Business

Jimi Hendrix Legacy Case Highlights Murkiness of Pot Trademark Disputes

By Hilary Corrigan Jul 29, 2020
Share:

A federal court has ordered Jimi Hendrix’s brother to pay more than $400,000 over use of the late rock legend’s trademarks in selling goods, including cannabis products.

The July 24 order from U.S. District Judge Paul Engelmayer from U.S. District Court’s Southern District of New York adopts the recommendations in a July 1 report from a U.S. Magistrate Judge. The case involves trademark and copyright issues, areas in which the cannabis industry has lately seen an uptick in litigation, along with similar issues

In 2017, Washington corporation Experience Hendrix LLC and its licensing arm, Authentic Hendrix LLC, which control the rights to Hendrix’s music and likeness, sued Leon Hendrix, Jimi’s younger brother as well as Leon’s former business partner and affiliated entities. The plaintiffs had brought “a litany of claims” involving trademark infringement issues, according to the judge’s report.

The report finds that Leon Hendrix and other defendants—including Rockin Artwork LLC and Purple Haze Properties LLC, in which Leon Hendrix was a principal—infringed on the plaintiffs’ intellectual property by licensing the Hendrix marks to cannabis, edibles, food, wine, electronics and other products. The plaintiffs hadn’t authorized Leon Hendrix to use the marks, according to the report.

Another defendant in the case—Carmen Cottone, an individual who does business in New York, California and Florida—registered domain names incorporating plaintiffs’ trademarks, according to the report. Cottone tried to sell Jimi Hendrix-related products, such as wine and salsa, through his web sites. Another defendant, Colorado corporation Green Cures & Botanical Distribution Inc., (GRCU) developed, marketed and sold a line of cannabis-infused skin care products and drinks. Plaintiffs had not authorized the use of the Hendrix marks in those sales, the report says.

Several defendants could not be reached for comment. Hendrix’s attorney had withdrawn as his representative in the case late last year and did not return requests for comment. Plaintiffs’ attorney did not return requests for comment. GRCU said it would respond but did not before publication.

Improper use?

The judges’ report and rulings mark the latest chapter in a long family legal saga over the rights to the Jimi Hendrix estate, and who profits from it. Hendrix died in 1970 at age 27, suffocating on his vomit after taking barbiturates.

Court records describe how Jimi Hendrix’s father and only heir, Al Hendrix, founded Experience Hendrix and Authentic Hendrix in 1995 and chose family members to manage them, excluding Leon Hendrix. When Al Hendrix died in 2002, his will excluded Leon Hendrix from ownership in the companies.

According to the July report, Leon Hendrix, along with his former business partner, and affiliated entities “all acted together to improperly use plaintiffs’ trademarks and copyrights” for personal gain and in violation of various federal court actions that have repeatedly prohibited those activities.

For instance, the report finds GRCU profited through a license agreement with a company called Purple Haze Properties–in which Leon Hendrix was a principal–to create a hemp tea drink featuring Jimi Hendrix’s likeness and a song title. Purple Haze didn’t have authority to grant a license, according to the report. 

The plaintiffs, Experience Hendrix LLC and Authentic Hendrix LLC, had sought $350,000 in trademark damages from GRCU. But the report cites a lack of evidence in the case showing sales of infringing products by GRCU or that GRCU paid money to Purple Haze to sell the product. It did not recommend awarding trademark damages against GRCU, although it did impose legal fees and costs on that corporation.

Similarly, the report did not recommend the $300,000 in damages that plaintiffs had sought against Cottone, citing a lack of evidence that Cottone had been aware of the illegality of his conduct. The report also found limited evidence of any harm against the plaintiffs from it. Cottone could not be reached for comment.

Experience Hendrix LLC and Authentic Hendrix LLC sought various damages in the case, including against Leon Hendrix over an infringement of the copyrighted “Axis: Bold as Love” album artwork that they said was used on products, without authorization. For instance, that artwork appeared on packaging for hot sauce in a “Jimi Hendrix Hot Sauce Gift Pack” from Pepper Palace, a licensee of Leon Hendrix, according to the report.

The report finds defendants have likely sold more infringing products than is now known. It alleges they profited from the unauthorized sale of the copyrighted works while plaintiffs suffered losses, the report says.

“There is no doubt that [Leon] Hendrix’s flagrant disregard for judicial proceedings…and the fact that he has been [hauled] into court repeatedly for violating plaintiffs’ intellectual property rights…justifies a significant award of statutory damages,” the report states. It says Leon Hendrix has previously been blocked from using the plaintiffs’ copyrighted material for sales and other activities.

Engelmayer’s order adopts the report’s recommendations to award plaintiffs more than $400,000 from Leon Hendrix, including trademark and copyright damages and attorney fees and costs; more than $37,000 from Cottone in trademark damages, fees and costs; and more than $16,000 from GRCU in attorneys’ fees and costs.

Engelmayer also issued three injunction orders on July 24. They bar Leon Hendrix, GRCU and Cottone from using the trademarked and copyrighted materials.

A note from the editor

Since 2015, WeedWeek has been the best way to keep up with the cannabis industry. WeedWeek’s audience includes many of the most influential figures in cannabis because we are editorially independent:
Advertisers have no influence on our editorial content.

In addition to daily original reporting and analysis, we publish two free newsletters: 1) WeedWeek by founder Alex Halperin, 2) WeedWeek California by Donnell Alexander.

The flagship WeedWeek newsletter has more than 8,000 subscribers and a weekly open rate above 25%.

Follow us on Google News, and be the first to see new WeedWeek stories.

Connect with WeedWeek on Twitter, YouTube, Instagram, and LinkedIn.

Tips, comments and complaints to Alex Halperin alex@weedweek.net

To advertise contact Lisa Marie Dudenhoeffer lisamarie@weedweek.net