Experience Hendrix, L.L.C. v. Pitsicalis

Background

Experience Hendrix, LLC and Authentic Hendrix, LLC sued Leon Hendrix, Andrew Pitsicalis, and related corporate and individual defendants over alleged infringement of copyrights and trademarks associated with Jimi Hendrix. Experience Hendrix owns the relevant musical compositions and sound recordings and is the assignee and exclusive owner of copyright and trademark rights previously owned by Jimi Hendrix. Authentic Hendrix is Experience Hendrix’s licensing arm.

The court previously entered permanent injunctions protecting the plaintiffs’ intellectual-property rights. On July 24, 2020, it entered a permanent injunction against Leon Hendrix, his corporate entities, partners, affiliates, and people who received actual notice or knowledge of the injunction. The injunction broadly prohibited use of the Jimi Hendrix name, related names and marks, images, likenesses, and signatures in connection with goods or services, including sales, advertising, promotion, and distribution. It also prohibited assistance with interviews or other creations concerning Jimi Hendrix and prohibited holding oneself out as licensed by or affiliated with Jimi Hendrix or the plaintiffs.

The plaintiffs moved for civil contempt against Leon Hendrix, his daughter Tina Hendrix, and Hendrix Music Academy, or HMA. Leon Hendrix did not respond to the motion. Tina Hendrix filed an answer for herself and HMA without a lawyer. The court treated HMA as in default because a non-lawyer could not represent a corporation, but it considered the contempt application on its merits as to all three.

Whether the Injunction Covered Tina Hendrix and HMA

The court held that the injunction covered Tina Hendrix and HMA even though neither was a party to the original lawsuit. Federal Rule of Civil Procedure 65(d)(2) can bind nonparties who are officers, agents, employees, or other people acting together with an enjoined party and who receive actual notice of the order.

The court found that HMA was, at minimum, a corporate entity and affiliate of Leon Hendrix. It found that Tina Hendrix was, at minimum, a director, officer, and agent of HMA and an affiliate of Leon Hendrix. The court also found that both received actual notice of the injunction at least by the beginning of September 2020. It rejected Tina Hendrix’s assertion that she did not receive the plaintiffs’ cease-and-desist letter until late November 2020, finding that the evidence showed she was using the email address to which the letter had been sent.

Civil Contempt Findings

To establish civil contempt, the plaintiffs had to show that the order was clear and unambiguous, that the proof of noncompliance was clear and convincing, and that the defendants had not diligently attempted to comply in a reasonable manner. The court found that all three requirements were met. It also explained that a willful violation was not required.

The court found four categories of violations:

1. Auction-house interview. In July 2020, Leon Hendrix gave an interview promoting the sale of a purported Jimi Hendrix guitar and was paid to sign the guitar’s provenance. The court found that the interview violated the injunction’s prohibitions on using the Jimi Hendrix name in advertising or promoting goods and on assisting with interviews concerning Jimi Hendrix.

2. Memorial march and memorabilia sales. Leon Hendrix, Tina Hendrix, and HMA hosted and sponsored a September 2020 event advertised as including the sale of Jimi Hendrix memorabilia. The event used Jimi Hendrix’s name, photograph, quote, and signature. The court found that using those materials to sell goods violated the injunction. It rejected the argument that HMA’s asserted nonprofit status created an exception.

3. T-shirts distributed to encourage donations. HMA distributed T-shirts bearing a Jimi Hendrix image, quote, and signature at the event and displayed them online. The court held that distributing the shirts as an inducement to donate was still covered by the injunction’s prohibition on using Jimi Hendrix marks in connection with distributing products.

4. Fundraising and advertising. The court found that HMA used “Jimi,” “Jimi Hendrix,” and “Hendrix” in fundraising, social-media pages, domain names, and advertising its services. It held that the injunction covered this conduct even if the activity predated the injunction or HMA claimed nonprofit status. The court also noted that Tina Hendrix acknowledged HMA was not registered as a tax-exempt organization under section 501(c)(3), despite claiming to operate through a fiscal sponsor.

The court further found that the defendants had not shown any diligent effort to comply. It concluded that the violations were avoidable because the defendants could have marketed their goods and services without using the plaintiffs’ marks.

Remedies

The court granted the plaintiffs’ motion for civil contempt and ordered Leon Hendrix, Tina Hendrix, and HMA to comply with the order and the earlier injunction. It ordered Leon Hendrix and Tina Hendrix, individually and on behalf of HMA, to:

- stop all conduct prohibited by the permanent injunctions; - remove Jimi Hendrix-related names, images, and other identifying material from websites and social-media pages; - change HMA’s name to clarify that it was not affiliated with Jimi Hendrix or the plaintiffs; - stop using the existing HMA website address and adopt a clarifying address; - recall and destroy HMA apparel and merchandise bearing the plaintiffs’ intellectual property; - provide, within 60 days, an accounting of money received from the memorial march and from HMA apparel and merchandise sold after July 24, 2020; - provide, within 60 days, a list of donations received by the HMA organization identified as a “Not-for Profit 501c3 Educational Charity” after July 24, 2020; - identify other prior instances of noncompliance; and - provide, within 60 days, sworn affidavits stating that they had complied and intended to follow the permanent injunctions.

The court retained jurisdiction to enforce the order. It stated that Leon Hendrix would owe a $100-per-day penalty to the plaintiffs if he failed to comply within 60 days. It did not impose a fine on Tina Hendrix or HMA, although it warned that future violations could result in substantial sanctions.

The court also ordered Leon Hendrix to reimburse the plaintiffs for reasonable attorneys’ fees and costs resulting from his conduct and the contempt motion. The amount was left for later determination after the plaintiffs’ counsel submitted documentation.

Disposition

Judge Engelmayer granted the plaintiffs’ motion for civil contempt, found Leon Hendrix, Tina Hendrix, and HMA in contempt of the permanent injunction, ordered the specified compliance measures, imposed the conditional $100-per-day penalty on Leon Hendrix, and ordered Leon Hendrix to pay reasonable attorneys’ fees and costs in an amount to be determined by the court.