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:
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
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."
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