ELEVENTH CIRCUIT, DECISION OF 11 JUNE 2012, BD. OF TRS. OF THE UNIVERSITY OF ALABAMA V. NEW LIFE ART, INC., ET AL., NO. 09-16412
The Eleventh Circuit held that paintings of University of Alabama football games that depicted the University’s uniforms did not constitute trademark infringement. The use of a trademark in a manner that is artistically relevant to an expressive work does not violate the Lanham Act unless it explicitly misleads consumers as to the source of the work. Therefore, as the artist’s paintings, prints, and calendars in this case were "artistically expressive objects" protected by the First Amendment, the Lanham Act would only apply to such works "where the public interest in avoiding consumer confusion outweighs the public interest in free expression." This decision endorses a restrained view of the Lanham Act to avoid impinging on First Amendment rights.
For nearly three decades, artist Daniel A. Moore has painted realistic University of Alabama football scenes that include depictions of the University’s football uniforms. These paintings have been reproduced as prints and calendars, and have been featured on mugs, t-shirts, and other "mundane products." During the 1990’s, Moore and the University entered into a dozen licensing agreements which were limited to the production and marketing of a specific set of items. But in 2002, the University demanded royalties from Moore for any of his paintings that contained the football uniforms, and when Moore refused, the University sued for breach of contract and trademark infringement. The University contended that the prior licensing agreements prohibited Moore from portraying the uniforms without permission, and, even if they did not, the uniforms were such "strong trademarks" that Moore’s paintings were likely to confuse consumers into believing that the University sponsored or endorsed the products.
The court addressed the arguments on appeal by dividing the products produced by Moore into two categories: paintings, prints, and calendars; then, separately, mugs and other "mundane products."
Looking at the first category, the court determined that the licensing agreements were ambiguous with respect to depiction of the uniforms, but that the conduct of the parties was contrary to a finding that Moore was required to obtain permission every time he portrayed the uniform in a painting, print, or calendar. Analysis of the agreements and subsequent conduct therefore did not resolve the dispute.
The court then moved to a traditional trademark infringement analysis and determined that any likelihood of confusion, if it in fact existed, was outweighed by Moore’s First Amendment rights. In doing so, the court adopted the balancing test articulated by the Second Circuit in Rogers v. Grimaldi, finding that the Lanham 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."1 In holding that the Lanham Act should be read narrowly when deciding if an "artistically expressive work" infringes a trademark, the court found that Moore’s depiction of the University’s uniforms was artistically relevant to his underlying work and therefore "the interest in artistic expression" outweighed the "risk of misunderstanding." Therefore, this category of claims was dismissed.
For the mugs and other "mundane products," the court found that there was a lack of evidence regarding whether the parties intended these products to be covered by the agreements. It was equally unclear whether the University acquiesced to Moore’s use of the trademarks for these products. Accordingly, the court remanded these claims for further fact-finding.