New Life Art decision breathes new life into artists' First Amendment rights.

Grady, John

Introduction

In November 2009, the U.S. District Court for the Northern District of Alabama issued a ruling on motions for summary judgment and declaratory judgment in the long dormant case of the University of Alabama Board of Trustees v. New Life Art (2009). The highly publicized lawsuit, initially filed in 2005, pitted sports artist Daniel Moore against his alma mater, the University of Alabama (Grady, 2005). The case involves Moore's art prints depicting Crimson Tide football players playing against rival teams. The art work features the player uniforms as well as the well-recognized school colors of the University of Alabama. The university asserted trademark protection of the uniforms and colors and insisted Moore needed a license to use these unregistered trademarks in the crimson and white color scheme and team uniforms in his art work. Moore defended against these claims by arguing that he had a First Amendment right of free expression to include these aspects in his depictions of Alabama football and, therefore, argued that he did not need a license from the university.

The Legal Issues

At issue in the litigation was the university's claim of trademark protection, based on a theory of trade dress, in the unregistered school colors. In trademark law, trade dress typically refers to the packaging or "look" of a product. Arguably stretching the traditional application of trade dress,"[t]he plaintiff took the position that the uniforms worn by its football players in its colors were trade dress on which it had a protectable trademark and that the defendant cannot portray and sell football scenes which include those uniforms without a license to do so" (p. 3). Thus, the court had to consider whether the plaintiff's art work depicting the players' uniforms infringed the University's trade dress marks. The court found that the school colors and team uniforms were not inherently distinctive but may have gained limited secondary meaning in a specific geographical region, likely the state of Alabama. This finding is consistent with the Fifth Circuit's decision in Board of Supervisors for Louisiana State University v. Smack Apparel Co. (2008), involving the use of school colors used on laudatory T-shirts, which found that the unregistered color schemes had acquired secondary meaning and, when used with other indicia of the university, constituted trademark infringement. As a general rule, a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional. If the color scheme was found to be functional, this would preclude trademark protection. The court concluded that "[f]ootball uniform colors perform a function. They help avoid confusion as to team members for the benefit of officials, opposing team members and spectators" (p. 12). The court also found the trade dress marks at issue were not strong marks.

The Artist's Defenses

The court next considered the artist's defenses, including the First Amendment, fair use, and artistic expression. Acknowledging the need to balance the First Amendment rights of the artist and the public's interest in free expression against the Lanham Act's (the U.S. federal trademark law) legislative purpose to protect the public from consumer confusion, the court determined this issue could not be resolved as a matter of law. In considering the artist's fair use defense or using the colors and uniforms in order to accurately depict the football game, the court found that Daniel Moore used his own marks to identify himself as the source of the product.

In considering the artistic expression issues, despite finding Moore's paintings were transformative to the extent that they memorialize a football play in a fashion that it can be relished and preserved, it saw "a total distinction between cases involving fine artistic creation and cases involving cards, T-shirts, cups, mugs, [and] posters ..." (p. 14). The court's reasoning dictates that only paintings and prints created as "limited edition" without the use of Alabama's protected logos are approved while the depiction of the same paintings reproduced on other mundane products, as the court called them, is not allowed under the First Amendment. The court gives the example of a Mona Lisa painting on a coffee mug as not being allowed unless the mug itself is considered a fine sculpture. This distinction seems to create a bizarre result that suggests that the medium of expression chosen by the artist for reproducing or distributing an original or limited edition work of art dictates whether or not First Amendment protection is granted. In other words, under the judge's rationale, it would seemingly create the hypothetical scenario where if an artist decided to reproduce his limited edition art work on a coffee mug, it would not be protected under the First Amendment.

The federal appellate courts, notably ETW v. Jireh Publishing (2003), have re-affirmed that there are numerous mediums of expression for artistic creation (i.e., noncommercial speech) entitled to First Amendment protection. In addition, at least one other federal district court recognized an artist's rights potentially extended beyond the original work of art to include reproductions even on mundane items such as mugs and T-shirts so long as the original work of art accurately depicts the protected marks as they actually existed and did not gratuitously add protected logos (New York Racing Association, Inc. v. Perlmutter Publishing, Inc. (1996). Incorporating one of a plaintiff's marks in a painting that depicts a scene in which the mark actually exists serves the artistically relevant purpose of accurately depicting that scene. In other words, if the original painting is an accurate depiction of the colors and logos as they existed within the stadium, that original work is clearly protected artistic expression, and additional souvenir items reproducing the original may also be considered protected artistic expression. If, however, additional logos or protected marks are incorporated that are not actually depicted in the scene, those items may not be entitled to protection and would instead be subject to trademark infringement claims. As a general rule, "use of another's mark within the content of artistic or literary expression should generally be classified as noncommercial speech that is fully protected by the First Amendment" because the trademark clearly does not propose a commercial transaction when used in that context (Ramsey, 2008, p. 398). The New Life Art decision seems more narrow than Perlmutter recognizing that First Amendment protection only exists for the original painting and prints.

The Court's Decision

The court ultimately concluded that, going forward, the artist will not infringe any of the university's trademarks or trade dress by creating or distributing paintings or prints of the same or larger size than those already created. The only limitation is that such artistic creations cannot be placed on commercial goods which are unlike fine art, such as T-shirts, mugs, or posters, without a license.

While "the parties have agreed [that the district court] is a way station on the route to the appellate court(s)" (p. 1), this new decision arguably gives artists some much needed breathing room in choosing what they can capture through sport scenes without needing to secure a license from the respective university or team. The distinction the district court draws between the artists' chosen medium for reproducing their limited edition works of art being determinative of whether or not to grant First Amendment protection seems to present an issue for a future appellate court to revisit. This could potentially broaden the scope of medium available to sport artists for reproducing and distributing their works.

Implications for Sport Licensing

The licensing implications of an ultimate resolution of the New Life Art case are significant as the market for sport-themed memorabilia continues to thrive. While the court gives their approval to "limited edition" paintings and prints which feature the school colors and football uniforms, the court is careful to note that artistic works that also use the protected logos of the university will infringe the plaintiff's trademarks. This seems inconsistent with the existing precedent that allows use of protected marks in works of artistic expression in the context of noncommercial speech such as art work. In the hypothetical scenario where a sports artist includes the team logos on the football helmets in order to accurately depict the scene, the New Life Art decision would seem to consider that infringement. Thus, the decision may create additional uncertainty in the market for sports-themed memorabilia that uses original or limited edition artistic creations as it seemingly has created more questions than it answered with regard to the rights of sports artists and universities. Certainly numerous sport artists reproduce their art work on a variety of consumer products such as calendars, mugs, hats, t-shirts, and note cards. Presumably this is an important revenue stream for these artists that could be jeopardized by the narrow ruling in this case. Assuming that this decision is upheld on appeal, First Amendment advocates and sport artists can claim somewhat of a partial victory for no longer needing a license to paint the football uniforms in school colors. However, there will still be substantial consumer demand to purchase merchandise in the team colors that combine the university's well-known registered trademarks in the team logos and other identifying indicia. Under the court's ruling, this will necessitate continued licensing agreements in order for such team-related merchandise, including artistic creations that contain the trademarked logos, to reach the sports marketplace.

References

Board. of Supervisors for Louisiana State University, et al. v. Smack Apparel Co., 550 F.3d 465 (Fifth Cir. 2008).

ETW v. Jireh Publishing, Inc., 332 F.3d 915 (Sixth Cir. 2003).

Grady, J. (2005). University of Alabama case to test limits of trademark licensing in sport art cases. Sport Marketing Quarterly, 14(4), 251-252.

New York Racing Association, Inc. v. Perlmutter Publishing, Inc., 1996 U.S. Dist. LEXIS 11764 (N.D.N.Y. 1996).

Ramsey, L. P. (2008). Increasing First Amendment scrutiny of Trademark law. Southern Methodist University Law Review, 61, 381-458.

University of Alabama v. New Life Art, et al., 2009 U.S. Dist. LEXIS 120118 & 120238 (N.D. Ala. 2009).

DISCLAIMER: Professor Anita M. Moorman, JD, teaches sport law in the sport administration program at the University of Louisville.

The materials in this column have been prepared for informational and educational purposes only, and should in no way be considered legal advice. You should not act or rely upon these materials without first consulting an attorney. By providing these materials it is not the intent of Professor Moorman to enter into an attorney-client relationship with the reader. This is not a solicitation for business. If you choose to contact Professor Moorman through e-mail, please do not provide her with any confidential information.

Inquiries regarding this feature may be directed to Anita M. Moorman at amm@louisville.edu.

John Grady, JD, PhD, is an assistant professor in the Department of Sport & Entertainment Management at the University of South Carolina. His research interests focus on intellectual property protection by professional and collegiate sport properties as well as accommodating patrons with disabilities in sport and entertainment venues. He can be reached at jgrady@mailbox.sc.edu.