U.S. Eleventh Circuit - The FindLaw 11th Circuit Court of Appeals Opinion Summaries Blog

Courts Says Bama Mugs are 'Mundane Products', Not Protected

Southern football fans love their college teams so much that there’s a market for realistic renderings of famous moments in college sports. Daniel Moore has made a career out of painting those moments, but he’s been battling his muse in court over the last seven years regarding his right to paint her.

In an intellectual property decision this week regarding Moore’s artwork and products featuring original images of University of Alabama sporting events, the Eleventh Circuit ruled that the Bama can’t use threats of copyright infringement to stop Moore from painting the Crimson Tide football team.

Daniel Moore has painted famous football scenes involving the University of Alabama since 1979. The paintings feature realistic portrayals of the University's uniforms, including helmets, jerseys, and crimson and white colors. Moore has reproduced his paintings as prints and calendars, as well as on mugs and other articles, both on his own and through licensing agreements with the University.

In 2002, the University told Moore that he would need permission to depict the University's uniforms because they are trademarks. Moore claimed he didn't need permission because the uniforms were being used to realistically portray historical events. When the parties couldn't come to an agreement, the University sued Moore for breach of contract, trademark infringement, and unfair competition. The University alleged that that Moore had breached several terms of his prior licensing agreements, and Moore's paintings, prints, calendars, mugs, and other objects violated the Lanham Act by infringing the University's trademark rights in its football uniforms.

In November 2009, U.S. District Judge Robert Propst ruled that the University's colors weren't especially strong trademarks, and Moore could continue painting the uniforms. While Judge Propst found that Moore's uniform depictions were protected by the First Amendment and a fair use, he ruled that depictions on mugs, calendars, and other "mundane products" were not protected by the First Amendment, were not fair uses, and would likely result in consumer confusion.

Monday, the Eleventh Circuit Court of Appeals affirmed in part and reversed in part.

The Atlanta-based court ruled that 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, by virtue of our application of the Rogers v. Grimaldi balancing test.

Though the court reversed the district court's decision with regard to the licensing aspect of the mundane products, it noted that Moore waived the argument that the mundane products were protected by fair use or the First Amendment.

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