Tiger Woods
From Personality Rights Database
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| United States |
[edit] 1 ETW Corporation v. Jireh Publishing
Case Name: Tiger Woods
Country: U.S.A.
Citation: ETW Corporation v. Jireh Publishing, Inc. 99 F.Supp.2d 829 (June 20, 2003)
Court : Pursuant to Sixth Circuit Rule 206, 2003 FED App. 0207P (6th Cir.) United States Court of Appeals for the Sixth Circuit (Appeal from the US District Court for the Northern District of Ohio at Cleveland, before Silver and Clay, Circuit Judges, Graham, District Judge).
Date: 02.06.2003
Case N°: 00-3584
Facts
In 1998, Rick Rush, working as an artist for the publisher of artwork Jireh Publishing Inc., created a painting entitled The Masters of Augusta, which commemorates Woods’s victory at the Masters Tournament in Augusta, Georgia, in 1997. The limited edition prints distributed by Jireh consist of an image with Rush’s signature and a narrative description of the painting where the name of Woods appears twice. The text also includes references to the sixth other famous golfer depicted in the background of the painting as well as the two caddies. Jireh published and marketed serigraphs of it.
ETW filed suit against Jireh on June 26, 1998 in the US District Court for the Northern District of Ohio, alleging :
- trademark infringement (in violation of the Lanham Act, 15 U.S.C. §1114)
- dilution of the mark (under the Lanham Act, 15 U.S.C. § 1125(c))
- unfair competition and false advertising (under the Lanham Act, 15 U.S.C. § 1125(a))
- unfair competition and deceptive trade pactices (under Ohio Revised Code §4165.01)
- unfair competition and trademark infringement (under Ohio common law)
- violation of Woods’s right of publicity (under Ohio common law)
Jireh counterclaimed, seeking a declaratory judgement that Rush’s art prints are protected by the First Amendment and do not violate the Lanham Act. Both parties moved for summary judgement. The distrct court granted Jireh’s motion for summary judgement and dismissed the case.
[edit] 2 Decision and reasoning
[edit] 2.1 Trademark claim based on the unauthorised use of the registered trademark “Tiger Woods”
ETW claims that Jireh infringed the registered mark “Tiger Woods” by including these words in marketing materials which accompanied the prints of Rush’s painting. But under the Lanham Act provides that “where the use of a mark is a use otherwise than as a mark which is descriptive of and used fairly and in good faith only to describe the goods of such party”, then there is no infringement. According to the decisions Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270 F.3d 298, 319 (6th Cir. 2001), “under the doctrine of ‘fair use’, the holder of a trademark cannot prevent others from using the word that forms the trademark in its primary or descriptive sense.” And according to Car-Freshner Corp. V. S.C. Johnson & Son, Inc. (1995) “fair use permits others to use a protected mark to describe aspects of their own goods”.
Thus, in evalutating a fair use defense, a court must consider whether the defendant has used the mark :
- in its descriptive sense and
- in good faith
A celebrity’s name may be used in the title of an artistic work so long as there is some artistic relevance.
In this case, the use of Tiger Woods’s name on the back of the envelope containing the print and in the narrative description of the print are purely descriptive and nothing to indicate other than good faith. They clearly identify Rush as the source of the print, Wood is mentioned only to describe the content of the print.
[edit] 2.2 Trademark claim based on the unauthorised use of the likeness of Tiger Woods
ETW has registered Woods’s name as a trademark, but not his image or likeness of him. Nevertheless, it claims to have trademark rights in Woods’s image and likeness. The Lanham Act provides a federal cause of action for infringement of an unregistered trademark if it is “any word, name, symbol or device or any combination thereof” used by a person “to identify and distinguish his goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown”.
However, images and likeness of Woods are not protectable as a trademark because they do not perform the trademark function of designation, they do not distinguish and identify the source of the goods. Indeed, there must be thousands of images and likeness of Woods, bu no reasonable person could believe that all these photographs or paintings containing Woods’s likeness or image originate all with Woods.
The Court hold that “as a general rule, a person’s image or likeness cannot function as a trademark”.
(See Pirone v. MacMillan Inc. 1990 : “a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently ‘distinctive’ in the trademark sense of tending to indicate origin.” “An ordinarily prudent purchaser would have no difficulty discerning that these photos are merely the subject matter of the calendar and do not in any way indicate sponsorship. No reasonable jury could find a likelihood of confusion”.
“Under some circumstances, a photograph of a person may be a valid trademark if used on specific goods”.
Woods, like the baseball legend Babe Ruth, is one of the most photographed sports figures of his generation, but this alone does not suffice to create a trademark claim.)
[edit] 2.3 Unfair competition and false endorsement claims, Ohio Right to privacy claims and the First Amendment Defense
Jireh has raised the First Amendment as a defense to all of ETW’s claims, arguing that Rush’s use of Woods’s image in his painting is protected expression. The Court examined how First Amendment rights have been balanced against intellectual property rights in cases involving the Lanham Act and state law rights of publicity.
[edit] 2.3.1 Scope of the First Amendment rights in the context of works of art
It is not limited to written or spoken words, it includes other mediums of expressions, i.e. music, pictures, films, photographs, paintings, drawings, engravings, prints and sculptures. And the fact that the expressive materials are sold does not diminish the degree of protection. Speech is protected even in a form that is sold for profit, even pure commercial speech is entitled to significant First Amendment protection.
In this case, Rush’s prints are not commercial speech and do not propose a commercial transaction, thus they are entitled to the full protection of the First Amendment.
[edit] 2.3.2 Whether Woods’s intellectual property rights prevail over Rush’s First Amendment rights : the false endorsement claim
There is endorsement where a celebrity’s image or persona is used in association with a product so as to imply that the celebrity endorses the product. There is false endorsement when a celebrity’s identity is connected with a product or service in such a way that consumers are likely to be misled about the celebrity’s sponsorship or approval of the product or service.
According to the Court, the eight-factor test that can be used in determining the likelihood of confusion cannot be appropriate if the defendant oppose the First Amendment protection.
They also consider that the “no alternative means” test does not sufficiently accommodate the public’s interest in free expression. However, they agree that in general the public interest in free expression should prevail if the use of the celebrity’s image has artistic relevance, unless it is used explicitly to mislead as to the source of the work.
[edit] 2.3.3 Right of publicity claim
ETW claims that Jireh’s publication and marketing of prints of Rush’s painting violates Woods’s right of publicity.
The right of publicity is a recent intellectual property right originally treated as a branch of the right of privacy and defined as the inherent right of every human being to control the commercial use of one’s identity. Its violation gives rise to a cause of action for the commercial tort or unfair competition.
However, in Zacchini v. Scripps-Howard Broadcasting Co. (1976), the only US Supreme Court decision on the right of publicity, the Court held that the First Amendment “did not insulate defendant from liability for violating Zacchini’s right of publicity”.
Anyone who uses without consent the person’s name, likeness or other indicia of identity for purposes of trade is subject to liability for the relief appropriate. Nevertheless, in §46, Comment c, Rationale for Protection, the authors consider that the right of publicity as recognized by statute and common law is fundamentally constrained by the public and constitutional interest in freedom of expression.
In Memphis Development Foundation v. Factors Etc. Inc. (1980), the Court held that “the famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality”.
In Carson v. Here’s Johnny Portable Toilets Inc. (1983), the Court held that “a celebrity has a protected pecuniary interest in the commercial exploitation of his identity”.
A reproduction of a celebrity image that contains significant creative elements is entitled to as much First Amendment protection as an original work of art. In Comedy III Productions, the Californian court proposed a test to distinguish between protected and underprotected expression when the right of publicity conflicts with the First Amendment : the transformative elements test. “When artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond that trespass”, then the interests of the imitative artist cannot prevail.
[edit] 2.3.4 The Final decision
In this case, the Court held that the work of Rush is more than a mere likeness of Woods, thus the elements added are sufficient to bring his work within the First Amendment Protection.
Secondly, it held that the Lanham Act should be applied to artistic works only where the public interest in avoiding confusion outweighs the public interest in free expression. They invoked the Rogers test : when the use of a celebrity’s name is purely descriptive and there is nothing to indicate that they are used other than in good faith. And when a celebrity’s name is used in the title of an artistic work if there is some artistic relevance (See Rogers v. Grimaldi 1989.) In this case, Woods’s image in Rush’s painting has artistic relevance and does not explicitly mislead as to the source of the work. However, the Court refuses, unlike the dissenting opinion, that a jury must decide where the balance should be struck and where the boundaries should be drawn between rights conferred by the Lanham Act and the protections of the First Amendment.
Thirdly, they invoked a rule similar to the rule of fair use in copyright law, under which “the substantiality and market effect of the use of the celebrity’s image is analysed in light of the informational and creative consent of the defendant’s use.
[edit] 2.4 Summary of the issues
- Rush’s work has substantial informational and creative content which outweighs any adverse effect on ETW’s market, and it does not violate Woods’s right of publicity
- It has not been clear that the appearance of Woods’s likeness in artwork prints will reduce the commercial value of his likeness
- Permitting Woods’s right of publicity to trump Rush’s right of freedom of expression would extinguish Rush’s right to profit from his creative enterprise
Thus, the Court considered that Woods’s right of publicity in this case is negligible and significantly outweighed by society’s interest in freedom of artistic expression.
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