An artist’s right to incorporate trademarks in expressive works pits the artist’s fundamental right of freedom of expression guaranteed by the First Amendment, against the desire of a trademark owner to aggressively control the licensing of merchandise based on its trademarks. And when the artwork involves a much-loved college sports team, the tension runs deep. On June 11th 2012 the Court of Appeals for the 11th Circuit reached a decision in the much anticipated University of Alabama Board of Trustees v New Life Art Inc. case. The case chronicles the legal saga between the University of Alabama and Daniel Moore, a long time sports painter of football scenes for the University in which the Artist came out the victor, essentially winning a touchdown for advocates of art as expressive work, free from the restraints of trademark law.
Painter Daniel Moore’s has a long relationship with the University and his famous representational football scenes involving the University for Alabama, complete with its uniforms, helmets and crimson and white colors have been featured on the school’s calendars, prints, mugs, and other items, all displayed and sold at the student book store over many years. Some of the paintings and prints were official licensed products, subject to a dozen licensing agreements he entered into with the University, and others were not. In 2002, the University instructed Moore that all of his paintings and related prints, calendars, mugs, t-shirts and similar merchandise needed to be under license. After his refusal, the University filed suit for breach of contract, trademark infringement, and unfair competition.
Following both parties motions for summary judgment, the District Court divided the different types of items at issue and granted summary judgment to Moore with respect to paintings and prints. However, the District Court granted summary judgment to the University with respect to calendars, mugs, and other “mundane products.”
On appeal, the 11th Circuit affirmed portions of the District Court’s decision and extended the category of works that did not require licenses to include calendars. In his opinion, Judge Anderson stated that the unlicensed depictions of the uniforms on paintings, pictures, and calendars were not prohibited by the Lanham Act since any confusion as to endorsement or sponsorship of the works was outweighed by First Amendment considerations. The Court applied the balancing test from Rogers v Grimaldi, 875 F.2d 994 (2nd Cir. 1989), the landmark case for balancing Lanham Act and First Amendment rights. The court in Rodgers, decided to interpret Lanham Act protections narrowly: “…the Act should be construed to apply to artistic works only where the public interest is avoiding consumer confusion outweighs the public interest in free expression.”
Here, the Court gave great weight to Moore’s artistic expression and the artistic relevance in including the University uniforms in the context of the work. In other words, you could not portray the football scene without reference to the school colors and logos. Although the court conceded that consumers maybe likely to confuse Moore’s art as being endorsed by the University, the Judge found that Moore had not actively deceived or mislead customers as to the source of the materials.
Furthermore, Judge Anderson stated that depictions of the University’s logo in Moore’s art were protected under the First Amendment and in the context of the paintings, prints and calendars, resulted in no violation of the Lanham Act. The University’s trademark interests and the risk of confusion were outweighed by the strong First Amendment interest in the artistic expression. However, the battle between David and Goliath is not over. Reversing the lower court decision in favor of the University, in terms of mugs and other “mundane products” , the court remanded the issue for further proceedings to determine if even these items require a license.
This case is a clear signal that expressive works are to be given First Amendment protection, regardless of whether some confusion is likely over the depiction of trademarks where the artist can demonstrate that his use of the trademark is artistically relevant. Trademark holders are typically aggressive in asserting Lanham Act rights when trademarks are used in film, television, photographs and the like.
This decision frees up artists, filmmakers and others when depicting realistic scenes, allowing them greater artistic expression without the burden of clearing trademark rights in instances of artistic relevance. As in Rogers v Grimaldi, this case demonstrates that the rights of a trademark owner, are not absolute, and must be considered against the strong right afforded under the First Amendment’s freedom of expression.