24 March 2017

A press release from  Experience Hendrix, L.L.C. and Authentic Hendrix, LLC (“the Hendrix Companies”), the companies founded by the Estate of Jimi Hendrix and Al Hendrix, the rock legend’s father , asserted recently

in a  lawsuit in U.S. District Court for the Southern District of New York that Andrew Pitsicalis, Leon Hendrix and other associated companies were infringing  trademarks and copyrights owned by the Hendrix Companies.

We’ve provided a little more detail than we normally do on these stories  because this is a little more than your standard family tussle and also highlights the  important issue of  filings on Cannabis products when there isn’t as yet any US federal regulation.

As we move  from 2017 into 2018 and California along with other states comes aboard the good ship regulation many more companies, marketers and branders are going to be looking for that piece of silver bullet branding that will sell their product over competitors.

We’d suggest this legal battle across state courts will mirror many future ones to come. maybe not precedent but without doubt cases and filings to be aware of.

PART A) ORIGINAL SUIT & RESPONSES

Here’s the essence of the filing

Pitsicalis and his companies (“Pitsicalis”), utilize trademarks and copyrights associated with Jimi Hendrix to falsely suggest that their products are affiliated with the Hendrix Companies.

The filing notes that Pitsicalis and Leon Hendrix (and a variety of individuals and entities with which they have been associated) “have attempted to hijack trademarks and copyrights for their own personal gain,” despite Federal courts having repeatedly prohibited such activities.

Ignoring those prohibitions, Pitsicalis has expanded his infringements through the creation, development, manufacturing, promotion, advertising and sale of cannabis, edibles, food, wine, alcohol, “medicines,” electronic products and other goods.

Pitsicalis has also falsely claimed he has secured the intellectual property of the Jimi Hendrix estate for licensed products and that his company, Purple Haze Properties, LLC “… represents the greatest guitarist in Rock ‘n’ Roll history, ‘my man,’ Jimi Hendrix …”

Here’s the  full press release  and an associated news report related to the press release sent out on March 16 2017

Jimi Hendrix Estate Sues Andrew Pitsicalis and Leon Hendrix

Jimi Hendrix Estate Sues Andrew Pitsicalis and Leon Hendrix

 

Cannabis Law Report subsequently contacted Pitsicalis & Leon Hendrix’s attorney Thomas Osinski of Osinski Law Offices P.L.L.C. Tacoma WA to dig deeper into what looks like a good old fashioned family feud.

CEO, Andrew Pitsicalis of Rockin Artwork & Purple Haze Properties. response to the NY suit  is as follows.

It boils down to the Estate, claiming nobody else can do Jimi products which the courts have slapped them down on time and time again.

In Seattle.. In the court of appeals.. And most recently the federal court in Georgia.

We have a ton of clear precedent on our side plus they have dozens of procedural flaws about even filing the suit at all as well as filing it in New York.,

Experience has no trademarks in cannabis. Our products are the first in this category and set the precedent,

Lawyer Osinski responded in some detail and not a little force !

Pitsicalis has been in Business with Leon Hendrix and his family,  Jimi’s actual brother that grew up with him and Jimi’s nieces and nephews, for over ten years dealing in Jimi Hendrix related merchandise and products.

This was following a string of successful court cases with the estate and exclusive deals for rights to various Jimi Hendrix copyrighted images and original artistic creations.

Experience Hendrix has long known of my clients’ legal and proper Jimi Hendrix products and brings this frivolous suit now only to further tarnish and interfere with Jimi’s Brother Leon’s lawful and proper business that rightfully respects Jimi Hendrix’s legacy

 As a result my clients will be vigorously defending this latest onslaught and  filing appropriate counter suits and/or counter claims to vindicate their rights and punish these slanderous and false attacks once and for all.

Osinski then details the specifics of this family tussle highlighting the following rulings

A)
ASSERTION
Since 2008, when the Honorable Thomas S. Zilly of the Western District of Washington, held that the Hendrix Companies “are the senior user, have incontestable marks and are a longstanding source of Jimi Hendrix related items,” and that those incontestable marks are “strong” marks, those rights of the Hendrix Companies have been regularly upheld and vindicated, resulting in multiple orders and injunctions against Pitsicalis and his companies, including a 2008 ruling by Judge Thomas Zilly of the Western District of Washington which enjoined Pitsicalis and Leon Hendrix’s prior company with Craig Dieffenbach from any use of the Hendrix Companies’ “incontestable marks” in the sale, distribution or advertising of posters, clothing, alcoholic beverages, entertainment services and other goods.

RESPONSE
This entire ruling only found the use of a very similar headshot logo in silhouette using  the Words “Electric Hendrix” in similar font were close enough to infringe on the Bust in Silhouette using the words “Experience Hendrix” that is the mark of the plaintiffs. But the Judge did not rule in any way, shape, or form that Experience Hendrix had any kind of exclusive rights to Jimi Hendrix or products based thereon.  In fact in 2006 the same judge, later upheld by the 9th circuit found that Experience Hendrix had no rights in the image and likeness of Jimi Hendrix generally and could not exclude others from its use, all in a case involving Leon Hendrix and his charitable foundation that Experience Hendrix unsuccessfully sought to shut down.
In a 2009 suit against Mr. Pitsicalis and his companies Judge Zilly again reaffirmed that Experience Hendrix had no rights to Jimi Hendrix’s image and likeness and that Mr. Pitsicalis and Leon Hendrix could continue to produce merchandise and products with Jimi Hendrix’s image and even use the names “Jimi Hendrix” and “Hendrix” to describe those images. The court also expressly found no rights in Jimi Hendrix song titles that would prohibit Mr. Pitsicalis and his companies for using them on in association with products. In spite of Experience Hendrix filing appeals in other matters in the case, the use of the song titles and the use of  names “Hendrix” and “Jimi Hendrix” were never in contested in the appeal.

B)
ASSERTION
In 2015, Judge Zilly issued another permanent injunction against Pitsicalis and his related companies for using the “Hendrix Mark” and other similar marks, brands or logos and from using the Jimi Hendrix signature or any similar signature in connection with the advertising or sale of posters, artwork, apparel, merchandise, memorabilia or novelty items.  That same year, the Examiner at the US Patent and Trademark Office refused to register applied-for marks “Jimi” and “Jimi Jams.” The decision noted, “the mark is confusingly similar to the registered marks because its mark encompassed the word JIMI (denoting an association with Jimi Hendrix), adding that the applied-for mark consists of matter which may falsely suggest a connection with Jimi Hendrix.”

 RESPONSE
This is grossly misleading as Judge Zilly was only at this late date making rulings from July 2009 permanent because the case had gone up to the 9th circuit court of appeals and been sent back to the trial court and was only finally resolved in 2015. This is no new or different activity.  Moreover if this preliminary injunction applied Experience Hendrix would have brought a contempt action in Seattle Federal Court instead of filing this new baseless suit in NY.
And the appeal of the non-issuance of the trademarks referenced above is also still pending and has no legal effect regardless.

C)
ASSERTION
Just last year, Judge James Randal Hall of the Southern District of Georgia preliminarily enjoined Leon Hendrix and other defendants from using the word “jimi” in the names of their websites, social media profiles or other online platforms that are used to distribute, sell or promote Purple Haze Liqueur and from displaying on any of their materials the Jimi Hendrix signature.

RESPONSE
Experience leaves out that it was online use only that was enjoined, on a temporary basis during the trial, and expressly with no application to any of Leon Hendrix’s other activity. In addition Experience sought broad injunctions against Jimi Hendrix based products as they do in this suit and were DENIED.

D)
ASSERTION
In 2004 Washington State King County Superior Court Judge Jeffrey Ramsdell ruled against Leon Hendrix and his family. That ruling resulted in Leon Hendrix being expressly excluded from the Hendrix Companies business.

 RESPONSE
That was a will contest since Leon and his family had been cut out of the Al Hendrix’s will. Just because Leon Hendrix and his family are excluded from Jimi Hendrix’s music catalog and the limited trademarks created by Experience Hendrix it does not mean that Leon and his family cannot deal in Jim Hendrix related products as set forth by the many favorable rulings referenced above.

E)
ASSERTION
Experience Hendrix and Authentic Hendrix have carefully developed a licensing program around their Jimi Hendrix-related trademarks and copyrights in connection with Jimi Hendrix’s musical legacy and can be counted on to seek legal remedy when their rights are infringed upon as is the case in today’s filing.

Link to previous related filings/rulings

https://www.dropbox.com/sh/badnn7vjzpfqzmb/AAAvxnvKn1pMWVJyNNoOncVka?dl=0

1) EXPERIENCE HENDRIX L.L.C. v. HENDRIXLICENSING.COM 

Filed 1/29/14, Amended 8/8/14

2) EXPERIENCE HENDRIX, L.L.C. and AUTHENTIC HENDRIX, LLC vs. ELECTRIC HENDRIX, LLC 

Filed 10/16/08

3) EXPERIENCE HENDRIX, L.L.C. vs. HENDRIXLICENSING.COM, LTD

Amended Permanent Injunction

Filed 5/8/15

4) Jimi Jams Logo United States Patent and Trademark Office application

Issue/Mailing Date: 6/2/15

5) Jimi Jams United States Patent and Trademark Office application 

Issue/Mailing Date: 6/2/15

6) EXPERIENCE HENDRIX, LLC v. TIGER PAW DISTRIBUTORS, LLC

Filed 7/21/16

PART B) Countersuit and References (PDF)

Today (23 March 2017) Pitsicalis & Leon Hendrix issued the following press release about a countersuit issued  at the Washington State Superior Court for the County of King.

Jimi Hendrix’s Brother Leon Hendrix, Business Partner Andrew Pitsicalis And Their Companies Must Again Sue Experience Hendrix, LLC; Authentic Hendrix, LLC; and Step-Sister Janie Hendrix Over Usage Rights

(Washington State Superior Court for the County of King) A lawsuit was filed on Thursday, March 23rd on behalf of Leon Hendrix, his business partner Andrew Pitsicalis and their companies, Rockin Artwork, LLC & Purple Haze Properties, LLC for Defamation, Trade Libel, Tortious Interference, and Violations of the Consumer Protection Act. The new lawsuit stems from a false and misleading press release Experience Hendrix, LLC and Authentic Hendrix, LLC put out announcing their latest misguided attempt to deny Leon Hendrix, Andrew Pitsicalis and their companies’ entitlements to create Jimi Hendrix products, which they have done legitimately for over a decade.

I can’t imagine that my brother Jimi wouldn’t have looked out for me as he did so many times when he was alive. I also believe he would want his nieces and nephews to benefit from his legacy as well, and that is all we keep trying to do. Run our companies and benefit from our vision of Jimi, and the courts have agreed. We just want to be allowed to do our part in peace. That’s all,” explains Leon Hendrix.

We have filed this suit to show the world, once again, that Leon and his Family have a right to Jimi’s legacy too. We have built two great companies that produce amazing products for Jimi’s fans. We are an alternate source to obtain a license granting use of our proprietary and exclusive images and other assets not available to the estate since they belong to Rockin Artwork & Purple Haze Properties,” states Andrew Pitsicalis.

In a series of rulings starting in 2006 various federal trial courts and courts of appeals in various districts have affirmed that Experience Hendrix, LLC and Authentic Hendrix, LLC have no exclusive right to Jimi Hendrix products, limited the scope of their trademarks, and reaffirmed the Leon Hendrix, his partner Andrew Pitsicalis, and their companies rights to create and market their own Jimi Hendrix products. Claims such as Mr. Pitsicalis being a “serial infringer” could not be further from the truth as has been proven in several legal proceedings. In an effort to be fully transparent in the public, one instance arose in 2009 where Pitsicalis was found to have engaged in infringing activity and has since ceased.

Given Rockin Artwork, LLC and Purple Haze Properties, LLC legal victories, legitimate Jimi Hendrix merchandise has been created by these companies for over a decade in the form of posters, t-shirts, glassware, and more that is available in stores like Walmart, Kmart, KHOLS, Old Navy, Urban Outfitters, Zumies, Forever 21. They also have created Jimi Hendrix products with legendary companies like Zippo International and BIC Lighter International. Jimi’s Cannabis Collection, a Cannabis Lifestyle brand utilizes, psychoactive and non-psychoactive elements of the plant, working with the top doctors & scientists in cannabinol research. Jimi’s Meds helps treat patients, with cancer, PTSD, neuropathy, anxiety, pain, lupus, fibromyalgia, and many other horrible illnesses.

The rulings and orders supporting Leon Hendrix, Andrew Pitsicalis and their companies, Rockin Artwork, LLC & Purple Haze Properties, LLC can be found  following

Counter Suit Filed in Washington 3/24/17
https://www.dropbox.com/s/dt7ey9gu0ymnj5s/1-17-000311%20ROCKIN%202017%200323%20PL%20Complaint.pdf?dl=0

2006 Ruling that Experience Hendrix has no General Right of Publicity in Jimi Hendrix
https://www.dropbox.com/s/ys6meu1puoee02e/00%202_03-cv-03462-47-WDWA%20Order.pdf?dl=0

 2006 Affirmation By 9th Circuit that Experience Hendrix has no General Right of Publicity in Jimi Hendrix
https://www.dropbox.com/s/05nf19clpftiy8b/00%209thFoundation%20Memorandum.pdf?dl=0

2008 Order in Vodka Case which finds that Experience Hendrix’s trademarks were infringed by the specific trademark used by the Defendant but not because of Association with Jimi Hendrix, but because of other very similar elements of the Vodka Trademark. And thus again Experience Hendrix does not control Jimi Hendrix generally.
https://www.dropbox.com/s/btqw9u1dejq94rh/00%20Vodka%20Order.pdf?dl=0