It usually takes an entire opposing team to defeat a determined ‘Bama offense, but in June 2012, artist Daniel A. Moore managed to do that single-handedly (if you don’t count his lawyers and a panel of appeals court judges). In University of Alabama Board of Trustees v. New Life Art, Inc., the U.S. Court of Appeals for the Eleventh Circuit handed Moore a decisive win against the school’s claims that his paintings, prints and calendars depicting Crimson Tide football players in team colors infringe the University’s trademarks.

Moore’s relationship with the University goes way back, as does the course of conduct between them with respect to the creation and distribution of his work. And that course of conduct was to have a bearing on the ultimate outcome of their dispute in the appellate court.

Moore is a ‘Bama alum, and, according to him, a proud supporter of the school. He graduated from the University with a B.A. in Fine Arts in 1976. A few years thereafter, he began producing and selling “historic” depictions of the team in uniform, including helmets and jerseys showing the Alabama crimson and white team colors. Until 1990 Moore produced these works without any licensing or other agreement with the University. The school was aware of his work, however, and ordered and resold prints of his work on numerous occasions.

Beginning in 1991, Moore and the University entered into a series of licensing agreements that, among other things, provided for the use of University trademarks on the border or packaging of specific items. Items such as mugs, cups, flags, towels and t-shirts, “and other mundane products,” were referenced in the agreements. Despite those agreements, Moore continued to produce and distribute paintings and prints that were not licensed, as well as redistribute works created prior to 1991. The University was aware of those unlicensed works. For example, the University provided Moore with press credentials to enable him to obtain material for his work, and asked him to create an unlicensed painting on live television during a football game, among other things.

But in 2002, the University informed Moore that his paintings and prints would have to be licensed because they utilized the University’s trademarks; in particular, the football uniforms in the team colors. When negotiations failed, the University filed suit under the Lanham Act. After what the appeals court referred to as a “meandering path” through the district court, the dispute arrived in the Eleventh Circuit.

The appeals court first addressed the issue of whether Moore’s paintings, prints and calendars were covered by the 1991 and subsequent licensing agreements. Having concluded that the licensing agreements were ambiguous as to coverage of these items, the court relied on Alabama law, which counsels attention to the parties’ course of conduct in resolving contract interpretation ambiguities. Based upon that course of conduct, the court determined that the University clearly did not intend that Moore would need a license every time he portrayed the team uniforms in paintings, prints and calendars.

The court then turned to the question of whether the depiction of the uniforms constituted trademark infringement, and on this issue, the court deployed the First Amendment defense. The University argued that the paintings, prints and calendars were “more commercial than expressive speech” and thus were entitled to a lesser degree of First Amendment protection than purely expressive speech. But the court ruled that the paintings, prints and calendars were entitled to “full protection under the First Amendment.”

The court applied the balancing test enunciated in Rogers v. Grimaldi (2d Cir. 1989), under which the Lanham Act is read narrowly. To avoid impinging on First Amendment speech, the Second Circuit ruled, the Act “should apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” This balancing test was referenced by the Sixth Circuit in ETW Corp. v. Jireh Publishing, Inc. (6th Cir. 2003), in which Tiger Woods’s publicity company sued an artist who created and sold prints of a collage memorializing the golfer’s 1997 win at the Masters of Augusta. There, the appeals court applied the Rogers v. Grimaldi balancing test in concluding that the depiction of Woods was protected because it “had artistic relevance to the underlying work” and did not explicitly mislead as to the source of the work.

The Eleventh Circuit concluded that Moore’s work was similarly protected under the Rogers balancing test, because the team uniform colors and designs “are needed for a realistic portrayal of scenes from Alabama football history.” There was no evidence, the court found, that Moore marketed unlicensed products as sponsored or endorsed by, or otherwise affiliated with, the University. The “mere inclusion” and “necessary inclusion” of the University’s trademarks, the court found, was to “memorialize and enhance a particular play or event in the University’s football history.”

As to the cups, mugs and other “mundane items” at issue, the case was returned to the district court for the resolution of factual issues.

Meanwhile, the Tide rolls on. Alabama crushed Michigan in its season opener and regained the top spot in the AP college football rankings. That’s no doubt a win for Moore as well, and for the market for his work.