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A registration becomes "incontestable" if the applicant files an affidavit with the United States Patent and Trademark Office ("PTO") stating that the mark has been in continuous use for five consecutive years subsequent to the date of the registration and is still in use in commerce. The validity of an incontestable mark may not be challenged except on the grounds that it is generic, it has been abandoned, it is fraudulently used by the registrant, or it was obtained fraudulently.
Jimi Hendrix died intestate in 1970 in London, England, and his estimated $ 80 million estate went to his father, Al Hendrix, according to the intestate laws of New York. In 1995, Al Hendrix established and incorporated Experience Hendrix LLC and Authentic Hendrix LLC (collectively “Plaintiffs”), and by written agreements, Al Hendrix assigned his rights, personally and as sole heir to the estate of Jimi Hendrix, to plaintiffs. Plaintiffs now license and sell Jimi Hendrix related products, including Jimi Hendrix music, as well as branded T-shirts, guitars, guitar accessories, and posters. Plaintiffs also operate a website where Jimi Hendrix goods are sold. On the other hand, defendant Dieffenbach has a relationship with the Jimi Hendrix family through Jimi's brother, Leon Hendrix. Mr. Dieffenbach helped underwrite the James Marshall Hendrix Foundation ("the Foundation") which Leon Hendrix founded. Mr. Dieffenbach also assisted Leon Hendrix in preserving the original Jimi Hendrix family home when it was in danger of being torn down. Dieffenbach is the CEO of Electric Hendrix and Electric Hendrix Spirits, Limited Liability Companies.
Mr. Dieffenbach has had previous litigation with Plaintiffs when Plaintiffs sued the Foundation and certain individuals including Mr. Dieffenbach over the use of Jimi Hendrix's name. In that case, the defendants moved for partial summary judgment on the publicity right claims plaintiffs had asserted. This Court granted the motion for partial summary judgment and held that "no right of publicity descended to Al Hendrix in 1970." (hereinafter “the Foundation Order”) The plaintiffs then dismissed the remaining claims and appealed the grant of partial summary judgment and an award of attorney's fees. The Ninth Circuit affirmed both the grant of partial summary judgment and the award of attorney's fees.
In late 2005, Mr. Dieffenbach filed trademark registration applications for JIMI HENDRIX ELECRIC, JIMI HENDRIX ELECTRIC VODKA, HENDRIX ELECTRIC VODKA, HENDRIX ELECTRIC, and a design featuring a Jimi Hendrix likeness with and without "Jimi" written over a portion of the hair ("the Electric marks"). Dieffenbach also filed applications to register Hendrix, Jimi Hendrix, Electric Bar and Jimi Hendrix Cafe for a variety of services and products with the United States Patent and Trademark Office. Ultimately Defendants abandoned any efforts to expand into these areas and decided to concentrate on Vodka sales. Defendants' trademark applications were sold to a third party and the applications lapsed. Plaintiffs contended that these unregistered marks used by Defendnts in their vodka products and promotional materials infringed on their incontestable marks.
Are plaintiffs’ incontestable marks valid and can therefore give rise to infringement claims?
First, defendants claimed that Plaintiffs made fraudulent representations to the PTO in order to allow registration of Plaintiffs' trademarks. When questioned at oral argument, Defendants were unable to point to any particular portion of the Janie Hendrix declaration that was materially false. Defendants have also offered no evidence to prove either that Janie Hendrix knew the representation was false or that the representation was material to the consideration of the trademark registration, as Defendants were required to show to maintain a claim of fraud on the PTO. Lastly, Defendants have also failed to show that Plaintiffs should have brought the Foundation Order to the attention of the PTO. The lack of publicity rights does not prejudice a trademark application, so this fact was not material to the application.
Second, Defendants asserted that Plaintiffs have abandoned their marks through "naked" licensing. A mark is abandoned when it no longer serves the purpose of indicating the source of goods. Plaintiffs asserted that they police the goods bearing their mark and cite instances of quality checks and prototype approval. In response to Defendants' interrogatories Plaintiffs identified the quality control process and procedures to ensure control of its marks. Multiple licensees, without more indications of lack of oversight, does not reasonably lead to an inference of lack of quality control. Defendants also pointed to deposition testimony that indicates that at least one function of reviewing a potential licensee's prototype is to check that the brand image is displayed correctly and that the item in question does not show Jimi in a bad light, such as associating him with drugs or alcohol or associating him with right-handed guitar playing. No inference can be drawn from Defendants evidence, however, that no other quality checks take place, and in fact the deposition testimony of Amanda Howell indicates that further testing is done by Janie Hendrix and all products are sent to Janie Hendrix for final approval. On this record, Defendants have failed to provide evidence of a lack of quality control sufficient to constitute abandonment of Plaintiffs' marks.
Last, Defendants accused Plaintiffs of misrepresenting their ownership of Jimi Hendrix publicity rights in licensing attempts. Alaintiff who seeks to enforce a trademark must be free of any false or misleading representations. A defendant must show that a plaintiff's conduct is inequitable in relation to the subject matter of the claims. Defendants relied on Plaintiffs' licensing letters sent to accused infringers stating that "Authentic Hendrix, LLC, manages and licenses all publicity personality rights in connection with [Jimi Hendrix's] name, likeness, image and signature on merchandise." All of the licensing letters provided in the exhibit, however, predate the Foundation Order. Defendants' other unclean hands arguments relate to representations to the Trademark office and have been previously addressed in this Order.