First Amendment Protects Artistic Depiction of University of Alabama Football Uniforms: Eleventh Circuit

Practical Law Legal Update 7-519-8460 (Approx. 5 pages)

First Amendment Protects Artistic Depiction of University of Alabama Football Uniforms: Eleventh Circuit

by PLC Intellectual Property & Technology

Key Litigated Issues

In University of Alabama Board of Trustees v. New Life Art, Inc., the key issues before the US Court of Appeals for the Eleventh Circuit were whether the US District Court for the Northern District of Alabama erred in granting summary judgment in favor of:

The artist, Daniel A. Moore, on claims of trademark infringement based on his depiction of Alabama uniforms in paintings and prints.
The university on its trademark infringement claims based on Moore's depiction of the uniforms on calendars, mugs and other mundane products.

Specifically, the Eleventh Circuit addressed whether:

Expired license agreements between Moore and the university required Moore to receive permission for all subsequent portrayals of the university's uniforms.
Moore's depictions of the uniforms in paintings, prints and calendars were protected artistic expression under the First Amendment.

Background

The Eleventh Circuit heard this case on appeal from a district court decision granting summary judgment to Moore on certain trademark infringement claims and to the university on others.

From 1979 to 1990, Moore painted historical University of Alabama football scenes without any kind of formal or informal relationship with the university. These football scenes included depictions of the university's football uniforms. Moore reproduced the paintings on prints, mugs, calendars and other products, which he sold. From 1991 to 1999, Moore signed a dozen licensing agreements with the university to produce and market specific items that would often include additional university trademarks on the border or packaging. From 1991 to 2002, Moore continued to produce other university-related paintings and prints that were not covered by the licensing agreements. He also continued to sell paintings and prints of images he created before 1991. Moore never paid royalties for these items and the university never asked him to pay royalties.

In January 2002, the university told Moore he would need to license all of his university-related products because they featured the university's trademarks. The university asserted that this included all depictions of the university's uniforms. Moore continued to produce and sell paintings depicting Alabama football scenes and products depicting his paintings, taking the position that:

He did not need permission to paint historical events.
His works did not infringe the university's trademarks as long as he did not use the marks outside the original painting.

In March 2005, the university sued Moore for breach of contract based on the expired license agreements, trademark infringement and unfair competition. In a decision addressing only the Lanham Act claims, the district court granted summary judgment:

To Moore on the paintings and prints, based on its findings that:
- the expired license agreements did not require Moore to receive permission to depict the uniforms in paintings because the agreements' definition of license indicia did not include the uniforms;
- the university's colors were not strong trademarks; and
- Moore's depiction of the uniforms in paintings and prints was protected by the First Amendment and was a fair use.
To the university on the mugs, calendars and other mundane products, finding that Moore's depiction of the uniforms on them:
- was not protected by the First Amendment;
- was not a fair use; and
- created a likelihood of confusion.

Both parties appealed.

Outcome

On appeal, the Eleventh Circuit found the considerations affecting calendars to be more closely aligned with paintings and prints than mugs and other mundane products, and ruled separately on the following two categories:

Paintings, prints, and calendars.
Mugs and other mundane products.

The Eleventh Circuit affirmed the district court's grant of summary judgment to Moore on the paintings and prints, and reversed the grant of summary judgment to the university on the calendars, holding that Moore's depiction of the football uniforms in painting, prints and calendars:

Is not prohibited by the parties' expired license agreements.
Does not violate the Lanham Act because these objects are artistically expressive and protected by the First Amendment.

The court reversed the district court's grant of summary judgment to the university on the calendars, mugs and other mundane products, and remanded the case to the district court for further proceedings on these claims.

Painting, Prints and Calendars

License Agreements

In evaluating whether the expired license agreements prohibited Moore's unlicensed depiction of the university's football uniforms in paintings, prints and calendars, the Eleventh Circuit focused on the language of the parties' 1995 agreement, noting that the other license agreements included similar language in most respects. The court found that agreement to be ambiguous on whether the parties intended to include football uniforms in the definition of licensed indicia, including because:

The definition was very broad but never specifically mentioned the uniforms' design and colors.
The court found certain language in the agreement to imply that the parties intended licensed indicia to refer to packaging and product labels, not uniforms depicted within content of a painting, print or calendar.
The agreement required Moore to include a trademark symbol next to all licensed indicia.

Therefore, applying Georgia law (the governing law under the license agreement), the court looked to the parties' course of conduct to resolve the ambiguity. The court found that the parties' conduct clearly indicated that they did not intend Moore would need permission, including because:

Between 1991 and 2002, Moore produced paintings and prints featuring the university's uniforms. Moore also sold paintings and prints of works that had originally been issued before 1991. During this time, the university never requested Moore pay royalties on these unlicensed items.
From 2001 to 2004, the university sold over $12,000 worth of Moore's unlicensed calendars in its campus store. The university's Bryant Museum also displayed and sold unlicensed Moore prints and featured an unlicensed painting on a brochure cover.
The university displayed unlicensed Moore prints in its athletic department and granted Moore press credentials so he could take photographs to be used as source material for paintings.

Trademark Infringement

The Eleventh Circuit determined that it was unnecessary to evaluate the strength of the university's mark or likelihood of confusion because the First Amendment interests in artistic expression clearly outweighed any potential for consumer confusion in this case.

The court evaluated the claims under the test adopted by the US Court of Appeals for the Second Circuit in Rogers v. Grimaldi, the landmark case for balancing trademark and First Amendment rights. The Rogers test weighs the risk of consumer confusion against the First Amendment interests in artistic expression. The university argued that the court should not apply this test because Moore's works did not involve parody or false endorsement. The court rejected this argument, noting that it has never treated false endorsement and trademark infringement claims as distinct under the Lanham Act. The court expressly decided to construe the Lanham Act narrowly in this case and applied the Rogers balancing test.

Under the Rogers test, an artistically expressive use of a trademark does not violate the Lanham Act unless:

The use of the mark has no artistic relevance to the underlying work.
If the mark has some artistic relevance, it is explicitly misleading about source.

Applying this test, the court determined that Moore's depiction of the university's uniforms in the paintings, prints and calendars did not violate the Lanham Act because:

Moore's depiction of the uniforms is artistically relevant to the work because the uniforms are needed to realistically portray Alabama football history.
There was no evidence that Moore marketed an unlicensed item as sponsored or endorsed by the university or explicitly stated that the items were affiliated with the university.

Mugs and Other Mundane Products

The Eleventh Circuit reversed the grant of summary judgment to the university on the mugs and other mundane products and remanded for further proceedings. Specifically, the court found there to be issues of fact on whether:

The expired license agreements required Moore to obtain the university's consent to depict the uniforms on these objects, finding the record for these items insufficient to resolve the ambiguity.
The university acquiesced to these uses.

However, the court:

Ruled that Moore had waived the fair use defense for these items because he did not raise it on appeal.
Rejected Moore's assertion that his copyright in the paintings provides a defense to the university's trademark claims.

Practical Implications

This case highlights the importance of clarity in drafting and negotiating license agreements and the need for care in defining the scope and limitations of a trademark license. The decision also demonstrates a willingness to extend the Rogers balancing test to trademark infringement claims that do not involve parody.

First Amendment Protects Artistic Depiction of University of Alabama Football Uniforms: Eleventh Circuit | Practical Law