ETW Corporation v. Jireh Publishing, Inc.
Rick Rush's painting commemorating Tiger Woods' first Masters victory at Augusta did not violate the athlete's trademark rights under the Lanham Act, according to the U.S. Court of Appeals (6th Cir.). Two of the three judges on the panel issued their opinion in September 2003. The court further ruled that Woods' right of publicity was not compromised by the creation and distribution of the painting. Woods' ETW Corporation had filed suit against Jireh Publishing, Inc. for using the golfer's image without permission in a painting featuring other professional golfers and the two caddies from his first Masters win, which Jireh reproduced and sold to the public.
Section 43(a) of the Lanham Act allows an individual to claim trademark infringement in the event that a third party's use of the trademark, "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person," (15 U.S.C 1125(a)). Although Woods argued in his complaint that the unauthorized use of his image, of which he possesses a registered trademark, violated Section 43(a), the appeals court found that the fact the image was used in a painting constituted a form of free expression which is guaranteed under the First Amendment.
As to Woods' right to publicity, the panel stated that the creative nature of the work precludes any claim of harm to this interest. Judge James L. Graham wrote, "Rush's work has substantial informational and creative content which outweighs any adverse effect on ETW's market and . . . Rush's work does not violate Woods's [sic] right of publicity. We further find that Rush's work is expression which is entitled to the full protection of the First Amendment and not the more limited protection afforded to commercial speech," (See ETW Corporation v. Jireh Publishing, Inc., 332 F.3d 915(2003)).
Although Jireh sold copies of Rush's painting – $700 for serigraphs and $100 for lithographs – the court found that Rush's work itself did not suggest a commercial transaction. In order for commercial speech to be assigned, the suggestion of a commercial transaction must not only be present in the work, it must be the work's purpose. The absence of such a suggestion in Rush's painting meant that the creative nature of it was afforded full protection by the First Amendment. As Judge Graham wrote in the court's opinion, "Rush's prints are not commercial speech. They do not propose a commercial transaction. Accordingly, they are entitled to the full protection of the First Amendment. Thus, we are called upon to decide whether Woods's [sic] intellectual property rights must yield to Rush's First Amendment rights."
—Ingrid Nuttall
Silha Research Assistant