University of Alabama Board of Trustees v. New Life Art, Inc.

Court of Appeals for the Eleventh Circuit
683 F.3d 1266 (2012)

ELI5:

Rule of Law:

The use of a trademark in an artistically expressive work does not violate the Lanham Act if the use is artistically relevant to the underlying work and does not explicitly mislead as to the source or content of the work.

Facts:

Since 1979, artist Daniel A. Moore has created paintings of famous University of Alabama football scenes.
Moore's paintings realistically portray the University's distinctive crimson and white uniforms, including helmet and jersey designs.
From 1991 to 1999, Moore entered into several licensing agreements with the University for specific products, but also continued to create and sell many other unlicensed works depicting the uniforms.
During this period, the University was aware of Moore's unlicensed work; it granted him press credentials, asked him to produce an unlicensed painting on live television, displayed his unlicensed art, and sold his unlicensed calendars in its campus stores.
In 2002, the University informed Moore that he needed to obtain a license for all of his Alabama-related products because they featured the University's trademarks.
Moore disputed this, arguing that he did not need permission because his use of the uniforms was necessary to realistically portray historical events.
The parties were unable to resolve their disagreement over the licensing requirements.

Procedural Posture:

The University of Alabama sued Daniel A. Moore in the U.S. District Court for the Northern District of Alabama, alleging trademark infringement and breach of contract.
Both parties filed cross-motions for summary judgment on the Lanham Act claims.
The district court granted summary judgment to Moore for his paintings and prints, holding they were protected by the First Amendment.
The district court granted summary judgment to the University for calendars, mugs, and other 'mundane products,' finding they were not protected.
Both Moore (appellant on the mundane products) and the University (appellant on the paintings and prints) appealed the summary judgment rulings to the U.S. Court of Appeals for the Eleventh Circuit.

Premium Content

Subscribe to Lexplug to view the complete brief

You're viewing a preview with Rule of Law, Facts, and Procedural Posture

Issue:

Does an artist's realistic depiction of the University of Alabama's trademarked football uniforms in paintings, prints, and calendars, which are sold for profit, violate the Lanham Act's prohibition on trademark infringement?

Opinions:

Majority - Anderson, Circuit Judge

No. Moore's depiction of the University's uniforms in his paintings, prints, and calendars does not violate the Lanham Act because the artwork is expressive speech protected by the First Amendment. The court first found the parties' prior licensing agreements to be ambiguous as to whether uniforms were included as 'licensed indicia.' Based on the parties' course of conduct—where the University knowingly sold Moore's unlicensed calendars and promoted his work—the court concluded the agreements were not intended to prohibit Moore's realistic depictions in his art. Adopting the balancing test from Rogers v. Grimaldi, the court held that an artistically expressive use of a trademark violates the Lanham Act only if the use either has no artistic relevance to the work or explicitly misleads consumers as to its source. Here, the uniforms are artistically relevant because they are essential for a realistic portrayal of historical football scenes. Furthermore, there was no evidence that Moore explicitly marketed his works as sponsored or endorsed by the University. Therefore, the public interest in free artistic expression outweighs the risk of consumer confusion.

Analysis:

This decision formally adopts the influential Rogers v. Grimaldi test in the Eleventh Circuit, aligning it with other circuits in balancing First Amendment rights against trademark protection. The ruling provides significant protection for artists who incorporate real-world trademarks into expressive works for the purpose of realism or commentary. It establishes that as long as the trademark's use is integral to the art and not overtly deceptive, it will likely be shielded from Lanham Act claims. The court's distinction between expressive works like paintings and commercial 'mundane products' like mugs also suggests that the level of First Amendment protection may vary depending on the medium of expression.

Gunnerbot

AI-powered case assistant

Loaded: University of Alabama Board of Trustees v. New Life Art, Inc. (2012)

Try: "What was the holding?" or "Explain the dissent"