In 1997, Tiger Woods became the youngest player ever to win the Masters Tournament, setting a 72-hole record for the tournament and a record 12-stroke margin of victory. Although Woods had already been a well-known name in sports, following this tournament, his popularity grew substantially.
In 1998, sports artist Rick Rush created a commemorative painting of Woods’ 1997 Masters victory. The painting, “The Masters of Augusta,” features three views of Woods in different poses, his caddy, and his final round partner’s caddy. Behind these figures is the Augusta National Clubhouse and images of famous golfers of the past painted behind the clubhouse.
Because Rush had not obtained permission to create the painting, Woods’ licensing agent, ETW Corporation (ETW) filed a lawsuit against Rush’s publishing company. The complaint alleged, in part, that the painting infringed its trademark and violated Woods’ right of publicity.
As Woods’ licensing agent, ETW owns the exclusive right to use his name, image, likeness, signature and all other publicity rights for commercial gain. In addition, ETW owns a U.S. trademark registration for the mark “Tiger Woods.”
Jireh Publishing, Inc. (Jireh), the publisher of Rush’s artwork, sold and distributed limited edition prints of Rush’s painting. Jireh enclosed the limited edition prints in a white envelope and included a narrative description of the painting, in which Woods’ name appeared. In addition, on the back of the envelope, under the flap, the words “Tiger Woods” were printed.
ETW Corporation Sues Jireh Publishing, Inc.
In June 1998, ETW filed suit against Jireh in federal court, alleging, among other claims, trademark infringement and violation of Wood’s right of publicity. After the court dismissed the case, ETW appealed. The following arguments were at issue:
Infringement of ETW’s registered trademark of “Tiger Woods”
ETW’s trademark rights in Woods’ image and likeness
Jireh’s publication and marketing of the painting as a violation of Woods’ right of publicity
The Registered Trademark: “Tiger Woods”
The appellate court first considered whether Jireh had infringed ETW’s registered trademark, “Tiger Woods,” by including the words on the envelope flap and in the narrative which accompanied the prints. The court invoked the doctrine of “fair use,” a concept in trademark law that permits others to use a trademarked word to describe aspects of their own goods. The court noted that Jireh used “Tiger Woods” only to describe the content of the print and that there was no evidence of bad faith. As such, the court found that Jireh had used Woods’ name in a purely descriptive manner, constituting a non-infringing fair use.
Unauthorized Use of Tiger Woods’ Image and Likeness
Next, the appellate court addressed ETW’s claim that it had trademark rights in Woods’ image and likeness. As indicated above, ETW had registered “Tiger Woods” as a trademark, but had not registered any image or likeness of Woods. However, the lack of registration of a mark typically does not diminish protection for trademarks under federal law.
More specifically, federal law provides similar infringement protection to unregistered trademarks as it does to registered marks. However, in order to gain trademark protection, the symbol at issue must perform the trademark function of “identification.” Stated another way, the symbol must identify the source of goods and distinguish it from other sources in order to be protected as a trademark.
The court considered ETW’s claim that it had exclusive rights to all of Woods’ images (i.e., the equivalent of a claim to rights of “Woods himself as a walking, talking trademark”). However, the court denied ETW’s claim, enunciating a general rule that a person’s image or likeness cannot function as a trademark.
Violation of Tiger Woods’ Right to Publicity
Finally, the court addressed ETW’s allegations that Jireh’s publication and marketing of the prints violated Woods’ right of publicity. The right of publicity, a relatively new intellectual property right, has been defined as “the inherent right of every human being to control the commercial use of his or her identity.” However, Jireh raised the First Amendment as a defense and argued that Rush’s use of Woods’ image was protected expression.
The court agreed that Rush’s work was within the protection of the First Amendment, recognizing the importance of sports celebrities as “a valuable means of expression in our culture.” Ultimately, the court found that society’s interest in freedom of artistic expression trumped Woods’ right of publicity. As such, the court held that Jireh did not violate Woods’ right of publicity by distributing the painting.