June 21, 2012
Last week, the 11th Circuit ruled in favor of artist Daniel Moore in the University of Alabama’s trademark violation suit against him. See 2012 WL 2076691. The University claimed that Moore breached licensing agreements and violated the Lanham Act by infringing the University’s trademark rights in its football uniforms. Since 1979 Moore has painted scenes of important events in Alabama football history, some of which were later placed on calendars, mugs and other objects. The University asserted that Moore needed permission to portray the University’s uniforms, including the jersey and helmet designs and the crimson and white colors (technically “Crimson PMS 201”and “Gray PMS 429”). Moore contended that he did not need permission to paint historical events and that there was no trademark violation so long as he did not use any of the University’s trademarks outside the area of the original painting.
The Court, in siding with Moore, stated:
“……we conclude that 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.”
The case highlights the balancing of free expression and trademark rights, and is being hailed as a victory for artists. See 2012 WLNR 12475958 and 2012 WLNR 12486316. Still, the law is far from settled:
There is a problem that faces one who is accused of infringing a trademark and who claims that she is merely using another’s trademark in a noninfringing manner to convey some social, artistic, entertainment or political expression protected by the First Amendment as free speech. The problem is that there is no easily articulated, clearly defined legal principle that can quickly resolve the conflict. There is no statutory or judge-created safe harbor or affirmative defense that easily resolves such conflicts. Rather, there is a buffet of various legal approaches to choose from. Different courts will choose different approaches and some courts will use more than one.
6 McCarthy on Trademarks and Unfair Competition § 31:139 (4th ed.)
For the dockets and an extensive list of trial and appellate filings in the case, select the “Filings” tab when viewing the case on WestlawNext, or select “Petitions, Briefs & Filings” on the “Links For” tab on Classic Westlaw.
For recent news stories about the case, run the following search in News on WestlawNext or ALLNEWS on Classic Westlaw:
moore & alabama & football & trademark & da(2012)
For articles on the subject, including “Shades of Gray: The Functionality Doctrine and Why Trademark Protection Should Not be Extended to University Color Schemes”, 21 Marq. Sports L. Rev. 361, try the following search in Secondary Sources on WestlawNext or TP-ALL on Classic Westlaw:
moore /s alabama & football & trademark