–Sharon Armstrong, Attorney

Earlier this week the Legal Satyricon and a number of newspapers in the Southeast reported on the University of Alabama’s loss of part of its trademark infringement suit against former licensee Daniel Moore, an artist who has created original paintings featuring the UA’s athletes for over 30 years. UA argued that it has protectable trademark rights in the unregistered trade dress of the UA football uniforms – namely the colors crimson and white; UA’s trademark rights in its registered marks for CRIMSON TIDE were not at issue. Mr. Moore argued the defenses of “artistic expression,” first amendment, and fair use.

As I’ve written previously, athletic licensing is a serious money-maker for universities, and Mr. Moore purportedly earns in the low millions for his art, so there is much for UA to gain by bringing Mr. Moore back into their licensing fold. But, a cursory review of the court’s opinion, which points to case after case wherein university athletic departments, athletic event organizers, and individual athletes have sued artists on trademark theories, shows that such suits are seldom successful. Putting aside the difficulty of proving strong rights in the trade dress of the colors crimson and white (I can think of one institution in particular that may claim arguably stronger rights in the color crimson) and the on-the-face-of-the-dispute lack of plausible likelihood of consumer confusion, the basic issue here is whether artists such as Mr. Moore are using purported trademark rights in a trademark sense – that is, to identify themselves as the source of the purported trademark rights.

As readers of this blog are aware, a trademark is any symbol, word, device, etc. used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. The doctrine of classic fair use, which allows third parties to use a mark when it does so in good faith, to describe its goods and services in a manner that is not as a trademark, recognizes that if purported trademark owners could limit the use of their marks too even non-source-identifying uses, our ability to refer to goods, services, and their sources would be severely limited for no justifiable purpose. As if the application of this doctrine to the facts of this case spoke for itself, the court spent no more than seven sentences finding that Mr. Moore’s use of the Crimson Tide’s colors was a fair one.

Notably, the court found in favor of Mr. Moore to the extent he depicts the Crimson Tide in his artwork and prints, but enjoined his use of those same images on merchandise, such as coffee mugs, t-shirts and the like. What makes the use of the red-and-white in paintings a fair use, but not mugs?  While the court did not parse out its reasons for these findings, it is likely because consumers are more likely to view such goods – as opposed to $25,000 original oil paintings – as affiliated with UA, which probably makes a tidy sum selling Crimson Tide merchandise to its fans.