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.
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.
This once again proves that anyone can sue for anything and waste a lot of money on lawyers while forcing the other side to do same.
Some lawyers consider that a feature, not a bug.
While I don’t disagree with the outcome, something about this line of cases (starting with Rogers and including such as the recent LVMH v. Warner Bros. case) bothers me. There is a general rule that a court should avoid constitutional issues if it can decide a case on non-constitutional bases. The Rogers rule seems to be a kind of hybrid of the two — construe the statute narrowly to avoid prickly First Amendment issues.
Isn’t there a much more straightforward way of dealing with it? For example, under the statute you need “use in commerce.” Granted that Moore was selling his paintings, prints and calendars, was he really using the University of Alabama mark as a trademark — an identifier of the source of the item? I think not. Second example, does anyone really think there is a likelihood of confusion, even confusion as to sponsorship? The man painted an important (or at least some think so) sports event, in which players wear their team’s identifying colors and insignia. That’s how you have to paint that even if you want people to know what you are referencing.
These are much more straightforward trademark-law bases to dismiss the suit than the hybrid constitutional-law Rogers doctrine. (Although, arguably, my reasons to dismiss might have fact issues, while the Rogers doctrine as applied may not.)
Your “sponsorship” argument, Tal, is essentially the thesis I’ve been arguing here lo these last six years.
On the other hand, darn it, there’s something to be said for someone to ring the First Amendment bell from time to time and remind everyone that a restriction on expression does implicate the Constitution.
I suppose the Rogers analysis is the logical place to start if you really have to parse it, but it seems like a bit of a no-brainer under either nominative fair use or First Amendment principles. To accurately paint a picture of any scene from a football game requires painting the jerseys and helmets and other items that — SHOCKER! — have the team logo on it. One would think that Mattel, Inc. v. MCA Records, 296 F.3d 894 (9th Cir. 2002)(involving the Danish smash hit “Barbie Girl”) and E.S.S. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (involving the virtual world re-imagining of the Play Pen logo — turning the strip club into the Pig Pen) would have disposed of the issues raised by the University of Alabama, but I guess they’re stubborn.
You have to love the psychic dissonance created by suing Moore while simultaneously selling his calendars and hanging his paintings in the Bryant Museum.