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Sixth
Circuit Court of Appeals Rules that Painting of Tiger Woods Does Not Violate
the Lanham Act
June 20, 2003 -
The U.S. Court of Appeals for the Sixth Circuit ruled that a painting
of golfer Tiger Woods commemorating his victory at the 1997 Masters golf
tournament was not a violation of the Lanham Act, was protected by the
First Amendment, and, did not infringe on the golfer's right to publicity.
The painting at
the center of the controversy was a limited-edition lithograph titled
"The Masters of Augusta" which depicted three images of Woods
shadowed by those of other past Masters golf champions. ETW Corp., Woods's
licensing agent, filed suit against Jireh Publishing which produced the
limited-edition prints of the painting for sale. ETW ‘s suit was filed
in the United States District Court for the Northern District of Ohio,
and alleged, among other things, trademark infringement in violation of
the Lanham Act, 15 U.S.C. §1114; unfair competition and false advertising
under the Lanham Act, 15 U.S.C. §1125(a); and violation of Woods's right
of publicity under Ohio common law. Jireh counterclaimed, seeking a declaratory
judgment that the art prints were protected by the First Amendment and
did not violate the Lanham Act. Both parties moved for summary judgment.
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).
On appeal, ETW
claimed the exclusive right to market Woods’s name, image, likeness and
signature. Jireh claimed that the painting was not subject to protection
under the Lanham Act and should be afforded First Amendment protection
from ETW's claims of federal and state trademark infringement and violation
of Woods's right of publicity.
In a 2-1 decision,
the Sixth Circuit upheld the district court’s ruling in its entirety.
As to the Lanham
Act claims, the court ruled that ETW’s claim for violation of its registered
trademark “Tiger Woods” was barred by the fair use defense pursuant to
15 U.S.C. §1115(b)(4). The court further ruled that ETW’s claim under
15 U.S.C §1125(a) based on unauthorized use of the likeness of Tiger Woods
was also barred because, as a general rule, a person's image or likeness
cannot function as a trademark. "[Woods] asks us, in effect, to constitute
Woods himself as a walking, talking trademark," wrote U.S. District
Judge James Graham, sitting by designation. "We hold that, as a general
rule, a person's image or likeness cannot function as a trademark."
"[T]here are undoubtably 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," Graham wrote. "No reasonable
person could believe that merely because these photographs or paintings
contain Woods's likeness or image, they all originated with Woods,"
and therefore deserved trademark protection.
In response to
ETW's claim that Jireh violated Woods's right of publicity -- a form of
privacy claim that asserts a right to control the commercial use of one's
identity -- the court balanced the "societal and personal interests
embodied in the First Amendment" against Woods's property rights.
"[W]e 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," Graham wrote. The court deemed
the painting to be an "informational and creative" form of "expression
which is entitled to the full protection of the First Amendment."
"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."
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