Etw Corp. v. Jireh Publishing, Inc.

• Decision Date: 10 April 2000
• Docket Number: No. 1:98 CV 1485.,1:98 CV 1485.
• Citation: 99 F.Supp.2d 829
• Parties: ETW CORP., Plaintiff, v. JIREH PUBLISHING, INC., Defendant.
• Court: U.S. District Court — Northern District of Ohio

99 F.Supp.2d 829

ETW CORP., Plaintiff, v. JIREH PUBLISHING, INC., Defendant.

No. 1:98 CV 1485.

United States District Court, N.D. Ohio, Eastern Division.

April 10, 2000.

Timothy P. Fraelich, Jones, Day, Reavis & Pogue, Cleveland, OH, for plaintiff.

Dennis J. Niermann, Nierman & Company, Cleveland, OH, for defendant.

Memorandum of Opinion and Order

GAUGHAN, District Judge.

Introduction

This matter is before the Court upon defendant's Motion for Summary Judgment Based upon Freedom of Speech and Expression (Doc. 27), defendant's First Partial Motion for Summary Judgment Regarding Lack of Customer Confusion (Doc. 28), plaintiff's Cross Motion for Summary Judgment Based upon Freedom of Speech and Expression (Doc. 56) and plaintiff's Cross Motion for Summary Judgment Based upon Issue of Likelihood of Confusion (Doc. 57). This is a trademark infringement case arising out of defendant's creation of a print featuring the image of Tiger Woods. For the following reasons, defendant's Motion for Summary Judgment Based upon Freedom of Speech and Expression is granted as to the right to publicity claim and moot as to the other claims, defendant's First Partial Motion for Summary Judgment Regarding Lack of Customer Confusion is granted, plaintiff's Cross Motion for Summary Judgment Based upon Freedom of Speech and Expression is moot and plaintiff's Cross Motion for Summary Judgment Based upon Issue of Likelihood of Confusion is denied.

Facts

Plaintiff, ETW Corp. (hereafter, ETW), sued Jireh Publishing, Inc. (hereafter, Jireh) in this trademark infringement lawsuit arising out of the sale of a print allegedly using the name, image or likeness of Tiger Woods.

The parties agree on the notoriety of Eldrick "Tiger" Woods. Woods is one of the world's most well-known professional golfers, being the youngest-ever to win the U.S. Junior Amateur Championship and the only player to win this title three times. He also became the youngest-ever winner of the U.S. Amateur Championship and the first player to win this title in three consecutive years. In the years 1991 through 1994 several golf magazines named Tiger Woods to such distinctions as "player of the year." Tiger Woods became a full-time professional golfer in 1996, winning two Professional Golf Association (PGA) tour events that year and was named "Sportsman of the Year" by Sports Illustrated magazine. In 1997, Tiger Woods won the Masters Tournament, becoming the youngest player to do so. That year he won six PGA Tour events, was named PGA Tour Player of the Year and became the first champion of a major PGA Tour event of either African or Asian heritage. (Am.Compl.¶¶ 7-13).

ETW is the exclusive licensing agent of Tiger Woods. ETW has filed numerous trademark applications with the United States Patent and Trademark Office for the mark "Tiger Woods" and in 1998 received registration for the trademark "TIGER WOODS," "for: art prints, calendars, mounted photographs, notebooks, pencils, pens, posters, trading cards, and unmounted photographs, in Class 16." (Id. at ¶ 6, 16, Ex. 1).

Jireh is an Alabama publishing company and the exclusive publisher of the artwork of Rick Rush, a "sports artist." Rush has created an art print entitled, "The Masters of Augusta." A narrative insert accompanying this print characterizes it as featuring Tiger Woods in the center "displaying that awesome swing" and "flanked by his caddie ... and final round player partner's caddie ..." The bottom of the print contains the language, "The Masters of Augusta," "Rick Rush," "Painting America through Sports." Rick Rush's signature appears in the bottom right hand corner of the print. In another insert, Jireh certifies that this is a "limited edition" print. The outside of the white envelope containing the print has in large letters, "Rick Rush — Painting America Through Sports" and a very large duplication of Mr. Rush's signature. Under the back flap of the envelope are the words in smaller print, "Masters of Augusta, Tiger Woods." (Ex. submitted to Court).

ETW's First Amended Complaint asserts six claims. Count One alleges trademark infringement under the Lanham Act, 15 U.S.C. § 1114. Count Two alleges dilution under the Lanham Act, 15 U.S.C. § 1125(c). Count Three alleges unfair competition and false advertising in violation of the Lanham Act, 15 U.S.C. § 1125(a). Count Four alleges unfair competition and deceptive trade practices in violation of the Ohio Revised Code. Count Five alleges unfair competition and trademark infringement under Ohio common law. Count Six alleges violation of Tiger Woods' right of publicity in violation of Ohio common law.

This matter is before the Court upon cross-motions for summary judgment.

Standard of Review

Summary Judgment is appropriate when no genuine issues of material fact exist and the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (citing Fed.R.Civ.P. 56(c)); see also LaPointe v. UAW, Local 600, 8 F.3d 376, 378 (6th Cir.1993). The burden of showing the absence of any such genuine issues of material facts rests with the moving party:

[A] party seeking summary judgment always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of "the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits," if any, which it believes demonstrates the absence of a genuine issue of material fact.

Celotex, 477 U.S. at 323, 106 S.Ct. 2548 (citing Fed.R.Civ.P. 56(c)). A fact is "material only if its resolution will affect the outcome of the lawsuit." Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Once the moving party has satisfied its burden of proof, the burden then shifts to the nonmoving party. Federal Rule of Civil Procedure 56(e) provides:

When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of [his] pleadings, but [his response], by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is genuine issue for trial. If he does not respond, summary judgment, if appropriate, shall be entered against him.

The court must afford all reasonable inferences and construe the evidence in the light most favorable to the nonmoving party. Cox v. Kentucky Dep't. of Transp., 53 F.3d 146, 150 (6th Cir.1995) (citation omitted); see also United States v. Hodges X-Ray, Inc., 759 F.2d 557, 562 (6th Cir.1985). However, the nonmoving party may not simply rely on its pleading, but must "produce evidence that results in a conflict of material fact to be solved by a jury." Cox, 53 F.3d at 150.

Summary judgment should be granted if a party who bears the burden of proof at trial does not establish an essential element of his case. Tolton v. American Biodyne, Inc., 48 F.3d 937, 941 (6th Cir. 1995) (citing Celotex, 477 U.S. at 322, 106 S.Ct. 2548). Accordingly, "the mere existence of a scintilla of evidence in support of plaintiffs position will be insufficient; there must be evidence on which the jury could reasonably find for the plaintiff." Copeland v. Machulis, 57 F.3d 476, 479 (6th Cir.1995) (quoting Anderson, 477 U.S. at 252, 106 S.Ct. 2505 (1986)). Moreover, if the evidence is "merely colorable" and not "significantly probative," the court may decide the legal issue and grant summary judgment. Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505 (citation omitted).

Discussion

A trademark is a designation, "any word, name, symbol, or device ... used by a person ... to identify and distinguish his or her goods ... from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127. "[I]n order to be protected as a valid trademark, a designation must create `a separate and distinct commercial impression, which ... performs the trademark function of identifying the source of the merchandise to the customers.'" The Rock and Roll Hall of Fame and Museum v. Gentile Productions, 134 F.3d 749 (6th Cir.1998), citing In re Chemical Dynamics, Inc., 839 F.2d 1569, 1571 (Fed.Cir.1988).

"[W]hether alleging infringement of a registered trademark, pursuant to 15 U.S.C. § 1114(1), or infringement of an unregistered trademark, pursuant to 15 U.S.C. § 1125(a)(1), it is clear that a plaintiff must show that it has actually used the designation at issue as a trademark, and that the defendant has also used the same or a similar designation as a trademark." Rock and Roll, 134 F.3d at 753 (citations omitted). The Sixth Circuit has recently stated that "to prevail on a motion for summary judgment in its Lanham Act trademark infringement claim, [plaintiff] must prove that the purportedly infringing mark is `likely to cause confusion' in prospective purchasers' minds." Marketing Displays, Inc. v. Traffix Devices, Inc., 200 F.3d 929, 933 (6th Cir.1999). That is, "whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties." Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir.1997).¹ Eight factors have been identified by the Sixth Circuit in analyzing whether there is a likelihood of confusion:

1. the strength of the plaintiff's mark;

2. the relatedness of the services;

3. the similarity of the marks;

4. the evidence of actual confusion;

5. the marketing channels used;

6. the likely degree of purchaser care;

7. the defendant's intent in selecting the mark; and

8. the likelihood of expansion of the product lines.

Marketing Displays, 200 F.3d at 933.

For the following reasons, this Court finds that plaintiff has failed to establish the validity of its claim to trademark rights in the image of Tiger Woods and, therefore, its...