A Tale of Two Cases: Right of Publicity versus the First Amendment

Article excerpt

There has long been a dispute about the extent to which a celebrity's likeness can be used by an artist for profit without providing compensation to the celebrity. The use of such likeness (even after death) has been litigated in several cases (1) and the issue has been raised anew in a recent case, ETW Corp. v. Jireh Publishing, Inc., (2) that involved the use of the image of golfer Tiger Woods, the first African-Asian-American to win the Masters.

The case began in April 1998 when Rick Rush, who has spent twenty-five years drawing athletes, created a limited edition print called "Masters of Augusta" with 250 serigraphs priced at $700.00 and 5000 lithographs which sold for $15.00 apiece. The print was published by Jireh Publishing, Inc. of Tuscaloosa, Alabama, a concern operated by Rush's brother. (3)

Although the print earned modest profits, none were shared with Woods, hence the lawsuit, which has implications beyond an artist sharing profits with a young golfer. The suit has prompted the intervention of celebrity and media heavyweights many of whom filed amicus curiae briefs.

Among those lining up on Woods's side are the estates of Frank Sinatra, Elvis Presley, Jimi Hendrix, Gene Autry, and fellow golfer Bobby Jones. Also in Woods's corner are the National Football League, the Major League Baseball Players Association, and the Screen Actors Guild, all of whom have constituents who are interested in being compensated for the use of their likeness. (4)

Supporting Rush and Jireh Publishing are such major media companies as Time Inc., The New York Times Company, as well as the Newspaper Association of America, which represents over 2,000 newspapers in the United States and Canada. Seventy-three law professors, the Reporters' Committee on Freedom of the Press, the Society of Professional Journalists, the American Society of Media Photographers, and Volunteer Lawyers for the Arts also supported the artist. (5)

Both sides argued over the boundary between an artist's right to self expression under the First Amendment and the celebrity's right to control his/her name and likeness under the common law right of publicity and trademark statutes? (6)

Right of publicity laws in many states permits damages if a celebrity's name, picture or likeness is used for profit without consent. Some states, including California, extend the right to the celebrity's heirs. (7)

THE TIGER WOODS CASE

ETW Corp, which stands for Eldrick "Tiger" Woods, brought a lawsuit in U.S. District Court alleging trademark infringement as the exclusive licensing agent for the illustrious golfer who has won numerous golf tournaments as well as many other accolades. ETW has filed many applications with the U.S. Patent and Trademark Office for the mark "Tiger Woods" for art prints, calendars, mounted and unmounted photographs, notebooks, pencils, pens, posters, and trading cards. (8) ETW argued trademark infringement, dilution, unfair competition and false advertising under the Lanham Act and Ohio statutes as well as Ohio common law violations of trademark and right of publicity. (9)

Despite ETW's argument that the print infringed on its trademark of the words "Tiger Woods" and that Rush's print depicted the golfer in three separate poses, (10) the District Court found that Rush's print did not infringe on Woods' s trademark right for various reasons. The Court pointed out that the words "Tiger Woods" do not appear on the picture but in a narrative insert which identifies Woods "displaying that awesome swing and flanked by his caddie." (11)

ETW pointed out that while there is a strong public recognition of the golfer the Court decided that the print did not use Woods's image as a trademark.

The Court relied on Pirone v. Macmillan, (12) a case in which Babe Ruth's daughters had registered the words "Babe Ruth" as a trademark for paper articles including playing cards, writing paper, and envelopes. …