University of Alabama Board of Trustees v. New Life Art, Inc.
683 F.3d 1266
11th Cir.2012Background
- Daniel A. Moore has painted Alabama football scenes since 1979, featuring the University’s uniforms and colors in prints, calendars, mugs, and other merchandise.
- From 1991 to 1999 Moore signed licensing agreements with the University governing licensed indicia, with later addenda; many works produced without licensing persisted.
- In January 2002 the University asserted Moore needed permission to portray the uniforms, including jersey and helmet designs and colors, on all items.
- The University sued Moore in March 2005 for breach of license terms, trademark infringement, and unfair competition; district court rulings were split on paintings/prints vs calendars/mundane products.
- The Eleventh Circuit affirmed in part, reversed in part, and remanded, addressing two product categories: paintings/prints/calendars and mugs/other mundane products.
- The court held that paintings and prints are protected by the First Amendment and Rogers balancing; calendars were treated differently; mugs and mundane products require remand for further fact-finding on licensing coverage and acquiescence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Did the 1995 licensing agreement bar Moore from depicting uniforms in unlicensed works? | University argues licensed indicia extend to uniforms. | Moore contends ambiguity; conduct showed no need to license for paintings. | Ambiguous; course of conduct resolves to no license required for paintings/prints/calendars. |
| Does inclusion of the University’s uniforms in paintings/prints/calendars violate Lanham Act trademark rights? | University claims strong marks and likelihood of confusion from unlicensed use. | Moore asserts First Amendment protection and fair use; source confusion outweighed by artistic value. | Moore's paintings/prints/calendars are protected by the First Amendment under Rogers; no Lanham Act violation. |
| Are mugs and other mundane products governed by the same licensing interpretation, or do factual questions preclude summary judgment? | Licensing terms cover all use of licensed indicia, including mugs. | Ambiguity remains; record insufficient for law-based resolution. | Issues of material fact remain; remand to determine licensing coverage for mugs and mundane products. |
| Is Moore's acquiescence defense viable to bar University claims on mugs and mundane products? | Acquiescence not properly shown by University conduct. | University’s active consent could estop action for mugs. | Remand to district court to address acquiescence; issue not resolved on summary judgment. |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (balance trademark rights with First Amendment in artistic works)
- Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., 886 F.2d 490 (2d Cir. 1989) (Rogers test generally applicable to artistic works)
- ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003) (artistically relevant use not false endorsement; Rogers framework applied)
- ESS Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (Lanham Act narrowly construed against artistic expression unless mislead)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. Supreme Court 1992) (unregistered marks protection; strength of trademark)
- American Honda Motor Co. v. Williams & Assocs., Inc., 431 S.E.2d 437 (Ga. Ct. App. 1993) (course of conduct as evidence of intent in ambiguous contracts)