U Of Alabama Wants To Have Its Cake And Sue You Too

from the trademark-insanity dept

We've talked a few times recently about the insanity created by over-aggressive intellectual property enforcement when it comes to universities, and the University of Alabama really is a prime example. After all, this is the school that sued a local artist for painting (very popular) commemorative paintings of UA football moments. Thankfully, it recently lost that case, but I guess the lawyers at Alabama didn't quite get the message that perhaps they shouldn't be so quick to dash off legal nastygrams. It appears that the lawyers in charge of enforcing UA's trademarks were quick to send off a legal nastygram to a local baker because she was making hand-decorated cakes and cookies with "UA-related" imagery:

[Mary] Cesar is owner of Mary's Cakes & Pastries in downtown Northport. The bakery is known for its customized cakes, but it also sells fresh-baked pastries and iced and decorated form-cut cookies. During the last three to four years, its cookies, especially during the football season, have included hats with a houndstooth-like icing pattern, footballs and elephants with the letter “A.” Some customers also ordered cakes decorated with a Crimson Tide theme.

Yeah, just one problem: she was doing that for the university itself.

Mary Cesar created a cake that resembled the BCS National Championship trophy for the Crimson Tide's athletic department for National Signing Day in February. And when the University of Alabama Law School held a reception for its recent graduates, it ordered 10 dozen cookies decorated with a capital “A” for Alabama from her bakery.

Cesar announced that she couldn't afford to fight the legal nastygram, and was going to stop producing the popular baked goods. After the story got out, the University quickly went into damage-control mode and issued an apology, claiming that it was "not consistent with the protocol we normally follow for local vendors on trademark issues." Given the lawsuit mentioned above, it's not clear that's really accurate. Of course, part of the culprit here may be that UA outsourced its trademark enforcement to a third party. Collegiate Licensing Co., based in Atlanta, is who the letter actually came from. It would seem that if you're seeking to build up goodwill with local merchants who supply your own staff with university-themed baked goods, perhaps the first thing you should do is not let lawyers from some other state start nastygramming them.

Filed Under: baked goods, trademark, university of alabama

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.

Filed Under: daniel moore, fair use, first amendment, licensing, university of alabama

Artist Barred From Selling His Own Artwork For Daring To Promote University Of Alabama Football Feats

from the this-makes-no-sense dept

I could have sworn we wrote about this case earlier, but I'm searching around and can't find the post. It involves Daniel Moore, a painter and fan of the University of Alabama's football team. Given both those things, he's been painting portraits of some of the team's biggest achievements. Now, you might think that any normal person (or university) would be thrilled that its fans had taken things to the level of painting artistic portraits of the team's greatest moments. What a wonderful statement. Not the University of Alabama, however. It sued Moore for infringement. And while a court found that there's no trademark infringement if no Alabama logos are shown in the paintings, it also said that, even as such, he was barred from selling merchandise (like calendars) based on his paintings. Robert Ring points out that Moore is appealing the ruling, pointing out (reasonably) that if the paintings themselves don't infringe, it seems pretty damn hard to see why merchandise based on those same non-infringing painting would be barred. I'm even confused why there's an issue if the paintings had included Alabama logos. By that logic, any photographs that include a team logo would potentially be infringing as well, which makes no sense. But the biggest issue is why this is even an issue at all. The University should be thrilled that someone is helping promote their team the way Daniel Moore is.

Filed Under: alabama, daniel moore, painting, trademark, university of alabama