Trademark Law - Fair Use - ETW Corp. v. Jireh Publishing Inc

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ETW Corp. v. Jireh Publishing Inc., 67 USPQ2d 1065 (CA 6 2003)
ETW Corp., (ETW) owner of the right to exploit the Tiger Woods name, image, likeness and signature and all other publicity rights sued Jireh Publishing Inc., owner of the right to publish a Rick Rush painting that commemorates the 1997 Masters golf tournament victory by Tiger Woods, for trademark infringement, dilution, unfair competition, and false advertising under Lanham Act, and for unfair competition, trademark infringement, and violation of right of publicity under common law. ETW also 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.” The Rush painting in question contains three artist renditions of Tiger Woods in its foreground and other past Masters champions looking down on him. The Defendant counterclaimed for declaratory judgment that the artwork at issue is protected by First Amendment and does not violate Lanham Act.
On cross summary judgment motions the district court rejected Plaintiff’s claim that all images of Tiger Woods are protected under the Lanham Act and granted summary judgment to the Defendant. Plaintiff appeals from grant of summary judgment for defendant.
In reviewing the district court’s holding on the trademark infringement claim the Sixth Circuit agreed with the district court that use of the name Woods’ in the promotional literature by the Defendant was descriptive and in good faith to describe the content of the print. A celebrity’s names may also be used in the title of an artistic word when there is artistic relevance according to the Court. Further, the image of Woods’ in the picture was not performing a trademark function of indicating source, origin or sponsorship but was the subject of the artistic work. As such, Plaintiff cannot claim that this image is protected by the Lanham Act.
On the claims of unfair competition and false advertising under Section 43(a) the Circuit affirmed the district court’s rejection that the Defendant was guilty of either cause of action based on these facts. It concluded that Rush’s paintings are entitled to First Amendment protection as artistic works and the Lanham Act should be applied to artistic works so protected only where the public interest in avoiding confusion outweighs the public interest in free expression. In this case the risk of confusion is outweighed by the public’s interest in artistic impression so the Lanham Act does not apply.
AFFIRMED.

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