Best of 2013: Turning back that Crimson Tide
Originally published January 8, 2013
Trademark law does not trump the right to make and sell artistic depictions of real life after all, it turns out. Or even NCAA football.
Almost exactly four years ago I wrote about the suit by the University of Alabama urging the obnoxious claim that artistic depictions of its players at play were, by virtue of utilization of the familiar uniforms and colors of those players, infringements of the Alabama trademarks in its corporate sports machine. Amazingly, the first judicial ruling in that case has just come out — and, blessedly, it gets it right (even if the Tuscaloosa News reporting of it is a little, er, sic):
U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.
‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.
UA attorneys had argued before Propst in a hearing two weeks ago that Moore’s paintings showed trade dress, which they said is any symbol associated with UA, including the crimson and white color scheme.UA sued Moore for trademark violations in March 2005, alleging that he painted scenes of Crimson Tide football games without permission from the university and reissued previously licensed prints without paying royalties. The university is seeking back pay [sic] for more than 20 paintings and wants Moore to license any future paintings. . . .
Propst knocks down nearly every claim made by UA attorneys against Moore, even writing that Moore did not violate previous licensing agreements with new or reissued paintings. At the center of the issue, Propst dismisses UA’s assertion that painting Crimson Tide football violates [sic] trademark because the uniforms and their colors are not protected.
Also, UA argued that Moore’s paintings were too realistic and did not transform the original scene enough to constitute artistic expression. However, Propst writes the reality of the painting is needed to relate the play and adds to the level of artistry.
Propst also writes there isn’t enough confusion among customers as to who sponsors the paintings. ‘It is likely that people who buy the Moore paintings do so, at least partially, because of their loyalty to the University of Alabama and its football team,’ he wrote. ‘That, however, does not create any reasonable inference that they do so because of confusion based on the color of the uniforms.’
The whole opinion is here.
There will be no end to the greed or the attempt to utterly distort the entire purpose of trademark here — this will be appealed, it has been promised. In the Eleventh Circuit (as everywhere else), “To show a likelihood of success on the merits for [either a] trademark and trade dress infringement, [a plaintiff] must show that consumers will likely confuse the [plaintiff’s] mark or dress with [the junior user’s product or service]. See Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999) (trademark); Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 146 L. Ed. 2d 182, 120 S. Ct. 1339,1343 (2000) (trade dress).” So what’s the argument — the public will think that the paintings are the Crimson Tide’s latest run defense?
Of course, consumer confusion is never, ever seriously considered in naked rent-seeking cases such as these — particularly sports logo claims — where there is no plausible way to argue that there could be confusion (must less to show it). Instead, in a longer piece I posted here last year, I demonstrate that these claims are based on fallacious “affiliation” and “quality fan merchandise” formulations that, I must acknowledge, can be found in the words of Lanham Act as amended but have very little to do with consumer protection, confusion or any but the worst kind of trademark law and policy.
You don’t have to go as far as I and praise the kinder, gentler world of the past when an ambitious entrepreneur could pay homage, and maybe pay the mortgage, by taking — yes, horrors! — “free rides” on significant popular culture phenomena that were unlikely to be deemed “affiliations” or “authorized merchandise” without doing the high-end brand equity any harm at all (and probably some good). Unfortunately, lawsuits of this nature are virtually always David versus Goliath affairs, decided by judges overawed by the sacrosanct “equity” of the major brand placed before it, and the question properly raised at trial of whether a likelihood of confusion can be shown as a fact matter is almost always ignored. As David’s lawyer, believe me, it’s heartbreaking. But I know that the trademark bar in general, and few if any federal judges, are going to let us go back there.
This campaign by Alabama, though, really does take the rent-grabbing aspect of this business model to truly offensive levels. There’s no doubt that NCAA schools and other pro sports teams sell “official” sports art, but it is utterly, utterly meaningless to fans whether this art is “approved,” “official,” “endorsed” or anything else (much less “fine”). The claim here is simply “The University of Alabama owns everything about the Crimson Tide, and no one is going to make a penny off fan enthusiasm for the team but us. Period.”
Maybe some day Alabama will succeed in that drive. Today, at least, however, in the U.S. District for Northern Alabama, and under what common sense is left of existing law, the Tide has hit a rare judicial goal-line defense. But overtime looms ahead.
UPDATE: It’s 2012 and the Eleventh Circuit just heard oral argument on Bama’s — stay tuned.