ETW Corporation v. Jireh Publishing, Inc.
332 F.3d 915 (2003)
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Rule of Law:
The First Amendment protects artistic works that include a celebrity's image from claims of trademark infringement and violation of the right of publicity, so long as the work is transformative and does not explicitly mislead consumers as to its source or endorsement.
Facts:
- ETW Corporation is the exclusive licensing agent for world-famous professional golfer Eldrick “Tiger” Woods and owns the registered trademark for the name “TIGER WOODS”.
- Rick Rush, a sports artist, created a painting entitled 'The Masters of Augusta' to commemorate Woods's historic victory at the 1997 Masters Tournament.
- The painting features three distinct images of Woods in the foreground, alongside his caddy, the Augusta National Clubhouse, and likenesses of six past Masters champions in the background.
- Jireh Publishing, Inc. published and marketed limited edition art prints of Rush's painting.
- The prints were sold in an envelope with the words “Tiger Woods” printed on the back under the flap.
- A narrative description accompanying the prints mentioned Woods's name twice to describe the painting's subject matter.
Procedural Posture:
- ETW Corporation filed suit against Jireh Publishing, Inc. in the U.S. District Court for the Northern District of Ohio.
- ETW alleged trademark infringement, dilution, and unfair competition under the Lanham Act, as well as violation of Woods’s common law right of publicity.
- Jireh counterclaimed, seeking a declaratory judgment that its prints were protected by the First Amendment.
- Both parties filed cross-motions for summary judgment.
- The district court granted Jireh’s motion for summary judgment, dismissing all of ETW's claims.
- ETW Corporation, as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Sixth Circuit.
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Issue:
Does the First Amendment protect an artist's unauthorized use of a celebrity's name and likeness in a commemorative art print from claims of trademark infringement under the Lanham Act and violation of the state-law right of publicity?
Opinions:
Majority - Graham, District Judge
Yes, the First Amendment protects the artist's use of Woods's name and likeness. The use of a celebrity's likeness in an expressive work is not a violation of trademark law or the right of publicity when the work contains significant transformative elements and does not explicitly mislead as to its source. Regarding the registered trademark claim, the use of the name 'Tiger Woods' was a descriptive fair use to identify the subject of the art, not an infringing use as a source identifier. As for the claim based on Woods's likeness, a person’s general image cannot function as a trademark because it does not distinguish the source of goods. Finally, applying a balancing test, Rush’s work is a transformative artistic expression protected by the First Amendment that outweighs Woods's right of publicity; it is a creative depiction of a historical event, not merely a commercial exploitation of Woods’s fame.
Dissenting - Clay, Circuit Judge
No, the First Amendment should not automatically protect this use, and genuine issues of material fact preclude summary judgment. The majority improperly disregards ETW's strong survey evidence showing that 62% of consumers were confused about whether Woods sponsored or was affiliated with the print. This evidence creates a jury question as to whether Woods's image functions as a trademark and whether Jireh's print is likely to cause confusion. Furthermore, under the 'transformative use' test, Rush's print is not transformative; it is a literal, conventional depiction whose primary purpose and marketability derive from exploiting Woods’s celebrity status, not from the artist's creative contribution. The artist's skill is 'subordinated to the overall goal of creating literal, conventional depictions of Tiger Woods so as to exploit his fame.'
Analysis:
This decision establishes that for artistic works, the traditional likelihood-of-confusion test for trademark infringement is replaced by the Rogers test, which balances First Amendment interests against consumer confusion. It significantly raises the bar for celebrities seeking to control the use of their likeness in art by limiting trademark claims to specific, consistently used images that function as source identifiers. Furthermore, by adopting the 'transformative use' test for right of publicity claims, the court provides a framework that favors artists whose work adds creative expression to a celebrity's image, thereby impacting the commercial landscape for celebrity-themed art and memorabilia.
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