Tide rolled — Eleventh Circuit’s trademark ruling lets artist continue using Alabama sports logos, images

A federal appeals court’s ruling in favor of a commercial artist who sells drawings of iconic University of Alabama sports moments is a helpful reminder that trademark law rarely can restrict the journalistic or artistic use of corporate insignias.

Monday’s ruling from the 11th U.S. Circuit Court of Appeals strongly affirms the First Amendment right of artists to create works based on historical events, even if that means depicting emblems that are legally protected trademarks. (Full disclosure: The court’s 3-0 opinion was written by Senior Judge R. Lanier Anderson III, for whom I worked during 2003, well before this case reached the court.)

The long-running legal dispute involves artist Daniel A. Moore’s drawings of Alabama Crimson Tide football scenes, which Moore has sold for many years — sometimes under license from the university, but sometimes on the side without any such agreement.

Alabama sued Moore in 2005, alleging his on-the-side business breached their licensing agreement and also violated the federal Lanham Act. The Act prohibits the unauthorized use of registered trademarks (such as the McDonald’s golden arches or the Disney mouse ears) if the use would confuse consumers or dilute the value of the original.

A district court ruled largely in Moore’s favor, and the Eleventh Circuit (although with a slightly different legal analysis) agreed.

The aspect of the case with broad implications for journalists, filmmakers and artists is the court’s narrow application of trademark law when it comes into conflict with the expressive rights of those creating new works.

First, the court rejected the idea that a drawing or painting loses its First Amendment protection just because it is sold for a profit: “Moore’s paintings, prints, and calendars very clearly are embodiments of artistic expression, and are entitled to full First Amendment protection.”

Next, the court decided that the Lanham Act will preclude an artist’s reuse of trademarked images only in very narrow circumstances. Either the artist’s use of the mark must have “no artistic relevance to the underlying work whatsoever” (in other words, it is a throw-in just to sell more paintings) or it must “explicitly mislead” consumers. That is a very high hurdle for a trademark owner such as Alabama to overcome in trying to restrict the artistic reuse of its logos.

Notably, the court separated out artistic depictions (which it found to be fully protected by the First Amendment) from what it called “mundane products” such as coffee mugs, suggesting that some overtly commercial reuses of trademarked images may go too far. But the court did not rule on the First Amendment status of those “mundane” uses, because Moore failed to raise the First Amendment issue in his appeal. Instead, the appeals court sent the case back to district court to decide whether the university had waived its right to object to Moore’s use of Alabama logos on “mundane” products by failing to complain sooner.

The ruling in University of Alabama Board of Trustees v. New Life, Inc. is consistent with the broad leeway that federal courts typically allow for the creative use of corporate symbols in ways that don’t compete with the original owner’s core business. This is important for student journalists to remember when they get the angry phone call from a college athletic department.

College media outlets routinely produce souvenir editions, posters and other memorabilia associated with their schools’ appearance in postseason competition (or to preview an upcoming season). It is increasingly clear after the New Life case that a college has little-to-no authority to restrain the sale of commemorative works of creativity, even if the works depict identifiable uniforms, helmets and other trademark-protected images.