Artist’s Rendering of Alabama Football Players Was Protected By First Amendment And Does Not Amount to Trademark Infringement

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The  Eleventh Circuit issued an important trademark decision yesterday, holding that the First Amendment protected an artist’s right to paint Alabama football scenes because the depiction of the Alabama uniform (which the University contends is a trademark) is necessary for the historical accuracy of the scene.  Since 1979, Daniel A. Moore has painted famous football scenes involving the University of Alabama .  The paintings feature realistic portrayals of the University’s uniforms, including helmets, jerseys, and Alabama’s crimson and white colors.  Moore has reproduced his paintings as prints and calendars, as well as on mugs and other articles.

In 2002, the University told Moore that he would need permission to depict the University’s uniforms because they are trademarks.  Moore contended that he did not need permission because the uniforms were being used to realistically portray historical events.  The parties could not reach a resolution, and in March 2005, the University sued Moore in the Northern District of Alabama for breach of contract, trademark infringement, and unfair competition.

The outcome at the district court was split.  The court granted summary judgment to Moore with respect to paintings and prints, and granted summary judgment to the University with respect to calendars, mugs, and other “mundane products.”  Both parties appealed to the 11th Circuit.  Judge Harvey Schlesinger wrote the opinion for the court , which resolved almost all of the issues in favor of the artist.

The 11th Circuit begins by concluding that the parties’ previous license agreements were ambiguous and did not address Moore’s right to depict players wearing Alabama uniforms. The court then looked to the parties’ course of dealing to determine  that Moore did not  need permission every time he sought to portray the University’s uniforms in the content of his paintings, prints, and calendars Accordingly, the court rejected the University’s argument that the parties’ previous licensing agreements should serve to end the appeal.

The court then turn to the question of whether Moore’s paintings and other products amount to trademark infringements under the Lanham Act.  After analyzing the tension between the Lanham Act and the First Amendment, the court rather easily concludes that Moore’s paintings are protected by the First Amendment , stating

The depiction of the University’s uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniforms’ colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history.

Because there was no evidence that Moore ever marketed an unlicensed item as “endorsed” or “sponsored” by the University, or otherwise explicitly stated that such items were affiliated with the University, his paintings, prints, and calendars  are embodiments of artistic expression, and are entitled to full First Amendment protection.  The extent of his use of the University’s trademarks is inclusion in the image which Moore creates to memorialize and enhance a particular play or event in the University’s football history.  Even if some people might be confused, the risk of this misunderstanding, which is not overtly caused by some act of Moore, is outweighed “’by the interest in artistic expression as to preclude’” any violation of the Lanham Act.

The court then turned to the question of whether Moore’s works were infringing when applied to mugs and other “mundane products.” The court again referenced the fact that the parties’ licensing agreements did not cover the Alabama football uniform and concluded that the record was too thin to determine whether the parties’ course of dealings with respect to mugs would shed any light on the issue. Accordingly, the court remanded the case back to the district court to more fully develop the record with respect to the mugs and mundane products. Notably, the court was not moved by Moore’s copyright defense on this point, commenting that while selling a copyrighted drawing itself might not be trademark infringement, placing the copyrighted drawing on certain products very well might violate the trademark rights of another.

All in all, it was a good day for the artist and one the SEC and other licensors might like to forget.  The  First Amendment remains a powerful weapon against trademark claims brought against artists.

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