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Artist wins right to distribute work bearing golfer’s image

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From the Summer 2003 issue of The News Media & The Law, page 13.

From the Summer 2003 issue of The News Media & The Law, page 13.

By Wendy Tannenbaum

Professor Diane Zimmerman, one of the nation’s experts on free expression and intellectual property law, had concerns when, after nearly three years pending in a federal appeals court, a case she and others considered crucial in the area of First Amendment publicity rights had not been decided.

“I understand the court is really short-handed,” Zimmerman said. “But when it took so long I was beginning to get worried.”

Zimmerman led a group of 73 law professors who submitted a friend-of-the-court brief in the case, ETW Corp. v. Jireh Publishing, Inc., which pitted golf champion Tiger Woods against self-described “sports artist” Rick Rush before the U.S. Court of Appeals in Cincinnati (6th Cir.). But they were not the only ones waiting — nine friend-of-the court briefs were filed in the case by 31 organizations ranging from media groups to celebrities’ estates.

While they waited, a different panel of the same court issued a restrictive free-speech decision in a case involving civil rights pioneer Rosa Parks, which did little to ease the fear that perhaps the long-awaited ETW Corp. ruling would favor Woods.

Nevertheless, free-speech advocates were rewarded for their long wait when, on June 20, the appeals court held that Rush had a First Amendment right to distribute images of Woods’ 1997 Masters tournament win.

“A piece of art that portrays a historic sporting event communicates and celebrates the value our culture attaches to such events. It would be ironic indeed if the presence of the image of the victorious athlete would deny the work First Amendment protection,” the court stated in the ruling.

The case arose after Woods’ first win at the Masters. Rush, who has painted Michael Jordan, Mark McGuire and other sports greats, produced a limited-edition lithograph that depicted three images of Woods, surrounded by the faces of previous Masters winners.

ETW Corporation, Woods’ licensing agent, filed suit against Rush’s publisher in 1998, claiming the artwork violated Woods’ right to control the publicity of his name and likeness. The suit also alleged trademark violations.

In 2000, Rush obtained a dismissal from U.S. District Court Judge Patricia A. Gaughan, who said the print was protected as a creative work.

The Sixth Circuit’s June decision, supported by two of the three judges on the appellate panel, upheld that ruling.

Zimmerman, pleased with the appellate court’s decision, said Woods’ suit is an example of recent efforts by celebrities to “expand the reach” of their rights to control and profit from their images. The brief she authored had argued that “overly protectionistic and unduly broad property claims can thwart the creation of new works and damage important First Amendment values.”

Woods follows other celebrities, such as Dustin Hoffman, Cher, and “Cheers” stars George Wendt and John Ratzenberger, all of whom have sued those who used their images.

In 2001, Hoffman lost an appeal over a magazine fashion spread that featured a computer-altered photograph of Hoffman as his movie character “Tootsie.” The U.S. Court of Appeals in San Francisco (9th Cir.) said the photograph was protected, noncommercial speech and reversed a $3 million verdict against the magazine.

“What we’re seeing is an increasing number of these claims that are trying to push the envelope and turn celebrity images into cash,” Zimmerman said.

Famous people generally have a right to sue for commercial uses of their celebrity, such as unauthorized advertisements or endorsements. But when a celebrity’s name or image is used in the context of a noncommercial, creative work, such expression is protected by the First Amendment.

The ETW Corp. decision represents an effort by the court to establish limits on what celebrities can claim, Zimmerman said.

Several members of the news media, including The Reporters Committee for Freedom of the Press, submitted friend-of-the-court briefs in the case supporting Rush in the ETW Corp. case.

“The scope of the right of publicity must be properly limited to ensure that expressive activity protected by the First Amendment is not curtailed in the name of giving celebrities complete control over any uses of their names and reproductions of their likenesses,” the Reporters Committee argued. “The First Amendment should not be viewed as a narrow exception to the right of publicity. Rather, the freedoms secured by the First Amendment are presumed to apply to protect expressive activity, and the right of publicity is a narrow exception to such freedoms.”

George Freeman, assistant general counsel for The New York Times, said his news organization saw the case as illustrative of an oft-seen conflict between the First Amendment and individual property rights.

“I believe that sometimes the law is much too narrow and doesn’t accord the First Amendment enough consideration in those conflicts,” Freeman said. “And since this was a good example of that very tension, we thought it was an important case to weigh in on.”

The Times‘ friend-of-the-court brief in the case argued that “[o]ur nation’s commitment to unfettered free speech is surely expansive enough to allow commentary on and celebration of this American hero even at some marginal cost to his ability to exploit his fame for money.”

A number of groups filed briefs supporting Woods, including the professional baseball and football players associations, the Screen Actors Guild, and the estates of Elvis Presley and Jimi Hendrix, all arguing that celebrities have a broad right of publicity that should allow them to control the use of their images.

Freeman, like other media advocates, was happy with the Sixth Circuit’s decision.

“I thought it was quite strong in terms of the practical realities that a celebrity lives in the real world and can’t on the one hand just make oodles of money being a celebrity but on the other hand close off everything about him to the public unless the public pays for it,” he said. “It seems to me [the decision] does make the point that with the celebrity comes some degree of public dissemination about particularly artistic or historic facts or portrayals of the celebrity. And they ought not own that.”

Yet the case does not completely resolve the tension between celebrities’ rights and the First Amendment.

“It certainly isn’t going to end the argument that the right of publicity goes beyond commercial advertisement,” said Zimmerman. The Supreme Court has yet to speak on the topic, and loopholes in the law still exist.

One unresolved question for the news media is whether photographs taken at news events can be sold as artwork or memorabilia. It is unclear under current case law, including the ETW Corp. case, whether such photographs would be considered commercial or expressive work.

But the ETW Corp. decision adds to an arsenal of cases in favor of free expression and “ups the ante” for people making right of publicity claims, Zimmerman said.

That arsenal has grown in recent years, particularly in California, where many celebrities reside.

In Comedy III Productions v. Gary Saderup Inc., decided in April 2001, the California Supreme Court found that a work that has “transformative” elements — presenting more than just an image or name of a celebrity — is protected by the First Amendment. The court said t-shirts bearing an image of the Three Stooges that was almost identical to a popular photograph was not transformative, and so use of their images was not allowed. Nevertheless, the case set important parameters for determining when an image is protected by the First Amendment.

On June 2, 2003, the same California court rejected a claim brought by two musicians who were caricatured in comic books published by DC Comics. The court said the entertainers, brothers Johnny and Edgar Winter, could not claim, under the Saderup precedent, that publication of the “villainous half-worm, half-human” characters in the drawings violated their publicity rights. (Winter v. DC Comics)

Meanwhile, celebrities continue to fight for control over their public images.

Woods’ attorneys have notified the Sixth Circuit that they plan to petition for a rehearing of the case.

And other cases are pending.

On May 12, before ETW Corp. was decided, a different panel of judges from the same Sixth Circuit revived a lawsuit brought by Parks, famous for not giving up her bus seat and prompting the bus boycott that fueled the civil rights movement.

Parks, represented by attorney Johnnie L. Cochran Jr., contends that the rap group OutKast improperly used her name as the title of one of their songs. (Parks v. LaFace Records)

The song won the group a Grammy award, and although its lyrics do not refer to Parks by name, her famous civil rights stance is referenced in the line “everybody move to the back of the bus.”

“We believe that reasonable people could find that the use

of Rosa Parks’ name as the title to this song was not justified as being metaphorical or symbolic of anything for which Rosa Parks is famous,” the court wrote. “To the contrary, reasonable people could find that the name was appropriated solely because of the vastly increased marketing power of a product bearing the name of a national heroine of the civil rights movement.”

The rappers have petitioned the full court to rehear the case.

In early July, celebrity Spike Lee settled a suit he had filed against Viacom, Inc. over the naming of the media company’s new male-oriented cable television network. The filmmaker, whose real name is Shelton Jackson Lee, claimed the name “Spike TV” exploited his public persona.

A New York state judge granted a preliminary injunction, prohibiting the company from promoting “Spike TV” while the suit was pending. Following the settlement, that injunction was lifted. Further details of the settlement were not disclosed.

Although the Spike Lee case was based mainly on claims of trademark violation, and not right of publicity, the suit shows that celebrities continue to try novel ways of exerting control over their images.

The appeals court’s decision in ETW Corp. case was good for free expression, according to Zimmerman, but it may take a ruling from the U.S. Supreme Court to “put to rest” the continuing tension between celebrities’ rights and First Amendment values.