LaFrance on First Amendment Protection for Expressive Works Depicting Trademarks

In University of Alabama Bd. of Trustees v. New Life Art, Inc., 2012 U.S. App. LEXIS 11794 (11th Cir. June 11, 2012) [enhanced version available to lexis.com subscribers], the Eleventh Circuit joined several other circuits in recognizing a high degree of First Amendment protection for traditional expressive works which make unauthorized use of trademarks. In some ways, however, the opinion is more interesting for the issues it avoids than for those it addresses. In this Analysis, Mary LaFrance discusses New Life Art and offers some observations for trademark owners. She writes:

I. Background

     From 1979-2002, artist Daniel Moore painted famous football scenes depicting University of Alabama players, including their uniforms. His paintings have been reproduced on merchandise such as prints, calendars, and mugs.

     During part of this time, Moore also entered into licensing agreements with the university which permitted him to produce certain items which displayed university trademarks on the border or packaging, or which were marked as officially licensed products.

     In 2002, the university informed Moore that he would need licenses for any work depicting the university's marks, except for books. When Moore declined to enter such agreements, the university brought this trademark infringement action, alleging that all of Moore's depictions violated the university's trademarks in the design and colors of its football uniforms. The district court granted summary judgment to Moore with respect to the paintings and prints, but granted summary judgment to the university with respect to the calendars, mugs and other "mundane products." Both parties appealed.

II. Eleventh Circuit's Analysis

     For purposes of its analysis, the Eleventh Circuit divided the allegedly infringing items into two categories: (1) paintings, prints, and calendars; and (2) mugs and other "mundane products."

A. Paintings, Prints, and Calendars

     Treating this category of works as artistic expression rather than pure commercial speech, the Court of Appeals applied the familiar Rogers balancing test, derived from the Second Circuit's opinion in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) [enhanced version available to lexis.com subscribers]. The court concluded that the First Amendment protected Moore's use of the university's marks in paintings, prints, and calendars because (1) their depiction was artistically relevant, (2) Moore did not explicitly mislead consumers as to the source of the works, and (3) "the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act with respect to the paintings, prints, and calendars."

(citations omitted)

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