Posted: March 6th, 2012
By Sarah R. Riedl *
Artist David Moore has been painting images of University of Alabama football victories since the late 1970s and selling them to Crimson Tide fans. Moore exhausted his welcome with Alabama in 2005, however, when the University demanded the payment of royalties in the sum of 8% of profits for the use of the school’s trademarks due to Moore’s alleged infringing activities spanning the course of several decades. Faced with the school’s assertion of property rights in the trademarks used in his paintings, Moore countered with his fundamental right to free speech.
A similar conflict to Daniel Moore’s arose when a sports artist created an original work depicting Tiger Woods’ image and including an excerpt identifying the image as Tiger Woods and his caddy. In the case, the artist successfully raised a First Amendment freedom of speech defense to the allegation of trademark infringement, but the court narrowly tailored the defense. The district court for the Northern District of Ohio explained that the First Amendment protects the creation of a single, original work of art, but would not extend to protect the mass production of a work of art like Moore’s occupation. Given the fact that one of Moore’s prints sold nearly 20,000 copies, he is very unlikely to benefit from the First Amendment protection in ETW Corp. v. Jireh Publishing, Inc.
Around the time the first cease-and-desist letters were sent to Moore in 2005, he was blindsided. Moore had been receiving sideline tickets to Crimson Tide football games from the University for years. Instead of pursuing his rights under the First Amendment, it would be more prudent to ask the court for an equitable remedy: namely estoppel by acquiescence. Estoppel by acquiescence allows the court to bar a trademark owner from asserting its rights against an individual’s or entity’s use of the mark when the owner has neglected to do so for a period of time. The rationale behind the equitable doctrine is that it would be unfair to allow an owner to assert trademark rights against a use to which it has seemingly acquiesced, or at least tolerated. While five or even seven years is generally not enough to convince a court to invoke the doctrine, the span from 1979-2005 could be more than enough to support the assertion that the University acquiesced to Moore’s use of its marks.
If the Court of Appeals finds for the University of Alabama, Moore may have more than just his six-figure legal services to be concerned about. Most of the images the University alleges infringe on its trademark rights depict the trademarks of other universities across the nation as well. If the University of Alabama convinces the court that royalties are an appropriate remedy, other schools might initiate trademark infringement actions for the use of their registered trademarks as well. In fact, 27 universities have filed amici briefs on the University of Alabama’s behalf.
The crux of any trademark infringement action under the Lanham Act is whether a likelihood of consumer confusion is likely to result between the two uses of a similar mark. Moore has little room to argue his paintings do not create a likelihood that consumers will be confused by his use of the University’s marks. The University of Alabama’s name and mascot are nationally recognized as a institution of higher learning and a powerhouse football program. Further, Daniel Moore’s paintings do not alter the University’s trademarks in any way, but copies the uniform design, helmet insignia, and other marks as closely as artistically possible. Even the products, posters, t-shirts, and coffee mugs overlap with products the University sells at campus stores and other retailers under licensing agreements. Given the copycat use of the University’s marks, the similarity of the products and the paintings’ subject matter, Moore’s artwork likely gives consumers the incorrect assumption that the University is affiliated with his paintings.
Since there will be little quibbling over likelihood of consumer confusion, Moore will have to work hard to wedge his case in under the freedom of speech exception or ask the court to employ an equitable doctrine in his favor to escape the Court of Appeals unscathed.
* Sarah R. Riedl is a second year law student at Wake Forest University School of Law. She has a Bachelor of Arts in English from the University of Illinois. Upon graduation in May 2013, Miss Riedl intends to practice business litigation and intellectual property law.