In certain contexts, such as when an entity vested with state authority – in this case, the University of Alabama – tries to enforce trademark rights against an artist who portrays the trademark in an expressive work of art, the enforcement attempt raises a constitutional issue under the First Amendment.

In 1979, a painter named Daniel A. Moore started painting works of art depicting famous historic highlight moments from Alabama football games. Moore’s paintings featured realistic representations of Alabama’s uniforms, including the helmets and logos of the Crimson Tide. Moore sold, licensed, and reproduced his paintings on mugs and calendars for many years, and for at least nine years Moore marketed some of his products under formal licenses from the University. In 2002, however, the University informed Moore that he would need a license to depict Alabama’s football uniforms because the uniforms constitute trademarks of the University. Moore refused to subscribe to a license agreement based on the argument that he was not making trademark use of the uniforms; rather, he was portraying the uniforms as part of historic events. When the parties could not resolve their impasse, the University sued Moore in 2005. Neither party was pleased with the rulings of the federal district court, so both appealed to the Eleventh Circuit, which issued an opinion last month: Univ. of Alabama Board of Trustees v. New Life Art Inc.

The Eleventh Circuit performed its analysis partly with reliance on a cornerstone case for balancing the Lanham Trademark Act with the First Amendment: a 1989 decision from the Second Circuit called Rogers v. Grimaldi. The Second Circuit formulated a balancing test and asserted that “We believe that in general 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 Eleventh Circuit said “we have no hesitation in joining our sister circuits” which have applied the Rogers test by interpreting “the Lanham Act narrowly when deciding whether an artistically expressive work infringes at trademark.” The Court went on to find that Moore’s paintings were entitled to full protection under the First Amendment because Moore’s use of the University’s trademarks served “to memorialize and enhance a particular play or event in the University’s football history,” and, therefore, the interest in Moore’s free expression so outweighed the minimal risk of consumer confusion in regard to whether the use of the University’s trademarks had been authorized that no violation of the Lanham Act had occurred.