Etw Corp. v. Jireh Pub., Inc.

Decision Date20 June 2003
Docket NumberNo. 00-3584.,00-3584.
Citation332 F.3d 915
PartiesETW CORPORATION, Plaintiff-Appellant, v. JIREH PUBLISHING, INC., Defendant-Appellee.
CourtU.S. Court of Appeals — Sixth Circuit

Thomas G. Kovach (briefed), Thomas S. Babel, Squire, Sanders & Dempsey, Cleveland, OH, Terence J. Clark (argued and briefed), Squire, Sanders & Dempsey, Los Angeles, CA, for Plaintiff-Appellant.

Dennis J. Niermann (argued and briefed), Dennis J. Niermann Co., Cleveland, OH, for Defendant-Appellee.

Lynda M. Braun (briefed), Bruce S. Meyer (briefed), Weil, Gotshal & Manges, New York, NY, for Amicus Curiae.

Russell S. Jones, Jr. (briefed), Shughart, Thomson & Kilroy, Kansas City, MO, for Amicus Curiae.

Joseph A. Kohanski (briefed), Geffner & Bush, Burbank, CA, for Amicus Curiae.

Mark S. Lee, Manatt, Phelps & Phillip Los Angeles, CA, for Amicus Curiae.

Diane L. Zimmerman (briefed), New York University Law School, New York, NY, for Amicus Curiae.

Adam B. Liptak (briefed), New York Times Company Legal Department, New York, NY, for Amicus Curiae.

James E. Hough (briefed), Morrison & Foerster, New York, NY, for Amicus Curiae.

Lucy A. Dalglish (briefed), The Reporters Committee for Freedom of the Press, Arlington, VA, for Amicus Curiae.

J. Michael Murray (argued and briefed), Lorraine R. Baumgardner (briefed), Berkman, Gordon, Murray & DeVan, Cleveland, OH, for Amicus Curiae.

Before SILER and CLAY, Circuit Judges; GRAHAM, District Judge.*

GRAHAM, D.J., delivered the opinion of the court, in which SILER, J., joined. CLAY, J. (pp. 938-960), delivered a separate dissenting opinion.

OPINION

GRAHAM, District Judge.

Plaintiff-Appellant ETW Corporation ("ETW") is the licensing agent of Eldrick "Tiger" Woods ("Woods"), one of the world's most famous professional golfers. Woods, chairman of the board of ETW, has assigned to it the exclusive right to exploit his name, image, likeness, and signature, and all other publicity rights. ETW owns a United States trademark registration for the mark "TIGER WOODS" (Registration No. 2,194,381) for use in connection with "art prints, calendars, mounted photographs, notebooks, pencils, pens, posters, trading cards, and unmounted photographs."

Defendant-Appellee Jireh Publishing, Inc. ("Jireh") of Tuscaloosa, Alabama, is the publisher of artwork created by Rick Rush ("Rush"). Rush, who refers to himself as "America's sports artist," has created paintings of famous figures in sports and famous sports events. A few examples include Michael Jordan, Mark McGuire, Coach Paul "Bear" Bryant, the Pebble Beach Golf Tournament, and the America's Cup Yacht Race. Jireh has produced and successfully marketed limited edition art prints made from Rush's paintings.

In 1998, Rush created a painting entitled The Masters of Augusta, which commemorates Woods's victory at the Masters Tournament in Augusta, Georgia, in 1997. At that event, Woods became the youngest player ever to win the Masters Tournament, while setting a 72-hole record for the tournament and a record 12-stroke margin of victory. In the foreground of Rush's painting are three views of Woods in different poses. In the center, he is completing the swing of a golf club, and on each side he is crouching, lining up and/or observing the progress of a putt. To the left of Woods is his caddy, Mike "Fluff" Cowan, and to his right is his final round partner's caddy. Behind these figures is the Augusta National Clubhouse. In a blue background behind the clubhouse are likenesses of famous golfers of the past looking down on Woods. These include Arnold Palmer, Sam Snead, Ben Hogan, Walter Hagen, Bobby Jones, and Jack Nicklaus. Behind them is the Masters leader board.

The limited edition prints distributed by Jireh consist of an image of Rush's painting which includes Rush's signature at the bottom right hand corner. Beneath the image of the painting, in block letters, is its title, "The Masters Of Augusta." Beneath the title, in block letters of equal height, is the artist's name, "Rick Rush," and beneath the artist's name, in smaller upper and lower case letters, is the legend "Painting America Through Sports."

As sold by Jireh, the limited edition prints are enclosed in a white envelope, accompanied with literature which includes a large photograph of Rush, a description of his art, and a narrative description of the subject painting. On the front of the envelope, Rush's name appears in block letters inside a rectangle, which includes the legend "Painting America Through Sports." Along the bottom is a large reproduction of Rush's signature two inches high and ten inches long. On the back of the envelope, under the flap, are the words "Masters of Augusta" in letters that are three-eights of an inch high, and "Tiger Woods" in letters that are one-fourth of an inch high. Woods's name also appears in the narrative description of the painting where he is mentioned twice in twenty-eight lines of text. The text also includes references to the six other famous golfers depicted in the background of the painting as well as the two caddies.1 Jireh published and marketed two hundred and fifty 22½" × 30" serigraphs and five thousand 9" × 11" lithographs of The Masters of Augusta at an issuing price of $700 for the serigraphs and $100 for the lithographs.

ETW filed suit against Jireh on June 26, 1998, in the United States District Court for the Northern District of Ohio, alleging trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114; dilution of the mark under the Lanham Act, 15 U.S.C. § 1125(c); unfair competition and false advertising under the Lanham Act, 15 U.S.C. § 1125(a); unfair competition and deceptive trade practices under Ohio Revised Code § 4165.01; unfair competition and trademark infringement under Ohio common law; and violation of Woods's right of publicity under Ohio common law. Jireh counterclaimed, seeking a declaratory judgment that Rush's art prints are protected by the First Amendment and do not violate the Lanham Act. Both parties moved for summary judgment.

The district court granted Jireh's motion for summary judgment and dismissed the case. See ETW Corp. v. Jireh Pub., Inc., 99 F.Supp.2d 829 (N.D.Ohio 2000). ETW timely perfected an appeal to this court.

I. Standard of Review

We review the district court's grant of summary judgment de novo. Sperle v. Michigan Dep't of Corr., 297 F.3d 483, 490 (6th Cir.2002). Summary judgment is proper where there exists no issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). In considering such a motion, the court construes all reasonable factual inferences in favor of the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The central issue is "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

II. Trademark Claims Based on the Unauthorized Use of the Registered Trademark "Tiger Woods"

ETW claims that the prints of Rush's work constitute the unauthorized use of a registered trademark in violation of the Lanham Act, 15 U.S.C. § 1114, and Ohio law. Because trademark claims under Ohio law follow the same analysis as those under the Lanham Act, our discussion of the federal trademark claims will therefore encompass the state trademark claims as well.2 Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 754 (6th Cir.1998)(citing Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 288 (6th Cir.1997)).

ETW claims that Jireh infringed the registered mark "Tiger Woods" by including these words in marketing materials which accompanied the prints of Rush's painting. The words "Tiger Woods" do not appear on the face of the prints, nor are they included in the title of the painting. The words "Tiger Woods" do appear under the flap of the envelopes which contain the prints, and Woods is mentioned twice in the narrative which accompanies the prints.

The Lanham Act provides a defense to an infringement claim where the use of the mark "is a use, otherwise than as a mark,... which is descriptive of and used fairly and in good faith only to describe the goods ... of such party[.]" 15 U.S.C. § 1115(b)(4); see San Francisco Arts and Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 565, 107 S.Ct. 2971, 97 L.Ed.2d 427 (1987); Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270 F.3d 298, 319 (6th Cir.2001)("Under the doctrine of `fair use,' the holder of a trademark cannot prevent others from using the word that forms the trademark in its primary or descriptive sense.")(emphasis in the original); Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 270 (2nd Cir.1995)("[F]air use permits others to use a protected mark to describe aspects of their own goods[.]"). In evaluating a defendant's fair use defense, a court must consider whether defendant has used the mark: (1) in its descriptive sense; and (2) in good faith. Victoria's Secret Stores v. Artco Equip. Co., 194 F.Supp.2d 704, 724 (S.D.Ohio 2002); see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir.2002).

A celebrity's name may be used in the title of an artistic work so long as there is some artistic relevance. See Rogers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir.1989); New York Racing Ass'n v. Perlmutter Publ'g, Inc., No. 95-CV-994, 1996 WL 465298 at *4 (N.D.N.Y. July 19, 1996) (finding the use of a registered mark on the title of a painting protected by the First Amendment). The use of Woods's name on the back of the envelope containing the print and in the narrative...

To continue reading

Request your trial
177 cases
  • Chelsey Nelson Photography LLC v. Louisville/Jefferson Cnty. Metro Gov't
    • United States
    • U.S. District Court — Western District of Kentucky
    • August 14, 2020
    ...Metro Ordinance §§ 92.03, 92.05, & 92.06.8 Id. at § 92.05(A) & (B).9 About Us , Fairness Campaign. 10 ETW Corp. v. Jireh Publishing, Inc. , 332 F.3d 915, 924 (6th. Cir. 2003).11 Id.12 West Virginia State Board of Education v. Barnette , 319 U.S. 624, 63 S.Ct. 1178, 87 L.Ed. 1628 (1943).13 I......
  • Brantley v. Epic Games, Inc.
    • United States
    • U.S. District Court — District of Maryland
    • May 29, 2020
    ...is more than a conclusory allegation, as a general rule images and likenesses do not function as trademarks. ETW Corp. v. Jireh Publ'g , 332 F. 3d 915, at 922-923 (6th Cir. 2003) ("Images and likenesses [ ] are not protectable as a trademark because they do not perform the trademark functio......
  • Simmons v. Cook
    • United States
    • U.S. District Court — Southern District of Ohio
    • March 29, 2010
    ...Lanham Act trademark claims. FURminator, Inc. v. Kirk Weaver Enters., 545 F.Supp.2d 685, 691 (S.D.Ohio 2008); ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915, 920 (6th Cir.2003). 12. In the Testimonial Authorization contract, Simmons explicitly released Defendants from any liability resul......
  • Copperhead Agric. Prods. v. KB AG Corp.
    • United States
    • U.S. District Court — District of South Dakota
    • September 24, 2019
    ...approval of the product or service." Stayart v. Yahoo! Inc., 651 F.Supp.2d 873, 880 (E.D. Wis. 2009) (citing ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 025-26 (6th Cir. 2003)); see also Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204 (3d Cir. 1979). The Eight......
  • Request a trial to view additional results
4 firm's commentaries
  • Cops Sue Afroman Alleging "Lemon Pound Cake" Violates Their Right Of Publicity
    • United States
    • Mondaq United States
    • April 13, 2023
    ...130 Yale L. Journal 86 (2020). Will the court be persuaded that the Sixth Circuit interpreted Ohio law correctly in ETW Corp. v. Jireh, 332 F.3d 915 (6th Cir. 2003) (acknowledging different approaches taken by the Second Circuit, Tenth Circuit and California Supreme Court and holding that F......
  • Cops Sue Afroman Alleging "Lemon Pound Cake" Violates Their Right Of Publicity
    • United States
    • Mondaq United States
    • April 20, 2023
    ...130 Yale L. Journal 86 (2020). Will the court be persuaded that the Sixth Circuit interpreted Ohio law correctly in ETW Corp. v. Jireh, 332 F.3d 915 (6th Cir. 2003) (acknowledging different approaches taken by the Second Circuit, Tenth Circuit and California Supreme Court and holding that F......
  • Ninth Circuit Fumbles The Ball In Videogame Likeness Cases
    • United States
    • Mondaq United States
    • September 20, 2013
    ...federal equivalent of the right of publicity'", taken from the Tiger Woods right of publicity case, ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915, 924 (6th Cir. [1] A longer version of this article was recently published by Bloomberg BNA. The content of this article is intended to provi......
  • AI And The Right Of Publicity: A Patchwork Of State Laws The Only Guidance, For Now
    • United States
    • Mondaq United States
    • January 24, 2024
    ...The Federalism Case Against A Federal Right to Publicity, 2011 Den. U. Sports & Ent. L.J. 95 (2011) 17. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 931 (6th Cir. 18. Hart v. Elec. Arts, Inc., 717 F.3d 141, 163 (3d Cir. 2013). 19. See Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989). 20. 59......
18 books & journal articles
  • The First Amendment and the Right(s) of Publicity.
    • United States
    • October 1, 2020
    ...in the context of a drawing of comedians sold in multiple lithographed copies and on t-shirts), with ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 93638 (6th Cir. 2003) (allowing a First Amendment defense in the context of prints of a painting of a famous golfer sold in multiple (16.) Comp......
  • From book covers to domain names: searching for the true meaning of the Cliffs Notes temporal test for parody.
    • United States
    • The Journal of High Technology Law Vol. 7 No. 1, January 2007
    • January 1, 2007
    ...MCCARTHY, supra note 9, [section] 31:144. (51.) Dallas Cowboys Cheerleaders, 604 F.2d at 206. (52.) E.g., ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 926-28 (6th Cir. 2003); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901-02 (9th Cir. 2002); Westchester Media v. PRL USA Holdings, In......
  • Federal Law of Unfair Competition
    • United States
    • ABA Archive Editions Library Business Torts and Unfair Competition Handbook. Second Edition Business Tort Law
    • June 23, 2006
    ..., e.g. , KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608-09 (9th Cir. 2005); ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 950 (6th Cir. 2003); EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66 (2d Cir. 2000). 161. RESTATEMENT, supr......
  • An Interview with Kent L. Richland
    • United States
    • ABA General Library Landslide No. 10-5, May 2018
    • May 1, 2018
    ...9. Samuel D. Warren & Louis D. Brandeis, The Right to Privacy , 4 Harv. L. Rev. 193 (1890); see also ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 928 (6th Cir. 2003) (“The right of publicity is, somewhat paradoxically, an outgrowth of the right of privacy.”). 10. Warren & Brandeis, supra no......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT