The case involving what one party described as "the head-on collision of First Amendment/Fair Use protection and trademark rights in art" is The Board of Trustees of the University of Alabama v. New Life Art, Inc. and Daniel Moore, and it’s presently pending before a federal appeals court in Atlanta. The case pits a visual artist—who asserts that First Amendment and Fair Use rights permit him to create copyrightable works and to benefit from the licensing or sale of those works—against a university claiming it has the right to protect its licensing efforts by preventing third parties, including the artist, from using the university’s trademarks and trade dress, even if those elements are merely visible in artwork. The cast of characters has now expanded to include law professors from various law schools around the country, and other major universities in the United States.
At the heart of the Alabama case is Hoover, Alabama-based visual artist Daniel Moore. Much of his art has concentrated on depicting, journalizing and celebrating historic moments in University of Alabama football. As Moore’s lawyer, Stephen Heninger, detailed for the federal appeals court, Moore’s "first painting of Alabama football [was] titled ‘The Goal Line Stand’ documented and celebrated Alabama’s 1979 Sugar Bowl victory over Penn State." The painting was not licensed but, as the district court noted, "benefitted both [Moore and the University] and led to other successful sales of other paintings beneficial to both sides."
Moore describes his work, which in many respects has the feel of a photograph or photo-composite, as "photofuturism": "five parts realism to one part motion." While he often uses photographs of the events as a reference, the artwork is very much his own, and very much in demand. Original paintings have commanded prices well into the five-figure range.
The University of Alabama—Moore’s alma mater—has taken the position that the uniforms worn by its football players, which incorporate the school colors, constitute protected trade dress. In the University’s view, third parties cannot portray and sell football scenes (which include those uniforms) without a license to do so. This includes any unlicensed use of the University’s marks, even in the image area. Moore’s lawyer freely admits that Moore’s artwork portrays Alabama’s uniforms and school colors: "Moore’s artwork naturally incorporates and depicts the football uniforms of the Alabama players involved in defining moments of athletic efforts, commitment and success."
Laws In Conflict?
As some photographers have probably discovered, different areas of law can apply to a single image. One common intersection of law involves copyrights and publicity rights, which is why photographers who plan to commercialize images obtain model releases from their subjects. In such cases, the photographer may own the copyrights to the image, but cannot commercialize the image without obtaining the publicity rights belonging to the subject of the photograph. A collision between copyright law and trademark law is a bit more unusual, although not entirely novel, and this is largely attributable to the fundamental purpose of each area of law.
Copyright law exists to encourage people to create. It does this by protecting the expression of ideas fixed in a media—which, for photographers, means when the image is fixed in film or saved to a memory card—and conferring upon the owners of the copyrights certain exclusive rights, including the right to reproduce their works, to distribute their works, to create derivatives based upon their works and to display their works publicly. In its simplest abstraction, copyright law protects the works themselves.
In contrast, trademark law exists to protect goodwill, and it does this by allowing the owner of a trademark to prevent others from using the same, or confusingly similar imitations of, the trademark in commerce. Trademarks and service marks—from a legal perspective, they’re more or less the same—can be any word, phrase, symbol, design, color or combination of elements used to identify the source or origin of goods or services. Whether we realize it or not, we’re constantly bombarded with trademarks in the course of our daily lives, and in many instances, trademarks save us time by allowing us as consumers to make quick decisions while being assured that our experiences with products or services will be consistent.
Trademark law protects not just trademarks and service marks, but also trade dress. Trade dress generally refers to product packaging or the visual appearance of a product. For example, trade dress can be the theme and décor of a restaurant if they’re sufficiently distinctive.
Unlike copyrights, trademarks don’t exist simply because they were created. In the U.S., trademark rights are acquired through use of a mark in commerce (other countries permit trademark rights to be acquired through mere registration). As the U.S. Supreme Court has explained, "The Lanham Act…does not exist to reward manufacturers for their innovation in creating a particular device…[and] has no necessary relation to invention or discovery." Rather, trademark law exists to "reduce the customer’s costs of shopping and making purchasing decisions, and helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product."
Using Trademark Law To Control Images
Ordinarily, these two sets of rights—copyrights and trademarks—exist in relative harmony. Consumers generally understand that a photograph isn’t associated with or sponsored by trademark owners simply because trademarks may appear in the image. However, as companies, sporting organizations and athletes have attempted to increase their licensing revenues, there have been challenges and attempts to use trademark law as a means of controlling images.
One of the early cases in this trend involved the I.M. Pei-designed Rock and Roll Hall of Fame Museum in Cleveland, Ohio. In 1996, the Museum owners sued photographer Charles Gentile for trademark infringement, claiming that the building design was protected by trademark law and that the sale of posters featuring Gentile’s photograph of the building infringed those rights. The federal court presiding over the matter enjoined sales of the posters, and Gentile appealed. Two years later, the federal appeals court sided with Gentile, rejected the notion that the building was being used as a trademark and allowed the sales of posters to resume. In 1999, after three years of legal wrangling, Gentile emerged victorious. In 1998, while Gentile was fending off trademark claims in Cleveland, the licensing agent for Tiger Woods sued the publisher of sports art created by Tuscaloosa, Alabama-based Rick Rush. At the heart of this trademark infringement suit was a painting Rush created in 1998 entitled The Masters of Augusta, which commemorated Woods’ record-setting 1997 victory at the Masters Tournament. The district court ruled in favor of the publisher and dismissed the licensing agent’s trademark
claims. Woods’ licensing agent appealed the decision. In 2003, in the course of rejecting the licensing agent’s trademark claims, a federal appeals court explained that Woods’ licensing agent was essentially asking the court "to constitute Woods himself as a walking, talking trademark." When rejecting this request, the court explained, "[i]mages and likenesses of Woods are not protectable as a trademark because they do not perform the trademark function of designation. They do not distinguish and identify the source of goods. They cannot function as a trademark because there are undoubtedly thousands of images and likenesses of Woods taken by countless photographers, and drawn, sketched, or painted by numerous artists, which have been published in many forms of media, and sold and distributed throughout the world. No reasonable person could believe that merely because these photographs or paintings contain Woods’s likeness or image, they all originated with Woods."
Apparently undeterred by these decisions, entities involved in licensing trademark rights held firm to the view that the question of whether trademark law trumped copyright law remained unsettled. The battle lines had been drawn.
Enter The Artist And The Elephant
Over the span of two decades, Moore enjoyed a good relationship with the University. He was given unprecedented access, ranging from sideline passes for the football games to being permitted to borrow memorabilia, equipment, jerseys and trophies from the Paul W. Bryant Museum to use in his artwork. Moore’s artwork presented the University in a positive light, so much so that Alabama’s Senior Athletic Director Dr. Finus Gaston described Moore’s art as "art the University likes." Moore’s reputation extends well beyond the University’s confines. In 2009, a columnist for The Birmingham News, writing about the previous day’s game, described Alabama’s blocking of a Tennessee field goal attempt at the end of the game as a "Daniel Moore moment."
Moore entered into the first of five project-specific license agreements with the University in 1991, where University indicia—trademarks—were used on the border outside of the image area. However, Moore’s relationship with the University changed dramatically in January, 2002. At that time, the University demanded that Moore pay an 8% license fee for all artwork "that shows the University’s uniforms or indicia," and that this fee would apply to all artwork that he would create, as well as everything he had already created (even in the decade before he entered into any license agreement with the University). Moore declined to accept the terms, asserting that he didn’t need a license to create artwork depicting events that had actually taken place. In addition to adhering to the view that he has a constitutional right to create his artwork, Moore didn’t want to be told what he could or could not paint. Although Dr. Gaston testified that Moore’s view was understandable, the University stopped giving Moore access to the sidelines. Undeterred, Moore continued to produce his artwork. Thereafter, when Moore released a new piece of art showing the University’s uniforms, the University would send Moore a cease and desist notice.
The University sued Moore for trademark infringement in 2005 in a federal court in Alabama. Ironically, two weeks before the University filed suit, Moore was featured in the Alabama Alumni Magazine in an article entitled "When Turf Meets Canvas." As detailed in the article, "[w]ith one of the most recognizable signatures in the University of Alabama community, Daniel Moore may be on par with highly famed coaches and players when it comes to his standing with fans of UA football…. Free of the constraints of real world logistics, he is able to condense the drama of sport into something that fits inside a single frame."
The Motivating Factors
One of the forces behind the case is the University’s licensing agent, Atlanta-based Collegiate Licensing Company (CLC). According to Moore’s attorney, a CLC representative testified that CLC was helping to fund the suit against Moore. CLC’s interest in the matter is readily apparent: It represents many universities and various athletic conferences in the market for college-licensed merchandise that was estimated at nearly $4.3 billion worldwide in 2008.
The inescapable reality is that collegiate athletics has become big business. According to a USA Today database, Alabama’s total athletic budget for 2010 was over $98 million. In the same year, the football program generated revenues in excess of $40 million more than the program’s expenses. Alabama’s head football coach receives compensation that rivals or exceeds the CEOs of corporations like 3M, Dow Chemical, General Motors, Hershey, Lockheed Martin and many others. Against this background, it should come as no surprise that, according to CLC’s President Bill Battle, CLC "believed the issue of indicia in art was a ‘gray area.’"
Battle’s testimony confirmed that the suit is an effort to make the law black and white on art. Or as the University’s representative testified, "I don’t think the [University’s] position is it’s not a piece of art. I think [Moore] is replicating in almost all of his prints an event that contains our trademark."
And The Winner Is…
After more than four years of litigation, the federal court in Alabama presiding over the case issued something of a split decision. The court rejected as non-meritorious the notion that the University’s colors were "protectable as trade dress in and of themselves…." Nonetheless, the court determined that the colors of the uniforms may be a weak trade dress, and that Moore’s paintings may create a likelihood of confusion. However, in order to prevail, the University would also have to overcome Moore’s defenses, which involved a balancing of trademark interests with the public interest.
In addressing Moore’s defenses of First Amendment, Fair Use and Artistic Expression, the court made reference to the Tiger Woods and Gentile cases, and concluded "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. The only relevance of the colors is to correctly depict the scene." Ultimately, the court’s analysis concluded that the likelihood of confusion did "not overcome the Artistic Expression and First Amendment defenses when balanced with the public interest in the fine art limited edition paintings and prints." Thus, Moore prevailed in the sense that the court found that he was within his rights to create and sell his artwork.
However, the "court also [saw] a total distinction between cases involving fine artistic creations and cases involving cards, T-shirts, cups, mugs, posters, mini prints, calendars, etc. The court’s opinion approves only paintings and prints treated as art…." It did not approve the depiction of Moore’s paintings and prints on such products, and thus, limited Moore’s ability to license his own artwork.
Alabama’s case against Moore has the potential for being a major test case. According to Moore’s attorney, Heninger, lawyers for Alabama and CLC have made it clear that they will go to the U.S. Supreme Court if necessary to establish that trademark rights trump Moore’s copyrights and rights under the First Amendment. Heninger summed up the situation: "CLC wants the law in black and white and a favorable ruling so they can charge the universities they represent more to go after art work and posters. They’ve tightened up a lot on [unlicensed] T-shirts, which is understandable. But art, we’ve got to fight."
If there was any doubt about the seriousness with w
hich CLC and Alabama are pursuing the case, the University’s admissions as to the amounts spent on the case make it clear. Earlier this year, University spokeswoman Deborah Lane told The Birmingham News that the University’s legal expenses in the case were approximately $1.4 million (since CLC admitted it was paying half the cost of the case, Moore’s attorney suggests that Lane’s statement refers only to the University’s half of the cost). Considering that the damages at issue in the case were but a small fraction of the expense involved in the case, it’s apparent that something far more important to CLC and Alabama is at stake.
For Moore, the case is no less serious, involving personal freedoms and his right to earn a living from his artwork. As he told The New York Times earlier this year, the case is about "free speech, my right to paint what I want and sell my work."
The verdict is still out on whether this will be a major test case, and whether trademark owners will be able to control what happens with images where their trademarks are displayed. However, given the potentially far-reaching impact a case like this may have—potentially defining the limits to the rights that all visual artists have—it’s worth watching to see what happens.
Samuel Lewis is a Board Certified Intellectual Property law specialist and partner at Feldman Gale, P.A., in Miami, Fla., and a professional photographer who has covered sporting events for more than 25 years. He can be reached at [email protected] or [email protected].