Crimson Tide ebbs: painter free to paint football team

University of Alabama Board of Trustees v. New Life Art Inc., filed Nov. 2, 2009 (N.D. Ala.)

Thanks to several alert readers for sending this on. Daniel Moore paints Alabama football, and is known for doing so among Alabama fans. When his licensing agreement with the university expired, the university sued him for continuing to sell his paintings. After rejecting the university’s license estoppel argument—the license didn’t clearly cover the uniforms, and Moore didn’t use logos/indicia that were covered by the license—the court proceeded to grant summary judgment mostly in Moore’s favor.

Among the relevant findings: Moore’s reputation (including that developed while he was painting Crimson football but before he entered into any licensing arrangement) is the predominant trigger of sales. Note that, contrary to sound policy, common sense, and consistency with §43(a)(1)(B), courts don’t generally think that materiality to purchasers’ decisions matters in trademark, though—as here—it tends to get mentioned in art/First Amendment cases.

Moreover, the court apparently deemed the paintings moderately transformative, memorializing a football play in a way that could be “relished and preserved” with the artistry Moore brought to the paintings. Indeed, a Birmingham News columnist referred to a particularly nice play as a “Daniel Moore moment,” suggesting to the court that the paintings are transformative, though I’m not quite clear why—what it really suggests is that Moore, rather than the university, has secondary meaning attached to the iconic plays depicted in his paintings; the court noted that this reference was evidence that Moore’s distinctive work, rather than crimson uniforms, motivated purchasers.

The court hated the university’s survey, particularly the loaded questions suggesting that there was some “sponsor” of the painting tested other than the artist. The court thought that the real likelihood of confusion “may be with the survey.” People knew Moore and his studio; many of their answers noted that his and his studio’s names were prominent on the paintings, but the university apparently coded every mention of its name as indicating sponsorship confusion. Though the court thought it likely that people buying Moore’s paintings do so, at least in part, because of their loyalty to the university and its team, that didn’t allow any reasonable inference that they do so “because of confusion based on the color of the uniforms.” Still, the court assumed the existence of a factual issue on confusion.

Thus, it turned to the fair use/First Amendment (Rogers v. Grimaldi flavor) defense, at least as applied to fine art. It specifically distinguished cases involving “cards, T-shirts, cups, mugs, posters, mini prints, calendars, etc.,” for reasons that are unclear at best, meaning that the decision doesn’t allow Moore to put his paintings and prints “on other products,” despite all the court said about his own secondary meaning.

Along the way to its resolution, the court also noted that the fact that the university is a state actor might make First Amendment concerns loom even larger, but nothing appeared to turn on that. It also, puzzlingly, suggested that the players might have relevant First Amendment interests, but did not elaborate.

As to paintings and prints, Moore’s use of the uniforms (which the court found to have some limited secondary meaning) didn’t implicate the source-identifying function that’s trademark’s purpose. The court seemed to me to be struggling unsuccessfully to organize and integrate the reasons for the ultimate (correct) conclusion: fair use as a matter of law, supplemented by the principle of Rogers v. Grimaldi. And one reading of this rather scattered presentation is simply that trademark defenses have become so reticulated and rococo that judges without a significant trademark background may, understandably, be unable to make sense of them. Fortunately, the Tiger Woods case is so on point that quoting big chunks of it got the court basically where it needed to go: “even if there is a likelihood of confusion, the balancing of such likelihood and the public interest entitles defendants to prevail.”