July 2003
(Issue No. 1: Decisions published June 16–30)

Art Print Depicting Tiger Woods At The 1997 Masters Tournament Does Not Violate Lanham Act

ETW Corp. v. Jireh Publishing, Inc. (6th Cir. June 20, 2003), 2003 U.S. App. LEXIS 12488

Court Opinion

Case Snapshot:

Trademark Issues:	Fair Use Use of Likeness
Case Overview:	Court affirms summary judgment against exclusive licensing agent for Tiger Woods in action brought against publisher of art print depicting Woods.
Holding:	Fair Use of Name: The use of the name "Tiger Woods" was fair use to describe the content of the print. Use of Likeness Is Not Trademark Infringement: A person is not a trademark. There was no particular image of Woods that was consistently used as a trademark. Woods himself is not a "walking, talking trademark." Use of Likeness Is Not False Endorsement Under Lanham Act: Likelihood of confusion test does not apply to works of artistic expression, because First Amendment concerns outweigh public interest in avoiding confusion as to endorsement or sponsorship. Right of Publicity: The right of publicity was not violated because the work has substantial informational and creative content, and is transformative.
The Dispute:	Rush's work includes not only images of Woods and the two caddies, but also carefully crafted likenesses of six past winners of the Masters Tournament: Arnold Palmer, Sam Snead, Ben Hogan, Walter Hagen, Bobby Jones, and Jack Nicklaus, a veritable pantheon of golf's greats. Rush's work conveys the message that Woods himself will someday join that revered group.   [p. 60] The art print: The print, entitled "The Masters of Augusta," commemorates Tiger Woods's historic 1997 victory at the Masters Tournament in Augusta, Georgia. The artist, Rick Rush, paints famous sports figures in historic sporting events. The words "Tiger Woods" do not appear on the prints, nor are they included in the title of the painting. Packaging and accompanying material: The prints are sold in an envelope. On the front of the envelope, The artist's name appears in block letters inside a rectangle, which includes the legend "Painting America Through Sports." On the back of the envelope, under the flap, the words "Masters of Augusta" appear 3/8" high, and "Tiger Woods" appears 1/4" high. Inside the envelope along with the print is literature which includes: a large photograph of the artist a description of his art a narrative description of the subject painting which mentions Woods's name twice in 28 lines of text. Parties: Plaintiff ETW is the exclusive licensing agent for Woods with respect to his rights of publicity and trademarks (including the word mark TIGER WOODS). Defendant Jireh Publishing sells limited editions of the print. The case below: Plaintiff's claims included trademark infringement, dilution, unfair competition and violation of Woods' right of publicity. The district court granted Jireh's motion for summary judgment and dismissed the case.
Procedural Posture:	Appeal of district court's order granting summary judgment in favor of Defendants. ETW Corp. v. Jireh Pub., Inc., 99 F. Supp. 2d 829 (N.D. Ohio 2000).
Ruling:	Affirmed

Key Points:

Infringement Of Registered Trademark Claim Based On Use Of TIGER WOODS

Use of Woods' name to describe the content of the print is protected by fair use, and does not infringe the registered TIGER WOODS mark.

• The use of "Tiger Woods" here was in good faith and purely descriptive, and therefore did not infringe the registered TIGER WOODS mark.

The use of Woods's name on the back of the envelope containing the print and in the narrative description of the print are purely descriptive and there is nothing to indicate that they were used other than in good faith. The prints, the envelopes which contain them, and the narrative materials which accompany them clearly identify Rush as the source of the print. Woods is mentioned only to describe the content of the print.   [p. 10, footnote omitted]

• Note that the use of the name was minimal (see above).

Infringement Of Unregistered Trademark And Dilution Claims Based On Use Of Likeness

Court holds that, "as a general rule, a person's image or likeness cannot function as a trademark." [p. 16]

• Plaintiff claimed that the three different images of Tiger Woods in the print (one standing, two crouching) infringed and diluted its alleged unregistered trademark in Woods' likeness and image
• Woods did not own any marks consisting of his likeness or image, because there was no evidence of trademark use of any particular photograph or image of Woods. "ETW does not claim that a particular photograph of Woods has been consistently used on specific goods." [p. 18, footnote omitted]

 ... ETW's claim is ... a sweeping claim to trademark rights in every photograph and image of Woods. Woods ... is one of the most photographed sports figures of his generation, but this alone does not suffice to create a trademark claim.   [pp. 18-19]

• A person is not "a walking, talking trademark": Tiger Woods himself (as opposed to any particular image or depiction of him consistently used as a mark) is not a trademark.

 Here, ETW claims protection under the Lanham Act for any and all images of Tiger Woods. This is an untenable claim. ETW asks us, in effect, to constitute Woods himself as a walking, talking trademark. Images and likenesses 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 goods. They cannot function as a trademark because there are undoubtedly thousands of images and likenesses of Woods taken by countless photographers, and drawn, sketched, or painted by numerous artists, which have been published in many forms of media, and sold and distributed throughout the world.   [pp. 14-15, footnote omitted]

• No likelihood of confusion: The mere fact that Woods is the subject of the print does not mean that people reasonably would believe that he was the source of the print.

 No reasonable person could believe that merely because these photographs or paintings contain Woods's likeness or image, they all originated with Woods.   [pp. 15]

Lanham Act Section 43(a) False Endorsement Claims

Gist of celebrity false endorsement claims –

• "False endorsement occurs 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." [p. 26]

Lanham Act yields to First Amendment concerns.

• Rule: A work of artistic expression does not violate the Lanham Act, and the likelihood of confusion test does not apply, where the use of the celebrity's image has artistic relevance and does not explicitly mislead as to source.
• Rationale: The likelihood of confusion test does not give sufficient weight to the public interest in free expression in cases involving works of artistic expression.
• First Amendment concerns outwiegh public interest in avoiding confusion.

 ... [W]e conclude that where the defendant has articulated 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 the interests protected by the First Amendment.   [p. 28]

• Court rejects the "no alternative means" test.
  • Defendant is not required to show that it had no alternate means to express itself.
  • Court follows Second Circuit's decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (movie title "Fred and Ginger" did not violate Lanham Act), and Ninth Circuit's decision in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) ("Barbie Girl" song and music video featuring the doll did not violate Lanham Act). These cases are not limited to titles of artistic works.

 Thus, both the Second Circuit and the Ninth Circuit have held that in Lanham Act false endorsement cases involving artistic expression, the likelihood of confusion test does not give sufficient weight to the public interest in free expression. Both courts rejected the 'no alternative means' test. They held instead 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 agreed that the public interest in free expression should prevail if the use of the celebrity's image has artistic relevance, unless it is used in such a way that it explicitly misleads as to the source of the work.   [p. 28]

• Here, the print is protected by the First Amendment as a work of artistic expression. The Lanham Act, therefore, does not apply.
  • The presence of Woods in the print has artistic relevance to the print's subject matter, and does not explicitly mislead as to source.

 ... Rush's work consists of much more than a mere literal likeness of Woods. It is a panorama of Woods's victory at the 1997 Masters Tournament.... A piece of art that portrays a historic sporting event communicates and celebrates the value our culture attaches to such events. It would be ironic indeed if the presence of the image of the victorious athlete would deny the work First Amendment protection.   [pp. 59-60]

• Survey evidence of confusion is outweighed by First Amendment concerns.
  • The survey: A whopping 62% of survey respondents thought that Woods was affiliated or connected with the print, or had given his approval or sponsored it.
    • Problems with survey noted: "The terms 'affiliated with' and 'connected with' were not defined. Some respondents may have thought that Woods's mere presence in the print was itself an affiliation or connection. No control questions were asked to clarify this. Furthermore, the respondents were not given the packaging in which Jireh distributed the prints which prominently features Rush and contains no suggestion that Woods sponsored or approved the print." [p. 62, n. 19]
  • First Amendment outweighs confusion even if the survey results were valid.

 We find, like the court in Rogers, that plaintiff's 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. The risk of misunderstanding, not engendered by any explicit indication on the face of the print, is so outweighed by the interest in artistic expression as to preclude application of the [Lanham] Act.   [pp. 61-62, footnote omitted]

Right of Publicity

Ohio would construe its right of publicity as suggested in the Restatement (Third) of Unfair Competition, Chapter 4, Section 47, Comment d., which articulates a rule analogous to the rule of fair use in copyright law.

• Rule: "Under this rule, the substantiality and market effect of the use of the celebrity's image is analyzed in light of the informational and creative content of the defendant's use." [p. 63]
• Application: "... we conclude that Rush's work has substantial informational and creative content which outweighs any adverse effect on ETW's market and that Rush's work does not violate Woods's right of publicity." [p. 63]

 While the right of publicity allows celebrities like Woods to enjoy the fruits of their labors, here Rush has added a significant creative component of his own to Woods's identity. 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. After balancing the societal and personal interests embodied in the First Amendment against Woods's property rights, we conclude that the effect of limiting Woods's right of publicity in this case is negligible and significantly outweighed by society's interest in freedom of artistic expression.   [pp. 64-65]

The work contains significant transformative elements under the Comedy III test.

• The Comedy III decision: In Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 21 P.3d 797 (2001), the California Supreme Court adopted a transformative use test to determine whether the artistic use of a celebrity's image violates the right of publicity or is protected from liability by the First Amendment. The 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, the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist.
    
    On the other hand, when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity...." 25 Cal. 4th at 405.
• Application:

... Rush's work consists of a collage of images in addition to Woods's image which are combined to describe, in artistic form, a historic event in sports history and to convey a message about the significance of Woods's achievement in that event. Because Rush's work has substantial transformative elements, it is entitled to the full protection of the First Amendment. In this case, we find that Woods's right of publicity must yield to the First
Amendment.  [pp. 65-66]

Analysis

Implications of the decision.

• Sports: The decision applies to prints and posters depicting in some "artistic" fashion a variety of "historic" sporting events and feats.
• Beyond sports: The reach of this decision may also extend beyond sports to other historic cultural events. Consider, for example, a print depicting the face of an actor in the audience at the Academy Awards ceremony as he hears his name announced as the winner of the Best Actor award.
• Bottom line: Under this decision, sports and other celebrities do not have the exclusive right – whether a trademark right of the right of publicity – to use their likenesses in artistic works depicting or commemorating their famous achievements (or even their less flattering infamous missteps, such as Bill Buckner's critical fielding error at first base in the 1986 World Series).
  
  Without a monopoly on this form of merchandising, celebrities seeking to commercially exploit their rights of publicity will have to compete. But celebrities do have a natural monopoly in themselves – there is only one, for example, Tiger Woods. There are still some things they can do to exploit this competitive edge, such as, for example:
  • include an autograph.
  • use overt endorsement, by indicating that their merchandise is "official" or "authorized" merchandise, or "the only X approved by" etc.
  • include other unique matter that "adds value" to the consumer, such as a short paragraph written by the celebrity relating to the item.

The decision is worth reading.

• A strong dissent: Judge Clay wrote a strong and lengthy dissent, which is almost as long as the 60-plus page majority opinion. The dissent dissects the majority's opinion point by point. There is interplay between the majority and minority opinions, with the majority responding to the dissent in footnotes sprinkled throughout its opinion.
  
  This debate makes for very interesting reading, and provides two very different perspectives on the print and the issues it presented. The dissent also is fertile ground for those seeking to criticize the decision and argue against it being followed by other courts.
• Infringement in the eyes of the beholder: The majority and the dissent saw two very different prints, even though they were examining the same work. In contrast to the majority, the dissent found that "it is difficult to discern any appreciable transformative or creative contribution in Defendant's prints so as to entitle them to First Amendment protection." [p. 134]
• Thorough review of case law: This is one of those lengthy opinions that includes a thorough review of the applicable case law developments. The majority and dissent debate the meaning and applicability of the leading cases in this area.

Confusing the confused: another example of the murky, bottomless depths of "affiliation" confusion under Lanham Act Section 43(a).

• Source confusion vs. affiliation confusion:
  • Section 43(a) of the Lanhman Act prohibits creating a likelihood of two basic forms of confusion:
    • Source confusion: confusion "as to the origin" of the defendant's goods or services.
    • Affiliation confusion: confusion as to "the affiliation, connection or association of [the defendant] with another person, or as to ... sponsorship, or approval of his goods, services, or commercial activities by another person ...."
• Affiliation and endorsement confusion depends on how consumers believe the law operates, whether correctly or, more usually, mistakenly.
  • There is a certain circular "bootstraping" that can occur with regard to affiliation/endorsement confusion.
  • Lay consumers are naturally "confused" and "mistaken" about how trademark law operates. If consumers mistakenly believe that consent or approval is legally required in order to use another's trademark or likeness, then when they are surveyed about the defendant's use they will respond based on that mistaken belief that there must have been approval or endorsement.
  • The net circular effect is that if lay consumers think the law requires approval, then use without permission consequently becomes unlawful under Section 43(a). Consumers' confusion about how the law works translates into confusion as to affiliation and sponsorship, rendering the defendant's use unlawful under Section 43(a). Consumer confusion about what is legal then becomes the standard for what is legal.
  • This can happen even where the defendant's use only vaguely alludes to the plaintiff and its marks, but does not actually use any of the plaintiff's marks.
    • The Delaware lottery case is a good illustrative example of this in action. In National Football League v. Governor of Delaware, 435 F. Supp. 1372 (D. Del. 1977), Delaware operated a weekly lottery that was tied to the results of NFL football games. The lottery did not use any NFL marks and did not even use team names, but simply referred to city names (i.e., New York vs. St. Louis).
      
      Based on their (mis)understanding of how the law operates, about 20% of the those surveyed "either said that, as far as they knew, the legalized betting on professional football was arranged by the State with the authorization of the teams or said that it was conducted by the teams alone." Id. at 1381.
      
      The court noted the problem: "This Court perceives only one way to reconcile these survey results with the absence of any affirmative suggestion of sponsorship or approval in the Delaware Lottery advertising and materials. Apparently, in this day and age when professional sports teams franchise pennants, teeshirts, helmets, drinking glasses and a wide range of other products, a substantial number of people believe, if not told otherwise, that one cannot conduct an enterprise of this kind without NFL approval." Id. at 1381 (emphasis added).
      
      Result: The court found a Section 43(a) violation, and ordered the state to print new materials bearing extensive disclaimers at considerable cost.
• The survey here showed confusion as to affiliation, sponsorship and approval, and not source confusion.
  • In this case, 62% of the consumers surveyed indicated that they believed that Woods had an "affiliation" or "connection" with Rush's print, or "approved" or "sponsored" the print.
  • Just like in National Football League v. Governor of Delaware, many of those surveyed must have believed that one cannot legally make and sell such a print without Woods sponsoring or approving it – but this only begs the central legal question.
  • The majority felt that as a matter of law this mistaken belief about sponsorship or approval, not caused by any explicit or overt misrepresentation, should not outweigh the right to free speech under the First Amendment with respect to a work of artistic expression.
  • The dissent thought that the survey presented a disputed question of fact on the confusion issue precluding summary judgment. But this would permit consumer confusion grounded in misunderstanding about what the law is to define what the law actually is in a given case. This is particularly troubling when it comes to fundamental constitutional rights, such as freedom of expression.
• Limiting actionable forms of affiliation and endorsement confusion is more appropriate than limiting actionable forms of source confusion.
  • The consumer is, and should be, king when it comes to source confusion. This form of confusion is based on matters within the experience and knowledge of consumers. Based on their knowledge and experience as consumers, people are "qualified" to assert their belief that two products originate from the same source.
    • For example, consumers know from experience that motion pictures and poultry do not come from the same source, even if they are both named PARAMOUNT. They are not confused as to source when they have their cars repaired at UNIVERSAL CAR REPAIR and then drive to see a UNIVERSAL motion picture.
  • But, should the consumer be king when it comes to affiliation/endorsement confusion, which largely depends on how they think the law works?
    • When confronted with a survey question about whether they think the plaintiff approved or endorsed the defendant's product, consumers typically will think that there was approval or endorsement because they think the law requires it. "They probably had to get approval to do this, so I will say 'yes' the plaintiff must have approved or endorsed this."
    • Consumers do not have the same knowledge and experience to make this call about how the law works when they respond to confusion survey questions, in comparison to their knowledge and experience about how the world works in terms of the sources of goods or services.