Tiger painting does not infringe trademark rights, rules Sixth Circuit

In ETW Corporation v Jireh Publishing Inc, the Court of Appeals for the Sixth Circuit has upheld a district court decision dismissing professional golfer Tiger Woods's trademark infringement and right of publicity claims against an artist who had included Woods's image in a painting. The court held that (i) images or likenesses cannot be protected as trademarks, and (ii) the artist's right of freedom of expression outweighs Woods's right of publicity.

Through his exclusive licensing agent - ETW Corporation - Woods brought a multi-count cause of action against Jireh Publishing, the publisher of artwork created by Rick Rush. The case stemmed from a Rush painting depicting Woods at the Masters (golf) Tournament surrounded by various other famous golfers. The work is titled "Masters of Augusta" and Woods's name does not feature anywhere in the painting. Jireh sold a number of limited edition prints of Rush's painting. Each print includes a description of the painting and references to Woods's name. ETW's complaint claimed right of publicity, trademark infringement, unauthorized use of Woods's likeness, unfair competition and false endorsement. The District Court for the Northern District of Ohio dismissed the complaint and ETW appealed to the Sixth Circuit.

The Sixth Circuit dismissed the appeal and upheld the district court's decision. The court rejected ETW's trademark infringement claim relating to the use of Woods's name in the description of the painting and related marketing materials, holding that this is a fair use. It also refuted the argument that ETW holds the trademark rights in all Woods's images or likenesses, stating that "images and likenesses of Woods are not protectable as a trademark because they do not perform the trademark function of designation". The court went on to say that generally "a person's image or likeness cannot function as a trademark".

The court also rejected the claims of right of publicity, unfair competition and false endorsement. In considering these claims, the Sixth Circuit first addressed Jireh's First Amendment rights under the US Constitution and found that the prints are not commercial speech. With regard to the unfair competition and/or false endorsement claims, the court held that the federal trademark laws should only be applied to artistic works when "the public interest in avoiding confusion outweighs the public interest in free expression". Applying this principle to the case at hand, the court held that Rush's painting has artistic relevance and does not explicitly mislead the public as to the source of the work. Thus, no violation of the unfair competition or false endorsement laws had occurred. As to the right of publicity claims, the court balanced Jireh's First Amendment rights against Woods's economic interest in his image. The court concluded that the public interest in freedom of artistic expression outweighs Woods's right of publicity.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington