Etw Corporation v. Jireh Publishing, Inc.

332 F.3d 915, 2003 WL 21414521

• Court: Court of Appeals for the Sixth Circuit
• Decided: September 8, 2003
• Docket: 00-3584
• Status: Published

Opinions

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.”

Defendanh-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 22³// x 30" serigraphs and five thousand 9" x 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 , 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 nonmov-ing 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 description of the print are purely descriptive and there is nothing to indicate that they were used other than in good faith. The prints, the envelopes which contain them, and the narrative materials which accompany them clearly identify Rush as the source of the print.³ Woods is mentioned only to describe the content of the print.

The district court properly granted summary judgment on ETW’s claim for violation of its registered mark, “Tiger Woods,” on the grounds that the claim was barred by the fair use defense as a matter of law.⁴

III. Trademark Claims Under 15 U.S.C. § 1125(a) Based on the Unauthorized Use of the Likeness of Tiger Woods

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides “a right of action to persons engaged in interstate and foreign commerce, against deceptive and misleading use of words, names, symbols, or devices, or any combination thereof, which have been adopted by a ... merchant to identify his goods and distinguish them from those manufactured by others[.]” Federal-Mogul-Bower Bearings, Inc. v. Azoff, 313 F.2d 405, 408 (6th Cir.1963); see also Frisch’s Restaurant, Inc. v. Shoney’s, Inc., 759 F.2d 1261, 1264 (6th Cir.1985); Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 647 (6th Cir.), cert. denied, 459 U.S. 916, 103 S.Ct. 231, 74 L.Ed.2d 182 (1982).

ETW has registered Woods’s name as a trademark, but it has not registered any image or likeness of Woods. Nevertheless, ETW claims to have trademark rights in Woods’s image and likeness. Section 43(a) of the Lanham Act provides a federal cause of action for infringement of an unregistered trademark which affords such marks essentially the same protection as those that are registered. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992)(“[I]t is common ground that § 43(a) protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a).”).

The Lanham Act defines a trademark as including “any word, name, symbol, or device, or any combination thereof’ 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. The essence of a trademark is a designation in the form of a distinguishing name, symbol or device which is used to identify a person’s goods and distinguish them from the goods of another. See Taco Cabana, 505 U.S. at 768, 112 S.Ct. 2753 (“In order to be [protected], a mark must be capable of distinguishing the [owner’s] goods from those of others”). Not every word, name, symbol or device qualifies as a protectable mark; rather, it must be proven that it performs the job of identification, i.e., to identify one source and to distinguish it from other sources. If it does not do this, then it is not protectable as a trademark. See J. Thomas MCCARTHY, MCCARTHY On TRADEMARKS AND UNFAIR Competition, § 3:1 (2002).

“[A] trademark, unlike a copyright or patent, is not a ‘right in gross’ that enables a holder to enjoin all reproductions.” Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 35 (1st Cir.1989)(citing Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1374 (Fed.Cir.1983)).

Here, ETW claims protection under the Lanham Act for any and all images of Tiger Woods.⁵ This is an untenable claim. ETW asks us, in effect, to constitute Woods himself as a walking, talking trademark. Images and likenesses of Woods are not protectable as a trademark because they do not perform the trademark function of designation. They do not distinguish and identify the source of goods. They cannot function as a trademark because there are undoubtedly thousands of images and likenesses of Woods taken by countless photographers, and drawn, sketched, or painted by numerous artists, which have been published in many forms of media, and sold and distributed throughout the world. No reasonable person could believe that merely because these photographs or paintings contain Woods’s likeness or image, they all originated with Woods.

We hold that, as a general rule, a person’s image or likeness cannot function as a trademark. Our conclusion is supported by the decisions of other courts which have addressed this issue. In Pirone v. MacMillan, Inc., 894 F.2d 579 (2nd Cir.1990), the Second Circuit rejected a trademark claim asserted by the daughters of baseball legend Babe Ruth. The plaintiffs objected to the use of Ruth’s likeness in three photographs which appeared in a calendar published by the defendant. The court rejected their claim, holding that “a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently ‘distinctive’ in the trademark sense of tending to indicate origin.” Id. at 583. The court noted that Ruth “was one of the most photographed men of his generation, a larger than life hero to millions and an historical figure[J” Id. The Second Circuit Court concluded that a consumer could not reasonably believe that Ruth sponsored the calendar:

[A]n ordinarily prudent purchaser would have no difficulty discerning that these photos are merely the subject matter of the calendar and do not in any way indicate sponsorship. No reasonable jury could find a likelihood of confusion.

Id. at 585. The court observed that “[u]n-der some circumstances, a photograph of a person may be a valid trademark — if, for example, a particular photograph was consistently used on specific goods.” Id. at 583. The court rejected plaintiffs’ assertion of trademark rights in every photograph of Ruth.

In Estate of Presley v. Russen, 513 F.Supp. 1339, 1363-1364 (D.N.J.1981), the court rejected a claim by the estate of Elvis Presley that his image and likeness was a valid mark. The court did find, however, as suggested by the Second Circuit in Pirone, that one particular image of Presley had been consistently used in the advertising and sale of Elvis Presley entertainment services to identify those services and that the image could likely be found to function as a mark.

In Rock and Roll Hall of Fame, the plaintiff asserted trademark rights in the design of the building which houses the Rock and Roll Hall of Fame in Cleveland, Ohio, and claimed that defendant’s poster featuring a photograph of the museum against a colorful sunset was a violation of its trademark rights. 134 F.3d at 751. This court, with one judge dissenting, reversed the judgment of the district court which granted plaintiffs request for a preliminary injunction. After reviewing the evidence, the majority concluded:

In reviewing the Museum’s disparate uses of several different perspectives of its building design, we cannot conclude that they create a consistent and distinct commercial impression as an indicator of a single source of origin or sponsorship. To be more specific, we cannot conclude on this record that it is likely that the Museum has established a valid trademark in every photograph which, like Gentile’s, prominently displays the front of the Museum’s building.

Id. at 755. In reaching this conclusion, this court approved and followed Pirone and Estate of Presley.

Here, ETW does not claim that a particular photograph of Woods has been consistently used on specific goods:⁶ Instead, ETW’s claim is identical to that of the plaintiffs in Pirone, a sweeping claim to trademark rights in every photograph and image of Woods. Woods, like Ruth, is one of the most photographed sports figures of his generation, but this alone does not suffice to create a trademark claim.

The district court properly granted summary judgment on ETW’s claim of trademark rights in all images and likenesses of Tiger Woods.⁷

IV. Lanham Act Unfair Competition and False Endorsement Claims, Ohio Right to Privacy Claims, and the First Amendment Defense

A. Introduction

ETW’s claims under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), include claims of unfair competition and false advertising in the nature of false endorsement. ETW has also asserted a claim for infringement of the right of publicity under Ohio law. The elements of a Lanham Act false endorsement claim are similar to the elements of a right of publicity claim under Ohio law. In fact, one legal scholar has said that a Lanham Act false endorsement claim is the federal equivalent of the right of publicity. See Bruce P. Keller, The Right Of Publicity: Past, Present, and Future, 1207 PLI Corp. Law and Prac. Handbook, 159, 170 (October 2000). Therefore, cases which address both these types of claims should be instructive in determining whether Jireh is entitled to summary judgment on those claims.

In addition, Jireh has raised the First Amendment as a defense to all of ETW’s claims, arguing that Rush’s use of Woods’s image in his painting is protected expression. Cases involving Lanham Act false endorsement claims and state law claims of the right of publicity have considered the impact of the First Amendment on those types of claims. We will begin with a discussion of the scope of First Amendment rights in the context of works of art, and will then proceed to examine how First Amendment rights have been balanced against intellectual property rights in cases involving the Lanham Act and state law rights of publicity. Finally, we will apply the relevant legal principles to the facts of this case.

B. First Amendment Defense

The protection of the First Amendment is not limited to written or spoken words, but includes other mediums of expression, including music, pictures, films, photographs, paintings, drawings, engravings, prints, and sculptures. See Hurley v. Irish-American Gay, Lesbian and Bisexual Group of Boston, 515 U.S. 557, 569, 115 S.Ct. 2338, 132 L.Ed.2d 487 (1995)(“[T]he Constitution looks beyond written or spoken words as mediums of expression.”); Ward v. Rock Against Racism, 491 U.S. 781, 790, 109 S.Ct. 2746, 105 L.Ed.2d 661 (1989) (“Music, as a form of expression and communication, is protected under the First Amendment.”); Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 578, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977)(“There is no doubt that entertainment, as well as news, enjoys First Amendment protection.”); Kaplan v. California, 413 U.S. 115, 119-120, 93 S.Ct. 2680, 37 L.Ed.2d 492 (1973)(“[P]ictures, films, paintings, drawings, and engravings ... have First Amendment protection!.]”); Bery v. City of New York, 97 F.3d 689, 695 (2nd Cir.1996)(“[V]isual art is as wide ranging in its depiction of ideas, concepts and emotions as any book, treatise, pamphlet or other writing, and is similarly entitled to full First Amendment protection.”).

Speech is protected even though it is carried in a form that is sold for profit. See Smith v. California, 361 U.S. 147, 150, 80 S.Ct. 215, 4 L.Ed.2d 205 (1959) (“It is of course no matter that the dissemination [of books and other forms of the printed word] takes place under commercial auspices.”); see also Buckley v. Valeo, 424 U.S. 1, 96 S.Ct. 612, 46 L.Ed.2d 659 (1976)(paid advertisement); Time, Inc. v. Hill, 385 U.S. 374, 397, 87 S.Ct. 534, 17 L.Ed.2d 456 (1967) (“ ‘That books, newspapers, and magazines are published and sold for profit does not prevent them from being a form of expression whose liberty is safeguarded by the First Amendment.’”)(quoting Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 501-502, 72 S.Ct. 777, 96 L.Ed. 1098) (1952); New York Times Co. v. Sullivan, 376 U.S. 254, 84 S.Ct. 710, 11 L.Ed.2d 686 (1964) (solicitation to pay or contribute money). The fact that expressive materials are sold does not diminish the degree of protection to which they are entitled under the First Amendment. City of Lakewood v. Plain Dealer Publ’g Co., 486 U.S. 750, 756 n. 5, 108 S.Ct. 2138,100 L.Ed.2d 771 (1988).

Publishers disseminating the work of others who create expressive materials also come wholly within the protective shield of the First Amendment. See, e.g., Simon & Schuster, Inc. v. Members of New York State Crime Victims Bd., 502 U.S. 105, 116, 112 S.Ct. 501, 116 L.Ed.2d 476 (1991)(both the author and the publishing house are “speakers” for purposes of the First Amendment); Sullivan, 376 U.S. at 286-88, 84 S.Ct. 710 (finding New York Times fully protected by the First Amendment for publishing a paid editorial advertisement). See also First Nat’l Bank of Boston v. Bellotti 435 U.S. 765, 782, 98 S.Ct. 1407, 55 L.Ed.2d 707 (1978).⁸

Even pure commercial speech is entitled to significant First Amendment protection. See City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 423, 113 S.Ct. 1505, 123 L.Ed.2d 99 (1993); Bd. of Trustees of the State University of New York v. Fox, 492 U.S. 469, 473-74, 109 S.Ct. 3028, 106 L.Ed.2d 388 (1989); Central Hudson Gas and Electric Corp. v. Pub. Serv. Comm’n of New York, 447 U.S. 557, 100 S.Ct. 2343, 65 L.Ed.2d 341 (1980); Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 96 S.Ct. 1817, 48 L.Ed.2d 346 (1976). Commercial speech is “speech which does ‘no more than propose a commercial transaction[.]’ ” Virginia State Bd. of Pharmacy, 425 U.S. at 762, 96 S.Ct. 1817 (quoting Pittsburgh Press Co. v. Pittsburgh Comm’n on Human Relations, 413 U.S. 376, 385, 93 S.Ct. 2553, 37 L.Ed.2d 669 (1973)); see also Central Hudson Gas and Electric Corp., 447 U.S. at 566, 100 S.Ct. 2343 (articulating a four part test to bring commercial speech within the protection of the First Amendment).

Rush’s prints are not commercial speech. They do not propose a commercial transaction. Accordingly, they are entitled to the full protection of the First Amendment. Thus, we are called upon to decide whether Woods’s intellectual property rights must yield to Rush’s First Amendment rights.

C. Lanham Act False Endorsement Claim

The district court did not specifically discuss ETW’s false endorsement claim in granting summary judgment to Jireh. The gist of the false endorsement claim is that the presence of Woods’s image in Jireh’s print implies that he has endorsed Jireh’s product. See MCCARTHY, The Rights Of Publicity And Privacy, § 5:30 (2d ed.2000)(hereinafter “MCCARTHY On PUBLICITY And Privaoy”). Courts have recognized false endorsement claims under § 43(a) of the Lanham Act where a celebrity’s image or persona is used in association with a product so as to imply that the celebrity endorses the product.

False endorsement occurs when a celebrity’s identity is connected with a product or service in such a way that consumers are likely to be misled about the celebrity’s sponsorship or approval of the product or service. See, e.g., Wendt v. Host Int’l, Inc., 125 F.3d 806 (9th Cir.1997)(animatronic robotic figures resembling actors in Cheers television program used to advertise chain of airport bars modeled on Cheers set); AbduL-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir.l996)(athlete’s name and accomplishments used in television advertisement for Oldsmobile automobiles); Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir.1992)(imitation of singer’s unique voice used in radio commercial advertising Dori-to Chips); White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir.1992) (female robot bearing resemblance to television celebrity, Vanna White, turning letters in what appeared to be the “Wheel of Fortune” game show set in television commercial advertising electronics products); Allen v. National Video, Inc., 610 F.Supp. 612 (S.D.N.Y.1985)(photograph of Woody Allen look-alike in national advertising campaign for video club).

In Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 626 (6th Cir.2000), we noted:

A false designation of origin claim brought by an entertainer under § 43(a) of the Lanham Act in a case such as this is equivalent to a false association or endorsement claim, see Waits, 978 F.2d at 1110, and the “mark” at issue is the plaintiffs identity. See White, 971 F.2d at 1399-1400.

Id. at 626.

In the ordinary false endorsement claim, the controlling issue is likelihood of confusion. This court has formulated an eight-factor test to determine the likelihood of confusion. See Landham, 227 F.3d at 626; Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir.1988). However, for the reasons discussed below, we conclude that where the defendant has articulated a colorable claim that the use of a celebrity’s identity is protected by the First Amendment, the likelihood of confusion test is not appropriate because it fails to adequately consider the interests protected by the First Amendment.

In Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir.1989), Ginger Rogers, the surviving member of one of the most famous duos in show business history, brought suit against the producers and distributors of a movie entitled Ginger and Fred. The film was not about Ginger Rogers and Fred Astaire, but about two fictional Italian cabaret performers who imitated Rogers and Astaire and became known in Italy as “Ginger and Fred.” Rogers asserted claims under § 43(a) of the Lanham Act. The Second Circuit began its analysis by noting that “[mjovies, plays, books, and songs are all indisputably works of artistic expression and deserve protection.” Id. at 997. The court concluded that “[b]ecause overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict.” Id. at 998.

The Second Circuit court rejected Rogers’ argument that First Amendment concerns are implicated only where the author has no alternative means of expression. Her argument was based on Lloyd Corp. v. Tanner, 407 U.S. 551, 566-67, 92 S.Ct. 2219, 33 L.Ed.2d 131 (1972), where the Supreme Court held that respondents had no First Amendment right to distribute handbills in the interior mall area of petitioner’s privately-owned shopping center, noting that respondents had adequate alternative means of communication. Noting that this test had been applied by several courts in the trademark context, the Rogers court rejected the “no alternative means” test because it “does not sufficiently accommodate the public’s interest in free expression^]” 875 F.2d at 999. The court concluded:

We believe that in general the Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

Id.

Although Rogers produced some evidence of consumer confusion, the court found:

The survey evidence, even if its validity is assumed, indicates at most that some members of the public would draw the incorrect inference that Rogers had some involvement with the film. But that risk of misunderstanding, not engendered by any overt claim in the title, is so outweighed by the interests in artistic expression as to preclude application of the Lanham Act.

Id. at 1001. The Second Circuit affirmed the district court’s decision granting summary judgment to the defendants.⁹

In Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d 490, 495 (2nd Cir.1989), the Second Circuit held that the Rogers test is not limited to literary titles but is generally applicable to Lanham Act claims against works of artistic expression. Like Rogers, ETW argues that the district court should have considered whether alternative means existed for Jireh to express itself without violating Woods’s intellectual property rights.¹⁰ We agree with the Second Circuit’s conclusion that the “no alternative means” test does not sufficiently accommodate the public’s interest in free expression.

In Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.2002), the Ninth Circuit adopted and applied the Rogers test where the plaintiff asserted Lanham Act claims against the producer of a song entitled “Barbie Girl” which evoked the image of plaintiffs famous doll. The court held that in the case of expressive speech, its traditional likelihood of confusion test “fails to account for the full weight of the public’s interest in free expression.” 296 F.3d at 900. After expressly adopting the Rogers standard as its own, the court set forth the following analysis:

Applying Rogers to our case, we conclude that MCA’s use of Barbie is not an infringement of Mattel’s trademark. Under the first prong of Rogers, the use of Barbie in the song title clearly is relevant to the underlying work, namely, the song itself. As noted, the song is about Barbie and the values Aqua claims she represents. The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. The only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity. We therefore agree with the district court that MCA was entitled to summary judgment on this ground.

296 F.3d at 902. Thus, both the Second Circuit and the Ninth Circuit have held that in Lanham Act false endorsement cases involving artistic expression, the likelihood of confusion test does not give sufficient weight to the public interest in free expression. Both courts rejected the “no alternative means” test. They held instead that the Lanham Act should be applied to artistic works only where the public interest in avoiding confusion outweighs the public interest in free expression. They agreed that the public interest in free expression should prevail if the use of the celebrity’s image has artistic relevance, unless it is used in such a way that it explicitly misleads as to the source of the work.¹¹

In Parks v. LaFace Records, 329 F.3d 437 (6th Cir.2003), we joined the Second and Ninth Circuits in holding that the likelihood of confusion and “alternative means” tests do not give sufficient weight to the public interest in freedom of expression. In Parks, we adopted the Rogers test as the law of the Sixth Circuit:¹²

The application of Rogers in Mattel, as well as in cases decided in other circuits, persuades us that Rogers is the best test for balancing Defendants’ and the public’s interest in free expression under the First Amendment against Parks’ and the public’s interest in enforcement of the Lanham Act. We thus apply the Rogers test to the facts before us.

Id. at 451-52 (quoting Rogers, 875 F.2d at 999).

D. Right of Publicity Claim

ETW claims that Jireh’s publication and marketing of prints of Rush’s painting violates Woods’s right of publicity. The right of publicity is an intellectual property right of recent origin which has been defined as the inherent right of every human being to control the commercial use of his or her identity. See Mocaethy On Publicity And Pkivacy, § 1:3. The right of publicity is a creature of state law¹³ and its violation gives rise to a cause of action for the commercial tort of unfair competition. Id.

The right of publicity is, somewhat paradoxically, an outgrowth of the right of privacy. See MccaRthy On Publicity And PRIVACY, § 1:4. A cause of action for violation of the right was first recognized in Hadan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2nd Cir.1953), where the Second Circuit held that New York’s common law protected a baseball player’s right in the publicity value of his photograph, and in the process coined the phrase “right of publicity” as the name of this right.

The Ohio Supreme Court¹⁴ recognized the right of publicity in 1976 in Zacchini v. Scripps-Howard Broadcasting Co., 47 Ohio St.2d 224, 351 N.E.2d 454 (1976).¹⁵ In Zacchini, which involved the videotaping and subsequent rebroadcast on a television news program of plaintiffs human cannonball act, the Ohio Supreme Court held that Zacchini’s right of publicity was trumped by the First Amendment. On appeal, the Supreme Court of the United States reversed, holding that the First Amendment did not insulate defendant from liability for violating Zacchini’s state law right of publicity where defendant published the plaintiffs entire act. See Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977). Zacchini is the only United States Supreme Court decision on the right of publicity.

There are few Ohio decisions defining the contours of the right of publicity in the aftermath of Zacchini. In Vinci v. American Can Co., 9 Ohio St.3d 98, 459 N.E.2d 507 (1984), the Ohio Supreme Court merely reaffirmed its recognition of the right and devoted the remainder of its opinion to the issue of class action certification. Vin-ci was an Olympic gold medal weight lifter who brought a class action on behalf of himself and other Olympic athletes whose names and likenesses were used on a series of disposable drinking cups promoted by a partnership between the Minute Maid Corporation and the United States Olympic Committee. The Supreme Court of Ohio held that the action could be maintained as a class action. After remanding the case to the Cuyahoga County Court of Appeals, that court, with one judge dissenting, upheld the grant of summary judgment to the defendants, holding that “the mention of the athletes’ names within the context of accurate, historical information was incidental to the promotion of the Dixie Cups by the partnership” and that the “reference to the athletes and their accomplishments was purely informational.]” Vinci v. American Can Co., 69 Ohio App.3d 727, 729, 591 N.E.2d 793, 794 (1990).

In Bajpayee v. Rothermich, 53 Ohio App.2d 117, 372 N.E.2d 817 (1977), the Ohio Court of Appeals for Franklin County held that the plaintiffs right of publicity was violated where the defendant presented plaintiffs pharmacological research paper as his own before the American Society of Clinical Pharmacology and Therapeutics.

Finally, in Parma International, Inc. v. Bartos, 1990 WL 11716, No. 89CA004573, 1990 Ohio App. LEXIS 508 (Feb. 7, 1990), the Ohio Court of Appeals for Lorain County reversed a trial court’s grant of summary judgment for the defendant where the defendant had continued to use the plaintiffs name and likeness on the packaging of its product and in its advertising literature after the plaintiff ceased his employment with the defendant. The issue in Parma International was whether the plaintiff had consented to the continued use of his name and likeness.

When the Ohio Supreme Court recognized the right of publicity, it relied heavily on the Restatement (Second) Of Torts, § 652. See Zacchini, 47 Ohio St.2d at 230, 351 N.E.2d 454. The court quoted the entire text of § 652(C) of the Restatement, as well as comments a., b., c. and d. Id.

The Restatement originally treated the right of publicity as a branch of the right of privacy and included it in a chapter entitled “Invasion of Privacy.” In 1995, the American Law Institute transferred its exposition of the right of publicity to the RESTATEMENT (THIRB) Of UNFAIR COMPETITION, Chapter 4, § 46, in a chapter entitled “Appropriation of Trade Values.” The current version of the Restatement (Third) Of Unfair Competition defines the right of publicity as follows:

Appropriation of the Commercial Value of a Person’s Identity: The Right of Publicity

One who appropriates the commercial value of a person’s identity by using without consent the person’s name, likeness, or other indicia of identity for purposes of trade is subject to liability for the relief appropriate under the rules stated in §§ 48 and 49.

In § 46, Comment c, Rationale for Protection, the authors of the Restatement suggest that courts may justifiably be reluctant to adopt a broad construction of the right.

The rationales underlying recognition of a right of publicity are generally less compelling than those that justify rights in trademarks or trade secrets. The commercial value of a person’s identity often results from success in endeavors such as entertainment or sports that offer their own substantial rewards. Any additional incentive attributable to the right of publicity may have only marginal significance. In other cases the commercial value acquired by a person’s identity is largely fortuitous or otherwise unrelated to any investment made by the individual, thus diminishing the weight of the property and unjust enrichment rationales for protection. In addition, the public interest in avoiding false suggestions of endorsement or sponsorship can be pursued through the cause of action for deceptive marketing. Thus, courts may be properly reluctant to adopt a broad construction of the publicity right. See § 47.

In § 47, Comment c, the authors of the Restatement note, “The right of publicity as recognized by statute and common law is fundamentally constrained by the public and constitutional interest in freedom of expression.” In the same comment, the authors state that “[t]he use of a person’s identity primarily for the purpose of communicating information or expressing ideas is not generally actionable as a violation of the person’s right of publicity.” Various examples are given, including the use of the person’s name or likeness in news reporting in newspapers and magazines. The Restatement recognizes that this limitation on the right is not confined to news reporting but extends to use in “entertainment and other creative works, including both fiction and non-fiction.” Id. The authors list examples of protected uses of a celebrity’s identity, likeness or image, including unauthorized print or broadcast biographies and novels, plays or motion pictures. Id. According to the Restatement, such uses are not protected, however, if the name or likeness is used solely to attract attention to a work that is not related to the identified person, and the privilege may be lost if the work contains substantial falsifications. Id.

We believe the courts of Ohio would follow the principles of the Restatement in defining the limits of the right of publicity. The Ohio Supreme Court’s decision in Zac-chini suggests that Ohio is inclined to give substantial weight to the public interest in freedom of expression when balancing it against the personal and proprietary interests recognized by the right of publicity. This suggestion is reenforced by the decision in Vinci

This court first encountered the right of publicity in Memphis Development Foundation v. Factors Etc., Inc., 616 F.2d 956 (6th Cir.1980), where the issue presented was whether the heirs of Elvis Presley retained his right of publicity after his death. We concluded that they did not. We held that under Tennessee law, “[t]he famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality.” Id. at 957. Noting that the Tennessee courts had not addressed the issue, we decided the case “in the light of practical and policy considerations, the treatment of other similar rights in our legal system, the relative weight of the conflicting interests of the parties, and certain moral presuppositions concerning death, privacy, inheritability and economic opportunity.” Id. at 958.

In Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 881 (6th Cir.1983), a majority of this court, with Judge Kennedy dissenting, held that television comedian and talk show host Johnny Carson’s right of publicity was invaded when defendant used the phrase with which Carson was commonly introduced on his television program. In Carson, we held that “a celebrity has a protected pecuniary interest in the commercial exploitation of his identity.” Id. at 885.

In Landham, 227 F.3d at 625-26, this court held that Landham, a fringe actor who played supporting roles in several motion pictures, had failed to show a violation of his right of publicity when defendant marketed an action figure of a character he had played but which did not bear a personal resemblance to him. This court found that Landham had failed to show that his persona had significant value or that the toy invoked his persona as distinct from that of the fictional character he played.

There is an inherent tension between the right of publicity and the right of freedom of expression under the First Amendment. This tension becomes particularly acute when the person seeking to enforce the right is a famous actor, athlete, politician, or otherwise famous person whose exploits, activities, accomplishments, and personal life are subject to constant scrutiny and comment in the public media. In Memphis Development Foundation, 616 F.2d at 959, this court discussed the problems of judicial line drawing that would arise if it should recognize the inheritability of publicity rights, including the question “[a]t what point does the right collide with the right of free expression guaranteed by the First Amendment?” In Carson, after noting that the First Amendment protects commercial speech, Judge Kennedy opined in her dissent that “public policy requires that the public’s interest in free enterprise and free expression take precedence over any interest Johnny Carson may have in a phrase associated with his person.” Carson, 698 F.2d at 841. In Landham, we noted “the careful balance that courts have gradually constructed between the right of publicity and the First Amendment!)]” 227 F.3d at 626.

In a series of recent cases, other circuits have been called upon to establish the boundaries between the right of publicity and the First Amendment. In Rogers, the Second Circuit affirmed the district court’s grant of summary judgment on Rogers’ right of publicity claim, noting that commentators have “advocated limits on the right of publicity to accommodate First Amendment concerns.” 875 F.2d at 1004 n. 11. That court also cited three cases ¹⁶ in which state courts refused to extend the right of publicity to bar the use of a celebrity’s name in the title and text of a fictional or semi-fictional book or movie. Id. at 1004.

In White, television celebrity Vanna White, brought suit against Samsung Electronics, alleging that its television advertisement which featured a female-shaped robot wearing a long gown, blonde wig, large jewelry, and turning letter's in what appeared to be the “Wheel of Fortune” game show set, violated her California common law right of publicity and her rights under the Lanham Act. The Ninth Circuit, with Judge Alarcon dissenting in part, reversed the grant of summary judgment to defendant, holding that White had produced sufficient evidence that defendant’s advertisement appropriated her identity in violation of her right of publicity, and that the issue of confusion about White’s endorsement of defendant’s product created a jury issue which precluded summary judgment on her Lanham Act claim. In so holding, the court rejected the defendant’s parody defense which posited that the advertisement was a parody of White’s television act and was protected speech.

A suggestion for rehearing en banc failed. Three judges dissented from the order rejecting the suggestion for a rehearing en banc. See White v. Samsung Electronics America, Inc., 989 F.2d 1512 (9th Cir.1993). Judge Kozinski, writing the dissenting opinion, observed, “Something very dangerous is going on here.... Overprotecting intellectual property is as harmful as underprotecting it. Creativity is impossible without a rich public domain.” 989 F.2d at 1513. Later, he commented:

Intellectual property rights aren’t free: They’re imposed at the expense of future creators and of the public at large.... This is why intellectual property law is full of careful balances between what’s set aside for the owner and what’s left in the public domain for the rest of us[J

Id. at 1516. In Landham, this court declined to follow the majority in White and, instead, cited Judge Kozinski’s dissent with approval. See 221 F.3d at 626.

In Cardtoons, L.C. v. Major League Baseball Players Assoc., 95 F.3d 959 (10th Cir.1996), the Tenth Circuit held that the plaintiffs First Amendment right to free expression outweighed the defendant’s proprietary right of publicity. The plaintiff in Cardtoons contracted with a political cartoonist, a sports artist, and a sports author and journalist to design a set of trading cards which featured readily identifiable caricatures of major league baseball players with a humorous commentary about their careers on the back. The cards ridiculed the players using a variety of themes. The cards used similar names, recognizable caricatures, distinctive team colors and commentaries about individual players which left no doubt about their identity. The Tenth Circuit held that the defendant’s use of the player’s likenesses on its trading cards would violate their rights of publicity under an Oklahoma statute. Addressing the defendant’s First Amendment claim, the court held:

Cardtoons’ parody trading cards receive full protection under the First Amendment. The cards provide social commentary on public figures, major league baseball players, who are involved in a significant commercial enterprise, major league baseball. While not core political speech ... this type of commentary on an important social institution constitutes protected expression.

Cardtoons, 95 F.3d at 969. The Tenth Circuit rejected the reasoning of the panel majority in White, and expressed its agreement with the dissenting opinions of Judges Alarcon and Kozinski. See 95 F.3d at 970 (“We disagree with the result in [White] for reasons discussed in the two dissents that it engendered.”). In striking the balance between the players’ property rights and the defendant’s First Amendment rights, the court in Cardtoons commented on the pervasive presence of celebrities in the media, sports and entertainment. The court noted that celebrities are an important part of our public vocabulary and have come to symbolize certain ideas and values:

As one commentator explained, celebrities are “common points of reference for millions of individuals who may never interact with one another, but who share, by virtue of their participation in a mediated culture, a common experience and a collective memory.” John B. Thompson, Ideology And ModeRN CulTURE: CRITICAL SOCIAL THEORY In The Era Of Mass Communioation 163 (1990). Through their pervasive presence in the media, sports and entertainment celebrities come to symbolize certain ideas and .values.... Celebrities, then, are an important element of the shared communicative resources of our cultural domain.

Cardtoons, 95 F.3d at 972.

The court observed that one of the justifications often given for the right of publicity is the furthering of economic goals such as stimulating athletic and artistic achievement by securing to celebrities the fruits of their labors and talents. The court then noted that major league baseball players’ salaries currently average over one million dollars per year and commented:

Such figures suggest that “even without the right of publicity the rate of return to stardom in the entertainment and sports fields is probably high enough to bring forth a more than ‘adequate’ supply of creative effort and achievement.” ... In addition, even in the absence of publicity rights, celebrities would still be able to reap financial reward from authorized appearances and endorsements. The extra income generated by licensing one’s identity does not provide a necessary inducement to enter and achieve in the realm of sports and entertainment. Thus, while publicity rights may provide some incentive for creativity and achievement, the magnitude and importance of that incentive has been exaggerated.

Cardtoons, 95 F.3d at 974 (citation omitted). Noting that another justification for publicity rights is the prevention of unjust enrichment, the court observed that “Cardtoons added a significant creative component of its own to the celebrity identity and created an entirely new product.” Cardtoons, 95 F.3d at 976. The Tenth Circuit affirmed the district court’s ruling that the trading cards were expression protected by the First Amendment.

In Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir.2001), the Ninth Circuit was again presented with a case involving the tension between the right of publicity and the First Amendment. The plaintiff, actor Dustin Hoffman, brought suit against a magazine and its publisher, seeking to recover on state law claims for the violation of his right of publicity, for unfair competition and for violation of the Lanham Act, based on allegations that the magazine used, without his permission, a still photograph from a motion picture to create a computer-generated image which falsely depicted him wearing fashion designer’s women’s clothes. The court rejected Hoffman’s claims, holding that the magazine article was entitled to full protection under the First Amendment.

In 1982, Hoffman starred in the movie Tootsie, playing a male actor who dresses as a woman to get a part on a television soap opera. A still photograph from the movie showed Hoffman in character in a red, long-sleeved sequined evening dress and high heels, posing in front of an American flag. In March, 1997, the defendant L.A. Magazine, Inc. (“LAM”) published an issue of its magazine which contained an article entitled “Grand Illusions”, which used computer technology to alter famous film stills to make it appear that the actors were wearing spring 1997 fashions. The article contained sixteen familiar scenes of famous actors from famous movies. In the photo of Hoffman, his head and the American flag appeared as they did in the original, but his body and the long sleeved, red dress were replaced by the body of a male model in the same pose, wearing a spaghetti-strapped, cream colored silk evening dress and high heeled sandals. The text on the page identified the still as from the movie Tootsie and read “Dustin Hoffman isn’t a drag in a butter-colored silk gown by Richard Tyler and Ralph Lauren heels.” Id. at 1183. Hoffman’s complaint alleged that LAM’s publication of the altered photograph misappropriated his name and likeness, in violation of his California common law and statutory rights of publicity. LAM replied that its challenged use of the Tootsie photo was protected under the First Amendment.

Quoting this court’s decision in Land-ham, the Tenth Circuit began its opinion by stating, “We evaluate this defense aware of ‘the careful balance that courts have gradually constructed between the right of publicity and the First Amendment and federal intellectual laws.’ ” Hoffman, 255 F.3d at 1183-1184. The court concluded that LAM’s publication of the altered Tootsie photograph was not commercial speech:

Viewed in context, the article as a whole is a combination of fashion photography, humor, and visual and verbal editorial comment on classic films and famous actors. Any commercial aspects are “inextricably entwined” with expressive elements, and so they cannot be separated out “from the fully protected whole”. (Citations omitted).

Hoffman, 255 F.3d at 1185. The court concluded that LAM was entitled to the full First Amendment protection accorded non-commercial speech which could be defeated only by proof of actual malice.

In Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d 126, 21 P.3d 797 (2001), the California Supreme Court adopted a trans-formative use test in determining whether the artistic use of a celebrity’s image is protected by the First Amendment. Sad-erup, an artist with over twenty-five years experience in making charcoal drawings of celebrities, created a drawing of the famous comedy team, The Three Stooges. The drawings were used to create lithographic and silk screen masters, which were then used to produce lithographic prints and silk screen images on T-shirts. Comedy III, the owner of all rights to the former comedy act, brought suit against Saderup under a California statute, which grants the right of publicity to successors in interest of deceased celebrities.

The California Supreme Court found that Saderup’s portraits were entitled to First Amendment protection because they were “expressive works and not an advertisement or endorsement of a product.” Id. at 396, 106 Cal.Rptr.2d 126, 21 P.3d at 802. In discussing the tension between the right of publicity and the First Amendment, the court observed:

[B]ecause celebrities take on personal meanings to many individuals in the society, the creative appropriation of celebrity images can be an important avenue of individual expression. As one commentator has stated: “Entertainment and sports celebrities are the leading players in our Public Drama. We tell tales, both tall and cautionary, about them. We monitor their comings and goings, their missteps and heartbreaks. We copy their mannerisms, their styles, their modes of conversation and of consumption. Whether or not celebrities are ‘the chief agents of moral change in the United States,’ they certainly are widely used — -far more than are our institutionally anchored elites — to symbolize individual aspirations, group identities and cultural values. Their images are thus important expressive and communicative resources: the peculiar, yet familiar idiom in which we conduct a fair portion of our cultural business and everyday conversation.” (Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights (1993)) 81 Cal. L.Rev. 125, 128 (Madow, italics and fns. omitted).

Id. at 397, 106 Cal.Rptr.2d 126, 21 P.3d at 803.

The court rejected the proposition that Saderup’s lithographs and T-shirts lost their First Amendment protection because they were not original single works of art, but were instead part of a commercial enterprise designed to generate profit solely from the sale of multiple reproductions of likenesses of The Three Stooges:

[T]his position has no basis in logic or authority. No one would claim that a published book, because it is one of many copies, receives less First Amendment protection than the original manuscript.... [A] reproduction of a celebrity image that, as explained above, contains significant creative elements is entitled to as much First Amendment protection as an original work of art.

Id. at 408, 106 Cal.Rptr.2d 126, 21 P.3d at 810.

Borrowing part of the fair use defense from copyright law, the California court proposed the following test for distinguishing between protected and unprotected expression when the right of publicity conflicts with the First Amendment:

When artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond that trespass, the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist.

On the other hand, when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity....

Accordingly, First Amendment protection of such works outweighs whatever interest the state may have in enforcing the right of publicity.

Id. at 405, 106 Cal.Rptr.2d 126, 21 P.3d at 808 (footnote and citations omitted). Later in its opinion, the California court restated the test as follows:

Another way of stating the inquiry is whether the celebrity likeness is one of the “raw materials” from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question.

Id. at 406, 106 Cal.Rptr.2d 126, 21 P.3d at 809.

Finally, citing the art of Andy Warhol, the court noted that even literal reproductions of celebrity portraits may be protected by the First Amendment.

Through distortion and the careful manipulation of context, Warhol was able to convey a message that went beyond the commercial exploitation of celebrity images and became a form of ironic social comment on the dehumanization of celebrity itself.... Although the distinction between protected and unprotected expression will sometimes be subtle, it is no more so than other distinctions triers of fact are called on to make in First Amendment jurisprudence.

Id. at 408-409, 106 Cal.Rptr.2d 126, 21 P.3d at 811 (citations and footnote omitted).

We conclude that in deciding whether the sale of Rush’s prints violate Woods’s right of publicity, we will look to the Ohio case law and the RESTATEMENT (Third) Of Unfair Competition. In deciding where the line should be drawn between Woods’s intellectual property rights and the First Amendment, we find ourselves in agreement with the dissenting judges in White,17 the Tenth Circuit’s decision in Cardtoons, and the Ninth Circuit’s decision in Hoffman, and we will follow them in determining whether Rush’s work is protected by the First Amendment. Finally, we believe that the transformative elements test adopted by the Supreme Court of California in Comedy III Productions, will assist us in determining where the proper balance lies between the First Amendment and Woods’s intellectual property rights. We turn now to a further examination of Rush’s work and its subject.

E. Application of the Law to the Evidence in this Case

The evidence in the record reveals that Rush’s work consists of much more than a mere literal likeness of Woods. It is a panorama of Woods’s victory at the 1997 Masters Tournament, with all of the trappings of that tournament in full view, including the Augusta clubhouse, the leader board, images of Woods’s caddy, and his final round partner’s caddy. These elements in themselves are sufficient to bring Rush’s work within the protection of the First Amendment. The Masters Tournament is probably the world’s most famous golf tournament and Woods’s victory in the 1997 tournament was a historic event in the world of sports. 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. Furthermore, Rush’s work includes not only images of Woods and the two caddies, but also carefully crafted likenesses of six past winners of the Masters Tournament: Arnold Palmer, Sam Snead, Ben Hogan, Walter Hagen, Bobby Jones, and Jack Nicklaus, a veritable pantheon of golfs greats. Rush’s work conveys the message that Woods himself will someday join that revered group.

Turning first to ETW’s Lanham Act false endorsement claim, we agree with the courts that hold that the Lanham Act should be applied to artistic works only where the public interest in avoiding confusion outweighs the public interest in free expression. The Rogers test is helpful in striking that balance in the instant case. We find that the presence of Woods’s image in Rush’s painting The Masters Of Augusta does have artistic relevance to the underlying work and that it does not explicitly mislead as to the source of the work.¹⁸ We believe that the principles followed in Cardtoons, Hoffman and Comedy III are also relevant in determining whether the Lanham Act applies to Rush’s work, and we find that it does not.

We find, like the court in Rogers, that plaintiffs survey evidence, even if its validity is assumed, indicates at most that some members of the public would draw the incorrect inference that Woods had some connection with Rush’s print.¹⁹ The risk of misunderstanding, not engendered by any explicit indication on the face of the print, is so outweighed by the interest in artistic expression as to preclude application of the Act. We disagree with the dissent’s suggestion that a jury must decide where the balance should be struck and where the boundaries should be drawn between the rights conferred by the Lan-ham Act and the protections of the First Amendment.

In regard to the Ohio law right of publicity claim, we conclude that Ohio would construe its right of publicity as suggested in the Restatement (Third) Of UnfaiR Competition, Chapter 4, Section 47, Comment d., which articulates a rule analogous to the rule of fair use in copyright law. Under this rule, the substantiality and market effect of the use of the celebrity’s image is analyzed in light of the informational and creative content of the defendant’s use. Applying this rule, we conclude that Rush’s work has substantial informational and creative content which outweighs any adverse effect on ETW’s market and that Rush’s work does not violate Woods’s right of publicity.

We further find that Rush’s work is expression which is entitled to the full protection of the First Amendment and not the more limited protection afforded to commercial speech. When we balance the magnitude of the speech restriction against the interest in protecting Woods’s intellectual property right, we encounter precisely the same considerations weighed by the Tenth Circuit in Cardtoons. These include consideration of the fact that through their pervasive presence in the media, sports and entertainment celebrities have come to symbolize certain ideas and values in our society and have become a valuable means of expression in our culture. As the Tenth Circuit observed “[c]elebrities ... are an important element of the shared communicative resources of our cultural domain.” Cardtoons, 95 F.3d at 972.

In balancing these interests against Woods’s right of publicity, we note that Woods, like most sports and entertainment celebrities with commercially valuable identities, engages in an activity, professional golf, that in itself generates a significant amount of income which is unrelated to his right of publicity. Even in the absence of his right of publicity, he would still be able to reap substantial financial rewards from authorized appearances and endorsements. It is not at all clear that the appearance of Woods’s likeness in artwork prints which display one of his major achievements will reduce the commercial value of his likeness.

While the right of publicity allows celebrities like Woods to enjoy the fruits of their labors, here Rush has added a significant creative component of his own to Woods’s identity. Permitting Woods’s right of publicity to trump Rush’s right of freedom of expression would extinguish Rush’s right to profit from his creative enterprise.

After balancing the societal and personal interests embodied in the First Amendment against Woods’s property rights, we conclude that the effect of limiting Woods’s right of publicity in this case is negligible and significantly outweighed by society’s interest in freedom of artistic expression.

Finally, applying the transformative effects test adopted by the Supreme Court of California in Comedy III, we find that Rush’s work does contain significant trans-formative elements which make it especially worthy of First Amendment protection and also less likely to interfere with the economic interest protected by Woods’ right of publicity. Unlike the unadorned, nearly photographic reproduction of the faces of The Three Stooges in Comedy III, Rush’s work does not capitalize solely on a literal depiction of Woods. Rather, Rush’s work consists of a collage of images in addition to Woods’s image which are combined to describe, in artistic form, a historic event in sports history and to convey a message about the significance of Woods’s achievement in that event. Because Rush’s work has substantial transforma-tive elements, it is entitled to the full protection of the First Amendment. In this case, we find that Woods’s right of publicity must yield to the First Amendment.

V. Conclusion

In accordance with the foregoing, the judgment of the District Court granting summary judgment to Jireh Publishing is affirmed.

1 . The narrative reads as follows: The Masters of Augusta Undeniably, the essence of golf is Augusta National, The Masters. And, as sure as Spring itself, when the azaleas’ plethora of color burst upon this uniquely manicured playground of golfs greatest, an almost heavenly awe overtakes the crowd. Because there is something about Augusta — a golden thread of nostalgia that weaves its way through the entire spectacle. Something will happen here that has happened for decades. Greatness will emerge. A Tiger Woods will unleash an incomparable swing and bury his opponents in his wake.

Amid the memorable hanging baskets of the Augusta National Clubhouse, Ben Hogan's Bridge, the 13th rock wall, and the dazzling floral logo that greets each guest, a star is born, and he's for real. And attesting from the Leader Board are the men who have formed a golfer's "field of dreams."

Men like Arnold Palmer with his omnipresent "Arnie's Army” roaring its approval; there’s flamboyant Slammin’ Sammy Snead or the irrepressible Ben Hogan; of course, you’ll find Walter Hagen, who played his first Masters in 1934. And who can forget Bobby Jones, a truly great one, who always played as an amateur here, never as a professional. Last there's the Golden Bear, Jack Nicklaus, standing tall with six Masters to his credit, a man whose golfing prowess sets him apart from mere mortals.

But the center of their gaze is 1997 winner Tiger Woods, here flanked by his caddie, "Fluff”, and fined round player partner’s (Constantino Rocca) caddie on right, displaying that awesome swing that sends a golf ball straighter and truer than should be humanly possible. Only his uncanny putting ability serves to complete his dominating performance that lifts him alongside the Masters of Augusta.

In this unique work of art, America's Sports Artist, Rick Rush has blended the charm and boastful beauty of nature with the magnificence of a gilded golfing history and unabashed power and confidence of youth to deliver a masterpiece: "The Masters of Augusta.”

2 . ETW acknowledges that the court need not separately address its state law claims for trademark infringement, unfair competition and deceptive trade practices. See Final Brief of ETW, p. 31 n. 17.

3 . ETW’s survey evidence on likelihood of confusion was limited to the prints of Rush's painting and did not include the materials which used Woods's name.

4 . The dissent misunderstands the basis for our holding that defendant's use of the registered mark “Tiger Woods” is not infringing. We find only that defendant's use of the mark was a fair use under established trademark law. This finding is not linked in any way with our separate finding that defendant’s use of Woods's image was not an infringement of plaintiff's claimed unregistered trademark in all images and likenesses of Woods. The dissent’s discussion of plaintiff's evidence of consumer confusion in connection with plaintiff's claim of violation of the registered trademark “Tiger Woods” is inapposite because the survey subjects were shown only the Rush print, which does not contain the words “Tiger Woods.”

5 . The dissent states that we have incorrectly characterized plaintiff's claim, and that the plaintiff is not seeking to protect any and all images of Woods, but only the image which appears in Rush's print, and that there is "at the very least ... a question of fact ... as to whether Woods has used this image as a trademark....” We stand by our characterization of plaintiff's claim. Plaintiff’s first amended complaint does not allege that Woods has used any specific image or likeness as a trademark. There is no evidence in the record that Woods has consistently used any specific image or likeness as a trademark. As the district court correctly pointed out, all of the images of Woods which were submitted by the plaintiff in the course of the summary judgment proceedings are different. The image of Woods in the Nike poster referred to in the dissent is readily distinguishable from the central image in the Rush print. It features, among other things, a different facial expression, a different position of the hands, and a different position of the golf club. Finally, we note that there is not just one but three very different images of Woods in the Rush print: one standing and swinging a club, and two crouching — one with hands on the ball and club, and the other with hands over eyes. Plaintiff claims that all three violated its unregistered trademark in Woods’s likeness and image.

6 . We disagree with the dissent's conclusion that the results of plaintiff's consumer confusion survey, in which the respondents were shown only the Rush print, show that the plaintiff has used a specific image of Woods as a trademark.

7 . This includes ETW’s claims of dilution under 15 U.S.C. § 1125(c). Because Woods’s likeness does not function as a trademark which is subject to protection under the Lan-ham Act, it follows that a dilution claim does not lie. The dissent has correctly noted that Woods's dilution claim is limited to the registered mark "Tiger Woods”. That claim would be precluded by the fair use doctrine as discussed in Part II above. Furthermore, unlike the dissent, we conclude that plaintiff’s consumer survey evidence cannot support plaintiff's claim of dilution of its registered mark because the survey respondents were not shown any materials which included the registered mark.

8 . ETW’s argument that only the original work and not its copies are protected would lead to absurd results. For example, the original manuscript of an unauthorized biography would be protected, but not the published copies. The original script of a play or a movie would be protected, but not live performances or films produced from it.

9 . The court distinguished its earlier decision in Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2nd Cir.1979), saying “We do not read Dallas Cowboys Cheerleaders as generally precluding all consideration of First Amendment concerns whenever an allegedly infringing author has 'alternative avenues of communication.’ ” 875 F.2d at 999 n. 4.

10 . ETW argues that this court adopted the "alternative means” test in Elvis Presley Enterprises v. Elvisly Yours, Inc., 936 F.2d 889 (6th Cir.1991). This is not the case. Elvisly Yours, Inc. involved the sale of Elvis Presley memorabilia covered by plaintiff’s trademarks. Defendant asserted the defenses of laches and acquiescence. No First Amendment issues were raised. This court affirmed a permanent injunction issued by the district court but narrowed its scope because "there are various activities that Shaw could engage in that would not violate EPE's legitimate trademark and publicity rights, such as writing a magazine article or book about Elvis Presley, or dealing in properly licensed products.” Id. at 897.

11 .We disagree with the dissent’s suggestion that the rule of Rogers and Mattel is limited to titles of artistic works. We believe that the principles identified in these decisions are generally applicable to all cases involving literary or artistic works where the defendant has articulated a colorable claim that the use of a celebrity's identity is protected by the First Amendment.

The dissent contends that we have overlooked the comment in Mattel that the result in Rogers may have been different if, for example, "a pair of dancing shoes had been labeled Ginger and Fred, [because] a dancer might have suspected that Rogers was associated with the shoes (or at least one of them), just as Michael Jordan has endorsed Nike sneakers that claim to make you fly through the air.” Mattel, 296 F.3d at 901. We fail to see the relevance of this distinction, because Woods's image in Rush’s print is not used to identify a product.

12 . The dissent’s continued insistence on applying the likelihood of confusion test appears untenable in light of Parks.

13 . Approximately half of the states have adopted some form of the right of publicity either at common law or by statute. See McCarthy On Publicity And Privacy, § 6:1.

14 . ETW is a Florida corporation with its principal place of business in Cleveland, Ohio. Both parties have argued this case on the premise that Ohio law applies to ETW's right of publicity claim. Thus, the court will apply Ohio law. See Suarez Corporation v. CBS, Inc., No. 93-3307, 1994 WL 142785 (6th Cir. April 19, 1994) (applying Ohio law to invasion of privacy claim where Ohio was plaintiff's principal place of business).

15 . In 1999, the right of publicity was codified in the provisions of Ohio Revised Code Chapter 2741. However, this litigation was commenced before the effective date of the Ohio statutory provisions, and ETW does not invoke them.

16 . Hicks v. Casablanca Records, 464 F.Supp. 426 (S.D.N.Y.1978); Frosch v. Grossett & Dunlop, Inc., 75 A.D.2d 768, 427 N.Y.S.2d 828 (1st Dept. 1980); and Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860, 160 Cal.Rptr. 352, 603 P.2d 454, 455 (1979) (Bird, C.J., concurring).

17 . In Parks, we applied the Rogers test to plaintiff's right of publicity claims and cited with approval Judge Kozinski's dissent in White, 989 F.2d at 1516. Parks, 329 F.3d at 449.

18 . Unlike Parks, here there is no genuine issue of material fact about the artistic relevance of the image of Woods in Rush’s print. See Ruffin-Steinback v. dePasse, 82 F.Supp.2d 723 (E.D.Mich.2000) aff'd 267 F.3d 457 (6th Cir.2001) (likeness of members of Motown group "Temptations” used to promote televised tnini-series and video cassette based on partly fictionalized story about group); Seale v. Gramercy Pictures, 949 F.Supp. 331 (E.D.Pa.1996) (use of plaintiff's name and likeness on cover of pictorial history book and home video clearly related to content of book and film).

19 . Respondents in the survey were handed a copy of Rush's print and were asked the question: "Do you believe that Tiger Woods has an affiliation or connection with this print or that he has given his approval or has sponsored it?” Sixty-two percent answered "Yes”; eleven percent said "No”; and twenty-seven percent said "Don’t Know.” The terms "affiliated with” and “connected with" were not defined. Some respondents may have thought that Woods’s mere presence in the print was itself an affiliation or connection. No control questions were asked to clarify this. Furthermore, the respondents were not given the packaging in which Jireh distributed the prints which prominently features Rush and contains no suggestion that Woods sponsored or approved the print.