Depictions of University Football Uniforms: Trade Dress, Licensing and the First Amendment

Univ. of Ala. Bd. of Trs. v. New Life Art Inc., 2009 U.S. Dist. LEXIS 120238 (N.D. Ala. Nov. 2, 2009)

The issue was whether defendants infringed on plaintiff's trade dress by creating and selling paintings and prints which included pictures of University of Alabama football uniforms on players?

The defendant Daniel Moore is a highly qualified and well known sports artist who has painted a number of artistic presentations of notable University of Alabama football plays. The other defendant, New Life Art Inc., is the company that employs Daniel Moore as an artist. The dispute refers to a gap in time where there was no licensing agreement in effect between the parties. The defendants took the position that Moore's paintings (referred to as "images") and prints, as distinguished from "Indicia," did not have to be licensed. The plaintiff took the position that the uniforms worn by its football players in its colors were trade dress on which it had a protectable trademark and that the defendants cannot portray and sell football scenes which include those uniforms without a license to do so.

Among the court’s conclusions were: (1) The colors of the uniforms in Moore's paintings may be a weak trade dress mark, since they have created local secondary meaning but the colors are common for university uniforms. (2) The paintings may create a likelihood of confusion with regard to plaintiff's said mark. The court also found that, notwithstanding the foregoing conclusions, (1) there is no genuine issue of material fact with regard to defendants' defenses premised on Artistic Expression, First Amendment and Fair Use, and that defendants are entitled to prevail with regard to the paintings and prints of fine art quality as discussed. This conclusion includes a determination that even if there is a likelihood of confusion, the balancing of such likelihood and the public interest entitles defendants to prevail. (2) That the defendants have not and will not infringe on any trademark or trade dress mark of the plaintiff by creating, manufacturing, producing, selling, distributing or otherwise dealing in paintings and/or prints which are of the same or larger size and equal or greater quality than the limited edition paintings and prints that the defendants have heretofore created and produced.