Tiger Woods’ Name and Likeness

September 26, 2003

Use of His Name and Likeness Held Not Violative of the Rights of Tiger Woods

(Originally published in the Entertainment Law column in the New York Law Journal, September 26, 2003.)

The U.S. Court of Appeals for the Sixth Circuit has affirmed a summary judgment that a painting commemorating Tiger Woods’s victory in the 1997 Masters Tournament did not violate the Lanham Act nor right of publicity under state law.1 In so doing, it relied in part on a test established in a Second Circuit opinion (the “Rogers decision”) to determine whether the public interest in avoiding confusion trumps the public interest in free expression.2

Woods, one of the most famous golfers in the world, assigned to ETW Corporation (“ETW”) the exclusive right to exploit his name, image, likeness, signature and all other publicity rights. ETW owns a U.S. trademark registration for the mark “Tiger Woods” for use in connection with “art prints, calendars, mounted photographs, notebooks, pencils, pens, posters, trading cards, and unmounted photographs.” Woods is Chairman of the Board of ETW.

Defendant, Jireh Publishing, Inc. (“Jireh”) is the publisher of artwork created by Rick Rush (“Rush”) who refers to himself as “America’s sports artist,” having created paintings of famous sports figures and sports events. Jireh has produced and successfully marketed limited edition art prints made from Rush’s paintings.

In 1998, Rush created a painting entitled “The Masters of Augusta” which commemorates Woods’s victory at the Masters Tournament in 1997. In the foreground are three views of Woods in different poses. Also depicted are two caddies and likenesses of famous golfers from the past looking down on Woods. The limited edition distributed by Jireh consists of an image of Rush’s painting beneath which is its title “The Masters of Augusta.”

Jireh sells the limited edition prints enclosed in a white envelope with literature that includes a description of Rush’s art and a narrative relating to the painting. On the back of the envelope, under the flap, are the words “Masters of Augusta” in letters that are three-eighths of an inch high, and “Tiger Woods” in letters that are one-fourth of an inch high. Woods’s name also appears in the narrative description of the painting where he is mentioned twice in 28 lines of text. Jireh published and marketed 250 serigraphs and five thousand lithographs of the “Masters of Augusta” at a price of $700 and $100, respectively.

On June 26, 1998, ETW filed suit against Jireh alleging trademark infringement, unfair competition and false advertising under the Lanham Act, and violation of Woods’s right of publicity under Ohio common law. Jireh counterclaimed, seeking a declaratory judgment that Rush’s prints are protected by the First Amendment and do 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.

ETW claims that Jireh infringed the registered mark “Tiger Woods” by including those words in the marketing materials which accompanied the prints of Rush’s painting. However, the words “Tiger Woods” do not appear on the face of the prints, nor are they are included in the title of the painting. They do appear under the flap of the envelopes which contained the prints, and Woods is mentioned twice in the narrative which accompanies the prints.

The Lanham Act provides a defense to an infringement claim when 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.” Thus, in evaluating a defendant’s fair use defense, a court must consider whether the defendant has used a mark 1) in its descriptive sense and 2) in good faith. Here, the Court holds that the use of Woods’s name was purely descriptive and in good faith. Woods is mentioned only to describe the content of the print and accordingly, ETW’s infringement claim is barred by the fair use defense.

In examining plaintiff’s claim under section 43(a) of the Lanham Act, the Court indicates that the statute provides a right of action against deceptive and misleading use of words, names, symbols or devices, or any combination thereof, which have been adopted by a merchant to identify his goods and distinguish them from those manufactured by others. Although ETW registered Woods’s name as a trademark, it did not register any image or likeness of him. Nonetheless, ETW claims to have trademark rights in Woods’s image and likeness because section 43(a) provides a federal cause of action for infringement of an unregistered trademark with essentially the same protection as one that is registered.

The essence of a trademark is a designation in the form of a distinguishing name, symbol or device which is used to identify a person’s goods and distinguish them from the goods of another.

Citing decisions of other courts which have addressed similar issues, the Court indicates that, as a general rule, a person’s image or likeness cannot function as a trademark, primarily because it does not perform the trademark function of the designation. For example, in the Second Circuit decision of Pirone v. MacMillan, Inc.3 the court rejected a claim asserted by the daughters of Babe Ruth in holding that “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.” The Court notes that Woods, like Ruth, is one of the most photographed sports figures of his generation, but this alone does not suffice to create a trademark claim. Indicating that ETW’s claim is identical to that of the plaintiff’s in Pirone – a sweeping claim to trademark rights in every photograph and image of Woods – the Court rejects ETW’s argument.

ETW cites section 43(a) as supporting claims of unfair competition and false advertising in the nature of false endorsement. It also asserts a claim for infringement of its right of publicity under Ohio Law. The elements of a Lanham Act false endorsement claim are similar to the elements of a right of publicity claim under Ohio law.

Defendant raises 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 protection of the First Amendment is not limited to written or spoken words, but includes other mediums of expression such as paintings, drawings and prints. Speech is protected even though it is carried in a form that is sold for profit. Even pure commercial speech is entitled to significant First Amendment protection. Rush’s prints however are not commercial speech. They do not propose a commercial transaction. Accordingly, they are entitled to the full protection of the First Amendment. Thus, the Court indicates that the issue in this regard is whether Woods’s intellectual property rights must yield to Rush’s First Amendment rights.

The essence of ETW’s false endorsement claim is that the presence of Woods’s image in Jireh’s print implies that he has endorsed Jireh’s product. False endorsement occurs when a celebrity’s identity is connected with a product or service in such a way the consumers are likely to be misled about that celebrity’s sponsorship or approval of the product or service. Here, the Court concludes that when 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.

In supporting this conclusion the Court cites the Rogers decision in which Ginger Rogers brought suit against the producers and distributors of the movie entitled “Ginger and Fred.” The film was not about Ginger Rogers and Fred Astair, but about two fictional Italian cabaret performers who imitated them and became known in Italy as “Ginger and Fred.” Rogers asserted claims under section 43(a) and argued that First Amendment concerns are implicated only when the author has no alternative means of expression. The Court rejected that claim, stating that, in general, the Lanham Act should be construed to apply to artistic works only when the public interest in avoiding consumer confusion outweighs the public interest in free expression. Other decisions have held that the Roger’s test is not limited to literary titles, but is applicable generally to Lanham Act claims against works of artistic expression.

The Court is persuaded that Rogers is the best test for balancing defendant’s and the public’s free expression under the First Amendment against the public’s interest in enforcement of the Lanham Act and, in applying the Roger’s test to the facts before it, the Court rejects plaintiff’s claim.

Turning to ETW’s right of publicity claim, the Court notes that such a right is a creature of state law. It analyzes several Ohio state court decisions concerning the right of publicity which rely heavily on the Restatement (Second) of Torts and, applying the principals found therein, concludes that Rush’s work as a panorama of Woods’s victory at the 1997 Masters Tournament includes elements that bring it within First Amendment protection.

The Court also indicates that the transformative elements test adopted by the Supreme Court of California in Comedy ? Productions, Inc. v. Gary Saderup, Inc.4 (the subject of a column which appeared in this space on June 22, 2001) is of assistance in determining where the proper balance lies between the First Amendment and Woods’s intellectual property rights. Applying that test to the instant case, the Court concludes that Rush’s work contains significant transformative elements that makes it worthy of First Amendment protection and less likely to interfere with the economic interests protected by Woods’s publicity right. The Court states that Rush’s work consists of a collage of images which combine to describe an historic sports event and to convey the significance of Woods’s achievement in that event. Accordingly, Woods’s right of publicity must yield to the First Amendment.

For the above reasons the Court affirmed the judgment of the district court granting summary judgment to Jireh. Justice Clay wrote a lengthy dissenting opinion.


1 ETW Corp. v. Jireh Pub., Inc., 332 F 3d 915, (6th Cir. (Ohio) June 20, 2003)

2 Rogers v. Grimaldi, 875 F 2d 994 (2D Cir. 1989)

3 894 F .2d 579 (2nd Cir. 1990)

4 25 Cal. 4th 387 (2001)