Published June 19, 2012 - 9:30am
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Football is big business for SEC universities. So is intellectual property. Outside of athletics, IP generates billions for major research universities in patent royalties on faculty inventions. Nick Saban and Les Miles may not be Nobel Prize-winning scientists, but their ability to build and market successful football programs also generates a significant IP windfall in the form of licensing and trademark revenue.
Alabama officials were so gung-ho to defend its trademark turf that they’ve spent years litigating against Daniel Moore, an artist who has spent over 30 years painting and selling scenes from famous Crimson Tide games. Alabama knew about Moore’s work as far back as 1980. The school purchased numerous works from him over the years, and from 1991 to 1999 there were multiple agreements to produce “officially licensed” products based on Moore’s paintings. Alabama even issued Moore press credentials and invited him to produce a painting during a football telecast.
In 2002, Alabama soured on Moore and told him he would need to license “all of his Alabama-related products because they featured the University’s trademarks.” Alabama said this included any depiction of the school’s uniforms and colors. Moore refused Alabama’s demands and the university sued him in 2005.
Four years later, federal Judge Robert Propst issued a summary judgment with a split outcome. Propst said Moore’s use of Alabama’s uniforms in his paintings (and any prints of those paintings) was “fair use” and protected speech under the First Amendment to the United States Constitution. But his further marketing of his paintings on coffee mugs, calendars and other “mundane” products was purely commercial, and therefore infringed on Alabama’s trademark rights. Propst said those items were not protected expression under the First Amendment and “would likely result in consumer confusion,” since customers might mistake the items for officially licensed Alabama products.
Both sides appealed Judge Propst’s decision to the Atlanta-based U.S. Court of Appeals for the Eleventh Circuit. Last week, a three-judge panel of that Court unanimously ruled in favor of Moore. Judge R. Lanier Anderson, writing for the panel, affirmed that Moore’s paintings and prints were “artistically expressive objects” that are “protected by the First Amendment.” Any use of Alabama’s uniforms in those paintings were “artistically relevant to the underlying works.” Furthermore, Moore “never explicitly misled consumers as to the source of the items, and the interests in artistic expression outweigh the risk of confusion as to endorsement.”
With respect to Judge Propst’s ruling for Alabama on the “mundane products,” Judge Anderson and the panel returned the case to Judge Propst for further proceedings. The panel did not expressly rule for Moore, but rather said there were still disputed facts that needed to be resolved by the trial court.
Artists vs. Athletes
Alabama prosecuted its lawsuit on the premise that Moore’s paintings somehow diluted the “strong” trademark the university maintained in its football uniforms. Judge Propst and the Eleventh Circuit disagreed. They found Alabama’s trademark claims “weak” and rejected the notion that Moore somehow confused people into buying his works by implying he had official sanction from the university:
[C]ontrary to the University’s argument that its trademarks triggered the sales of Moore’s products, the district court concluded with respect to the paintings and
prints that “the plays and Moore’s reputation established during a period when his
art was agreeably not licensed are what predominantly trigger the sales.”
[ … ]
We note that Moore’s signature was prominent on the
paintings, prints, and calendars, clearly telegraphing that he was the artist who created the work of art.
The Eleventh Circuit noted it was not the first appellate court to consider the issue of a sports figure claiming trademark rights over an artist’s work. In 2003, the Cincinnati-based Sixth Circuit rejected a trademark lawsuit brought by Tiger Woods against an artist who painted a collage of images of the famous golfer. In that case, Judge Anderson said, the Sixth Circuit “found that Woods’s image of the painting had artistic relevance to the underlying work and did not explicitly mislead as to the source of the work.”
Alabama claimed the Woods example was irrelevant since that dealt primarily with his “rights of publicity,” a form of IP that is given less legal protection than trademarks. Judge Anderson disagreed and said the case also involved trademarks and “false endorsement claims,” like the one Alabama made against Moore.
Honey Badger Don’t Care (About Free Speech)
Moore’s victory over Alabama does not necessarily a signal an overall weakening of sports-related IP claims by universities. The main reason Moore prevailed was that Alabama openly tolerated and encouraged his work for decades before abruptly deciding to assert trademark rights. Alabama’s willingness to litigate against Moore demonstrates that future artists will face strong resistance at the outset.
And we’re not just talking about the Crimson Tide. Last December, LSU made waves when it launched a preemptive strike against a number of individuals marketing apparel with the phrase “Honey Badger,” a reference to the nickname of Tigers player Tyrann Mathieu. LSU made trademark claims well beyond even Alabama’s lawsuit against Moore, claiming the right to restrict the use of the phrase “Honey Badger” and Matthieu’s number, seven, without the school’s express permission.
Of course, Mathieu himself wouldn’t earn any income even from LSU-licensed “Honey Badger” items due to the NCAA rules. As far as the NCAA and its members are concerned, players are just another form of intellectual property.
What’s appalling here isn’t so much the naked cash-grab by football programs that already generate millions in revenue annually. It’s the fact that universities—the self-proclaimed guardians of knowledge and free expression—would openly use the legal system to stifle personal and artistic expression. Stephan Kinsella, a LSU alum and libertarian anti-IP scholar, summed it up nicely when writing about the Honey Badger dispute last year:
Truly disgusting, but par for the course for our mercantilist, protectionist, IP-centric form of corporatism in which the powerful state helps big corporations (and socialist state universities) bully individuals and small competitors with pseudo-“property rights” like patent, trademark, and copyright.
Indeed, these trademark wars only further erode the credibility of the NCAA and its member schools when it comes to maintaining the fiction of amateurism and purporting to regulate the “ethics” of individuals.