University of Alabama Can’t Stop Paintings of Famous Crimson Tide Football Moments–University of Alabama v. New Life Art

By guest blogger Deborah Gerhardt

[Eric’s introduction: Deborah Gerhardt is a law professor at University of North Carolina. She is part of the 3G team (including myself and Leah Chan Grinvald) working on the trademark policing article I mentioned last week. Deborah helped with an amicus brief in this case. I also signed onto that brief.]

The University of Alabama Board of Trustees v. New Life Art, Inc., No. 09-16412 (11th Cir. June 11, 2012)

Summary: On June 11, 2012, the Eleventh Circuit Court of Appeals elevated Daniel Moore to the rank of art law hero. In 2005, the University of Alabama sued him for breach of contract and trademark infringement. His offense? Daniel Moore had the audacity to include the team uniforms and colors in his paintings depicting famous moments from Alabama football games. The Eleventh Circuit concluded that Moore may continue creating his art without the University’s permission. The opinion states that Daniel Moore has a First Amendment right to include the crimson and white uniforms in his paintings of famous football moments and that this right trumps any trademark rights the team has in its colors.

Background: Since 1979, Daniel Moore has been painting photorealistic scenes of historic moments from Alabama football games. He sometimes spends months drawing, planning and painting a single canvas. Because of the amount of time invested in each work, the originals are only available to fans who can afford to spend thousands of dollars. Moore gives a much wider audience access to his works by selling prints, mugs, t-shirts, and calendars.

Moore is revered among Alabama fans. When I flew from Raleigh to Atlanta to help Moore’s team prepare for the oral argument, the woman sitting next to me on the plane saw the caption on the brief I was reading. She leaned in to share that she and her brothers bought an original Moore for their father. “It hangs behind him in his study—it is his favorite thing.” At a time when most fine art is not celebratory or even representational, Moore gives his fans a unique opportunity to display love for art, the beauty of the human form and University loyalty.

After years of encouraging Moore to paint and sell his work to appreciative Alabama fans, the University decided to claim exclusive trademark rights in the colors crimson and white, even though many other schools–including Harvard, University of Oklahoma and the University of Utah–use the same color combination. In 2002, The University of Alabama told Moore he must have their permission if he wanted to continue illustrating the team colors in his paintings. Moore believed he had a right to keep painting these historic moments accurately, and would not agree to subjugate his artistic freedom to the state university. Since then, Alabama has reportedly spent well over $1.5 million suing this artist. Not surprisingly, the case has been a public relations disaster for Alabama officials, but they continue to pursue it anyway.

Moore had multiple opportunities to settle this case, but he believes that as an artist in the United States, he should have the right to paint subjects that are meaningful to him. He persevered, and undoubtedly paid a fortune to litigate the dispute. The emotional toll should not be discounted either. Moore studied art at Alabama. His wife and children are also Alabama alumni. For years, he was welcomed onto the sidelines at football games so he could take photos that he would use as raw material for his work. The suit must have been a painful experience for his entire family. Still, Moore continued to defend himself and his principles.

For a long time, it seemed that no judge would have the courage to decide the case. The 11th Circuit noted that the case had been assigned to “seven different district court judges.” Many of them seemed intent on forcing a result through repeated rounds of alternative dispute resolution. Finally, District Judge Robert B. Propst split the baby, granting partial summary judgment allowing Moore to continue selling paintings and prints. In the findings of fact, the Court stated that “It is highly unlikely that a purchaser would not know that Moore is the moving force behind the paintings . . . [if trademarks] answer the question `who made it?’. . .the answer is clearly `Moore.’” Despite this finding, in its conclusion of law, the District Court found that “the paintings may create a likelihood of confusion with regard to plaintiff’s said mark.” The Court granted summary judgment to the University on the merchandise, prohibiting Moore from selling reproductions of his art on items typically seen in a museum gift shop, like smaller prints, calendars and mugs.

Eleventh Circuit Oral Argument: Both the University and Moore appealed. The Eleventh Circuit heard oral argument on February 2, 2012. Moore’s counsel, Stephen D. Heninger, is a veteran trial lawyer. He described Daniel Moore as “the Norman Rockwell of college football.” Then, Heninger held up a Sports Illustrated cover to demonstrate the importance of the issue before the court. If the University wins, what prevents it from requiring news organizations to get permission every time they want to take a photo or mention the name of a team?

Heninger wisely ceded five minutes of his argument to Notre Dame Law professor Mark McKenna [Eric’s note: Mark has guest blogged here as well]. The Court bombarded him with questions, extending its time with him. McKenna emphasized the importance of applying the Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) test in which First Amendment interests are balanced against trademark claims. He also explained that trademark law makes it OK to show a brand when the use is to express an idea or create art and not to designate the source for the work. The Eleventh Circuit opinion makes it clear that Mark McKenna’s law professor amicus brief (to which I contributed) and his oral argument were helpful to the Court in sorting through the issues.

Eleventh Circuit Opinion: In a thoughtful opinion written by Circuit Judge Anderson and issued on June 11, 2012, the Court of Appeals handed Daniel Moore a significant victory.

Breach of Contract Claim: Over several years, Moore had agreed to several license agreements with the University of Alabama for specially sponsored items that were sold with a University seal on the frame or packaging. Each of these agreements required Moore to get permission before using a long list of University “indicia” “upon or in connection with” any product. These University agreements read like they were created for T-shirts and caps, not art. Perhaps for this reason, the team colors were on the list of indicia, but the uniforms were not. The University claimed that by signing these agreements, Moore gave up any rights he may have had to use the University symbols in his art without its consent. The District Court had held that Moore did not breach these agreements because “uniforms” did not appear on the long list of indicia. The University appealed this finding because although the uniforms were not on the list, the colors were listed, and the colors did appear in Moore’s paintings.

The University thought it had a strong breach of contract claim. It urged the Eleventh Circuit to decide the entire case based on the language in the form contracts, asserting that the Court did not need to reach its trademark claims. Here, it made a huge tactical error. The University overreached in arguing that the contracts applied to all of Moore’s work, not just the ones subject to the license agreements. Such a reading was possible from the language of the contracts, but it made no sense in the broader context of the dispute. The Eleventh Circuit astutely suggested that the University’s reading of the contract might have made it void on public policy grounds. According to the Alabama interpretation, Moore would have “effectively indentured himself to the University, in that he would need to perpetually obtain permission to paint any historically accurate scenes from Alabama football games.” Being perpetually indentured sounds at worst like slavery—and at best like a covenant not to compete that never ends. Under either scenario, the contract would of course be void on public policy grounds.

The Eleventh Circuit rejected the University’s contract interpretation. It found the language of the license ambiguous. On one hand, the contract suggested that Moore needed permission for any use of the indicia, and other provisions seemed to suggest that that permission was required for branding on a product package but not in the content of a painting, print or calendar. Because the license agreements were ambiguous, the Court looked to how Moore and the University worked together in the days before the dispute to discern the true agreement between the parties. It found that even while the license agreements were in place, Daniel Moore continued to sell other artwork featuring Alabama subjects wearing the crimson tide uniforms. The University proudly displayed many of these unlicensed works on campus. Even though Moore’s work was widely known and admired in the Alabama community, the University never objected to these unlicensed works until 2002. The facts did not reflect the story the Alabama lawyers told the court. Based on the conduct of the parties, the Court concluded that the parties did not intend that Moore would seek permission every time he wanted to include Alabama uniforms in his art. He had painted them too many times with the University’s enthusiastic consent.

Trademark Claim: The opinion also gave Daniel Moore and all artists seeking to show brands in their work a big victory on the trademark claim. The result came as a pleasant surprise. The district court opinion was nearly incoherent, and the Eleventh Circuit could easily have remanded the case for a trial on whether Moore’s use of the marks created a likelihood of confusion among consumers.

Also, Moore’s lawyers had to confront some spectacularly bad precedent– Boston Hockey v. Dallas Cap & Emblem, 510 F.2d 1004 (5th Cir. 1975), which was binding in the Eleventh Circuit. Instead of applying the typical likelihood of confusion standard for trademark liability, Boston Hockey states that any use of a trademark that “triggers a sale” should result in liability. In the law professor brief, we explained that this precedent means that there could be trademark liability every time a newspaper makes more sales because it uses a team name to report the results of a big game. (I analyze Boston Hockey’s potential chilling of such uses in more detail in my article, Social Media Amplify Consumer Investment in Trademarks). Trademark liability was not meant to be so broad. Still, the Boston Hockey case remains valid precedent in this Circuit, and the panel of judges knew it well. The Boston Hockey case itself (involving use of counterfeit team logos) may have been decided correctly, but the broad standard it articulated goes against the weight of trademark authority, and could have sunk Moore. The subject of the paintings is something that appealed to Moore’s audience.

The University again overreached. It asserted that Boston Hockey was dispositive. Their strategy failed to account for the artistic context. At oral argument, Judge Anderson asked the University’s counsel if his client’s trademarks trumped Daniel Moore’s First Amendment right to paint scenes from football games. The lawyer had no response. This question turned out to be of vital importance. In the opinion, Judge Anderson framed the central issue in the case as follows: “we must decide whether Moore’s First Amendment rights will give way to the University’s trademark rights.”

Even though the tempting simplicity of the Boston Hockey precedent was available, the Eleventh Circuit acknowledged that depicting a trademark in a work of art has First Amendment expressive value that must be balanced against the University’s trademark rights. Daniel Moore makes it very clear that he is the source of his art. Because Moore used the university symbols, such as the uniforms, to “memorialize and enhance a particular play or event in the university’s football history,” the Court found that such use does not violate the Lanham Act. At oral argument, Stephen Heninger and Mark McKenna clarified to the court that showing a brand inside a frame as art is expressive and should be protected by the First Amendment. These uses are very different from uses on a frame or package for art.

The Court noted that there was no evidence Moore made that kind of unauthorized use. After citing Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and ETW v. Jireh Publishing Inc. 332 F.3d 915 (6th Cir. 2003), the Eleventh Circuit disregarded Boston Hockey and balanced the artist’s First Amendment rights against the University’s trademark claims. The Court concluded that “the First Amendment interest in artistic expression so clearly outweighs whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act.” It affirmed the District Court’s conclusion that Moore may continue to sell his paintings and prints without the University’s permission. The Eleventh Circuit reversed the trial court’s injunction on the calendars.

The Court reluctantly found that Moore had waived his first amendment and fair use claims by not clearly indicating that these arguments applied to his merchandise (for which he was the appellant) and not merely on his paintings (for which he was the appellee). It remanded this small piece of the case back to the District Court for a factual determination of whether the University acquiesced to Moore’s sales of these items. Perhaps this litigation will continue. The University could also appeal for en banc consideration.

This round elevated Daniel Moore to the status of First Amendment and Art Law hero. It is rare for a private citizen to have the perseverance, resources and courage to fight this kind of battle for a principle that will pave the way for many others. It would have been easy for him to turn away and paint other subjects. By fighting this litigation for nearly a decade, Daniel Moore has preserved his personal freedom to paint the subject that is most meaningful to him. He also prompted the Eleventh Circuit to validate that right in a way that will create a legacy of artistic freedom for others who enrich our lives through art that strengthens our sense of community with shared cultural symbols.