Anticipation of Litigation Advisor

Sanctions Issued In Jimi Hendrix Trademark Suit Over Destroyed Data

December 25, 2018

By: Seth P. Hayes

          James Marshall Hendrix, better known as “Jimi,” who many consider the greatest guitarist of all time, died of a drug overdose at age twenty-seven. Given the guitarist’s hard-charging life, Jimi Hendrix – to the shock of no one - died intestate. His heirs have been embroiled in litigation ever since, and the latest chapter in this saga involves the trademark usage of his name and likeness. Experience Hendrix LLC and Authentic Hendrix LLC, the successors-in-interest to the famous guitarist’s estate, brought the copyright and trademark infringement suit in the Southern District of New York against Jimi Hendrix’s brother, Leon Hendrix, and Leon’s business partner, Andrew Pitsicalis. In Experience Hendrix, LLC v. Pitsicalis, No. 17-cv-1927 (PAE) (S.D.N.Y., 11/27/18), the plaintiffs allege that the defendants have been improperly manufacturing, licensing, and advertising products carrying Hendrix’s name and image.

          Discovery in the case has been contentious and has focused on the defendants’ prior usage of digital images. District Court Judge Paul A. Engelmayer recently issued an order sanctioning the defendants for “persistent non-compliance with basic discovery obligations” over how they have handled e-discovery production. The judge discussed four main discovery abuses in his order.   

          1.         Defendants’ failure to produce forensic images as ordered.   The defendants had requested additional time to comply with an earlier discovery order compelling them to produce forensic images from a number of hard-drives. The defendants claimed they had difficulty finding an expert who could image the hard drives and separate privileged from non-privileged material. When the defendants did finally comply with the discovery order, they did not produce “forensic” images, rather only “the data visibly resident on those devices.” Also, the earlier discovery order mandated that “the forensic image shall include previously deleted but recoverable files.” However, the defendants’ untimely production did not contain any of the deleted files. 

          2.         Use of anti-forensic software.   The plaintiffs discovered that the defendants had installed and used anti-forensic software on relevant computers during the pendency of the suit. The plaintiffs’ forensic expert, John T. Myers (whose testimony was credited by the court), found that each of the three computers he reviewed contained anti-forensic software (Advanced Mac Cleaner and CleanMyMac). While Advanced Mac Cleaner may be able to eliminate files without specifically alerting the user in advance, the court noted that CleanMyMac software was configured to have a pop-out which warned the user before it eliminated a file.  Judge Engelmayer concluded the defendants’ use of CleanMyMac was intentional. 

          3.         Deletion of relevant text messages.   Defendant Pitsicalis was found to have deleted more than 500 text messages from his cell phone after the suit was filed. The plaintiffs’ forensic expert was able to recover nine of the deleted texts, which included the word “Jimi,” one of the relevant search terms.

          4.         Failure to preserve documents on a seventh computing device.   The plaintiffs produced a Facebook photograph of the office of Defendant Pitsicalis, which showed a computer not disclosed in discovery on his desk. While the defendants denied owning the computer, the court did not find their testimony on this point credible. 

          The Judge’s Order.  Judge Engelmayer noted that “[a] party has an obligation to preserve evidence when it ‘has notice that the evidence is relevant to litigation . . . [or] should [ ] know[ ] that the evidence may be relevant to future litigation.’” The judge determined that the defendants repeatedly breached this duty by their (1) use of cleaning software on covered computing devices; (2) failure to disclose the existence of a seventh computer containing potentially relevant documents; and (3) deletion of relevant text messages.”  Judge Engelmayer also concluded that much of the spoliation was intentional, such as the use of CleanMyMac.

          As a result, Judge Engelmayer, indicating that “the Court has been called upon dismayingly often to act when presented with evidence of the PHP defendants’ persistent non-compliance with basic discovery obligations,” granted the plaintiffs’ motion for an adverse inference instruction against the defendants, and he awarded the plaintiffs their fees and costs incurred in bringing the motion. Given the severity of the defendants’ conduct, Judge Engelmayer “carefully considered” issuing terminating sanctions (e.g., a default or dismissal). And while he ultimately decided that lesser sanctions were sufficient, Judge Engelmayer made clear that “further acts of spoliation and/or other discovery abuses could produce a different result.”