Realistic Art Versus Trademark Rights – First Amendment Rights Prevail

The Eleventh Circuit Court of Appeals has held that a famous artist (Daniel Moore) who painted highly realistic scenes of the University of Alabama football team (fearsomely promoted as ROLL TIDE) has a First Amendment right as an artist which “clearly outweigh[s] whatever consumer confusion that might exist on these facts” over Alabama’s right to control its highly recognized football uniform and colors (crimson and white). University of Alabama Bd. Of Trustees v. New Life Art, Inc., Case No. 09-16412 (11th Cir. June 11, 2012). (available here). Although artist Moore (and his company New Life) had multiple licenses in the 1990s, the critical aspect of the case involves Moore’s copyrighted paintings of Alabama’s sports team and sales of merchandise bearing his art (mugs, calendars, etc.).

The University claimed that Moore’s unlicensed paintings, prints and calendars and coffee mugs infringe the University’s trademarks because the inclusion in Moore’s products of the University’s football uniforms (showing the University’s crimson and white colors) creates a likelihood of confusion on the part of buyers that the University sponsored or endorsed the product. Slip opn. p. 16 (herein “p. #”). Avoidance of confusion is the purpose behind the federal trademark act, the Lanham Act. 15 U.S.C. sec. 1125. The University’s claim of trademark rights to its uniforms was not well established. The court rejected its consumer survey results because the survey used only one of Moore’s prints. P. 18.

“As our discussion below indicates, 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 First Amendment’s protections extend beyond written and spoken words. ‘[P]ictures, films, paintings, drawings, and engravings . . . have First Amendment protection[.]’ Kaplan v. California, 413 U.S. 115, 119-20, 93 S. Ct. 2680, 2684 (1973); see also Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Bos., 515 U.S. 557, 569, 115 S. Ct. 2338, 2345 (1995) (‘[T]he Constitution looks beyond written or spoken words as mediums of expression.’).” P. 18-19.

Like other expressive speech, Moore’s paintings, prints, and calendars were entitled to full protection under the First Amendment. P. 16, see also ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 925 (6th Cir. 2003).

The court discussed the leading case of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), involved a film of two Italian dancers called “Ginger and Fred.” Ginger Rogers, a famous dancer who often worked with Fred Astaire, sued claiming violation of their trademark rights.

 “Thus, the court adopted a balancing test: ‘We believe that in general the Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless the title explicitly misleads as to the source of the work.’ Id. at 999 … Accordingly, the court ruled in favor of the movie’s producers because the title was artistically relevant to the film, there had been no evidence of explicit misleading as to source, and the risk of confusion was ‘so outweighed by the interests in artistic expression as to preclude application of the Lanham Act.’ Id. at 1001.” P. 21. the same result was obtained in ESS Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), where a scene in the defendant’s video game featured the trademark of the plaintiff’s entertainment club. See also ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 918-19 (6th Cir. 2003)(involving an artist painting a collage of Tiger Woods images).

 “Therefore, we have no hesitation in joining our sister circuits by holding that we should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark. This requires that we carefully ‘weigh the public interest in free expression against the public interest in avoiding consumer confusion.’ Cliffs Notes, 886 F.2d at 494. An artistically expressive use of a trademark will not violate the Lanham Act ‘unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.’ ESS Entm’t, 547 F.3d at 1099 (quotations and alterations omitted); see also Rogers, 875 F.2d at 999.” P. 24.

 Although the 11th Circuit Court permitted Moore’s use of his art in paintings and calendars, it remanded to the trial court the issue of use of the art on mugs.

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