Playoffs: The First Amendment v. The Lanham Act

This week the 11^th Circuit Court of Appeals issued an important decision upholding an artist’s First Amendment rights over the University of Alabama’s asserted trademark rights under the Lanham Act.  Since 1979, artist, (and University of Alabama alumnus), Daniel A. Moore, has been creating photorealist paintings of University of Alabama football games (American football, that is.)  From 1979 through 1990 Mr. Moore created and sold these works without any official affiliations or agreements with the University.  In 1991 Mr. Moore entered into licensing agreements with the University to produce and market specific items that included additional University trademarks, but Mr. Moore still created other University-related paintings and prints that were not subject to any of these agreements.  In 2002 the University told Mr. Moore he would need to license all of his University-related products because they featured the University’s trademarks, including the University’s football uniforms, helmets, and colors.  The parties were unable to reach a resolution and in 2005 the University brought a lawsuit against Mr. Moore.  In 2009, the district court decided cross-motions for summary judgment, finding that Mr. Moore’s prints and paintings did not infringe upon the University’s trademarks, but that his sale of mugs and other such “mundane goods” bearing these images was trademark infringement.  The Court of Appeals affirmed much of the district court’s decisions, but remanded on certain remaining factual issues.

The crux of the University’s argument was that the inclusion of the University’s trademarks, such as the red and white colors on the players' uniforms, created a likelihood of confusion that buyers would think that the works were somehow associated with or sponsored by the University.  The Court declined to reach any conclusions regarding the strength of the University’s asserted trademarks, instead relying upon a balancing of the artist’s First Amendment rights against the University’s trademark rights.  The Court concluded that Mr. Moore’s works were expressive speech and thus possessed significant First Amendment protection.   Despite the University’s arguments that the works had commercial appeal, the Court found that the paintings were not necessarily commercial in nature (which would have entitled them to lesser First Amendment protection).  Accordingly, the Court held that the Lanham Act must be construed narrowly to apply to artistic works “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”  The Court went on to hold that an artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevant 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 evaluating Mr. Moore’s works, the Court determined that use of the University’s marks was required for the artist to realistically portray famous scenes in Alabama football history.  Ultimately, the artist’s right to freedom of expression to create historically accurate works of art won the day.

Images of Mr. Moore's works may be viewed here.