Addressing the issue of trademark licensing and infringement, the United States Court of Appeals for the Eleventh Circuit affirmed in part and reversed in part a district court’s ruling that an artist who depicted the University of Alabama’s football teams in paintings had infringed on the university’s trademarks, the appellate court finding the artist’s works were protected by the First Amendment as artistic expression that only used the trademarks as necessary to artistically depict famous football images and therefore did not infringe the university’s trademarks. The University of Alabama Board of Trustees v. New Life Art, Inc., Case No. 10-10092 (11th Cir., June 11, 2012) (Anderson, J.)
Artist Daniel Moore has painted famous football images related to the University of Alabama since 1979, selling paintings and related commercial items such as mugs, prints and calendars featuring his paintings. The university was aware of these items as early as 1980, but did not seek licensing fees or assert any intellectual property rights until the mid 1990s. The university did buy some of Moore’s artwork throughout these years. Eventually the university required Moore to sign license agreements to produce certain items using the university’s trademarks in exchange for royalties. In the early 2000s the university asked Moore to sign additional license agreement relating to the football uniforms of the university, in exchange for royalties, which Moore refused. The university then brought both breach of licensing and trademark claims against Moore and his company, New Life Art. After the district court found for the university on its claims, Moore appealed.
The 11th Circuit divided the issue into two categories: Moore’s paintings, prints and calendars (collectively referred to as “paintings”), and the more “mundane” items, such as mug and t-shirts. The 11th Circuit remanded certain issues relating to the “mundane” items back to the district court, but reversed the district court’s ruling that the paintings were covered by the license agreement and that they infringed the university’s trademarks.
As to the trademark claims regarding the paintings, the 11th Circuit found that Moore’s First Amendment rights to artistic expression trumped the university's trademark rights, since it was clear that these were Moore’s paintings and not those of the university. Citing the U.S. Court of Appeals for the Second Circuit Rogers v. Grimaldi case and others, the Court explained that trademark rights must be narrowly drawn to avoid impinging on an artist’s First Amendment rights. As the court explained: “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 or content of the work.” Since the university’s uniforms were needed to depict the famous football images created by the artist and extent of the use was limited to the artist’s need to depict the famous football images in issue, the 11th Circuit concluded there was no trademark infringement.
As to licensing claims regarding the paintings, the court held that Moore’s paintings did not fall under the license agreements because they were not “licensed indicia” that could accommodate trademark registration symbols nor could the trademark be placed on any “products.” The court also noted in passing that the university did not require Moore to pay royalties for such paintings throughout the 1990s.
Practice Note: Artistic expression is broadly protected under the First Amendment, while trademark rights are narrowly construed to protect only customer confusion created such expression. When in conflict, the First Amendment will prevail unless the use explicitly misleads the public.