Experience Hendrix, L.L.C. et al v. Tiger Paw Distributors, LLC et al

Filing 100

ORDER Granting in part and Denying in part 27 motion for preliminary injunction, filed by Authentic Hendrix, LLC, Experience Hendrix, L.L.C. Accordingly, the Court Enjoins Defendants Tiger Paw, Wallace, and Hendrix (1) from using the word &qu ot;jimi" in the names of their websites, social media profiles, or other online platforms; (2) from manufacturing, distributing, selling, or promoting any bottle of Purple Haze Liquer that has the web addresswww.jimipurplehaze.com printed visibly thereupon; and (3) from displaying the aforementioned signature of Jimi Hendrix on any of their labeling or marketing materials. Signed by Judge J. Randal Hall on 6/22/16. (cmr)

IN THE UNITED STATES DISTRICT COURT FOR THE
SOUTHERN DISTRICT OF GEORGIA
SAVANNAH DIVISION

EXPERIENCE HENDRIX,

LLC,

a Washington Limited Liability
Company, and AUTHENTIC HENDRIX,
LLC, a Washington Limited
Liability Company,
Plaintiffs,

v.

*

TIGER PAW DISTRIBUTORS,

CV 416-107

LLC,

a California Limited Liability
Company; SANTA PAULA
DISTRIBUTORS,

INC.;

SAVANNAH

DISTRIBUTING CO., a Georgia
Corporation; and JOE WALLACE
and LEON HENDRIX, individuals,
Defendants.

ORDER

Presently

preliminary
Plaintiffs'

before

the

injunction.

Court

(Doc.

between

whose

instant

family

("Jimi").

Plaintiffs'

27.)

For

the

motion

reasons

for

below,

motion is GRANTED IN PART and DENIED IN PART.

I,

The

is

case

is

BACKGROUND

the

members

of

latest

the

(Am. Compl., Doc. 24,

president

and

chief

stepsister, Janie Hendrix
Distributors,

LLC

of

late
M

numerous

legal

actions

musician

Jimi

Hendrix

17-24.)

executive

Here, Plaintiffs -

officer

is

Jimi's

- have filed suit against Tiger Paw

("Tiger Paw"),

Santa Paula Distributors,

Inc.

("Santa

Paula"),

Private

Label"),

Savannah

Distributing

Joe Wallace,
Janie Decl.,

According

Liquer"

and Leon Hendrix,
Doc.

to

distributing,

-

Label

27-2,

Co.

Distillery,

("Savannah

Jimi's

brother.

5 1; Weber Decl.

Plaintiffs,

Defendants

II, Doc.

-

in

LLC

("Private

Distributing"),
(Id.
27-4,

II

18-20;

Ex. 17.)

manufacturing,

and promoting the alcoholic beverage "Purple Haze

have

committed,

among

other

things,

trademark

infringement and dilution.1 (Am. Compl. II 21-25, 73-80, 91-101,
145.)

Purple Haze Liquer

1 The concept of Purple Haze Liquer was developed by Defendant Tiger Paw and
(Am. Compl. M
7, 23.)
Thereafter,
its president, Defendant Wallace.
agreements were made such that (1) Defendant Hendrix would promote the
beverage; (2) Private Label would manufacture the beverage; and (3) Defendant
Santa Paula would provide bottles of the beverage to (4) Defendant Savannah
Distributing who would distribute the beverage.
(Id. SII 6, 8, 21; Consent
J., Doc. 97, at 2.)
However, Private Label has been dismissed from this
suit, and a permanent injunction has been entered against Defendant Santa
Paula.
(Docs. 22, 97.)
Accordingly, these parties are not subject to the
provisions of this order.

In

their

Defendants

amended

have

complaint,

infringed

on

their

First, Defendants are manufacturing,

Plaintiffs

trademarks

contend

in

distributing,

that

three

ways.

and promoting

a product with a label that features "Plaintiffs' headshot logo,
overwritten by the stylized

(Id.

SI

25.)

Second,

Tiger

signature on its website.
inserted the word

"jimi"

XPH'

and the words

Paw has

(Id.

displayed

of

Jimi

Hendrix

Third, Tiger

1 70.)

in the names

'Purple Haze.'"

a

Paw has

its website and its

Facebook, Twitter, and Instagram profiles.2 (Id. 11 68, 69, 71;
Weber Decl.

II at 11.)

Plaintiffs' Trademark

As

for

Plaintiffs' Trademark

trademark

dilution,

Plaintiffs

maintain

that

Defendants have - also in three ways - harmed the reputation and
value

of

their

alcohol,

a

because

of

Second,

trademarks.

product
its

Tiger

that

role

Paw's

First,

Plaintiffs

in

Jimi's

YouTube

Defendants

have

death.

channel,

opted not
(Am.

are

selling

to

promote

Compl.

"Tiger

Paw

1

54.)

Liquer

Entertainment," features a "photograph of Jimi Hendrix smoking a
2 Tiger Paw's web address - www.jimipurplehaze.com - appears on the back of
each bottle of Purple Haze Liquer.
(PL's Ex. 1, Doc. 89.)
Additionally,
the Court will, unless otherwise provided, refer to Tiger Paw's website and
its Facebook, Twitter, and Instagram profiles as Tiger Paw's "online
platforms."
3

joint," at least one video promoting "a Cannabis Festival," and
frequent appearances from DJ Quik, who "talks music,

Liquer,

Gang Banging,

(internal

quotation

Instagram account

Liquer

& More"

in

a

widespread.

has

"One

1

(Id,

Tiger

Third,

a video

where

Radio."

promoting

Paw's

Purple

sexually-suggestive

68

Haze

conduct

is

(Pis.' Supp. Mem., Doc. 75, at 2; Videos, Doc. 74.)

allegations,

the

substance

of

their

claims

First,

Court

on

for

February

the

12,

Western

2009,

LLC,

Electric Hendrix Licensing,

LLC,

and

Craig
from

register,

or

Plaintiffs,

Dieffenbach
"using,

-

a

LLC,

on

these

LLC,

United
of

States

Washington

Electric Apparel,

Electric Hendrix Spirits,

known

advertising,

challenging"

the

District

permanently enjoined Electric Hendrix,

-

rests

Plaintiffs also stress three pieces of background

information.

Hendrix

Day

omitted).)

featured

nightclub

Although

District

marks

on

Purple Haze

associate

of

registering,

certain

applying

to

belonging

trademarks

including the ones at issue here.

Defendant

to

See Experience

Hendrix, LLC v. Electric Hendrix, LLC, No. C07-0338, slip op. at
2

(W.D.

Wash.

Feb.

Plaintiffs'

claim

trademarks

by

Hendrix,

that

2009).
the

"selling,

xHendrix Electric,'

Electric

12,

Vodka.'"

This

injunction

defendants

bottling,

had

and

infringed

marketing

xJimi Hendrix Electric,'

See

Experience

LLC, No. C07-0338,

stemmed

Hendrix,

2008 WL 3243896,

and

LLC

on

from
their

vodka

as

xJimi Hendrix

v.

Electric

at *1 (W.D. Wash.

Aug.

7,

Patent

2008) .
and

Second,

Trademark

on

May

Office

11,

2015,

("USPTO")

applications made by Defendant Wallace:

the

denied

one for

LIQUER" that would apply to "distilled spirits,

and liquers"

and the other for

suit,

56,

"Plaintiffs

Plaintiffs'

58,
.

63,

.

.

registration

64.)

[gave]

and

two

Third,

States

trademark

XXJH PURPLE HAZE

spirits,

*PURPLE HAZE LIQUER"

also apply to "distilled spirits, spirits,

(Am. Compl. M

United

spirits

that would

spirits and liquers."

before instituting this

written notice to Defendants of

rights,

but

Defendants

refused to cease their infringing acts."3 (Id. SI 78.)
Ultimately, on February 29, 2016, Plaintiffs commenced this
suit

in

the

District

of

United

Georgia,

States

District

and shortly

Court

for

thereafter,

before

their

case was

that time,

a

hearing

could be

transferred to

however,

held

this

on

Northern

Plaintiffs

the instant motion for preliminary injunction.

2 016,

the

Yet,

on May 10,

Plaintiffs'

Court.

(Doc.

58.)

the Court has received the parties'

and held the requested hearing.

filed

motion,
Since

briefs

As a result, Plaintiffs' motion

is now ripe for the Court's consideration.
3 As of May 2, 2016, Tiger Paw had removed its *jimipurplehaze.com" website,
their *jimipurplehazeliquer" Facebook profile, and their *jimipurplehaze"
Twitter and Instagram profiles.
(Tarver Decl., Doc. 50-6, M 5-8.)
Nevertheless, *[o]n May 11, 2016, seventeen (17) hours after it was posted,
Plaintiffs uncovered a new promotional video posted on Defendants'

account

Defendants'

featuring

xPurple

Haze'

barely-clothed

liquor

pole-dancers

product."

(Pis.'

with

Supp.

Instagram

bottles

Mem.

at

of

2.)

According to Tiger Paw, the Instagram account "had been inadvertently logged
into, subsequent to deactivation, which caused Instagram to automatically
reactivate it and repost its content." (Tarver Decl. SI 4.)
Since that time,
however, *Defendants [have] contacted Instagram in person and were able to

permanently change their online account name to xtigerpawbeverages.'" (Id^ SI
5.)

5

II,

In the

DISCUSSION

Eleventh Circuit,

Mi]t

is

well

established

.

.

.

that [a] preliminary injunction is an extraordinary and drastic

remedy not to be granted unless the movant clearly established]
the burden of persuasion as to

MU

[the following]

four elements":

substantial likelihood of success on the merits;

(2)

that

it would be irreparably harmed if injunctive relief were denied;

(3)

that the threatened injury to the trademark owner outweighs

whatever

damage

infringer; and (4)
adverse

to

the

injunction

may

cause

to

the

alleged

that the injunction, if issued, would not be

the public

Int' 1 Corp. , 263 F.3d

interest."

1297,

Davidoff

1300

&

C1E,

(11th Cir.

S.A.

2001)

v.

PLD

(internal

quotation marks and citation omitted).
A.

Substantial Likelihood of Success on the Merits
1.

Trademark Infringement

To succeed on the merits of a trademark infringement claim,

a plaintiff must show (1)

"that it has trademark rights in the

mark or the name at issue" and (2)

mark or name that was

the same,

"that the defendant adopted a

or confusingly similar to the

plaintiff's mark, such that there was a likelihood of confusion
for consumers as to the proper origin of the goods [or services]

created by the defendant's use of the . . . name." Ferrellgas
Partners, L.P. v. Barrow, 143 F. App'x 180, 186 (11th Cir. 2005)
(internal quotation marks and citation omitted).

a.

Here,

Plaintiffs' Trademark Rights

Plaintiffs contend that Defendants have infringed on

at least one of their thirty-four trademarks:
(1)

JIMI HENDRIX - No.

2,322,761

(2)

AUTHENTIC HENDRIX - No.

(3)

EXPERIENCE HENDRIX - No.

(4)

EXPERIENCE HENDRIX AND DESIGN - No. 2,250,912

(5)

JIMI HENDRIX - No. 2,383,500

(6)

JIMI HENDRIX - No.

(7)

EXPERIENCE HENDRIX - No. 2,987,556

(8)

JIMI HENDRIX AND DESIGN - No. 3,001,465

(9)

JIMI HENDRIX AND DESIGN - No. 3,001,464

2,245,408

2,245,409

2,997,676

(10) JIMI HENDRIX.com - No. 2,998,059

(11) JIMI HENDRIX.com AND DESIGN - No. 2,998,058
(12) MISCELLANEOUS DESIGN - No. 3,072,909

(13) AUTHENTIC HENDRIX AND DESIGN -No. 3,312,206

(14) AUTHENTIC HENDRIX AND DESIGN - No. 3,312,071
(15) AUTHENTIC HENDRIX AND DESIGN - No. 3,312,117

(16) AUTHENTIC HENDRIX AND DESIGN - No. 3,297,742

(17) AUTHENTIC HENDRIX AND DESIGN - No. 3,297,740

(18) AUTHENTIC HENDRIX AND DESIGN -No. 3,334,862
(19) AUTHENTIC HENDRIX AND DESIGN - No. 3,399,951
(20) AUTHENTIC HENDRIX AND DESIGN -No. 3,865,983
(21) HENDRIX - No.

3,409,133

(22) HENDRIX - No.

3,409,132

(23) HENDRIX - No. 3,302,110
(24) HENDRIX - No.

3,302,093

(25) HENDRIX - No.

3,302,118

(26) JIMI HENDRIX AND DESIGN - No. 3,290,861
(27) JIMI HENDRIX AND DESIGN - No. 3,306,892

(28) JIMI HENDRIX AND DESIGN - No. 3,306,891
(29) JIMI HENDRIX ELECTRIC GUITAR COMPETITION - No.
3,374,813

(30) JIMI HENDRIX ELECTRIC GUITAR COMPETITION - No.
3,328,324

(31) JIMI HENDRIX ELECTRIC GUITAR FESTIVAL - No. 3,322,319
(32) JIMI HENDRIX I AM EXPERIENCED AND DESIGN - No.
3,290,862

(33) JIMI HENDRIX AND DESIGN - No. 3,328,587

(34) JIMI HENDRIX AND DESIGN - No. 3,328,579.4
b.

Likelihood of Confusion

In deciding whether consumers are likely to be confused
between two marks,

courts generally analyze seven factors: ,x (1)

the strength of the plaintiff's mark[s];

(2)

the similarities

between the plaintiff's mark and the allegedly infringing mark;

(3) the similarity between the products and services offered by

the plaintiff and the defendant; (4) the similarity of the sales
4

Images of

these

trademarks can be found in Exhibit

Plaintiffs' motion for preliminary injunction.
8

(Doc. 27-3.)

3 attached to

methods,

of

i.e.,

retail

outlets

advertising methods;

(6)

or

customers;

(5)

the defendant's

the

similarity

intent,

e.g.,

does

the defendant hope to gain competitive advantage by associating

his product with the plaintiff's established mark;

most persuasive
confusion."

factor on

Ferrellgas

and

likely confusion is proof

Partners,

143

F.

App'x at

(7)

of

186

the

actual

(internal

quotation marks and citation omitted).
i. Strength of Plaintiffs7 Marks

Registered
strength:

(1)

trademarks

generic,

(2)

"fall

into

descriptive,

four
(3)

categories

suggestive,

arbitrary." Dieter v. B & H Indus, of Sw. Fla.,
322,

327

(11th Cir.

1989).

Generic marks

-

or

of
(4)

Inc., 880 F.2d

*those which name

the genus or class of which an individual article or service is
but

a

member"

(internal

-

can

never

be

registered

as

trademarks.

quotation marks and citation omitted).

Id.

Descriptive

marks, which "identify a characteristic or quality of an article
or

service,"

can only be

registered if

"the holder shows

that

the mark has acquired 'secondary meaning.'" Id. Suggestive marks

*suggest characteristics of the goods and services and require
an

effort

of

understood as

the

imagination by

descriptive."

citation omitted).

Lastly,

words

that

or

phrases

product." Id.

Id.

the

consumer

(internal

"'fanciful' or

bear no

direct

In terms of a spectrum,
9

in

order

to be

quotation marks

and

'arbitrary' terms are

relationship

to

the

generic marks "represent

the weaker

end,"

and arbitrary terms

"represent

the

stronger."

Id.

In this case,

only those of Plaintiffs'

trademarks that (1)

include portions of Jimi's name or (2)

feature the Jimi "bust"

are

first,

at

issue.

Addressing

the

former

"[n]ames

-

both

surnames and first names - are regarded as descriptive terms and
therefore one who claims federal trademark rights in a name must

prove that the name has acquired a secondary meaning." Tana v.
Dantanna's,
quotation

611
marks

F.3d
and

767,

774

citation

(11th

omitted).

Cir.

2010)

However,

(internal
a

name

can

acquire secondary meaning when its "primary significance . . .
in the minds of the consuming public is not the product but the

producer." Id. (internal quotation marks and citation omitted).
Because

of

Jimi

Hendrix's

undeniable

fame,

those

of

Plaintiff's trademarks bearing his name - or portions thereof -

have

secondary meaning

Hendrix,
that

2008 WL 3243896,

include

District

and

of

are

thus

the bust

logo,

Washington

in

the

that

See

Experience

As for Plaintiffs'

at *9.

strong.

trademarks

Court agrees with the Western

the

"arbitrary nature

bust's] features" also makes these marks strong.

of

[the

See id.

ii. Similarities between Plaintiffs' and Defendants' Marks

In

arguing

that

Plaintiffs'

and

Defendants'

marks

are

similar, Plaintiffs provide side-by-side pictures of the product
that the Western District of Washington permanently enjoined and
10

the product at issue here.
12.)

Yet,

motion.

Mem.

at 19;

Weber Decl.

1

the enjoined product is not the focus of the instant
Instead,

Plaintiffs'

(Pis.'

the

Court's

trademarks against

(1)

focus

is

a

comparison

of

Tiger Paw's product labeling

and (2) its online platforms.5
With respect to the product

labeling,

the Court,

having

evaluated the disputed marks both individually and collectively,
makes

the following conclusions.

Sullivan,

867

F.2d

22,

29

See Boston Athletic Ass'n v.

(1st

Cir.

1989)

("Similarity

is

determined on the basis of the total effect of the designation,

rather than a comparison of the individual features."

quotation marks and citation omitted)).

(internal

First, when considering

the text "Purple Haze Liquer" and its accompanying formatting,
the

Court

concludes

that

this

mark

Plaintiffs' registered trademarks.6

is

not

Second,

similar

to

any

of

the stylized "PH, "

which could arguably be viewed as a "JH, " is different both in

style and in text from Plaintiffs'

trademarks in the ordinary

JIMI HENDRIX text and the JIMI HENDRIX signature.

Third, while

Tiger Paw's label and the Jimi bust both feature a silhouette
image

of a male,

presumably African

haircut wearing a collared jacket,

5

American,

with an afro

the similarities end there.

Images of Plaintiffs' trademarks and Tiger Paw's product labeling can be

found on pages 2-3 supra.

6

While Plaintiff Experience Hendrix, LLC, owns the copyright to Jimi's song

entitled

"Purple

Haze,"

incorporates this title.

neither

Plaintiff

(Am. Compl. SI 33.)
11

owns

any

trademark

that

Unlike the male in Plaintiffs'

trademark who is clean shaven and

facing forward, the male in Tiger Paw's image has a mustache and
sideburns and is looking to his
from

his

head

Plaintiffs'

and

flames

right as a stylized "PH"

emerge

from his

back.

flows

Furthermore,

trademark stops slightly below the shoulders of the

pictured male,

whereas Tiger Paw's

image extends to show the

male's arms and waist.7

As for Tiger Paw's online activities,
the following

conduct

as

infringing:

(1)

Plaintiffs point to
Tiger

Paw's use

of

"jimi" in the names of its online platforms and (2) Tiger Paw's
display of a Jimi Hendrix signature on its website.
the unique spelling of Jimi's first name,

Because of

the Court finds that

those of Tiger Paw's platforms featuring this text are similar
to

Plaintiffs'

trademarks

JIMIHENDRIX.COM.

signature

in

JIMI

Additionally,

displayed

on

Tiger

HENDRIX,

though

Paw's

the

website

HENDRIX,

Jimi

is

and

Hendrix

technically

distinct from Plaintiffs'

trademarks, the marks are more similar

than they are different.

(Am. Compl. 1 70.)

iii. Similarity of Products and Services Offered

In varying ways,

beverage industry.

each Defendant competes in the alcoholic

Meanwhile, Plaintiffs do not compete in this

industry "[b]ecause drugs

7

and alcohol have been connected to

The Court has the benefit of reviewing an actual bottle of Purple Haze

Liquer, which was tendered as evidence by Plaintiffs' counsel at the June 2
hearing.

(Pis.' Ex. 1.)
12

Jimi Hendrix's untimely death,
and

Plaintiffs'

customers,

and because Jimi

include

people." (Am. Compl. 1 54.)

a

large

Hendrix fans,

number

of

young

Thus, Plaintiffs submit that this

factor should not weigh against them because had they so chosen,

they could have been competing, with trademarks, in the alcohol
industry.

Though Plaintiffs'

argument is logical,

the similarity of

products offered by the parties is a factor in the likelihood of
confusion

analysis

Accordingly,

that

must

be

given

due

consideration.

this third factor weighs in favor of Defendants.

Nevertheless, the Court is aware that the Eleventh Circuit Court

of Appeals has been reluctant to allow this factor to negate a

finding of likelihood of confusion where other factors weigh
strongly in a plaintiff's
Athletic Ass'n v.

Laite,

favor.

See,

756 F.2d 1535,

e.g.,
1547

Univ.

of Ga.

(11th Cir.

1985)

("[W]e find the remaining three factors, similarity of product,

identity

of

retail

outlets

and purchasers,

and identity

of

advertising media utilized, less significant in the instant case
than in most trade or service mark cases.").
iv. Similarity of Sales Methods

Given the evidence at hand, it appears that Plaintiffs sell

their products online, whereas Tiger Paw uses third parties to
distribute its products to retail stores that sell "Purple Haze"
and other liquor to the public.

(Lauson Decl., Doc. 50, Exs. 013

Q; Wallace Decl. 11 6-7.)

As a result,

the similarity of sales

methods factor weighs in favor of Defendants.
v.

Similarity of Advertising Methods

As for advertising, both Plaintiffs and Tiger Paw use their

online platforms to attract Jimi Hendrix fans and thereby sell

their products.
Plaintiffs'

(Id.)

Defendants'

factor weighs

in

Intent

the Court must consider whether Tiger Paw acted in

bad faith in using the marks at issue.
LLC v. Blount,

2008) .

this

favor.

vi.

Next,

Consequently,

inc.,

583 F.

See Trilink Saw Chain,

Supp. 2d 1293,

1316-17

(N.D.

Ga.

To make this showing, Plaintiffs must prove that Tiger

Paw (1) adopted Plaintiffs' marks with the intention of deriving
a benefit from their business goodwill and reputation or (2) was

intentionally blind to confusion between the marks.

See id. at

1317.

Here,

Plaintiffs

posit

that

"the

overwhelming

evidence

confirms that Defendants purposely adopted the infringing marks
and features of the Hendrix Marks en masse."

27-1, at 17-18.)

(Pis.' Mem.,

Doc.

On one hand, given the similarity between the

Jimi Hendrix signature that Tiger Paw displayed on its website
and the JIMI HENDRIX signature that Plaintiffs have trademarked,

the Court agrees with Plaintiffs and finds that Tiger Paw was,

at the very least,

"intentionally blind to confusion" between
14

the two marks.

labeling
cannot

and

On the other hand,

the

agree.

naming
At

of

most,

their

regarding Tiger Paw's product

online

Plaintiffs'

platforms,

evidence

the

Court

indicates

that

Tiger Paw attempted to create an association with Jimi Hendrix

the person, not Plaintiffs'
factor,

as

it

relates

Paw has displayed,

to

trademarks.

Accordingly,

the intent

the Jimi Hendrix signature that Tiger

weighs in favor of Plaintiffs.

In all other

respects, the factor weighs in favor of Defendants.
vii.

Proof of Actual Confusion

As for the final factor,
circuit

that

evidence of

*[t]he law is well settled in this

actual

confusion between

trademarks

not necessary to a finding of likelihood of confusion,

although

it is the best such evidence." E. Remy Martin & Co.

v.

Int'1

Cir.

Imports,

Inc. ,

756

F.2d

1525,

1529

(11th

Thus, in an attempt to demonstrate actual confusion,
have

submitted

declaration
(Docs.

27-2,

of

the
Janie

27-3,

declaration
Hendrix,

and

of
a

Michael
number

of

0.

is

Shaw Ross

1985).

Plaintiffs
Crain,

Facebook

the

posts.

27-5.)

In his declaration, Michael Crain,

"a lawyer for Plaintiffs

in the above-styled action," indicated that on or about December

12, 2015, he placed an order for a bottle of Purple Haze Liquer
with Five Points Bottle Shop in Athens,

According to Crain,
store,

Georgia.

(Doc.

27-5.)

when that bottle arrived in their Athens

Five Points Bottle Shop called to inform him that his
15

"Jimi Hendrix vodka had come in and was available for pick up."

(Id.)

(internal quotation marks omitted).

Later,

Crain drove to

the bottle shop and purchased the Purple Haze Liquer that he had
originally ordered.

(Id.)

In her declaration,

Janie Hendrix stated that

"Defendants'

conduct herein has caused actual confusion in the marketplace by

the sale of

her claim,
response

NPurple Haze Liquer.'"

(Doc. 27-2.)

As evidence of

Janie points to a number of Facebook posts made in

to

an

article

entitled

"Jimi

Hendrix

Purple

Haze

[Ljiquer [L]aunched":
-

"The Hendrix estate are a bunch of f****** vultures."

- "So the Hendrix estate wouldn't license music for a

biopic, but they'll stick his face on this purple s***? Oh,
ok."

- "I wouldn't give the Hendrix estate my p***.

think

I'm

going

to

buy

this

f******

Do you

drink.

Another

disgusting money-making scheme from a bunch of vultures."
- "Jimi would be deeply ashamed I think."
-

"Who authorized this bulls***."

_ "Little tasteless and tacky on the Hendrix family to
market

something

like

this

considering

associated with barbiturates and Alcoholl
(Doc.

27-3,

Ex.

8.)

16

his

[sic]."

death

was

Based on this

of

the

public

submitted evidence,

have

associated

Hendrix,

Jimi Hendrix's music,

Hendrix

vodka."

evidence

However,

indicating

it

Tiger

clear

Paw's

that members

product

with

Jimi Hendrix's estate,

Plaintiffs

that

is

members

of

have

the

not

and "Jimi

produced

public

have

Jimi's

estate,

do

suggest confusion between Tiger

the Court has no

Facebook

users

Hendrix

"transferred

[Plaintiffs]."

know

-

or

would

all

any

confused

Tiger Paw's product with Plaintiffs or their trademarks.
the Facebook posts

Jimi

While
Paw and

evidence indicating that these
be

likely

rights

(Pis.' Mem. at 2.)

from

to

know

Jimi's

Accordingly,

-

that

estate

Al

into

the final factor

weighs in favor of Defendants.

Now,
that

having evaluated all seven

Plaintiffs

have

demonstrated

confusion between Plaintiffs'

a

factors,

the Court

substantial

trademarks and (1)

likelihood

signature

Plaintiffs

have not

to these marks,

between

displayed

the

on

Tiger

Paw's

demonstrated actual

the

parties'

strength of

marks,

(2)

the Jimi

website.

Though

confusion with respect

these marks,

and

Tiger

of

the "jimi" used

in the names of Tiger Paw's online platforms and
Hendrix

finds

Paw's

the

similarity

intent

as

to

Plaintiffs' signature mark are, on balance, enough for the Court
to

reach

marks

this

conclusion.

found on Tiger Paw's

likelihood of

confusion

As

for

product

exists.

17

Plaintiffs'

labeling,

While

marks

no

Plaintiffs'

and

the

substantial
trademarks

are

strong,

Tiger

Tiger

Paw's

Paw's

marks

Plaintiffs';

and

marks

have

Tiger

not

Paw

the names

trademark claims

of

Defendants'

signature displayed on

not

sufficiently

actually

has

respect to Plaintiffs' marks.
Plaintiffs'

are

not

been

acted

Tiger

in

Paw's

bad

with

faith

with

only

challenge

online platforms

confused

at this stage,

Consequently,
that

similar;

the

"jimi"

used in

and the Jimi Hendrix

website

have

a

substantial

likelihood of success on the merits.

2.

Trademark Dilution - 15 U.S.C.

Under 15 U.S.C.

the

owner

1125

§ 1125(c),

of

inherently or

§

a

famous

mark

that

is

distinctive,

through acquired distinctiveness,

be entitled to an injunction against another
who, at any time after the owner's mark has

shall
person
become

famous, commences use of a mark or trade name in
commerce that is likely to cause dilution by blurring
or
dilution by
tarnishment
of
the
famous
mark,
regardless of the presence or absence of actual or
likely
confusion,
of
competition,
or
of
actual
economic injury.

Put another way,

to establish a dilution claim,

"must provide sufficient evidence that (1)

a plaintiff

the mark is famous;

(2) the alleged infringer adopted the mark after the mark became

famous;

(3)

the

infringer

diluted

the

mark;

defendant's use is commercial and in commerce."

LLC v.

Scalini,

858 F.

Supp.

2d

1349,

1356

and

(4)

the

Brain Pharma,

(S.D.

Fla.

2012)

(internal quotation marks and citation omitted).

As has been clearly established, Jimi Hendrix and his music
are famous.

However, the Court has not received evidence from
18

Plaintiffs
that

indicating

Plaintiffs'

Plaintiffs

-

there

trademarks

emphasized

incontestable

just

golden arches are.
Yet,

that

are

that

as

is

the

880

without

F.2d

more,

trademarks

322,

this

are

329

Court

"famous"

likelihood

oral

arguments,

trademarks

and

Tr.,

are

the McDonald's

Doc.

91,

at

10.)

incontestable has no bearing on
See Dieter v. B & H Indus, of

(11th Cir.

cannot

-

logo

Inj . Hr'g

whether or not a mark is

Fla.,

At

Plaintiffs'

Coca-Cola

(Prelim.

substantial

famous.

the fame of that particular mark.
Sw.

a

i.e.,

1989).

conclude
"widely

Consequently,

that

Plaintiffs'

recognized

by

the

general consuming public of the United States." See 15 U.S.C. §

1125(c)(2)(A).8
that

their

For that reason, Plaintiffs have not established

federal

dilution claim has

a

substantial

likelihood

of success on the merits.

3.

Trademark Dilution - O.C.G.A.

§ 10-1-451

Within their complaint, Plaintiffs have not pled a dilution

claim pursuant to O.C.G.A.
cannot

consider

Plaintiffs'

this

motion

Civ. P. 8(a)(2)

for

§ 10-1-451.

claim

as

a

basis

Accordingly,
upon

which

a preliminary injunction.

the Court
to

grant

See Fed.

R.

("A pleading that states a claim for relief must

contain a short and plain statement of the claim showing that
the pleader is entitled to relief.").

8 While it did recognize that Jimi Hendrix was a famous person, the USPTO, as

part of its decisions on Defendant Wallace's trademark applications, did not
state that Plaintiffs' marks were "famous marks."
16.)

19

(Weber Decl. II, Exs. 15-

B.

In

the

past,

the

Irreparable Harm

Eleventh

Circuit

has

sufficiently strong showing of likelihood of

held

that

confusion

"a

[caused

by trademark infringement] may by itself constitute a showing of
[a]

substantial

Ferrellgas

Partners,

marks

citation

and

threat

143 F.

of

App'x

omitted).

at

has cast doubt on the legality of
Inc.

617450,

*2

at

appropriateness
"doubtful"
maintain

that

"[the]

trade,

Uber Techs.,

(N.D.

even

irreparable

16,

eBay decision).

56,

As

388

See Uber
2016

(stating

that

the

is

Nevertheless,
the

WL

presumption

harm

bars

(2006),

1:15CV206,

2016)

[the]

loss

of

[their]

Plaintiffs

irreparable

reputation,

goodwill"

distribution of Tiger Paw's product will
Doc.

Court's

harm

they can still make the necessary showing because

loss of control of

and

Supreme

547 U.S.

Inc. , No.

Feb.

eBay

the

See

quotation

this presumption.

Fla.

if

harm."

(internal

LLC,

the

of

after the

presumption,
of

v.

191

However,

decision in eBay Inc. v. MercExhange,

Promotions,

irreparable

that
cause.

[the]

the

loss of

continued

(Pis.'

Reply,

at 5.)

noted above,

consumers are likely to

confuse the names

of Tiger Paw's online platforms with at least one of Plaintiffs'
trademarks.

Thus,

it naturally follows that consumers are also

likely to confuse the content of Tiger Paw's online platforms
with Plaintiffs'

trademarks.

In that vein,

20

Plaintiffs fear that

Tiger Paw's

online promotion of alcohol

and sexually-suggestive behavior will

consumption,

hinder

their

drug use,

image

of

a

family-friendly,

alcohol and drug-free Jimi Hendrix.

The Court,

after

the

platforms,

reviewing

agrees

with

threat

of

content

Plaintiffs

irreparable

App'x at 190

on

and

Tiger

Paw's

accordingly

harm.

See

online

finds

Ferrellgas

a

substantial

Partners,

143

F.

(providing that "[g]rounds for irreparable injury

include loss of

control of

reputation,

loss of

trade,

and loss

of goodwill").
C.

Balancing Harms

With respect to Defendants Tiger Paw, Wallace,
the Court has

be

the

little reason to believe that these parties would

substantially harmed by

word

and Hendrix,

"jimi"

on

an order enjoining them from using

their

online

platforms

and

displaying

signature similar to the one Plaintiffs have trademarked.
Court

bases

Tiger

Paw

their

this

and

online

signature

and

conclusion

Wallace

have

platforms
(2)

and

Hendrix's

on

(1)

already

to

evidence

taken

remove

the

representation

opposition to such an injunction.9

The

indicating

measures

to

a

that

rename

aforementioned

that

he

has

no

(Leon Hendrix Br., Doc. 42,

at 2; Tarver Decl., Doc. 50-6, 15 5-9.)

9
For these same reasons, the Court also concludes that the injunction
described above will not unduly prejudice Defendants.
Accordingly, the
defense of laches will not protect Defendants from the requested relief.
See

Spiral Direct, Inc. v. Basic Sports Apparel, Inc., No. 6:15-cv-641, 2015 WL
9450575, at *7 (M.D. Fla. Nov. 24, 2015) (vx[T]here are three elements to the
defense of laches:

Ml) a delay in asserting a right or a claim;
21

(2) that the

Meanwhile,

the

Court

is

concerned

Savannah Distributing would incur

against

it.

subject

According

to

an

wrongdoing and,

(Prelim.
the

its

consequently,

its

amount

considering that

Haze products

Tr.,
of

an

Savannah

injunction,

Inj . Hr'g

exact

to

if

at

about

harm

injunction was

Distributing,

consumer

base

52-53.)

that

entered

if

it

would

reputation would be

potential

was

infer

damaged.

Although uncertain as

damage,

Savannah Distributing has

and cut all

the

the

Court

-

returned all

to

when

Purple

ties with the brand - is confident

that the harm an injunction would cause to Savannah Distributing
would

outweigh

any

against Plaintiffs.

injury

Savannah

(Prelim. Inj. Hr'g
D.

Distributing

threatens

Tr., at 63.)

Public Interest

Because Tiger Paw's use of the word "jimi" and its display
of

the Jimi Hendrix signature are,

Court,
the

on

likely to cause confusion with

Court

finds

See Ferrellgas

that an

Partners,

injunction is

143

F.

the

evidence before the

Plaintiffs'
in

App'x at

trademarks,

the public

191

interest.

("[T]he public

interest will be served by the injunction by avoiding confusion
in the marketplace.").

delay was not excusable; and (3) that there was undue prejudice to the party
against whom the claim is asserted.'" (quoting Kason Indus., Inc. v^
Component Hardware Grp., Inc., 120 F.3d 1199, 1203 (11th Cir. 1997))).
22

III.

For

PART

these

Plaintiffs'

Accordingly,

websites,

Court

for

preliminary

ENJOINS

and DENIES

injunction

Defendants

social media profiles,

of

IN PART

Tiger

(Doc.

Paw,

Purple

distributing,
Haze

Liquer

selling,
that

has

or

Wallace,

thereupon;

web

and

at

Augusta,

Georgia,

any

address

(3)

from

Hendrix on any

^

of their labeling or marketing materials.
ENTERED

(2)

promoting

the

displaying the aforementioned signature of Jimi

June,

27) .

or other online platforms;

www.jimipurplehaze.com printed visibly

ORDER

IN

from using the word "jimi" in the names of their

manufacturing,

bottle

the Court GRANTS

motion

the

and Hendrix (1)

from

reasons,

CONCLUSION

this

£><*>*

day

of

2016.

HONORABLE 8. RANDAL HALL
UNITED/STATES DISTRICT JUDGE
URN DISTRICT OF

23

GEORGIA