A federal appeals court this week largely upheld a lower court’s decision that the University of Alabama at Tuscaloosa’s football uniforms are not protected by trademark law.
The ruling, by a unanimous three-judge panel of the U.S. Court of Appeals for the 11th Circuit on Monday, found that the artist Daniel A. Moore’s images of the famous Crimson Tide football team were protected by the First Amendment.
The court also ruled that the university’s own actions—displaying and even selling Mr. Moore’s unlicensed works—undermined its ability to strictly enforce its trademark rights.
The appeals court also sent a portion of the case back to the district court, to reconsider how to deal with Mr. Moore’s images of the football uniforms on mugs and other “mundane products.”
The lawsuit drew wide attention from higher-education lawyers, with more than two dozen universities seeking to file briefs in support of Alabama’s appeal—a sign that many of them worried that a ruling against the university would imperil their rights to their lucrative school colors. Because the outcome of this case is specific to how Alabama has enforced its trademark, it’s unclear whether the decision will spark a wave of legal challenges to other universities.
The case stems from a disagreement between the football-powerhouse university and Mr. Moore, who has been painting and selling images of the football team since 1979, according to the court’s summary of the case.
The university did nothing to protest Mr. Moore’s work until the 1990s, when he signed a dozen licensing agreements with the university, to produce and market officially licensed products for the institution. The contracts also restricted Mr. Moore’s use of any logos or images that the university thought should be protected by its trademark, including the colors of the football team’s uniforms.
At the same time, however, the university allowed Mr. Moore to produce and sell unlicensed paintings and other works, including $12,000 worth of calendars that were sold at a campus store. The university also displayed Mr. Moore’s work on a brochure of the institution’s Bryant Museum and in the offices of its athletics department, and asked the artist to sketch images from a 2001 football game, according to court documents.
Trademark Tackle
But in 2002 the university told Mr. Moore that he would have to license, and pay royalties on, all of his Alabama-related products. The artist disagreed, and in 2005 the university sued, accusing him of breaching his contracts with the university and violating trademark law.
A federal district court ruled in Mr. Moore’s favor in 2009, finding that the licensing agreements did not specifically exclude the depiction of the uniforms, that the university’s colors “were not especially strong marks on the trademark spectrum,” and that the artist had a First Amendment right to paint historical football events.
The federal appeals court agreed with the lower court’s decision that the portraits and other images were protected by the First Amendment. But the appeals court also concluded that the licensing agreements were too vague to decide whether uniforms and team colors could be considered as trademarked items. Instead, the issue should be decided by the parties’ actions, including the university’s allowing the artist to continue to produce and sell unlicensed works.
“For many years,” the appeals court concluded, “the university had displayed unlicensed Moore prints in its own athletic-department office and had granted Moore press credentials so he could take photographs to be used as source material for paintings, many of which were never licensed. The parties’ course of conduct clearly indicates that they did not intend that Moore would need permission every time he sought to portray the university’s uniforms in the content of his paintings, prints, and calendars.”
The issues are less clear on how the university and Mr. Moore have handled images on “mini-prints, mugs, cups, ... flags, towels, T-shirts, or any other mundane products,” the court ruled, in returning that part of the case to a district court.
“There is a lack of evidence indicating how the parties viewed Moore’s portrayal of the university’s uniforms on mugs and other ‘mundane products,’ the court found. “In 30 years, Moore has produced only three sets of mugs. The fact that two of the sets were licensed perhaps indicates that the parties thought that Moore would need permission to produce mugs portraying the university’s uniforms. However, the fact that one set was not licensed implies the opposite.”