While the University of Alabama has been virtually unbeatable on the football field, the United States Eleventh Circuit Court of Appeals dealt the University a rare defeat in a case involving the use of its trademarks by the artist Daniel A. Moore.

In 1979, Moore, a 'Bama alum, began painting scenes of important Crimson Tide football events.  Moore produced and sold these iconic depictions, which utilized the University's crimson and white colors, without a license.  The University was fully aware of Moore's actions and even resold works created by Moore.  From 1991 to 1999, Moore entered into a number of licensing agreements with the University to produce and market specific items.  During this time period, Moore also produced other related painting and prints that were not licensed by the University. The University never requested Moore pay royalties and was found to have issued him press credentials to Crimson Tide football games to facilitate obtaining material for his work.  Further, on one occasion, Moore, at the University's request, produced an unlicensed painting on live television during a Crimson Tide football game.

However, in 2002, the University informed Moore that he would need to license all of his Crimson Tide-related products because they featured the University's trademarks.  When the sides could not reach an agreement, the University filed suit claiming that Moore had breached existing licensing agreements and also violated the Lanham Act by infringing on the University's trademark rights in its football uniforms. The University argued that Moore needed the its permission to portray its uniforms and school colors since his works were more commercial than expressive and thus the works would be entitled to a lower degree of First Amendment protection.

With respect to the issue of whether Moore's works were covered by existing licensing agreements, the court concluded that the agreements were ambiguous as to the coverage of specific items.  In addition, the court ruled that the University, by engaging in the sale of unlicensed products, did not intend for Moore to obtain a license for every work he created.

As to the University's Lanham Act claim, the court ruled that Moore's works were entitled to the full protection of the First Amendment.  The Court utilized the balancing test established in the landmark case, Rogers v. Grimaldi (875 F.2d 994, 2d Cir. 1989).  The Rogers test, which interprets the Lanham Act narrowly with respect to artistic works, provides 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.  The court, after applying this test, found Moore's works were entitled to protection under the First Amendment, which clearly outweighed any consumer confusion that might exist. 

Univ. of Alabama Bd. of Trustees v. New Life Art, Inc., No. 09-16412 (U.S. Cir. Ct. of App., 11th Cir., June 11, 2012)