On June 11, 2012, the U.S. Court of Appeals for the Eleventh Circuit issued an opinion largely in favor of artist Daniel A. Moore (“Moore”) in a long-standing battle between Moore and the University of Alabama (“Alabama”) over Moore’s right to depict the Crimson Tide’s football uniforms on paintings, prints, calendars, and other merchandise. On appeal from the Northern District of Alabama, the Court found that the First Amendment‘s protection of artistic expression was such that Moore’s paintings, prints, and calendars did not violate the Lanham Act. The Court held that Moore waived his right to assert First Amendment protection over the other merchandise — such as mugs and “postcard-sized mini-prints” — but nevertheless remanded to the district court for a determination of whether Alabama acquiesced to Moore’s uses on those products.
|Moore’s “Goal Line Stand” from the 1979 Sugar Bowl
In 1979, Moore, an Alabama alum, began selling originals and prints of paintings depicting historic scenes in Alabama football, such as the “Goal Line Stand” shown here. Moore’s notoriety grew as he continued to paint scenes without any kind of agreement or relationship with Alabama. From 1991 to 1999, Moore signed a dozen licensing agreements with Alabama to produce works according to certain terms and often bearing Alabama’s registered trademarks on the packaging or a “seal of approval” evidencing its officially licensed status. During that time period and with Alabama’s apparent knowledge, Moore also created and sold numerous unlicensed paintings and prints and did not pay royalties to Alabama for any of those items.
In 2002, Alabama told Moore that he needed permission to portray Alabama’s uniforms, including the jersey and helmet designs and the crimson and white colors, and that he would have to license all of his Alabama-related products. Moore disagreed and the parties’ subsequent negotiations were unsuccessful. Alabama brought suit on March 18, 2005 in the Northern District of Alabama, contending that Moore breached the prior license agreements and that Moore’s products violated the Lanham Act, 15 U.S.C. 1125(a), by infringing Alabama’s trademark rights in the football uniforms.
After discovery on the Lanham Act issues, both parties moved for summary judgment. The district court found that the parties’ prior licensing agreements did not cover the items at issue because “uniforms were not included in the agreements’ definitions of ‘licensed indicia’,” that the depiction of the uniforms in paintings and prints was protected by the First Amendment and also the fair use doctrine, and that the depiction of the uniforms on mugs, calendars, and other “mundane products” was not protected by the First Amendment and would likely cause consumer confusion. Accordingly, the district court entered summary judgment in favor of Moore with regard to the original paintings and prints, and entered summary judgment in favor of Alabama with respect to the calendars, mugs, and “mundane products.” Both parties appealed.
Varying slightly from the grouping at the district court level, the Court split the products into two categories. The first category was composed of paintings, prints, and calendars. The second category contained mugs and other merchandise.
Paintings, Prints, and Calendars
Regarding the first category, the Court first determined that the paintings, prints, and calendars were not covered by the prior licensing agreements. The Court found that while the language of the agreements was ambiguous, the parties’ subsequent course of conduct clearly demonstrated that the parties did not intend that Moore’s portrayal of the Alabama uniforms in unlicensed paintings would violate the agreements. The Court laid out a non-exhaustive list of the evidence supporting this finding:
Throughout the period of the licensing agreements, Moore continued to sell new and previously produced unlicensed paintings and did not pay royalties to Alabama. The evidence showed that Alabama knew of these sales and did not act upon them.
From 2001 to 2004, Alabama sold over $12,000 worth of Moore’s unlicensed calendars in its campus store.
The Bryant Museum, run by Alabama, displayed and sold unlicensed Moore prints and prominently featured one of his unlicensed paintings on its brochure.
In 2001, Alabama asked Moore to complete a sketch on live television during an Alabama football game. The sketch was unlicensed and featured a Crimson Tide football helmet.
For many years, the Alabama Athletic Department displayed Moore’s unlicensed paintings and prints in its offices, and granted Moore press credentials so he could take photographs to be used as source material for his paintings.
The Eleventh Circuit then turned to the trademark claims and Alabama’s contention that the products create a likelihood of confusion on the part of buyers that Alabama sponsored or endorsed the products. Rather than evaluate the strength of the marks, however, the Court settled the matter on First Amendment grounds. Alabama argued that Moore’s works were “more commercial than expressive speech” and therefore entitled to a lower degree of First Amendment protection. The Eleventh Circuit rejected Alabama’s argument, ruling that Moore’s paintings, prints, and calendars were expressive speech “entitled to full protection under the First Amendment,” despite having been sold for money.
|2012 calendar featuring Moore’s works
Addressing the tension between trademarks and free speech, the Eleventh Circuit declared: “the Lanham Act should be read narrowly to avoid impinging on speech protected by the First Amendment.” It then concluded that Moore’s paintings, prints, and calendars were protected and did not violate the Lanham Act, pursuant to the balancing test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the “landmark case for balancing trademark and First Amendment rights.” According to the Court, the “uniforms’ colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history.”
Ultimately, the Court stated:
“[W]e conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act with respect to the paintings, prints, and calendars.”
Mugs and Other Merchandise
Regarding the second category, the Eleventh Circuit found the record inconclusive as to whether the mugs and other merchandise were covered by the prior licensing agreements. As a result, it reversed the grant of summary judgment in favor of Alabama, and remanded the case back to the district court to resolve the disputed issues of material fact.
Moore argued that because his original paintings and prints did not violate Alabama’s trademarks, his copyrights in the works granted him the right to produce derivative works featuring those paintings. The Court disagreed and expressed concern that such a broad holding would enable the circumvention of trademark law. “Selling the copyrighted drawing [of another’s trademark] may not amount to a trademark infringement, but its placement on certain products very well might.”
The Court then evaluated Alabama’s trademark claims, and noted that Moore had failed to challenge the district court’s conclusions that his use of the uniforms on these products was not a fair use and was not protected by the First Amendment
. The Court found that acquiescence was the only trademark defense Moore had preserved on appeal, and again held that the record was inconclusive as to the parties’ course of conduct relating to these products. The Court remanded the acquiescence issue to the district court for further proceedings.
The reported appellate and district court decisions are Univ. of Ala. Bd. of Trustees v. New Life Art Inc., 677 F. Supp. 2d 1238 (N.D. Ala. 2009), aff’d in part, rev’d in part, and remanded, ___ F.3d ___, 2012 U.S. App.LEXIS 11794 (11th Cir. Jun. 11, 2012).