by Jordan S. Paul
On June 11, 2012, artist Daniel Moore finally prevailed in his 10-year battle for the right to create paintings and prints of the University of Alabama’s “Crimson Tide” football team.
Since 1979, Daniel Moore has been painting celebrated moments from the Crimson Tide’s storied history. Many of these paintings depict realistic portrayals of action scenes and often include the University of Alabama’s iconic crimson and white helmets and uniforms. Moore has also created derivative works of these paintings on mugs, mini-prints, cups, flags, towels, and t-shirts.
Mr. Moore’s work did not go unnoticed by the University of Alabama. In fact, the University of Alabama had been commissioning, purchasing, and reselling Moore’s work since 1991 and continued to do so through 1999. As part of this arrangement, Moore and the University of Alabama entered into numerous licensing agreements that permitted Moore to use additional University trademarks and granted permission to Moore to say that his art was “officially licensed.” However, during this period, Moore also created numerous unlicensed prints, paintings, and related products depicting University of Alabama football players and scenes. Some of these were sold by the University of Alabama in its campus store and one unlicensed painting even adorned the University’s athletic department office.
Despite the University of Alabama’s knowledge that Moore was creating numerous unlicensed works, it did not demand royalties until 2002, eventually commencing litigation in 2005, in which it accused Moore of breach of contract, trademark infringement, and unfair competition.
In 2009, the Northern District of Alabama held that (1) the prior licensing agreements did not require that Moore receive permission to portray the University’s uniforms because the uniforms were not included in the agreements’ definition of “licensed indicia”; (2) the University’s colors had some secondary meaning but were not especially strong marks on the trademark spectrum; (3) Moore’s depiction of the uniforms in paintings and prints was protected by the First Amendment and also was a fair use; and (4) Moore’s depiction of the uniforms on mugs, calendars, and other “mundane products” was not protected by the First Amendment, was not a fair use, and would likely result in consumer confusion. In its decision last week, the Eleventh Circuit affirmed and reversed the District Court’s ruling.
With respect to the prior licensing agreements entered into by Moore and the University of Alabama, the Eleventh Circuit agreed that there was ambiguity as to whether Moore was allowed to depict Alabama uniforms in unlicensed products. To resolve this ambiguity, the Eleventh Circuit agreed that it was proper to examine the course of conduct between the parties, noting that Moore’s continued unrestricted use of Crimson Tide uniforms and helmets was known, tolerated, and even monetized by the University of Alabama. Therefore, the Eleventh Circuit affirmed the district court’s ruling that the parties’ course of conduct indicated that neither Moore nor the University of Alabama had any expectation that the licensing agreement would prohibit Moore from engaging in unlicensed work that incorporated Crimson Tide uniforms or helmets:
The parties’ course of conduct clearly indicates that they did not intend that Moore would need permission every time he sought to portray the university’s uniforms in the content of his paintings, prints and calendars.
Nor was the University of Alabama any more successful on its trademark infringement claims. Ultimately, the Eleventh Circuit agreed that Moore’s First Amendment Rights outweighed any likelihood of confusion that may flow from his incorporation of Crimson Tide helmets, uniforms, or associated colors, holding:
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 the content of the work.
Even if some members of the public would draw the incorrect inference that [the University] had some involvement with [Moore’s paintings, prints, and calendars,] . . . that risk of misunderstanding, not engendered by any overt [or in this case even implicit] claim . . . is so outweighed by the interest in artistic expression as to preclude” any violation of the Lanham Act.
But, with respect to the mini-prints, cups, flags, towels and t-shirts, the Eleventh Circuit rejected the district court’s ruling that these products were covered by the licensing agreements and could only be created by Moore subject to those agreements. In so doing, the Eleventh Circuit remanded the case on this issue and ordered the District Court to more fully develop the record with regard to Moore’s First Amendment and fair use defenses.
Of course, this decision is a decisive win for Moore. And, in a larger sense, it is another step closer to greater clarity and resolution of the longstanding tension between trademark and First Amendment Rights, first explored in depth in by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and by the Sixth Circuit in ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 925 (6th Cir. 2003). For trademark owners, the takeaway could not be clearer: develop and institute a focused and comprehensive IP management policy that vigilantly “polices” your marks, or risk diminution of their value – or, worse, lose the right to control them completely. For content owners, this case is an ostensible win, but it should caution those who stray too far from First Amendment expression and into intellectual property misappropriation.
Jordan Paul is an attorney with Robins, Kaplan, Miller & Ciresi L.L.P. where his practice focuses on intellectual property and complex commercial matters, with an emphasis on copyright infringement and contract disputes in the entertainment industry.