Experience Hendrix V Hendrix Licensing No. 98 (Def. Brief On Constitutionality)

Case 2:09-cv-00285-TSZ Document 98 Filed 10/01/10 Page 1 of 20
1 THE HONORABLE THOMAS S. ZILLY

2
8 UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF WASHINGTON AT SEATTLE
9
EXPERIENCE HENDRIX, LLC, a No. C-09-0285 TSZ
10 Washington Limited Liability Company, and
AUTHENTIC HENDRIX, LLC, a SUPPLEMENTAL BRIEFING FOR
11
Washington Limited Liability Company, CONSTITUTIONAL ISSUES
12
Plaintiffs, NOTED FOR CONSIDERATION:
13 v. November 5, 2010
HENDRIXLICENSING.COM, LTD dba
14 HENDRIX ARTWORK and
HENDRIXARTWORK.COM, a Nevada
15 Corporation, and ANDREW PITSICALIS
and CHRISTINE RUTH FLAHERTY,
16
husband and wife,
17
Defendants.
18
19 In a Minute Order of September 1, 2010, the Court directed counsel to submit

20
supplemental briefing concerning if the Washington Publicity Rights Act, RCW 63.60 et
21
seq (hereafter “WPRA”) contained a “statutory directive” to apply it to Jimi Hendrix’s
22
right of publicity, would it therefore violate the Constitution. Defendants Andrew
23
Pitsicalis et al (hereafter “Pitsicalis”) hereby respond to the Court’s directive and, as will
24
25 be more fully explained below, state that to the extent the WPRA includes a “statutory
26 directive,” it cannot be applied within constitutional bounds to the Publicity Rights of Jimi
SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

- 1 of 20 535 Dock St. Suite 108, Tacoma, Washington 98402
Tel (253) 383-4433 | Fax (253) 572-2223 | tto@osinskilaw.com
1 Hendrix. The statutory directive of the WPRA is both unconstitutional within the context
2
of conflicts of laws analysis, thus requiring the application of New York law, as well as
3
directly unconstitutional if applied to the Publicity Rights of Jimi Hendrix.
4
5
THE WPRA’S STATUTORY DIRECTIVE CANNOT BE APPLIED TO JIMI HENDRIX’S
6
RIGHT OF PUBLICTY UNDER THE “CONSTITUTIONAL BOUNDS” PRONG OF
7
8 CONFLICT OF LAWS ANALYSIS
10 The WPRA creates a property right in each individual’s name, voice, signature,
11
photograph, and likeness. RCW 63.60.010. This right expressly survives death and
12
applies “regardless of the domicile, residence, or citizenship of the individual or
13
personality at the time of death or otherwise recognizes a similar or identical property
14
right.” See id. The WPRA also deems this right to have existed prior to June 11, 1998,
15
and to “apply to all individuals and personalities, living and deceased, regardless of
16
17 place of domicile or place of domicile at time of death.” See id. Similar language is
18 placed throughout the WPRA. See RCW 63.60.010-080.
19 Pitsicalis concedes that on its face the Statute appears to apply to Jimi Hendrix1,
20
and, moreover, that its intent, in part, was to reverse this Court’s ruling in Experience
21
Hendrix et al v. The James Marshall Hendrix Foundation et all, C03-3462Z, aff’d 240
22
Fed. Appx. 739 (9th Cir. 2007). However, as a “statutory directive” within the meaning of
23
the second restatement of the conflict of laws, section. 6, it fails. Section 6(1) of the
24
25
1
26 In fact, Experience attorney Karen Wetherall-Davis is listed in the House Report on the 2008 amendments to the
WPRA. See House Bill Report SHB 2727.

1 Second Restatement of Conflict of Laws states that “A court, subject to constitutional

2 restrictions (emphasis added), will follow a statutory directive of its own state on choice
3
of law.”2 Here, application of the directive to apply Washington Law to this case would
4
offend constitutional restrictions. Therefore, it cannot be applied due to such
5
unconstitutionality under choice of laws analysis.
6
When applying the Fourteenth Amendment’s Due Process Clause, and Full Faith
7
8 and Credit clauses, the United States Supreme Court has set forth “that for a State’s
9 substantive law to be selected in a constitutionally permissible manner, that State must
10 have significant contact or aggregation of contacts, creating state interests, such that
11
choice of its law is neither arbitrary or unfair.” Allstate Ins. Co v. Hague, 449 U.S. 302,
12
312-313 (1981). The Court also stated that “if a State has only an insignificant contact
13
with the parties and the occurrence or transaction (emphasis added), application of its
14
law is unconstitutional. See id at 311. In fact, the Court pointed out that nominal
15
residence, or post occurrence change of residence, to create standing were insufficient
16
17 alone to justify application of the forum’s law. See id. The Supreme Court later applied
18 the precedent of the Allstate case to invalidate the application of Kansas law to claims
19 lacking a significant contact, or aggregation of contacts, wherein the Kansas law

20
conflicted with other jurisdictions with interests, finding that such an application would
21
be “arbitrary and unfair.” See Phillips Petroleum v. Shutts, 472 U.S. 797, 818-822
22
(1985).
23
24
25
2
26 As noted in the Court’s minute order of August 17, 2010, Washington recognizes the restatement as its standard for
analyzing conflicts of law, citing Re Marriage of Abel 76 Wn. App. 536, 539 (1995).

1 Here, application of the WPRA to Jimi Hendrix’s Right of Publicity would violate
2
the same constitutional requirements. Jimi Hendrix was domiciled in New York at the
3
time of his death. See Foundation Order of April 15, 2005 at 8. His death is the
4
occurrence or transaction upon which both existence of any right of publicity and the
5
devising thereof depends. In fact, the devising of the right created by the WPRA would
6
pass to his “beneficiaries or heirs under the laws of intestate succession applicable to
7
8 interests in intangible personal property generally of the individual’s or personality’s
9 domicile.” See RCW 63.60.030 (1)(a). Thus even the WPRA itself acknowledges that
10 the death of the “personality” and passing of his property under the laws of the domicile
11
(here, New York) is the central transaction/occurrence.
12
Moreover, his intestate estate is the main “party” for the sake of Fourteenth
13
Amendment Due Process and Full Faith and Credit analysis under Allstate and its
14
progeny. It is the administration of that estate under which any publicity right would
15
devise. His estate was a creature of, and administered under, New York law, in the
16
17 state of New York. Washington not only had no “significant contact or aggregation of
18 contacts,” but other than an heir residing in Washington (Al Hendrix), Washington had
19 no contacts, and standing alone is not enough to confer constitutionality. See Allstate at
20
311. New York, however, has a great interest in what property rights it chooses to
21
recognize in its domiciliary, and the administration of that property when he died
22
intestate. See Foundation Order of April 15, 2005 at 8. Washington State itself even
23
recognizes the significant relationship of the domicile State to descent of property upon
24
25
death. See id at 9.
26

1 In sum, a Court can only apply a statutory directive within constitutional

2
restrictions. Due to the lack of significant contact or aggregation of contacts between
3
Washington and Jimi Hendrix’s death as a domiciliary of New York, and the conflict of
4
laws between Washington and New York, and New York having a great interest in the
5
matter, Washington Law cannot be constitutionally applied to the case at bar. This is a
6
“constitutional restriction” on the WPRA’s “statutory directive” leaving New York law in
7
8 control of any right of publicity in Jimi Hendrix.
10 IF THE WPRA WAS APPLIED TOJIMI HENDRIX’S RIGHT OF PUBLICITY, IT

11
WOULD BE UNCONSTITUIONAL AS APPLIED UNDER SEVERAL PROVISIONS
12
DIRECTLY
13
14
Pitsicalis contends that to the extent there is any statutory directive in the WPRA
15
to apply Washington law as opposed to New York law, it is constitutionally restricted
16
17 from application and thus not proper under the Second Restatement of Conflict of
18 Laws/Washington State conflict Law.3
19 However, if the Court were to reject the above argument and find Washington
20
law, and thus the WPRA, applies in this instance, such application triggers a host of
21
constitutional challenges. The WPRA’s application “regardless of the domicile,
22
residence, or citizenship of the individual or personality at the time of death or otherwise
23
recognizes a similar or identical property right creating a right deemed to exist before
24
25
3
See Second Restatement of Conflict of Laws discussion above.
26

1 June 11, 1998” allows Washington state to confer and regulate a publicity right for
2
anyone anywhere in the United States or World, and in many cases retroactively. This
3
broad and expansive right is constitutionally challengeable on several grounds:
4
Commerce Clause: The Commerce Clause says: "The Congress shall have
5
Power ... [t]o regulate Commerce... among the several States." See U.S. Const. Art. I, §
6
8, cl. 3. The Supreme Court has interpreted the Commerce Clause "to have a ‘negative’
7
8 aspect that denies the States the power unjustifiably to discriminate against or burden
9 the interstate flow of articles of commerce." See Or. Waste Sys., Inc. v. Dep't of Envtl.
10 Quality, 511 U.S. 93, 98, (1994). Courts have sometimes referred to this doctrine as the
11
"dormant Commerce Clause." See United Haulers Ass'n v. Oneida-Herkimer Solid
12
Waste Mgmt. Auth., 550 U.S. 330, 338, (2007).
13
Two levels of scrutiny exist for analyzing state statutes challenged under the
14
15 dormant Commerce Clause. See Maine v. Taylor, 477 U.S. 131, 138, (1986). The
16 higher level of scrutiny applies to a state statute that "discriminate[s] against interstate
17 commerce ‘either on its face or in practical effect.’" See Id [quoting Hughes v.

18
Oklahoma, 441 U.S. 322, 336, (1979)]. For the purposes of the dormant Commerce
19
Clause, "‘discrimination’ simply means differential treatment (emphasis added) of in-
20
state and out-of-state economic interests that benefits the former and burdens the
21
latter." See Or. Waste, 511 U.S. at 99. Of course, the "differential treatment" must be
22
as between persons or entities who are similarly situated. See Gen. Motors Corp. v.
23
24 Tracy, 519 U.S. 278, 298-99, (1997); Nat'l Ass'n of Optometrists & Opticians
25 LensCrafters, Inc. v. Brown, 567 F.3d 521, 525, 527 (9th Cir.2009). A Court must
26 analyze such a statute under the "strictest scrutiny." See Hughes, 441 U.S. at 337.

1 That is, such a statute is unconstitutional unless it "‘serves a legitimate local purpose,’
2
and... this purpose could not be served as well by available nondiscriminatory means."
3
See Taylor, 477 U.S. at 138, (quoting Hughes, 441 U.S. at 336, 99 S.Ct. 1727). The
4
party challenging the statute bears the burden of showing discrimination. See Hughes,
5
441 U.S. at 336.
6
7 The WPRA with its lack of limitation for domicile or citizenship creates a national
8 Washington State-centered system of Publicity Rights, supplanting Congress’ authority

9 over such matters and discriminating against citizens dealing in Publicity Rights in other
10
states. If a manufacturer or licensor of goods containing publicity rights fully legal in any
11
other state or territory were to allow them, intentionally or not, into Washington for sale,
12
they would be subject to statutory damages and disgorgement of profits. See RCW
13
63.60.060. In fact, as discussed more fully below under Privileges and Immunities, the
14
15 WPRA can even be construed to affect non-Washington State citizens who have
16 enough contacts for personal jurisdiction to apply even if their goods do not reach
17 Washington State, only marketing materials or campaigns. See RCW 63.60.0504

18
19
20
21 4
RCW 63.60.050 Infringement of right — Use without consent — Profit or not for profit.
22 Any person who uses or authorizes the 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, or
for purposes of advertising products, merchandise, goods, or services, or for purposes of fund-raising or solicitation
23
of donations, or if any person disseminates or publishes such advertisements in this state, without written or oral,
express or implied consent of the owner of the right, has infringed such right. An infringement may occur under this
24 section without regard to whether the use or activity is for profit or not for profit.
25
26

1 (Advertising containing personality is infringing); RCW 63.60.0705 (Exceptions make no

2
accommodation for non-Washington residence or dealings.)
3
5 5
RCW 63.60.070 Exemptions from use restrictions—when chapter does not apply.
(1) For purposes of RCW 63.60.050, the use of a name, voice, signature, photograph, or likeness in connection with matters of
6 cultural, historical, political, religious, educational, newsworthy, or public interest, including, without limitation, comment,
criticism, satire, and parody relating thereto, shall not constitute a use for which consent is required under this chapter. A matter
7 exempt from consent under this subsection does not lose such exempt status because it appears in the form of a paid
advertisement if it is clear that the principal purpose of the advertisement is to comment on such matter.
8 (2) This chapter does not apply to the use or authorization of use of an individual's or personality's name, voice, signature,
photograph, or likeness, in any of the following:
9
(a) Single and original works of fine art, including but not limited to photographic, graphic, and sculptural works of art that
are not published in more than five copies;
10
(b) A literary work, theatrical work, musical composition, film, radio, online or television program, magazine article, news
11 story, public affairs report, or sports broadcast or account, or with any political campaign when the use does not inaccurately
claim or state an endorsement by the individual or personality;
12
(c) An advertisement or commercial announcement for a use permitted by subsections (1) and (7) of this section and (a) or (b)
of this subsection;
13
(d) An advertisement, commercial announcement, or packaging for the authorized sale, distribution, performance, broadcast,
14 or display of a literary, musical, cinematographic, or other artistic work using the name, voice, signature, photograph, or likeness
of the writer, author, composer, director, actor, or artist who created the work, where such individual or personality consented to
15 the use of his or her name, voice, signature, photograph, or likeness on or in connection with the initial sale, distribution,
performance, or display thereof; and
16 (e) The advertisement or sale of a rare or fine product, including but not limited to books, which incorporates the signature of
the author.
17
(3) It is no defense to an infringement action under this chapter that the use of an individual's or personality's name, voice,
18 signature, photograph, or likeness includes more than one individual or personality so identifiable. However, the individuals or
personalities complaining of the use shall not bring their cause of action as a class action.
19 (4) RCW 63.60.050 does not apply to the owners or employees of any medium used for advertising, including but not limited to,
newspapers, magazines, radio and television stations, online service providers, billboards, and transit ads, who have published or
20 disseminated any advertisement or solicitation in violation of this chapter, unless the advertisement or solicitation was intended to
promote the medium itself.
21
(5) This chapter does not apply to a use or authorization of use of an individual's or personality's name that is merely descriptive
and used fairly and in good faith only to identify or describe something other than the individual or personality, such as, without
22 limitation, to describe or identify a place, a legacy, a style, a theory, an ownership interest, or a party to a transaction or to
accurately describe the goods or services of a party.
23
(6) This chapter does not apply to the use of an individual's or personality's name, voice, signature, photograph, or likeness when
the use of the individual's or personality's name, voice, signature, photograph, or likeness is an insignificant, de minimis, or
24 incidental use.
25 (7) This chapter does not apply to the distribution, promotion, transfer, or license of a photograph or other material containing an
individual's or personality's name, voice, signature, photograph, or likeness to a third party for use in a manner which is lawful
26 under this chapter, or to a third party for further distribution, promotion, transfer, or license for use in a manner which is lawful
under this chapter.

1 Indeed this would be exactly the effect between the current parties. Mr.
2
Pitsicalis can legally deal in posters, apparel, fine art, and other goods bearing or
3
resembling the name, image, and likeness of Jimi Hendrix in any state or territory in the
4
United States save Washington if the WPRA is found to apply. His ability to sell to
5
national chains and distributors would be greatly curtailed, along with his ability to
6
market goods online, or engage in any nationally based advertising. He would even be
7
8 subject to liability even if he kept all Hendrix based goods out of Washington State, but
9 part of some marketing campaign found its way into Washington State6. Washington
10 would therefore be regulating the Right of Publicity for the entire nation. This
11
Constitution granted the Commerce Power exclusively to Congress to prevent just this
12
sort of action by an individual state or territory.
13
Having clearly shown a discrimination against interstate commerce through
14
practical effect, it is up to Experience to show the WPRA survives high burden of strict
15
16
scrutiny through both a legitimate local purpose, and least restrictive means test. They
17 cannot, and therefore the WPRA as applied to Pitsicalis would violate the commerce
18 clause of the Constitution. It is for Congress to establish a national system of publicity
19 rights when and if they so choose, not the Washington State Legislature.
20
Takings: The Takings Clause—"nor shall private property be taken for public
21
use, without just compensation,” U.S. Const., Amdt. 5—applies as fully to the taking of a
22
23
6
In these days of online and national marketing campaigns it is easy to see the variety of ways Pitsicalis could
24
violate the WPRA’s advertising prohibition, through print, broadcast, and internet marketing even if Washington
25
State was intended to be avoided.
26

1 landowner's riparian rights as it does to the taking of an estate in land. See Yates v.
2 Milwaukee, 10 Wall. 497, 504, 19 L.Ed. 984 (1871). The Takings Clause of the Fifth
3
Amendment, made applicable to the states through the Fourteenth Amendment [see
4
Chicago, B. & Q.R. Co. v. Chicago, 166 U.S. 226, 236, (1897)], provides that "private
5
property [shall not] be taken for public use without just compensation." Moreover,
6
though the classic taking is a transfer of property to the State or to another private party
7
8 by eminent domain, the Takings clause applies to other state actions that achieve the
9 same thing. Thus, when the government uses its own property in such a way that it
10 destroys private property, it has taken that property. See United States v. Causby, 328
11
U.S. 256, 261-262, (1946); Pumpelly v. Green Bay Co., 13 Wall. 166, 177-178, 20 L.Ed.
12
557 (1872). Similarly, our doctrine of regulatory takings "aims to identify regulatory
13
actions that are functionally equivalent to the classic taking." See Lingle v. Chevron
14
U.S. A. Inc., 544 U.S. 528, 539, (2005). Thus, it is a taking when a state regulation
15
forces a property owner to submit to a permanent physical occupation, see Loretto v.
16
17 Teleprompter Manhattan CATVCorp, 458 U.S. 419, 425-426, (1982), or deprives him of
18 all economically beneficial use of his property, see Lucas v. South Carolina Coastal
19 Council, 505 U.S. 1003, 1019 (1992).

20
Through the WPRA, Washington has deprived all economic use of the images
21
and likenesses of “individuals and personalities” previously in the public domain and
22
readily useable under the laws of other jurisdictions without just compensation. It has
23
also placed those rights back in private hands. In the case at bar, Pitsicalis has several
24
25
images and likenesses of Jimi Hendrix under his exclusive control for use on apparel,
26 posters, and fine art. Under the Foundation ruling it is clear that those images are free

1 to use, and Pitsicalis has acted as such. However, if the WPRA were found to apply to
2 Jimi Hendrix Publicity Rights, Pitsicalis could no longer offer for sale goods bearing the
3
image, likeness, or name of Jimi Hendrix in Washington, directly or indirectly, for fear of
4
legal action by Experience. Thus, Pitsicalis’ “property” in the form of rights in images
5
and likenesses of Jimi Hendrix will have been “taken” without compensation by
6
Washington’s regulation of publicity rights, namely the WPRA. As such, the WPRA
7
8 cannot be constitutionally applied to Pitsicalis under the Fifth Amendment to the
9 Constitution’s Taking clause, as made applicable to the states via the Fourteenth
10 amendment.
11
Privileges and Immunities: The Privileges and Immunities clause provides
12
"The Citizens of each State shall be entitled to all Privileges and Immunities of Citizens
13
in the several States." See U.S. Const., Art. IV §§ 2. The Privileges and Immunities
14
clause is not the source of federally protected rights. Rather, the Privileges and
15
Immunities clause "reliev[es] state citizens of the disabilities of alienage in other States
16
17 and . . . inhibit[s] discriminatory legislation against them by other States." See Paul v.
18 Virginia, 75 U.S. 168, 180 (1869). Put another way, the main purpose of the Privileges
19 and Immunities Clause is "to ensure to a citizen of State A who ventures into State B
20
the same privileges which the citizens of State B enjoy." See Toomer v. Witsell, 334
21
U.S. 385, 395, 68 S. Ct. 1156, 1162, 92 L.Ed.2d 1460 (1948). It "outlaws classifications
22
based on… non-citizenship unless there is something to indicate that non-citizens
23
constitute a peculiar source of the evil at which the statute is aimed." See Id at 398.
24
25
With the WPRA, Washington has created a cause of action against non-
26 Washington citizens with perfectly valid rights in a Personality. Not only can they not

1 exercise those rights in Washington, but if they have minimum contacts enough to
2
satisfy personal jurisdiction, they could have a WPRA action commenced against them
3
for actions outside of the State of Washington. There is no limitation in the “exceptions”
4
portion of the statute for out of state citizens or actions beyond Washington’s Territorial
5
Borders. See RCW 63.60.070. In fact, the right is defined as explicitly applying to “This
6
chapter is intended to apply to all individuals and personalities, living and deceased,
7
8 regardless of place of domicile or place of domicile at time of death.” See RCW
9 63.60.010.
10 Here again Pitsicalis would be specifically at risk to application of the WPRA even if
11 he were to not market any goods bearing the name, image, or likeness of Jimi Hendrix in
12 Washington State as long as he had other “minimum contacts” necessary to create
13 personal jurisdiction. Thus, if he were to “wander” into Washington, he could be civilly
14 prosecuted for activities in Nevada as a Nevada citizen that were perfectly legal in
15 Nevada, namely the trading in Jimi Hendrix Publicity Rights. The risk becomes even more
16 pronounced if a national marketing campaign reaches Washington, even inadvertently7.
17 As such, application of the WPRA would violate the privileges and immunities clause of
18 the Constitution as applied to Pitsicalis.
19 Free Speech (including Commercial Speech): There is an inherent tension
20 between the right of publicity and the right of freedom of expression under the First
21 Amendment. The current version of the Restatement (Third) of Unfair Competition defines
22 the right of publicity as follows:
23
7
24 As discussed above in the commerce clause analysis, the WPRA reaches advertising as well, which could easily
25 appear in Washington State through no action or intention of Pitsicalis, simply by the nature current national
26 marketing practices in print, broadcast, and internet mediums.

1 Appropriation of the Commercial Value of a Person's Identity: The Right of Publicity

2 One who appropriates the commercial value of a person's identity by using without
3 consent the person's name, likeness, or other indicia of identity for purposes of trade is
4 subject to liability for the relief appropriate under the rules stated in §§ 48 and 49.
5 In § 46, Comment c, Rationale for Protection, the authors of the Restatement
6
suggest that courts may justifiably be reluctant to adopt a broad construction of the
7
right:
8
“The rationales underlying recognition of a right of publicity are
9
generally less compelling than those that justify rights in trademarks
10
or trade secrets. The commercial value of a person's identity often
11
results from success in endeavors such as entertainment or sports
12
that offer their own substantial rewards. Any additional incentive
13
attributable to the right of publicity may have only marginal
14
significance. In other cases the commercial value acquired by a
15
person's identity is largely fortuitous or otherwise unrelated to any
16
investment made by the individual, thus diminishing the weight of
17
the property and unjust enrichment rationales for protection. In
18
addition, the public interest in avoiding false suggestions of
19
endorsement or sponsorship can be pursued through the cause of
20
21
action for deceptive marketing. Thus, courts may be properly
22 reluctant to adopt a broad construction of the publicity right.” See §
23 47.
24 In § 47, Comment c, the authors of the Restatement note, "The right of publicity
25 as recognized by statute and common law is fundamentally constrained by the public

26 and constitutional interest in freedom of expression." In the same comment, the authors

1 state that "[t]he use of a person's identity primarily for the purpose of communicating
2
information or expressing ideas is not generally actionable as a violation of the person's
3
right of publicity." Various examples are given, including the use of the person's name
4
or likeness in news reporting in newspapers and magazines. The Restatement
5
recognizes that this limitation on the right is not confined to news reporting, but extends
6
to use in "entertainment and other creative works, including both fiction and non-fiction."
7
8 See Id. The authors list examples of protected uses of a celebrity's identity, likeness or
9 image, including unauthorized print or broadcast biographies and novels, plays or
10 motion pictures. See Id. According to the Restatement, such uses are not protected,
11
however, if the name or likeness is used solely to attract attention to a work that is not
12
related to the identified person, and the privilege may be lost if the work contains
13
substantial falsifications. See Id.
14
15 The Ninth Circuit has clearly stated that they evaluate a First Amendment
16 defense against a Publicity Right claim “aware of the careful balance that courts have
17 gradually constructed between the right of publicity and the First Amendment and
18
federal intellectual property laws." See Hoffman v. Capital Cities/ABC, Inc., 255 F.3d
19
1180 , 1183-84(9th Cir. 2001). Such exceptions include Copyright Law Fair Use, Title
20
17 Sec 1078, as well as Fair Use and Nominative Fair Use in Trademark Law. See e.g.
21
Toyota Motor Sales v. Tabari, 610 F.3d 1171, 1080 (9th Cir. 2010). 9
22
23
8
24 § 107. Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by
25 reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as
criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research,
26 is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair
use the factors to be considered shall include—

1 Here the WPRA does not strike a proper balance between Publicity Rights and
2 the First Amendment’s guarantees of Free Speech. The WPRA’s exemptions severely
3
limit number of copies of original works of art, including photographs and sculptures, to
4
no more than five. Moreover, do not allow for derivative or expanded uses of those
5
works of art such as posters, or t-shirts, and any other good bearing an, or created in,
6
the image or likeness of a “personality.” See RCW 63.60.07010.
7
8 As a result, the WPRA has much narrower Fair Use exceptions than either
9 Trademark or Copyright law, violating the First Amendment. See e.g. Mattel, Inc. v.
10 Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003) (discussing rights in “Barbie”
11
dolls used in an original set of photographs and First Amendment defenses to
12
Trademark and Copyright claims brought as a result); E.S.S. Entertainment 2000 v.
13
Rock Star Videos 547 F.3d 1095, 1099 (9th Cir. 2008) (discussing Trademark claims
14
and First Amendment defense thereto in video game.) Therefore, the WPRA is
15
unconstitutional as applied to Pitsicalis in utilizing photographic and fine art containing
16
17 the name, image, and likeness of Jimi Hendrix, and completely foreclosing the use of
18
19 (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit
educational purposes;
20 (2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
21 (4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon
consideration of all the above factors.
22
9
“It is the wholesale prohibition of nominative use in domain names that would be unfair. It would be unfair to merchants
23
seeking to communicate the nature of the service or product offered at their sites. It would also be unfair to consumers, who
would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First
24 Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the
markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The
25 nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act.” (emphasis added)
10
26 See footnote 5 above.

1 those works in anything other than their original form and medium such as apparel,
2 posters, and other goods.
3
Copyright Clause: The Copyright clause of the U.S. Constitution provides that
4
"Congress shall have the Power… to promote the Progress of Science and useful Arts,
5
by securing for limited Times to Authors and Inventors the exclusive Right to their
6
respective Writings and Discoveries…" See U.S. Const., art. I, § 8, cl. 8. Pursuant to
7
8 this authority, Congress enacted the Copyright Act, 17 U.S.C. § 101-1332, to define and
9 protect the rights of copyright holders. Under the Act, "the owner of copyright… has the
10 exclusive rights to do and to authorize" others to display, perform, reproduce or

11
distribute copies of the work, and to prepare derivative works. See id § 106. The
12
copyright is the right to control the work, including the decision to make the work
13
available to or withhold it from the public. See id.
14
The WPRA interferes in the ownership and right to exploit rightfully owned
15
copyrights in works incorporating the Publicity Rights of others, especially those
16
17 previously in the public domain or based on proper derivative works. As applied to
18 Pitsicalis, the WPRA would violate rights in copyrighted works that he has
19 commissioned, licensed, or purchased that contain images or likenesses or Jimi

20
Hendrix. He wouldn’t be able to produce goods bearing them, or use Jimi Hendrix’s
21
name in describing them, beyond no more than five copys of a work of fine art,
22
photography, or sculpture. All would violate the WPRA. See RCW 63.60.050—.070.
23
Therefore, the WPRA unconstitutionally interferes with the Copyright clause by
24
25
eviscerating rights granted thereunder.
26

1 Due Process and Full Faith and Credit: As discussed above, when applying
2
the Fourteenth Amendment’s Due Process clause, and Full Faith and Credit clause, the
3
United States Supreme Court has set forth “that for a State’s substantive law to be
4
selected in a constitutionally permissible manner, that State must have significant
5
contact or aggregation of contacts, creating state interests, such that choice of its law is
6
neither arbitrary or unfair.” See Allstate Ins. Co v. Hague, 449 U.S. 302, 312-313
7
8 (1981). The Court also stated that “if a State has only an insignificant contact with the
9 parties and the occurrence or transaction (emphasis added), application of its law is
10 unconstitutional. See id at 311. In fact, the Court pointed out that nominal residence, or
11
post occurrence change of residence, to create standing were insufficient alone to
12
justify application of the forum’s law. See id. The Supreme Court later applied the
13
precedent of the Allstate case to invalidate the application of Kansas law to claims
14
lacking a significant contact, or aggregation of contacts, wherein the Kansas law
15
conflicted with other jurisdictions with interests, finding that such an application would
16
17 be “arbitrary and unfair.” See Phillips Petroleum v. Shutts, 472 U.S. 797, 818-822
18 (1985).
19 Here, application of the WPRA to Jimi Hendrix’s Publicity Rights would violate
20
the same constitutional requirements. Jimi Hendrix was domiciled in New York at the
21
time of his death. See Foundation Order of April 15, 2005 at 8. His death is the
22
occurrence or transaction upon which both existence of any right of publicity and the
23
devising thereof depends. In fact, the devising of the right created by the WPRA would
24
25
pass to his “beneficiaries or heirs under the laws of intestate succession applicable to
26 interests in intangible personal property generally of the individual’s or personality’s

1 domicile.” See RCW 63.60.030 (1)(a). Thus even the WPRA itself acknowledges that
2
the death of the “personality” and passing of his property under the laws of the domicile
3
(here, New York) is the central transaction/occurrence.
4
Moreover, his intestate estate is the main “party” for the sake of Due Process and
5
Full Faith and Credit analysis under Allstate and its progeny. It is the administration of
6
that estate under which any publicity right would devise. His estate was a creature of,
7
8 and administered under, New York law, in the state of New York. Washington not only
9 had no “significant contact or aggregation of contacts,” but other than an heir residing in
10 Washington (Al Hendrix), Washington had no contacts, and standing alone is not
11
enough to confer constitutionality. See Allstate at 311. New York, however, has a great
12
interest in what property rights it chooses to recognize in its domiciliary, and the
13
administration of that property when he died intestate. See Foundation Order of April
14
15, 2005 at 8. Washington State itself even recognizes the significant relationship of
15
the domicile State to descent of property upon death. See id at 9.
16
17 Due to the lack of significant contact or aggregation of contacts between
18 Washington and Jimi Hendrix’s death as a domiciliary of New York, and the conflict of
19 laws between Washington and New York, and New York having a great interest in the
20
matter, Washington Law cannot be constitutionally applied to the case at bar without
21
violating Pitsicalis’ due process rights, and infringing upon New York’s sovereign
22
immunity. As such, the WPRA is unconstitutional on these grounds as well.
23
24
25
26

1 CONCLUSION
2
3
Seen as either the “constitutional bounds” prong of conflict of laws analysis, a
4
direct unconstitutional as applied analysis, or a facial challenge to constitutionality, the
5
WPRA cannot be applied to the Publicity Right’s of Jimi Hendrix in a constitutionally
6
sound manner. Any of the attacks above are sufficient alone to render the statute
7
8 unenforceable against Pitsicalis. As such, Pitsicalis is entitled to a Declaratory
9 Judgment that the WPRA does not apply to Jimi Hendrix.
10
11
SUBMITTED this 1st day of October, 2010.
12
13
OSINSKI LAW OFFICES, P.L.L.C.
14
By /s/ Thomas T. Osinski Jr____________
15
Thomas T. Osinski Jr., Esq.
16 Attorney for Defendants
WSBA #34154
17
Osinski Law Offices PLLC
18 535 Dock Street, Suite 108
Tacoma WA 98402
19 Tel: 253.383.4433
Fax: 253.572.2223
20
Email: tto@osinskilaw.com
21
22
23
24
25
26

1 CERTIFICATE OF SERVICE
2
3 I certify that I served a copy of these documents on all parties or their counsel
4 of record on the date below as follows:
5 US Mail Postage Prepaid
6 ABC/Legal Messenger
7 Email or other Electronic means by prior stipulation
8 Hand delivered by:
9 I certify under penalty of perjury under the laws of the state of Washington that
10 the foregoing is true and correct.
11 DATED this 1st day of October, 2010, at Tacoma, WA.
12
13 OSINSKI LAW OFFICES P.L.L.C.
14
/s/ Thomas T Osinski Jr.
15
Thomas T. Osinski, Jr., Esq.
16 WSBA #34154
17
18
19
20
21
22
23
24
25
26


Experience Hendrix V Hendrix Licensing No. 98 (Def. Brief On Constitutionality)

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Experience Hendrix V Hendrix Licensing No. 98 (Def. Brief On Constitutionality)

Uploaded by

Copyright:

Available Formats

Case 2:09-cv-00285-TSZ Document 98 Filed 10/01/10 Page 1 of 20

1 THE HONORABLE THOMAS S. ZILLY

8 UNITED STATES DISTRICT COURT

19 In a Minute Order of September 1, 2010, the Court directed counsel to submit

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

8 CONFLICT OF LAWS ANALYSIS

18 placed throughout the WPRA. See RCW 63.60.010-080.

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

1 Second Restatement of Conflict of Laws states that “A court, subject to constitutional

9 substantive law to be selected in a constitutionally permissible manner, that State must

19 lacking a significant contact, or aggregation of contacts, wherein the Kansas law

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

8 interests in intangible personal property generally of the individual’s or personality’s

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

1 In sum, a Court can only apply a statutory directive within constitutional

8 control of any right of publicity in Jimi Hendrix.

10 IF THE WPRA WAS APPLIED TOJIMI HENDRIX’S RIGHT OF PUBLICITY, IT

18 Laws/Washington State conflict Law.3

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

17 commerce ‘either on its face or in practical effect.’" See Id [quoting Hughes v.

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

8 Washington State-centered system of Publicity Rights, supplanting Congress’ authority

17 Washington State, only marketing materials or campaigns. See RCW 63.60.0504

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

1 (Advertising containing personality is infringing); RCW 63.60.0705 (Exceptions make no

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

18 clause of the Constitution. It is for Congress to establish a national system of publicity

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

19 Council, 505 U.S. 1003, 1019 (1992).

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

8 cannot be constitutionally applied to Pitsicalis under the Fifth Amendment to the

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

8 regardless of place of domicile or place of domicile at time of death.” See RCW

26 marketing practices in print, broadcast, and internet mediums.

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

1 Appropriation of the Commercial Value of a Person's Identity: The Right of Publicity

22 reluctant to adopt a broad construction of the publicity right.” See §

25 as recognized by statute and common law is fundamentally constrained by the public

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

9 image, including unauthorized print or broadcast biographies and novels, plays or

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

10 exclusive rights to do and to authorize" others to display, perform, reproduce or

17 previously in the public domain or based on proper derivative works. As applied to

19 commissioned, licensed, or purchased that contain images or likenesses or Jimi

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

26 interests in intangible personal property generally of the individual’s or personality’s

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

17 Due to the lack of significant contact or aggregation of contacts between

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

8 unenforceable against Pitsicalis. As such, Pitsicalis is entitled to a Declaratory

9 Judgment that the WPRA does not apply to Jimi Hendrix.

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

7 Email or other Electronic means by prior stipulation

8 Hand delivered by:

10 the foregoing is true and correct.

11 DATED this 1st day of October, 2010, at Tacoma, WA.

13 OSINSKI LAW OFFICES P.L.L.C.

SUPPLEMENTAL BRIEFING FOR CONSTITUTIONAL ISSUES Osinski Law Offices, P.L.L.C.

You might also like