Aaargh. A great case for Bill McGeveran’s claim that trademark defenses have grown so rococo that they can be detrimental to legitimate uses.
Experience Hendrix L.L.C. v. Hendrixlicensing.com Ltd, Nos. 11-35858 (9th Cir. Jan. 29, 2014)
Defendant Pitsicalis, who licensed copyrights in some images of Hendrix, was found liable for trademark infringement for some Hendrix-related conduct. (The court also upheld Washington’s right of publicity law that grants rights of publicity to everyone, domiciliaries or not, within Washington’s borders—another reason the Supreme Court should fix this metastasizing right, and quickly.) On appeal, Pitsicalis challenged only the determination that the domain names hendrixlicensing.com and hendrixartwork.com infringed Experience Hendrix’s trademark “Hendrix.” He argued that his use was nominative. The district court found that Pitsicalis used “Hendrix” in his domain names to refer, not to Experience Hendrix’s products (as the court of appeals said was 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). “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.” (Citing Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002).) Pitsicalis didn’t raise a descriptive fair use defense (probably because it’s so messed up in the 9thCircuit after the KP Permanent remand), which would deal with a use of a mark to describe only the defendant’s own goods. Affirmed.
But this is nonsense: raising the nominative fair use defense inherently makes the point that Jimi Hendrix is both a fact-in-the-world and a trademark, just like the New Kids, just like Princess Diana. In neither of those cases did defendants refer to the goods or services the plaintiff was selling under the mark; they used the names at issue to refer to the entities named, just as here. Defendant’s service might have been licensing Hendrix-related goods, but the reference to Hendrix contained in his domain names was nominative: a reference to Jimi Hendrix the person, to whom the trademark also pointed. This seems to be some weird “use as a mark” concept, not fully spelled out and therefore left around like a loaded gun to damage some other fair use.