If an artist depicts a trademark in his work, is it art or trademark infringement?
In a case that has already been in litigation for five years, a federal trial judge has ruled in University of Alabama vs. New Life Art, Inc. that artist Daniel A. Moore infringed the University of Alabama’s trademarks when he sold paintings, posters, mugs, calendars, and other Bama sports memorabilia, but also ruled that the paintings and posters were nevertheless exempt as artistic expressions protected under the First Amendment.
Given the large amounts of money generated by college sports licensing, the case has struck a nerve– Alabama has filed an appeal to the federal Eleventh Circuit Court of Appeals, and 27 other universities have requested to file an amicus brief in support of the university.
Moore has estimated that his football art tallied sales “in the low millions,” during his 30 year career. From 1991 until 2000, Moore’s company New Life Art, Inc. had a license agreement under which it paid royalties to the University of Alabama, but then Moore insisted that the law did not require his paintings to be licensed, especially when his posters in most cases depicted no explicit trademark material.
Not so, replied the University of Alabama, arguing that all of Moore’s artwork at least portrayed Bama’s famous crimson and white “Crimson Tide” team colors, which the University argued is its trade dress –packaging that identifies University of Alabama sports products and services in the public mind– and that Moore’s depiction of it would likely mislead the consuming public into thinking his paintings were manufactured, sponsored, endorsed, or affiliated with the University.
Judge Robert Propst agreed that Bama’s team colors had attained trade dress status, and that there was some, albeit small, likelihood that the public would be confused as to the University’s creation or sponsorship of Moore’s art.
However, he ruled that at least as regards his large scale paintings and posters, Moore’s work had “high artistic skill” and expressive content; his use of the Bama colors had artistic relevance to his work, and did not intentionally mislead the public as to the University’s sponsorship or affiliation with it; therefore it was protected by the First Amendment, which superseded the University’s trademark infringement claims made under the Lanham Act.
The mugs, calendars, and other souvenir paraphernalia did not contain significant artistic content and therefore were held to be infringing.
As support, the judge quoted at length from another famous sports art case, ETW Corp. vs. Jireh Publishing, Inc., in which the Sixth Circuit Court Of Appeals held that an artist’s limited edition poster portraying Tiger Woods’ historic first Masters golf tournament championship was not an infringement of Woods’ trademarks in his name and images, because some of Woods’ claimed trademarks were not actually trademarks at all, while the use of other trademarks was either de minimus or protected by the artist’s exercise of his First Amendment rights.
Even if Moore ultimately prevails, it is unlikely that there will be a huge economic impact on university sports licensing. Both Moore’s paintings and the Tiger Woods posters were not mass-market items, but more of the “limited edition/collectors item” variety, with high artistic skill and a relatively high price tag. However, Bama and other big sports universities are playing to win.