Major trademark ruling for photographers


By Andrew Hudson Published: June 18, 2012 Updated: January 31, 2017

Photographers who sell photos have had to avoid images of sports teams because a lack of case law left them open to being sued for trademark infringement. However, that has now changed with a landmark appeals court ruling which elevates commercial artistic expression over trademark law.

On June 11, 2012, the Eleventh Circuit Court of Appeals ruled that photographer >Daniel Moore can sell his photos of University of Alabama teams (with their trademarked uniforms) without violating trademark law since commercial paintings, prints and calendars are artistically expressive and protected by the First Amendment.

“… the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act with respect to the paintings, prints, and calendars.”
— University of Ala. Bd of Trustees v. New Life, Inc, 09-16412 (11th Cir. 2012)

“[the photographer’s] paintings, prints, and calendars do not violate [trademark law] because these artistically expressive objects are protected by the First Amendment.”
— University of Ala. Bd of Trustees v. New Life, Inc, 09-16412 (11th Cir. 2012)

“After over seven years of litigation brought by my alma matter, I am very pleased that the Eleventh Circuit Court of Appeals has now affirmed that my fine art paintings and prints depicting Alabama Football since 1979 are fully protected by the First Amendment.”
>Daniel A. Moore, June 2012

The Hollywood Reporter trumpets this as a major win that “allows broad use of trademarks in artistic works.”

“Yes, Moore sold his work for money, but the judge agrees with legal precedent in saying that the dissemination of speech can take place under commercial auspices.”
Eriq Gardner, Hollywood Reporter, June 12, 2012.

“We have no hesitation in joining our sister circuits by holding that we should construe the Lanham Act [U.S. trademark law] narrowly when deciding whether an artistically expressive work infringes a trademark. This requires that we carefully ‘weigh the public interest in free expression against the public interest in avoiding consumer confusion.’ An artistically expressive use of a trademark will not violate the Lanham Act ‘unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.’”
— Judge Robert Lanier Anderson, University of Ala. Bd of Trustees v. New Life, Inc, 09-16412 (11th Cir. 2012), June 11, 2012.

To understand the implications, here’s a legal opinion from Practical Law:

The court evaluated the claims under the test adopted by the US Court of Appeals for the Second Circuit in Rogers v. Grimaldi, the landmark case for balancing trademark and First Amendment rights. The Rogers test weighs the risk of consumer confusion against the First Amendment interests in artistic expression. … Under the Rogers test, an artistically expressive use of a trademark does not violate the Lanham Act unless:

  • The use of the mark has no artistic relevance to the underlying work.
  • If the mark has some artistic relevance, it is explicitly misleading about source.

Applying this test, the court determined that Moore’s depiction of the university’s uniforms in the paintings, prints and calendars did not violate the Lanham Act because:

  • Moore’s depiction of the uniforms is artistically relevant to the work because the uniforms are needed to realistically portray Alabama football history.
  • There was no evidence that Moore marketed an unlicensed item as sponsored or endorsed by the university or explicitly stated that the items were affiliated with the university.

Reference: Rogers v. Grimaldi, 875 F. 2d 994 — Court of Appeals, 2nd Circuit 1989, Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., No. 09-16412 (11th Cir., June 11, 2012).

How does this affect photographers? Now there is legal precedent for safeguarding photographers from minor inclusion of trademarks, even in artwork for sale. Just ensure that your use of the trademark is a minor part of the photo and is relevant to the subject of the photo, and that you are not intentionally appropriating the trademark for gain or misleading consumers as to the source of the photo.

Here are some more quotes.

“Moore’s depiction of the University’s uniforms in his unlicensed paintings, prints, and calendars is not prohibited by the prior licensing agreements. Additionally, the paintings, prints, and calendars do not violate the Lanham Act because these artistically expressive objects are protected by the First Amendment.”
— University of Ala. Bd of Trustees v. New Life, Inc, 09-16412 (11th Cir. 2012)

“The depiction of the University’s uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniforms’ colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history. Also there is no evidence that Moore ever marketed an unlicensed item as ‘endorsed’ or ‘sponsored’ by the University, or otherwise explicitly stated that such items were affiliated with the University. Moore’s paintings, prints, and calendars very clearly are embodiments of artistic expression, and are entitled to full First Amendment protection. The extent of his use of the University’s trademarks is their mere inclusion (their necessary inclusion) in the body of the image which Moore creates to memorialize and enhance a particular play or event in the University’s football history. Even if ‘some members of the public would draw the incorrect inference that [the University] had some involvement with [Moore’s paintings, prints, and calendars,] … that risk of misunderstanding, not engendered by any overt [or in this case even implicit] claim … is so outweighed by the interest in artistic expression as to preclude’ any violation of the Lanham Act [the Federal law that covers trademarks]. Rogers, 875 F.2d at 1001.”
— University of Ala. Bd of Trustees v. New Life, Inc, 09-16412 (11th Cir. 2012)

“There have been few relevant cases regarding art and trademark infringement, the most important being a 2003 decision by the Sixth Circuit Court of Appeals in Cincinnati. In 2000 Tiger Woods’s licensing company, ETW Corp., filed suit against artist Rick Rush to prevent him from selling prints made from his painting of Mr. Woods winning the 1997 Masters. The court decided that Mr. Rush’s painting, like Andy Warhol’s depictions of celebrities such as Marilyn Monroe and Mick Jagger, was sufficiently ‘transformative’ to fall under First Amendment protection because the work — with Mr. Woods in three different poses with several past winners of the Masters — contained the artist’s own creative component and was not simply a likeness of Mr. Woods.”
Allen Barra, Wall Street Journal, March 21, 2012.

Source: Hollywood Reporter.

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