332 F.3d 915, 924 (6th Cir. 2003)
ETW Corporation serves as the licensing agent for professional golfer Eldrick "Tiger" Woods and holds the exclusive rights to exploit his name, image, likeness, and signature.1 ETW also owns a federal trademark registration for the mark "TIGER WOODS" covering art prints, calendars, mounted photographs, notebooks, pencils, pens, posters, trading cards, and unmounted photographs.2 In 1998 artist Rick Rush created a painting titled The Masters of Augusta that commemorates Woods's 1997 victory at the Masters Tournament in Augusta, Georgia.3 The painting shows three images of Woods in different poses completing a swing and lining up putts, along with his caddy Mike "Fluff" Cowan, his final round partner's caddy, the Augusta National clubhouse, a leader board, and background likenesses of six legendary golfers including Arnold Palmer, Sam Snead, Ben Hogan, Walter Hagen, Bobby Jones, and Jack Nicklaus.4
Jireh Publishing, Inc. produced and sold limited-edition prints of the painting, consisting of 250 serigraphs measuring 22½ by 30 inches issued at $700 each and 5,000 lithographs measuring 9 by 11 inches issued at $100 each.5 The prints display the title "The Masters Of Augusta," Rush's signature, and the legend "Painting America Through Sports." The prints are packaged in white envelopes bearing Rush's name and large signature on the front and, under the flap on the back, the words "Masters of Augusta" and "Tiger Woods" in smaller type, together with a narrative description that mentions Woods twice in twenty-eight lines of text.6
ETW filed suit against Jireh on June 26, 1998, in the United States District Court for the Northern District of Ohio.7 The complaint asserted claims for trademark infringement under Lanham Act section 32, dilution under Lanham Act section 43(c), unfair competition and false advertising under Lanham Act section 43(a), unfair competition and deceptive trade practices under Ohio Revised Code section 4165.01, unfair competition and trademark infringement under Ohio common law, and violation of Woods's right of publicity under Ohio common law.8 Jireh counterclaimed for a declaratory judgment that the prints are protected by the First Amendment and do not violate the Lanham Act.9 Both parties moved for summary judgment.10
The district court granted Jireh's motion for summary judgment and dismissed the case. See ETW Corp. v. Jireh Pub., Inc., 99 F.Supp.2d 829 (N.D. Ohio 2000). ETW timely appealed to the United States Court of Appeals for the Sixth Circuit.11
Whether the words "Tiger Woods" appearing in Jireh's marketing materials for the prints infringe ETW's registered trademark?12
The Lanham Act provides a defense to an infringement claim where the use of the 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[.]" 15 U.S.C. § 1115(b)(4).13
Yes. The words "Tiger Woods" appear only under the flap of the envelopes containing the prints and twice in the narrative description of the painting.14 The prints, envelopes, and narrative materials clearly identify Rush as the source.15 Woods is mentioned only to describe the content of the print.16 The use is purely descriptive and in good faith.17
The use constitutes fair use and does not infringe ETW's registered trademark.18
Whether the likeness and image of Tiger Woods function as a protectable unregistered trademark under Lanham Act section 43(a)?19
A trademark must be capable of distinguishing the owner's goods from those of others and must perform the job of identification to identify one source and distinguish it from other sources.20 15 U.S.C. § 1127.
No. ETW claims protection for any and all images of Woods.21 Images and likenesses of Woods do not perform the trademark function of designation because they do not distinguish and identify the source of goods.22 There are thousands of images of Woods taken by countless photographers and artists that have been published and sold worldwide.23 No reasonable person could believe that merely because these images contain Woods's likeness they all originated with Woods.24
The likeness and image of Tiger Woods do not function as a protectable unregistered trademark under Lanham Act section 43(a).25
Related opinions on this issue
Circuit Judge Clay dissents because ETW presented survey evidence from Dr. Carl Block showing a high incidence of consumer confusion as to whether Woods sponsored or approved the print.26 Sixty-two percent of respondents believed Woods had an affiliation or connection with the print.27 This evidence creates a genuine issue of material fact as to whether the specific image of Woods in the print functions as a trademark.28
The majority's sweeping rule that a person's image or likeness cannot function as a trademark is contrary to established jurisprudence requiring evidence of consumer confusion to be considered under the Lanham Act.29
Whether Jireh's artistic print gives rise to a false endorsement claim under Lanham Act section 43(a)?30
In Lanham Act false endorsement cases involving artistic expression, the Act should be applied only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.31 The use must have no artistic relevance to the underlying work or explicitly mislead as to the source or content of the work.32
No. The presence of Woods's image in Rush's painting has artistic relevance to the underlying work and does not explicitly mislead as to the source of the work.33 Survey evidence, even if its validity is assumed, indicates at most that some members of the public would draw the incorrect inference that Woods had some connection with Rush's print. That risk of misunderstanding is outweighed by the interest in artistic expression.34
Jireh's artistic print does not give rise to a false endorsement claim under Lanham Act section 43(a).35
Related opinions on this issue
Circuit Judge Clay dissents because the majority fails to meaningfully consider ETW's survey evidence showing 62 percent of respondents believed Woods had an affiliation or connection with the print.36 Under the Rogers balancing test, this high degree of actual confusion creates a genuine issue of material fact that must be weighed against the public interest in free expression rather than being dismissed outright at summary judgment.37 The survey results demonstrate one of the highest incidences of confusion recorded and require submission to a jury.38
Whether the First Amendment protects Jireh's artistic print against ETW's Lanham Act false endorsement claim?39
The First Amendment protects artistic works such as paintings and prints.40 Where a defendant articulates a colorable claim that the use of a celebrity's identity is protected by the First Amendment, the likelihood of confusion test is not appropriate because it fails to adequately consider First Amendment interests.41
Yes. Rush's prints are not commercial speech.42 They are entitled to the full protection of the First Amendment.43 The presence of Woods's image has artistic relevance and does not explicitly mislead as to source.44 The risk of misunderstanding is outweighed by the interest in artistic expression.45
The First Amendment protects Jireh's artistic print against ETW's Lanham Act false endorsement claim.46
Whether the First Amendment protects Jireh's artistic print against ETW's Ohio common law right of publicity claim?47
Ohio would follow the Restatement (Third) of Unfair Competition and the transformative use test.48 A work is protected by the First Amendment when it contains significant transformative elements.49 The celebrity likeness must be one of the raw materials from which an original work is synthesized rather than the sum and substance of the work.50
Yes. Rush's work contains substantial informational and creative content including the Augusta clubhouse, leader board, caddies, and likenesses of six legendary golfers.51 It is a collage that conveys a message about the significance of Woods's achievement.52 The work has substantial transformative elements and is entitled to full First Amendment protection.53
The First Amendment protects Jireh's artistic print against ETW's Ohio common law right of publicity claim.54
Related opinions on this issue
Judge Graham dissents on the right of publicity claim.55 Applying the transformative use test from Comedy III, the print is a nearly literal depiction of Woods in a pose closely associated with his fame and commercial value.56 The creative contribution is subordinated to the goal of commercially exploiting Woods's fame, so the right of publicity is not outweighed by free expression interests.57
The narrative accompanying the prints expressly discusses Woods and his fame, confirming that the marketability derives primarily from exploiting celebrity status.58