Tag Archives: Alabama

Turning back that Crimson Tide

Originally posted 2009-11-03 13:50:30. Republished by Blog Post Promoter

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 — Read More…

Best of 2013: Turning back that Crimson Tide

Originally posted 2009-11-03 13:50:30. Republished by Blog Post Promoter

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 — Read More…

11th Circuit: Real life not endorsed; doesn’t need to be

College Rules

Endorsementius genericus

Remember the artist Daniel Moore, who got sued up and down by the University of Alabama for “unauthorized” painting of football games?  The Eleventh Circuit Court of Appeals, on June 11th, has  finally spoken — and spoken well —  on the question of whether you need Officially Authorized Sponsor® permission to paint some damned thing (citations and internal quotes omitted; explanatory link supplied):

[W]e 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. 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.

In this case, we readily conclude that Moore’s paintings, prints, and calendars are protected under the Rogers test. The depiction of the University’s uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniforms’ colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history. Also there is no evidence that Moore ever marketed an unlicensed item as “endorsed” or “sponsored” by the University, or otherwise explicitly stated that such items were affiliated with the University. Moore’s paintings, prints, and calendars very clearly are embodiments of artistic expression, and are entitled to full First Amendment protection. The extent of his use of the University’s trademarks is their mere inclusion (their necessary inclusion) in the body of the image which Moore creates to memorialize and enhance a particular play or event in the University’s football history. Even if “some members of the public would draw the incorrect inference that [the University] had some involvement with [Moore’s paintings, prints, and calendars,] . . . that risk of misunderstanding, not engendered by any overt [or in this case even implicit] claim . . . is so outweighed by the interest in artistic expression as to preclude any violation of the Lanham Act.

Ron Coleman Bobble Head

I told you so!

I first started blogging about this case in 2006, picking up the thread most recently two years ago when this appeal “went up.”  And yes, of course the Circuit saw things our way on this.  Not because of “us,” but because, come on, what a dumb appeal this was.

Moore, the artist, had some kind of dumb ideas too, by the way, and the Eleventh Circuit was properly dismissive of one in particular:  The suggestion that by virtue of owning a copyright in his artworks, he was immune from a claim of trademark infringement.  That’s dumb:  Quoting black-letter McCarthy, the court observed, “‘[T]he defendant’s ownership of or license to use a copyrighted image is no defense to a charge of trademark infringement. It should be remembered that a copyright is not a ‘right’ to use: it is a right to exclude others from using the copyrighted work.’  If it were otherwise, a person could easily circumvent trademark law by drawing another’s trademark and then placing that drawing on various products with impunity. Selling the copyrighted drawing itself may not amount to a trademark infringement, but its placement on certain products very well might.”  Indeed.

There’s a lot of interesting procedural stuff in the opinion too, including the curious (and troubling) conclusion that Moore waived the fair use defense with respect to the claims against him for the use of his artworks on “mundane products,” as opposed to his suitable-for-framing depictions of real NCAA Division I action, such as graces the walls of the homes of most of my friends and associates, of course.  On that not-very-mundane (however snarkily presented here) issue, the Circuit Court remanded for further proceedings, consistent with its cool opinion.