The Alabama Crimson Tide came rolling into court this week
only to find its trademark claims stuffed at the goal line. Who did the stuffing? The First Amendment,
with a little help from the 11th Circuit. As the court stated:
[W]e have no hesitation in joining
our sister circuits by holding that we should construe the Lanham Act narrowly
when deciding whether an artistically expressive work infringes a trademark.
This requires that we carefully "weigh the public interest in free
expression against the public interest in avoiding consumer confusion." 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."
Daniel A. Moore, who paints famous football scenes involving
the University of Alabama, was sued by the University for trademark
infringement. Mr. Moore's paintings portray the University's uniforms, helmets,
jerseys, and crimson and white colors. In filing suit, the University argued
that Moore's paintings, prints, and calendars violated the Lanham Act by
infringing the University's trademark rights in its football uniforms.1
In Univ. of Ala. Bd.
of Trs. v. New Life Art, Inc., 2012 U.S. App. LEXIS 11794 (11th Cir. Ala.
June 11, 2012) [enhanced version available to lexis.com subscribers],
the court did not have to settle upon a precise evaluation of the football mark's strength
or the degree of likelihood of
confusion. Instead, the First Amendment interests in artistic expression clearly
outweighed whatever consumer confusion existed upon the facts. Consequently,
the court concluded that there had been no violation of the Lanham Act with respect
to Moore's paintings, prints, and calendars.
Citing Rogers v.
Grimaldi, 875 F.2d 994 (2d Cir. N.Y. 1989) [enhanced version available to lexis.com subscribers]
(and comparing ETW Corp. v. Jireh Publ'g,
Inc., 332 F.3d 915 (6th Cir. Ohio 2003) [enhanced version available to lexis.com subscribers],
which involved a painted collage of Tiger Woods images), the court concluded
that Moore's paintings, prints, and calendars were protected under the Rogers test:2
The depiction of the University's
uniforms in the content of these items is artistically relevant to the
expressive underlying works because the uniforms' colors and designs are needed
for a realistic portrayal of famous scenes from Alabama football history. Also
there is no evidence that Moore ever marketed an unlicensed item as
"endorsed" or "sponsored" by the University, or otherwise
explicitly stated that such items were affiliated with the University. Moore's paintings,
prints, and calendars very clearly are embodiments of artistic expression, and
are entitled to full First Amendment protection. The extent of his use of the
University's trademarks is their mere inclusion (their necessary inclusion) in
the body of the image which Moore creates to memorialize and enhance a
particular play or event in the University's football history. 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.
There was, however, a small victory for the University.
Moore argued that because his original paintings did not infringe the
University's trademarks, he had an unfettered right to produce derivative works featuring those paintings. The court
disagreed with this broad contention. Specifically, Moore's copyright in the
paintings did not give him an automatic defense to any trademark claims made by
the University. The court noted that:
[A] person could easily circumvent
trademark law by drawing another's trademark and then placing that drawing on
various products with impunity. Selling the copyrighted drawing itself may not
amount to a trademark infringement, but its placement on certain products very
1. The University also challenged the depiction of Moore's paintings upon mugs and
other "mundane products" (e.g., cups, flags, towels, t-shirts). Moore
was appellant for these items, and on the related issues, the 11th
2. As the Rogers court stated:
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. In the context of allegedly misleading titles using a
celebrity's name, that balance will normally not support application of the Act
unless the title has no artistic relevance to the underlying work whatsoever,
or if it has some artistic relevance, unless the title explicitly misleads as
to the source of the work.
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