Re: Tiger Woods Suit

On Fri, Feb 19, 1999, Tyler Ochoa <tochoa[_at_]law.whittier.edu> wrote:
>
> On 02/18/99, John Noble <jnoble[_at_]dgsys.com> wrote:
> >
> > On 2/17/99, Patrick Begos <begos[_at_]ibm.net> wrote:
> > >
> > > The NY Times reported yesterday that Tiger Woods' management
> > > company (run by his father), has sued an artist who painted a
> > > picture (and then printed copies) of Tiger Woods' victory at
> > > Augusta. Woods is claiming trademark infringement and violation
> > > of his right to publicity. Apparently his counsel is being very
> > > heavy-handed, among other things, demanding the names of 6,000
> > > people to whom the prints were sold, and claiming that they will
> > > depose each one (at ruinous expense to defendant).
> >
> > Let's see if I understand. Tiger is going to offend 6000 of his
> > biggest fans by serving them subpoenas to appear for deposition, and
> > pay his lawyers to fly around to a couple hundred different federal
> > districts at say $2,000 per day to ask them if in fact they were
> > confused about the source of this use of his image. If I were the
> > painter's lawyer I would not only *not* object to turning over the
> > names of the buyers, I'd wrap it up with a bow on it. I would attend
> > exactly one of these depositions (just for my own amusement). Then,
> > when they were done spending half a million dollars, I'd file the
> > motion to dismiss for failure to state a claim -- cost to the client
> > $5,000. Tiger's getting taken by his lawyers.
>
> Don't count on it. Tiger's lawyers are very likely to elicit some
> testimony that the fans WERE confused about whether Tiger had
> authorized the prints in question; in which case his complaint will
> almost certainly survive the motion to dismiss. I guarantee that no
> one will get out of this case for $5000.
>
> > > It's an interesting intersection between a celebrity's rights in
> > > his name and image, and an artist's first amendment rights to
> > > paint whatever he wants. In any event, regardless of the merits,
> > > it appears that Woods is engaging in scorched-earth tactics to
> > > prevent anyone from painting his picture in the future without
> > > his permission.
> >
> > It's an interesting question, but I gotta think the First Amendment
> > still trumps the Lanham Act.
>
> Again, don't count on it. My impression is that the First Amendment
> is usually held NOT to bar an action based on consumer confusion.
> Certainly courts are in agreement that confusing consumers isn't
> protected speech. And the First Amendment didn't help the defendants
> in the Zacchini (right of publicity) case. Courts seem to find that
> the urge to compensate celebrities is very strong.
>
> I think that this activity probably SHOULD be protected by the First
> Amendment as a normative matter; but that's a long way from concluding
> that it will be.

I think we're conflating different legal theories: the essence of federal trademark law is likelihood of consumer confusion, whereas the right of publicity (a state law creation) concerns the unauthorized use of a person's name or likeness.  

Under trademark law, Tiger Woods must establish that (1) he has a protectible trademark in his likeness -- which means demonstrating that he has been using his likeness in commerce as a source identifier; and (2) the public is confused as to the source, sponsorship or authorization of the painter's prints of Tiger. IMO, Tiger's likeness is not (yet) an identifier for a single source of particular goods or services. As to confusion, it is possible that consumers may believe (correctly) that the painter cannot sell prints of the painting without Tiger's authorization, and that permission was obtained. (IMO, this is unlikely).

But even in the absence of confusion, Tiger is likely to win his right of publicity claim: the depositions will center more on whether the purchasers could readily identify Tiger in the prints, and less on whether they were confused as to the source of the prints. Nor will the First Amendment defense apply, since as Prof. Ochoa noted, it is given short shrift in right of publicity cases.

Greg Ikonen
<gikonen[_at_]venlaw.com> Received on Mon Feb 22 1999 - 20:10:57 GMT