Tiger Woods' IP Claims Stuck in the Sand Trap

First Amendment theory triumphed over celebrity right of publicity and trademark rights this past summer. The Sixth Circuit Court of Appeals upheld a dismissal of Tiger Woods' damages claims for use of his likeness in limited edition prints of a painting titled “The Masters of Augusta.” ETW Corporation v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003).

The painting commemorated Woods' victory at the Masters Tournament in Augusta, Georgia in 1997. It was a panoramic collage of three different views of Woods playing golf and images of caddies and famous golfers watching Woods. The artist, Rick Rush, was already well known for his artwork of famous sports figures. This particular work also bore the legend “Painting America Through Sports.” Limited edition prints of the painting, published by Jireh Publishing, Inc. (“Jireh”), bore the artist's signature and name in block print as well as the title of the work.

Jireh distributed the limited edition prints in white envelopes that included literature about the artist. Each envelope prominently displayed Rush's name on the front with the legend “Painting America Through Sports.” Tiger Woods' name appeared only under the back flap of the envelope and two times in 28 lines of narrative description about the painting. That text also referred to the other famous golfers and the two caddies depicted in the painting.

Tiger Woods, through his licensing agent ETW Corporation (“ETW”), sued Jireh, which in 1998 published and sold limited edition prints of the painting containing his image. The lawsuit unsuccessfully charged Jireh with trademark infringement, dilution of trademark, unfair competition and false advertising under the Lanham Act, unfair competition and trademark infringement under Ohio state law, and right of publicity violations under Ohio common law. Jireh counterclaimed for a declaratory judgment that the prints were protected under the First Amendment and did not violate the Lanham Act. The district court granted Jireh's motion for summary judgment, and when ETW appealed, the Sixth Circuit upheld the district court's dismissal of the case.

Tiger Woods' Trademark Claims Denied

The Sixth Circuit upheld the district court's rejection of ETW's federal and state trademark claims. The circuit court found that a fair use defense barred ETW's claims as a matter of law. Although ETW held a trademark for the words “Tiger Woods,” the appellate court recognized the Lanham Act's explicit fair use defense to trademark infringement. According to the statute, a third party can use a trademark if the use is descriptive and the use is designed “in good faith only to describe the goods.” 15 U.S.C. '1115(b)(4). Citing previous case law, the court commented that so long as there is artistic relevance to the use, an artist might use a celebrity's name. Here, Jireh's use of Tiger Woods' name on the back of the envelope was purely descriptive of the contents of the art. Furthermore, since the artist Rush was clearly the source of the artwork, the court found Jireh's use of Tiger Woods' name to be in good faith.

The court similarly rejected Tiger Woods' claim that the unauthorized use of his likeness constituted trademark infringement of an unregistered mark under the Lanham Act. To be a mark, registered or unregistered, Woods' image would have to identify and distinguish goods of one source from goods of another. Calling Woods' claim “untenable,” the Sixth Circuit refused to “constitute Woods himself as a walking, talking trademark.” The appellate court found that no reasonable person would believe the prints originated with Woods simply because they contain his image.

The court specifically pronounced that a person's image or likeness does not automatically function as a trademark. The image or likeness must be an indicator of source in the marketplace. Analogizing to the Second Circuit holding in Pirone v. MacMillan, Inc., 894 F.2d 579 (2nd Cir. 1990) (rejecting a trademark claim concerning use of Babe Ruth's likeness in a calendar, noting that Ruth was a highly photographed athlete), the appellate court found Woods' celebrity status did not create automatic trademark status. The court noted that a particular photograph consistently used on specific goods might achieve trademark status (Estate of Presley v. Russen, 513 F. Supp. 1339, 1363-1364 (D.N.J. 1981)), but this fact pattern did not apply to Woods' image in the Rush artwork.

First Amendment Trumps Unfair Competition and False Endorsement Claims

The Sixth Circuit opinion noted the inherent tension between First Amendment principles and intellectual property rights. It then rejected ETW's remaining Lanham Act claims for unfair competition and false endorsement. The appellate court consistently found First Amendment interests outweighed any of ETW's intellectual property rights.

The court began by noting that visual art is an expressive material that has long enjoyed First Amendment protection. The First Amendment does not just apply to the spoken word. In addition, the court explained that First Amendment principles still applied even though Jireh sold the Tiger Woods prints for profit. The Sixth Circuit opinion distinguished commercial speech, which is subject to a four-part test to determine whether First Amendment principles apply. Central Hudson Gas and Electric Corp., 447 U.S. 557 (1980). Instead, the court specifically declared that Rush's prints were not commercial speech and thus fell squarely within the First Amendment. Since Woods' image in the painting did not identify a product and was used in combination with many other people's likenesses, including other golf celebrities, the court held Jireh's use of Woods' image was an artistic expression, worthy of First Amendment protection.

The court then went on to analyze the conflict between Woods' intellectual property rights and Rush's First Amendment rights. False endorsement, it explained, occurs when consumers are likely to be confused about the celebrity's sponsorship or approval of the product or service in question. The court cited several well-known celebrity cases that had expanded broadly the rights of celebrities, including Waits v. Frito Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (prohibiting imitation of Tom Waits' voice in radio commercial for Dorito chips); White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992) (finding improper the use of a female robot resembling Vanna White on “Wheel of Fortune” game show to advertise electronic products); and Allen v. National Video, Inc., 610 F. Supp. 612 (S.D.N.Y. 1985) (disallowing use of Woody Allen look-alike in national advertising campaign for a video club). In all these cases, celebrities' images were used to assist in selling commercial products. Here, Woods' image was not used commercially, but as part of protected First Amendment “speech” – the artist's painting.

Despite the annals of false endorsement case law and the Sixth Circuit's own decision that an eight-factor test would determine the likelihood of confusion in such cases (Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619 (6th Cir. 2000)), the appellate court held that First Amendment considerations trump likelihood of confusion analysis when analyzing use of celebrity images. The public interest in free speech was paramount over any likelihood of confusion for the consumer. The Sixth Circuit cited both Second and Ninth Circuit decisions dealing with artistic expression in reaching this holding. Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989) (use of “Ginger and Fred” as movie title acceptable even though clearly referring to Ginger Rogers and Fred Astaire because of artistic relevance to underlying work); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (use of “Barbie” name in song title upheld).

The Sixth Circuit also rejected application of the “no alternative means” test enunciated in Lloyd Corp. v. Tanner, 407 U.S. 551 (1972) (Supreme Court holding that the respondents had an alternative means for distributing handbills rather than doing so within the petitioner's privately-owned shopping center). The Sixth Circuit agreed with the Rogers Second Circuit court that this test does not accommodate for the public's paramount interest in freedom of expression.

ETW's Right of Publicity Claim Rejected

Rejecting ETW's right of publicity claim, the Sixth Circuit provided an instructive overview of Ohio case law. (It is noteworthy that ETW commenced its action before the codification of the right of publicity into Ohio statutory law. The Sixth Circuit considered ETW's claim for right of publicity at common law.)

Citing the Restatement (Third) of Unfair Competition, Chapter 4, Section 47, Comment d, the appellate court balanced the painting's substantial informational and creative content against any potential adverse effect the sale of the prints had on Woods' marketability. Rush's painting, according to the court, is indicative of the importance of celebrities, including athletes, in our culture. Furthermore, the court noted that Rush had added substantially to Woods' image. The painting was much more than a duplication of Woods' image. The painting also contained expressive celebrations of performance in golf and the historic Augusta golf event. Rush had used substantial transformative elements, not just Woods' image, thus passing the test laid out in Comedy II Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001).

Finally, the appellate court noted that First Amendment principles again outweigh Woods' intellectual property rights, here the common law right of publicity. This was especially true in the absence of evidence that Rush's use of Woods' image would decrease Woods' potential commercial earnings. In fact, the court labeled the potential effect of limiting Woods' right of publicity “negligible.”

Thus, the Sixth Circuit dismissed ETW's right of publicity claims, again seeing “The Masters of Augusta” painting and prints as artistic expressions of free speech, not a commercial venture.

Survey Evidence Presented was Fatally Flawed

The Sixth Circuit did acknowledge that there was a dissenting opinion in this case. It found, however, that the dissenting judge was influenced by flawed survey evidence. Survey evidence is important evidence for analyzing trademark infringement or Lanham Act claims. In the instant case, ETW introduced survey evidence that 62% of people surveyed believed that Tiger Woods was affiliated or connected with the prints or that he had approved or sponsored the prints.

The appellate court pointed out, however, that the survey did not define the terms “affiliated with” or “connected with.” In addition, the people surveyed had not seen the packaging for the prints that clearly delineated Rush as the source of the painting in the prints. These were fatal flaws in the survey evidence according to the majority opinion.

Celebrity Rights Take a Back Seat to First Amendment Principles

The Sixth Circuit opinion reads like a primer on trademark rights, Lanham Act claims, and right of publicity claims. The case upholds a fair use defense to trademark infringement claims. It also strikes a blow at celebrities who claim automatic trademark status of their images. The Sixth Circuit reminds that images must indicate a source of goods or services to be protected under trademark law. In addition, the Sixth Circuit consistently favors First Amendment principles over intellectual property rights.

It is important to remember, however, that Jireh was not harnessing Tiger Woods' intellectual property rights to sell a product. Rather, Woods' image and name were used within the greater context of an artistic expression. The artistic rather than commercial nature of Jireh's use distinguishes this case from previous celebrity intellectual property claims. Nonetheless, this case may be cited in the future for the concept that First Amendment principles take precedence over celebrity intellectual property rights. Courts must balance these principles before protecting such intellectual property rights.

First Amendment theory triumphed over celebrity right of publicity and trademark rights this past summer. The Sixth Circuit Court of Appeals upheld a dismissal of Tiger Woods' damages claims for use of his likeness in limited edition prints of a painting titled “The Masters of Augusta.” ETW Corporation v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003).

The painting commemorated Woods' victory at the Masters Tournament in Augusta, Georgia in 1997. It was a panoramic collage of three different views of Woods playing golf and images of caddies and famous golfers watching Woods. The artist, Rick Rush, was already well known for his artwork of famous sports figures. This particular work also bore the legend “Painting America Through Sports.” Limited edition prints of the painting, published by Jireh Publishing, Inc. (“Jireh”), bore the artist's signature and name in block print as well as the title of the work.

Jireh distributed the limited edition prints in white envelopes that included literature about the artist. Each envelope prominently displayed Rush's name on the front with the legend “Painting America Through Sports.” Tiger Woods' name appeared only under the back flap of the envelope and two times in 28 lines of narrative description about the painting. That text also referred to the other famous golfers and the two caddies depicted in the painting.

Tiger Woods, through his licensing agent ETW Corporation (“ETW”), sued Jireh, which in 1998 published and sold limited edition prints of the painting containing his image. The lawsuit unsuccessfully charged Jireh with trademark infringement, dilution of trademark, unfair competition and false advertising under the Lanham Act, unfair competition and trademark infringement under Ohio state law, and right of publicity violations under Ohio common law. Jireh counterclaimed for a declaratory judgment that the prints were protected under the First Amendment and did not violate the Lanham Act. The district court granted Jireh's motion for summary judgment, and when ETW appealed, the Sixth Circuit upheld the district court's dismissal of the case.

Tiger Woods' Trademark Claims Denied

The Sixth Circuit upheld the district court's rejection of ETW's federal and state trademark claims. The circuit court found that a fair use defense barred ETW's claims as a matter of law. Although ETW held a trademark for the words “Tiger Woods,” the appellate court recognized the Lanham Act's explicit fair use defense to trademark infringement. According to the statute, a third party can use a trademark if the use is descriptive and the use is designed “in good faith only to describe the goods.” 15 U.S.C. '1115(b)(4). Citing previous case law, the court commented that so long as there is artistic relevance to the use, an artist might use a celebrity's name. Here, Jireh's use of Tiger Woods' name on the back of the envelope was purely descriptive of the contents of the art. Furthermore, since the artist Rush was clearly the source of the artwork, the court found Jireh's use of Tiger Woods' name to be in good faith.

The court similarly rejected Tiger Woods' claim that the unauthorized use of his likeness constituted trademark infringement of an unregistered mark under the Lanham Act. To be a mark, registered or unregistered, Woods' image would have to identify and distinguish goods of one source from goods of another. Calling Woods' claim “untenable,” the Sixth Circuit refused to “constitute Woods himself as a walking, talking trademark.” The appellate court found that no reasonable person would believe the prints originated with Woods simply because they contain his image.

The court specifically pronounced that a person's image or likeness does not automatically function as a trademark. The image or likeness must be an indicator of source in the marketplace. Analogizing to the Second Circuit holding in Pirone v. MacMillan, Inc., 894 F.2d 579 (2nd Cir. 1990) (rejecting a trademark claim concerning use of Babe Ruth's likeness in a calendar, noting that Ruth was a highly photographed athlete), the appellate court found Woods' celebrity status did not create automatic trademark status. The court noted that a particular photograph consistently used on specific goods might achieve trademark status ( Estate of Presley v. Russen , 513 F. Supp. 1339, 1363-1364 (D.N.J. 1981)), but this fact pattern did not apply to Woods' image in the Rush artwork.

First Amendment Trumps Unfair Competition and False Endorsement Claims

The Sixth Circuit opinion noted the inherent tension between First Amendment principles and intellectual property rights. It then rejected ETW's remaining Lanham Act claims for unfair competition and false endorsement. The appellate court consistently found First Amendment interests outweighed any of ETW's intellectual property rights.

The court began by noting that visual art is an expressive material that has long enjoyed First Amendment protection. The First Amendment does not just apply to the spoken word. In addition, the court explained that First Amendment principles still applied even though Jireh sold the Tiger Woods prints for profit. The Sixth Circuit opinion distinguished commercial speech, which is subject to a four-part test to determine whether First Amendment principles apply. Central Hudson Gas and Electric Corp., 447 U.S. 557 (1980). Instead, the court specifically declared that Rush's prints were not commercial speech and thus fell squarely within the First Amendment. Since Woods' image in the painting did not identify a product and was used in combination with many other people's likenesses, including other golf celebrities, the court held Jireh's use of Woods' image was an artistic expression, worthy of First Amendment protection.

The court then went on to analyze the conflict between Woods' intellectual property rights and Rush's First Amendment rights. False endorsement, it explained, occurs when consumers are likely to be confused about the celebrity's sponsorship or approval of the product or service in question. The court cited several well-known celebrity cases that had expanded broadly the rights of celebrities, including Waits v. Frito Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (prohibiting imitation of Tom Waits' voice in radio commercial for Dorito chips); White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992) (finding improper the use of a female robot resembling Vanna White on “Wheel of Fortune” game show to advertise electronic products); and Allen v. National Video, Inc., 610 F. Supp. 612 (S.D.N.Y. 1985) (disallowing use of Woody Allen look-alike in national advertising campaign for a video club). In all these cases, celebrities' images were used to assist in selling commercial products. Here, Woods' image was not used commercially, but as part of protected First Amendment “speech” – the artist's painting.

Despite the annals of false endorsement case law and the Sixth Circuit's own decision that an eight-factor test would determine the likelihood of confusion in such cases ( Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619 (6th Cir. 2000)), the appellate court held that First Amendment considerations trump likelihood of confusion analysis when analyzing use of celebrity images. The public interest in free speech was paramount over any likelihood of confusion for the consumer. The Sixth Circuit cited both Second and Ninth Circuit decisions dealing with artistic expression in reaching this holding. Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989) (use of “Ginger and Fred” as movie title acceptable even though clearly referring to Ginger Rogers and Fred Astaire because of artistic relevance to underlying work); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (use of “Barbie” name in song title upheld).

The Sixth Circuit also rejected application of the “no alternative means” test enunciated in Lloyd Corp. v. Tanner, 407 U.S. 551 (1972) (Supreme Court holding that the respondents had an alternative means for distributing handbills rather than doing so within the petitioner's privately-owned shopping center). The Sixth Circuit agreed with the Rogers Second Circuit court that this test does not accommodate for the public's paramount interest in freedom of expression.

ETW's Right of Publicity Claim Rejected

Rejecting ETW's right of publicity claim, the Sixth Circuit provided an instructive overview of Ohio case law. (It is noteworthy that ETW commenced its action before the codification of the right of publicity into Ohio statutory law. The Sixth Circuit considered ETW's claim for right of publicity at common law.)

Citing the Restatement (Third) of Unfair Competition, Chapter 4, Section 47, Comment d, the appellate court balanced the painting's substantial informational and creative content against any potential adverse effect the sale of the prints had on Woods' marketability. Rush's painting, according to the court, is indicative of the importance of celebrities, including athletes, in our culture. Furthermore, the court noted that Rush had added substantially to Woods' image. The painting was much more than a duplication of Woods' image. The painting also contained expressive celebrations of performance in golf and the historic Augusta golf event. Rush had used substantial transformative elements, not just Woods' image, thus passing the test laid out in Comedy II Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001).

Finally, the appellate court noted that First Amendment principles again outweigh Woods' intellectual property rights, here the common law right of publicity. This was especially true in the absence of evidence that Rush's use of Woods' image would decrease Woods' potential commercial earnings. In fact, the court labeled the potential effect of limiting Woods' right of publicity “negligible.”

Thus, the Sixth Circuit dismissed ETW's right of publicity claims, again seeing “The Masters of Augusta” painting and prints as artistic expressions of free speech, not a commercial venture.

Survey Evidence Presented was Fatally Flawed

The Sixth Circuit did acknowledge that there was a dissenting opinion in this case. It found, however, that the dissenting judge was influenced by flawed survey evidence. Survey evidence is important evidence for analyzing trademark infringement or Lanham Act claims. In the instant case, ETW introduced survey evidence that 62% of people surveyed believed that Tiger Woods was affiliated or connected with the prints or that he had approved or sponsored the prints.

The appellate court pointed out, however, that the survey did not define the terms “affiliated with” or “connected with.” In addition, the people surveyed had not seen the packaging for the prints that clearly delineated Rush as the source of the painting in the prints. These were fatal flaws in the survey evidence according to the majority opinion.

Celebrity Rights Take a Back Seat to First Amendment Principles

The Sixth Circuit opinion reads like a primer on trademark rights, Lanham Act claims, and right of publicity claims. The case upholds a fair use defense to trademark infringement claims. It also strikes a blow at celebrities who claim automatic trademark status of their images. The Sixth Circuit reminds that images must indicate a source of goods or services to be protected under trademark law. In addition, the Sixth Circuit consistently favors First Amendment principles over intellectual property rights.

It is important to remember, however, that Jireh was not harnessing Tiger Woods' intellectual property rights to sell a product. Rather, Woods' image and name were used within the greater context of an artistic expression. The artistic rather than commercial nature of Jireh's use distinguishes this case from previous celebrity intellectual property claims. Nonetheless, this case may be cited in the future for the concept that First Amendment principles take precedence over celebrity intellectual property rights. Courts must balance these principles before protecting such intellectual property rights.