November 2009 Issue
Civil Cases
Univ. of Alabama Board of Trustees v. New Life Art Inc.,
CV 05-UNAS-PT-585-W (N.D. Ala. Nov. 2, 2009)
ABSTRACT
The University of Alabama Board of Trustees sued a previously licensed painter for his use of the University football team’s uniform colors in his paintings, claiming that the colors were protectable trade dress. The court held that the University did not have a protectable interest in the uniform colors and that the painter was permitted to use the colors in his artistic works to accurately depict historic football scenes. However, the painter could not use any of the University’s trademarked logos or symbols in his paintings or reproduce his paintings onto any merchandise other than high-quality prints.
CASE SUMMARY
FACTS
Plaintiff University of Alabama Board of Trustees (“UA”) is responsible for oversight of the University of Alabama (“the University”). Defendant New Life Art, Inc. (“New Life”) represents the business interests of Daniel Moore (“Moore”), a successful sports artist who paints high-quality artistic renderings of notable University football team events. Moore’s first such painting was sold in 1979, and he signed a licensing agreement with UA in 1991. The licensing agreement continued until 2000, when New Life and Moore decided that Moore’s paintings did not require a license from UA. UA disagreed, arguing that the University’s team uniform colors of crimson and white were its protectable trade dress, and Moore could not sell paintings depicting these uniform colors without a license. UA filed suit against New Life and Moore for trademark infringement, seeking royalties from more than twenty of Moore’s paintings and demanding that Moore license any future paintings. Both parties filed motions for summary judgment.
ANALYSIS
The district court issued a memorandum opinion holding that UA did not have trademark rights in the football team colors, and thus New Life and Moore did not require a license to use the colors in Moore’s paintings. The court examined the previous licensing agreements between the parties, which provided that “The University of Alabama is the owner of all rights, title and interest in and to the following Indicia which includes trademarks, service marks, trade names, designs, logos, seals, and symbols” and displayed images of various logos, seals, and symbols. The items “Verbiages” and “Colors: Crimson PMS 201 Gray PMS 429” were listed above the images. From this language, the court inferred that the color restrictions only applied to any licensed use of the listed images, and could not be read as a prohibition on the use of those colors in other ways (i.e., in Moore’s paintings). The court also rejected UA’s position that its alleged trade dress comprised of the uniform colors was inherently distinctive and a strong mark, while noting that the trade dress may have acquired secondary meaning “in some quarters.” The court noted that crimson is a common variation of the red color used by many sports teams and that the colors serve a functional purpose of distinguishing the team from its opponent.
The court then criticized UA’s likelihood of confusion survey results as suggestive and misleading, and disagreed with UA’s conclusion that consumers mistakenly believed that Moore’s paintings were sponsored by the University. The court stated that people who buy Moore’s paintings likely do so because of their loyalty to the University and its football team, but this does not create a reasonable inference that they buy the paintings because of the uniform colors or that they do not know that Moore is the “moving force” behind the paintings. The court went on to note Moore and New Life’s evidence of good faith based on the use of their own marks to indicate the source of the paintings. The court reasoned it would be clear to any purchaser that the paintings were created by Moore and sold by New Life.
Further, the court made note of the First Amendment protections likely applicable to Moore and New Life’s use of the colors, especially considering that UA is a public university and thus a “governmental entity.” Even if there was some likelihood of confusion, the Rogers v. Grimaldi test mandates that the Lanham Act may only apply to artistic works when the public interest in avoiding confusion outweighs the public interest in free expression. Since the court did not find that consumers would likely be confused as to the source of Moore’s paintings, the Rogers test favors Moore’s artistic speech.
The court went on to clarify the implications of its holding, stating that Moore’s use of the uniform colors in his artistic paintings did not violate the Lanham Act because the colors were used to correctly depict the chosen scene. However, the court cautioned that use of the colors on nonartistic products (e.g., mugs, T-shirts, posters, etc.) would not be allowed. The court stated that Moore and New Life are not permitted to reproduce the paintings on any non-artistic products or as smaller-sized paintings or prints of lesser quality. Further, the court’s holding only extends to the use of the uniform colors in artistic paintings and prints; such works cannot incorporate any use of UA’s logos, symbols, or seals without potentially infringing UA’s trademark rights.
The court granted Moore and New Life’s motion for summary judgment with regard to its artistic expression, First Amendment, and fair-use defenses. The parties were permitted to submit suggested final judgments consistent with the court’s opinion.CONCLUSION
This decision provides some guidance on the allowable uses of sports-team colors in unlicensed merchandise. The court here does not find team uniform colors to be strong or inherently distinctive trade dress and permits their use in situations where the correct colors are necessary to accurately depict the team at historical games. The court places a distinction between the permitted use of the colors on artistic works, in contrast to nonartistic merchandise, and also cautions against the use of trademarked logos or symbols in artistic works.
* Dana Nicoletti is a Trademark Law Clerk with Finnegan.
