Intellectual Property And The First Amendment: The University of Alabama and Daniel Moore

Posted on June 20, 2012

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Licensing the logos, mascots, colors and other intellectual property of universities and colleges is big business and one that the institutions take very seriously.  Nothing reveals this fact more clearly than the seven year case between the University of Alabama and artist Daniel Moore.

Daniel Moore has been painting scenes of University of Alabama sporting events since 1979.  From 1991 to 1999, Moore signed several license agreements with the school to produce and market his products. There were no royalty charges for any of these items as the University did not require them.  According to John H. Arden, a legal commentator on the subject: “In 2002, the university informed Moore that he would need to license all of his University of Alabama-related products featuring the university’s trademarks, including the football uniforms and school colors. Moore contended that he did not need permission to paint historical events and that there was no trademark violation as long as he did not use the trademarks outside of the ‘image area’ of the painting” (IP Law Daily). When  Moore and the University did not reach an agreement, the school filed suit in March of 2005 in the Northern District of Alabama for breach of contract, trademark infringement, and unfair competition.

In November of 2009 Moore won a victory the when U.S. District Court Judge Robert Propst ruled that (i) the prior licensing agreements did not require that Moore receive permission to portray the uniforms because they were not considered “licensed indicia”, (ii) the University’s colors were not strong trademarks, (iii) the depiction of the uniforms in paintings was protected by the First Amendment and (iv) Moore’s depiction of the uniforms on mugs and calendars was not protected by the First Amendment.  Both parties moved forward to appeal portions of that decision.

On June 11, 2012, the 11th Circuit Court of Appeals upheld a district court’s ruling that Moore’s paintings and prints are protected by the First Amendment and reversed another ruling that previously prohibited Moore from selling calendars of his artwork.  The Court found that the parties’ course of conduct clearly indicated that they did not intend that Moore would need permission each time he portrayed university uniforms in the content of paintings, prints and calendars. Additionally, with regard to the University’s trademark claims, the First Amendment interests in artistic expression outweigh whatever consumer confusion may exist.  The court wrote that Moore’s use of Alabama uniforms in his paintings is “artistically relevant” to portray famous Crimson Tide moments and that there’s no evidence Moore ever marketed unlicensed items as endorsed by the university.  Moore’s paintings and prints are artistic expressions entitled to full First Amendment protections.  These rulings mean Moore will be allowed to continue creating and selling his paintings based on Alabama football as well as sell calendars featuring his artwork.  The case was remanded back to the district court for a decision with regard to mugs and other mundane products.  You may read the ruling in its entirety.

What happens now?  The District Court will still need to issue a decision regarding mugs and other mundane products.  Additionally, the University of Alabama can still appeal to the U.S. Supreme Court, although there is no guarantee they will hear the case.  Time will tell.

Elizabeth Ritter
Ritter Law Firm, LLC

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