University of Alabama trademarks lose to First Amendment interests in artistic expression
In University of Alabama Board of Trustees v New Life Inc (09-16412 (2012), June 11 2012), the US Court of Appeals for the Eleventh Circuit has determined that paintings and prints depicting scenes of University of Alabama football players in team uniforms did not infringe any common law trademark rights in those uniforms. The case is a victory for artistic expression and the public’s right to use trademarks where they have artistic relevance to the underlying work.
Daniel A Moore, a well-known artist, has painted famous scenes of the University of Alabama football team. The paintings include realistic portrayals of the University of Alabama uniforms, including helmets, jerseys and the well-recognised crimson and white colours. For more than a decade, Moore painted without any licence from the University of Alabama. For approximately another decade, Moore signed licensing agreements to produce and market specific items, which often included other University of Alabama trademarks. Although the University of Alabama issued Moore press credentials so he could be on the playing field to obtain material for his work, his paintings were not “officially licensed merchandise”.
In January 2002 things changed. The University of Alabama told Moore that he would need to licence all paintings because they featured University of Alabama trademarks, including the unregistered trademark rights in the uniform and colours. Moore contended that he was painting historical events and that there was no trademark violation so long as he did not use the University of Alabama trademarks outside of the painting’s “image area”. The University of Alabama sued for trademark infringement. Moore moved for summary judgment. In pertinent part, the district court found that the University of Alabama colours had achieved “some” secondary meaning but were not especially strong trademarks, and that Moore’s paintings of the uniforms were protected by the First Amendment and were a “fair use” of University of Alabama’s common law trademarks. The University of Alabama appealed to the Eleventh Circuit Court of Appeals.
On appeal, the University of Alabama argued that its uniforms were strong trademarks and submitted a survey in support. The Eleventh Circuit stated that it was in “basic agreement” with the district court’s evaluation, but deemed it unnecessary to further address any strength of mark issue in view of its decision that the Moore’s First Amendment interests in free expression “so clearly outweigh” any likelihood of confusion that there was no violation of the Federal Lanham Act.
The Eleventh Circuit first determined that Moore’s paintings were expressive, as opposed to commercial, speech. Commercial speech is entitled to a lower degree of First Amendment protection. However, as expressive speech, Moore’s paintings were entitled to full protection under the First Amendment.
The Eleventh Circuit next applied a balancing test that weighed the public interest in free expression against the public interest in avoiding consumer confusion. Relying on case law from other circuits, the court held that an artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source of the content of the work”.
In accordance with that test, the Eleventh Circuit found that the depiction of the uniforms was artistically relevant to the expressive underlying works because the uniforms’ colours and designs were necessary for a realistic portrayal of University of Alabama football scenes. Moore’s use of the University of Alabama trademarks was merely a necessary inclusion in an artistic image that Moore created to memorialise and enhance a particular play or event in the University of Alabama's football history. Any confusion resulting from an incorrect inference that the University of Alabama officially endorsed or sponsored such paintings was outweighed by the interests in artistic expression protected by the First Amendment. Moore’s paintings and prints did not infringe any trademark right of the University of Alabama.
The University of Alabama’s assertion of trademark rights was an attempt to score a profit from any and all depictions of an University of Alabama trademark. The Eleventh Circuit, however, found the First Amendment to be a stingy defence that stopped the University of Alabama well short of the goal line.
Steve Schaetzel, McKeon Meunier Carlin & Curfman LLC, Atlanta
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