as having a "negative" or "dormant" aspect that denies to the states the authority vested in Congress. See, e.g., Black Star Farms LLC v. Oliver, 600 F.3d 1225, 1230 (9th Cir.2010). The dormant Commerce Clause constrains states from engaging in extraterritorial regulation. Healy v. Beer Inst., 491 U.S. 324, 336, 109 S.Ct. 2491, 105 L.Ed.2d 275 (1989). But see Midwest Title Loans, Inc. v. Ripley,
Defendants characterize the WPRA as creating a Washington-centered national right-of-publicity system. Experience does not and cannot offer much response.
Having concluded that the unconstitutional amendments to the WPRA did not operate to dictate application of Washington law to the issue of whether Jimi Hendrix's right of publicity survived his death, the Court must now turn to the question of whether New York law continues to govern. Defendants assert that Experience is barred by the doctrine of collateral estoppel (also known as "issue preclusion") from relitigating the applicability of New York law. Issue preclusion prevents the rehashing of "all `issues of fact and law that were actually litigated and necessarily decided' in a prior proceeding." Robi v. Five Platters, Inc., 838 F.2d 318, 322 (9th Cir.1988). For such preclusion to apply, the issue "must have been `actually decided' after a `full and fair opportunity' for litigation." Id.
Experience contends that the choice-of-law issue was not previously litigated in light of the 2008 amendments to the WPRA. Although Experience correctly indicates that the Foundation case did not preclude Experience from asserting in this action that the 2008 amendments govern and dictate a different result, Experience's argument is of no further avail. Given the Court's decision invalidating the 2008 choice-of-law directive, the same analysis used in the Foundation case now applies. Experience had ample opportunity to litigate whether the law of the domicile, i.e., New York, should control, and the Court can perceive no basis for revisiting its earlier ruling. Thus, for the reasons articulated in the Foundation case, the Court HOLDS that under New York law, no post-mortem right of publicity associated with Jimi Hendrix exists.
The Court GRANTS partial summary judgment in favor of defendants as to their second declaratory judgment counterclaim, DECLARES that defendants are not constrained by any right of publicity from trading in images or likenesses of Jimi Hendrix, and further DECLARES, for the reasons set forth in the Court's Order dated July 1, 2009, docket no. 27, that use of the names "HENDRIX" or "JIMI HENDRIX" to identify the subject of an image or the author of a particular work of art constitutes nominative fair use of those names or marks. The Court makes no ruling concerning whether defendants' merchandise containing images or likenesses of Jimi Hendrix infringes intellectual property rights other than the right of publicity, or whether particular uses of the names "HENDRIX" or "JIMI HENDRIX" satisfy the requirements of the nominative fair use defense.
Defendants' defamation and tortious interference claims are predicated on five
The Noerr-Pennington doctrine insulates from liability "petitioning conduct." Theme, 546 F.3d at 1006. Petitioning conduct includes the filing of a "reasonably based but unsuccessful lawsuit," Sosa, 437 F.3d at 930, as well as conduct "incidental to a lawsuit, including a pre-suit demand letter," so long as it does not fall into the realm of "sham litigation." Theme, 546 F.3d at 1007. Sham litigation may take one of three forms: (i) when the lawsuit is objectively baseless and the motive for bringing it was unlawful; (ii) when a series of lawsuits are brought "pursuant to a policy of starting legal proceedings without regard to the merits" and for an unlawful purpose; and (iii) when a party knowingly commits fraud or makes "intentional misrepresentations to the court," thereby "depriv[ing] the litigation of its legitimacy." Sosa, 437 F.3d at 938.
In an earlier case, this Court concluded that the third type of "sham litigation" is limited to fraudulent conduct "to a court." Modular Arts, Inc. v. Interlam Corp., 2007 WL 2069862 at *3 n. 2 (W.D.Wash.) (emphasis in original). The Court cited to a case predating Sosa, namely Kottle v. Nw. Kidney Ctrs., 146 F.3d 1056 (9th Cir.1998), summarizing Kottle as "declining to apply
Clarifying Kottle, however, does not resolve the issue. In Sosa, which was also cited by this Court in Modular Arts, the Ninth Circuit described the third category of sham litigation with specific reference to "the court," 437 F.3d at 938, seeming to leave no room for addressing bad behavior aimed at third parties occurring in connection with an otherwise meritorious lawsuit. A different result would be reached, however, under the reasoning of Cardtoons, a Tenth Circuit case regarded by the Sosa Court as "an outlier." 437 F.3d at 937. In Cardtoons, the plaintiff produced parody baseball trading cards containing images of major league baseball players. The plaintiff contracted with a third party, Champs Marketing, Inc. ("Champs"), to print the cards. The defendant, the Major League Baseball Players Association ("MLBPA"), sent prelitigation cease-and-desist letters to both the plaintiff and Champs. After receiving the letter. Champs advised the plaintiff that it intended to stop printing the cards. The plaintiff sought a declaratory judgment that it was not violating the MLBPA's publicity rights, as well as damages for tortious interference with the Champs contract. The MLBPA asserted Noerr-Pennington immunity. The Tenth Circuit held en banc that prelitigation threats communicated solely between private parties are not afforded immunity from suit under the right to petition guaranteed by the First Amendment. 208 F.3d at 891-93. The Tenth Circuit reasoned that the MLBPA's letter to Champs threatening suit "was never sent to the government; did not ask the government for any response or `redress of grievances'; was not even known to the government prior to [the plaintiff's] declaratory judgment action against the MLBPA; and did not ever result in any litigation." Id. at 892.
The Ninth Circuit's reluctance to adopt the Tenth Circuit's analysis is understandable. In Cardtoons, no contention was made that the cease and desist letters contained misrepresentations or improper threats. The Sosa Court apparently viewed this type of correspondence as a "fruitful exercise of the right of petition" for which "breathing space" must be preserved. 437 F.3d at 939. The same cannot be said of communications with non-parties that convey inaccurate interpretations of the Court's rulings. In Sosa, however, the Ninth Circuit did not have occasion to consider how false statements to litigants or third parties, as opposed to a court, might affect the analysis because the plaintiff in that case declined to argue that the prelitigation letters sent by the defendant fell within the sham exception to the Noerr-Pennington doctrine. Id. at 938. Thus, the law in this area remains murky.
The Court concludes that the third type of "sham litigation" does not require that misrepresentations be made to the tribunal. The competing concerns underlying Noerr-Pennington immunity and its exceptions would not be served by eliminating liability for false statements made to entities not parties to the litigation. Although
Turning to the activities at issue, the Court rules that Experience is entitled, as a matter of law, to Noerr-Pennington immunity as to the letters enclosing copies of the complaint and the preliminary injunction, and as to the subpoenas, but not with regard to the press release or the directive to Spencer Gifts not to conduct business with defendants. Defendants appear to concede that Experience's initial distribution of its publicly-filed pleading was an appropriate exercise of the right to petition. The Court is persuaded that the subsequent mailings are likewise insulated from liability. Although Experience's failure to include the Court's Order concerning nominative fair use along with the preliminary injunction and subpoenas might have generated a misimpression concerning the status of the litigation, defendants have identified no affirmative fraud or misrepresentation manifested in Experience's cover letters. Denying Noerr-Pennington immunity because a more complete record was not transmitted would unnecessarily chill the exercise of legitimate "petitioning conduct," particularly with respect to subpoenas duces tecum, and the Court declines to do so absent a stronger showing of wrongdoing. With regard, however, to the press release and the oral communications between Experience's attorney and counsel for Spencer Gifts,
To establish trade libel or defamation, a plaintiff must show "falsity, an unprivileged communication, fault, and damages." E.g., Mohr v. Grant, 153 Wn.2d 812, 822, 108 P.3d 768 (2005). To establish tortious interference with a contractual relationship or business expectancy,
To establish a violation of the CPA, a private plaintiff must prove (i) the defendant engaged in an unfair or deceptive act or practice; (ii) such act or practice occurred within a trade or business; (iii) such act or practice affected the public interest; (iv) the plaintiff suffered an injury to his or her business or property; and (v) a causal relationship exists between the defendant's act or practice and the plaintiff's injury. Hangman Ridge Training Stables, Inc. v. Safeco Title Ins. Co., 105 Wn.2d 778, 785-93, 719 P.2d 531 (1986). In moving for partial summary judgment on defendants' CPA counterclaim, Experience focuses on defendants' factual allegations relating to the communications between Experience and Spencer Gifts. If defendants' CPA counterclaim was based solely on these private transactions, Experience would have a valid argument that defendants cannot establish the requisite public interest to ward off summary judgment. Defendants, however, contend that Experience has publicly proclaimed it is "the sole controlling entity overseeing all aspects and uses of Jimi Hendrix's name, likeness, and image," leaving the public with a misconception concerning the extent to which Jimi Hendrix's persona is available for commercial use and impacting defendants' ability to conduct business. Given defendants' theory of the case, the Court DENIES Experience's motion for partial summary judgment as to the CPA counterclaim.
The Lanham Act imposes civil liability on any person who "on or in connection with any goods or services, or any container for goods, uses in commerce ... any false designation of origin" that "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." 15 U.S.C. § 1125(a)(1)(A). In this action, Experience asserts that defendants have violated the Lanham Act by using certain song titles and lyrics, for example "PURPLE HAZE," "STONE FREE," and "FOXY LADY," which Experience has not registered as trademarks.
In some circumstances, a film, music, or literary title can have a strong enough secondary meaning to preclude its use in connection with other mediums or merchandise. See J. Thomas McCarthy, 2 Trademarks and Unfair Competition §§ 10:16, 10:17, & 10:18 (4th ed.2010). "With the advent of mass-marketing of licensed merchandise marked with the titles and characters of motion pictures and television programs, consumers young and old are accustomed to assuming a licensing link between all such products and the associated movie or television program." Id. at § 10:18. This type of cross-media claim requires a plaintiff to prove: (i) the infringed work has acquired a secondary
The parties agree that the song titles and lyrics at issue are identified with Jimi Hendrix. Experience rests there. See R. Hendrix Decl. & Exs. 1-10 (docket no. 83). It provides no indication that the song titles and lyrics are associated with Experience Hendrix, L.L.C. or Authentic Hendrix, LLC, or that the public generally knows or cares which corporate entities own the copyrights in Jimi Hendrix's music and continue to make his work commercially available. Experience does not contend that defendants market music the public might mistakenly believe was written or performed by Jimi Hendrix, or that consumers might think Jimi Hendrix, who is commonly known to be deceased, is himself sponsoring defendants.
In contrast, defendants provide evidence that more than a dozen "live" registrations for the mark "PURPLE HAZE" exist, none owned by Experience. See Ex. 1 to Osinski Decl. (docket no. 86-1). In addition, the United States Patent and Trademark Office ("PTO") website reveals that "FOXY LADY" appears in five "live" registrations, while "STONE FREE" (either alone or in combination with other terms) is the subject of two "live" and two "dead" registrations, likewise not belonging to Experience. See http://tess2.uspto.gov (last visited Jan. 21, 2011).
For the foregoing reasons, the Court GRANTS the previously deferred portions of defendants' motion for partial summary judgment, docket no. 67. Declaratory judgments are AWARDED in favor of defendants as described in this Order, and plaintiffs' claim for false designation of origin is DISMISSED with prejudice. The Court further GRANTS IN PART and DENIES IN PART plaintiffs' motion for partial summary judgment, docket no. 64. Plaintiffs, as counterclaim defendants, are entitled to Noerr-Pennington immunity as to some, but not all, of their "petitioning" activities. Plaintiffs' motion for partial summary judgment is otherwise DENIED.
IT IS SO ORDERED.
