Big Ruling Says Using Trademarks In Artistic Works Can Be Protected Under The First Amendment

from the speak-freely dept

For years, we've talked about just how preposterous it is that various brands claim filmmakers and other content creators can't show their logos without permission. There are even lawyers who specialize in watching movies to make sure no brands appear without a license. Seriously. And this trademark madness extends to other areas as well. A few years ago, we wrote about a crazy case, involving the University of Alabama suing an artist named Daniel Moore (a huge fan of the school's football team) who regularly did paintings of great moments in the football team's history. The case was slightly complicated by the fact that there had been a licensing relationship between the University and Moore at various times, but eventually that went away and the legal fight was over whether Moore could paint depictions of football games without permission. Among the arguments the University made was one that said the very uniforms the players wore were covered by trademark, and depicting them without a license (or, hell, without a registered trademark symbol) was not to be allowed. After many years of fighting through the courts, a district court in 2009 tried to split the baby by saying that Moore could create and sell paintings... but not merchandise (mugs, calendars, etc.) based on those paintings.

This week, the ruling in the appeal of that case, in the 11th Circuit, was finally handed down -- and it's a good one. The court seems to recognize the basic First Amendment issues at play and takes a pretty broad view of how the use of trademarks in artistic works should be perfectly legal. The court relies heavily on Rogers v. Grimaldi -- which is more focused on publicity rights, but has a Lanham Act component as well. In the end, this ruling basically says the First Amendment issue trumps all, and the "likelihood of confusion" here is minimal as well, but takes a back seat to the First Amendment concerns:
In this case, we readily conclude that Moore’s paintings, prints, and calendars are protected under the Rogers test. 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. Rogers, 875 F.2d at 1001.
That part is focused on the paintings. Unfortunately, the ruling on the merchandise side is still a little complex. The court rejects the summary judgment in favor of the University, but basically says it's an issue that needs to go to trial, rather than be resolved by summary judgment. Even more unfortunately, the court notes that Moore has "waived" his First Amendment and fair use claims for this part of the dispute. That seems like a bad decision by Moore, but there appears to be little he can do about it at this point. Moore chose to focus on a different argument, suggesting that the fact that he holds the copyright in the paintings trumps the trademark issue -- an argument the court basically tosses aside. Instead, the remaining issue is if the University effectively gave tacit approval to Moore to sell those items under the theory of "acquiescence." That discussion has little to do with the bigger questions.

Overall, though, the first part of this ruling is quite useful in showing that the First Amendment trumps trademark in artistic works in many cases, and hopefully will be relied on widely to stop ridiculous assertions about things like trademarks showing up in movies and other artwork without getting permission.


Reader Comments (rss)

(Flattened / Threaded)

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    BentFranklin (profile), Jun 14th, 2012 @ 9:07am

    I doubt this will change movies because even the studios don't think of their own product as art.

     

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    PlagueSD (profile), Jun 14th, 2012 @ 9:16am

    I guess "free advertising" isn't good enough. Companies will sell their first-born if it guaranteed them more cash than they know what to do with.

     

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    Brent (profile), Jun 14th, 2012 @ 9:18am

    In a better world, he would have licensed his paintings to the university and received a portion of each sale of said mugs, shirts, etc that featured said paintings and avoided the legal mess completely.

     

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      Rich, Jun 14th, 2012 @ 9:33am

      Re:

      In a better world, he wouldn't have to.

       

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      jupiterkansas (profile), Jun 14th, 2012 @ 10:07am

      Re:

      Is that a better world when he can sell mugs and shirts of his OWN ARTWORK and not have to cater to the whims and bidding of a third party?

       

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      Spaceboy (profile), Jun 14th, 2012 @ 5:06pm

      Re:

      Maybe Andy Warhol should have licensed his Tomato Soup painting to Campbell's so they could pay him to put their own image on the can of tomato soup he was painting.

      On second thought, I'm glad he didn't. The ensuing singularity would have annihilated the universe.

       

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    Anonymous Coward, Jun 14th, 2012 @ 9:26am

    Long overdue and sensible ruling.

    We need a few more sensible rulings like this.

     

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    Aghast, Jun 14th, 2012 @ 9:41am

    There are even lawyers who specialize in watching movies to make sure no brands appear without a license.

    Say it ain't so! You mean that the lowest forms of pond-scum are looking for business?

    Why, I'm positively shocked. Why can't they just chase ambulances and hang around police desks and cemeteries like the rest of them?

     

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      Slippery Pete, Jun 14th, 2012 @ 9:51am

      Insulting Comment

      I take umbrage with the suggestion that these ‘lawyers’ as low a species as us.

      We pond-scum are obviously vastly superior in every possible way.

      Please withdraw the insult immediately or face the wrath of eternal rust stains around your toilet bowl that even a blowtorch or last nirght's chili won't touch.

       

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    ken (profile), Jun 14th, 2012 @ 10:40am

    Incidental uses of copyrighted works

    One thing that needs to change is to make it legal for incidental use of copyrighted works such as music in the background of videos or painting or artwork or trademarks etc that appear in images or video photos that are not the main focus of the work.

     

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    DannyB (profile), Jun 14th, 2012 @ 10:48am

    Purpose of Trademarks

    Isn't the purpose of trademarks to protect consumers? Eg, to protect you from someone claiming that their soft drink is genuine Coke(tm) ? To protect your from Microsoft selling you something that it calls "Linux", but is really Windows? To protect you from someone selling you an Android phone, but then you find out is just an iPhone.

    Since when is trademark supposed to be about Monster Cable suing a miniature golf course named Monster?

    Since when is trademark supposed to be about anyone getting sued because a can of Diet Coke(tm) appeared, incidentally, in a movie -- unrelated to the plot?

     

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    DanZee (profile), Jun 14th, 2012 @ 11:20am

    Super Heroes

    I once walked by an art gallery and saw some poorly painted canvases of Marvel and DC superheroes in the window. The artist was definitely NOT a comic book artist. But I wondered how the gallery had the right to sell something like that. I know that real comic book artists who do artwork for fans always feel they have to keep their heads down for fear Marvel and DC might stop them from doing fan artwork. Now, at least, there's a court case that legitimizes it.

     

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    GMacGuffin (profile), Jun 14th, 2012 @ 11:23am

    Amazing.

    I had to go check the legal blogs and look into this some more, because I can hardly believe it. Yup, it's true.

    This is an amazing ruling. Good for everyone (even the rightsholders who don't know it yet). Bravo Daniel Moore and Judge Anderson. You rock my world!

     

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    Rekrul, Jun 15th, 2012 @ 5:35am

    Cue appeal by the University in 3... 2... 1...

     

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    Anonymous Coward, Jun 28th, 2012 @ 4:06pm

    awww, how cute, you think the constitution matters to obama?? it is all changing

     

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    jammy, Sep 17th, 2012 @ 10:26am

    really a awesome blog Replacement Windowsi love it

     

    reply to this | link to this | view in chronology ]


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