Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 1 of 29
`
`FILED
`
` 2009 Nov-02 PM 01:42
`U.S. DISTRICT COURT
`N.D. OF ALABAMA
`
`

`
`Case 7:O5—cv—OO5t35—AKK Document 311 Filed 11/02/09 Page 2 of 29
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 2 of 29
`
`all the claims and defenses without these issues first being decided by controlling authority.‘
`
`Both sides argue that these claims and defenses are ripe for summary judgment, one way or the
`
`other. The court has not attempted to list all the places where the parties have argued that there is
`
`no genuine issue of material facts. This case has a too long a history of aborted attempts at
`
`mediation, special master, new judges, etc. It would be foolish to try the case and then have
`
`basic issues of law overturned.
`
`Pertinent Facts and
`
`Discussion of Claim} s [2
`
`The defendant Daniel Moore (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 defendant New Life Art, Inc. (New Life) is the corporation which governs Moore’s
`
`business. Moore’s paintings have had highly successful sales, mostly to University of Alabama
`
`fans, and the sales have been profitable to both sides of this case. The plaintiff fully
`
`acknowledges that Moore’s work is of superior quality. Moore’s first successful such painting
`
`was in 1979. It was not licensed by the plaintiff, but has benefitted both sides and led to other
`
`successful sales of other paintings beneficial to both sides. The relationship between the parties
`
`remained pleasant and amicable throughout the early years.
`
`The first licensing agreements between the parties came in l99l,3 and this licensing
`
`‘It is highly unlikely that this case can ever be settled without these pivotal issues being finally decided.
`
`2The court has been inundated (some self-imposed) with numbers of briefs, evidentiary submissions,
`exhibits, etc. It will not attempt to recount every detail. If there is an appeal, the parties can expand on what the
`court states as pertinent. The file should indicate why this court cannot possibly fully discuss all the detail related to
`this case.
`
`3The plaintiff began licensing in 1981, but did not start licensing defendants until 1991.
`
`2
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 3 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 3 of 29
`
`continued until 2000. Sometime before the termination of the last agreement, the dispute which
`
`led to this lawsuit and the issues which this court is now addressing began. 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. Thus the initial main dispute became and is: Do defendants infringe on
`
`plaintiff’ s trademark if they create and sell paintings and prints which include as part of their
`
`depictions the uniforms of University of Alabama football players? The defendants do not claim
`
`that they have the present right to depict anywhere on their paintings or prints the “Indicia” which
`
`are specifically pictured and shown as “Indicia” in the license agreements.“
`
`Plaintiff argues that the following sample language in the various agreements causes the
`
`uniforms to be “Indicia” although the uniforms are not shown on the various exhibits: “Licensed
`
`Indicia’ means the names, symbols, designs, and colors of the Member Universities
`
`.”
`
`Various license agreements include as part of exhibits the following: “The University of
`
`Alabama is the owner of all rights, title and interest in and to the following Indicia which
`
`includes trademarks service marks, trade names, designs, logos, seals and symbols.” Beneath
`
`this language on some, if not all, exhibits there are shown pictured images of various logos, seals,
`
`symbols, etc. Above these images is also a listing of “Verbiages” and “Colors: Crimson PMS
`
`201 Gray PMS 429.” This court is of the opinion that the reasonable inference is that the
`
`4See Exhibit B to an agreement dated October 17, 1991, Exhibit A to an agreement dated January 27, 1993,
`Exhibit A to an agreement dated November 1993, Exhibit A to a license dated June 15, 1994, Exhibit A to a license
`dated Dec-Jan. 1994-1995, etc.
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 4 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 4 of 29
`
`“Colors” relate to the shown images and not to some universal depiction of colors. This
`
`inference is supported by the fact that beneath the pictured images there is the following
`
`statement: “In addition to the Indicia shown above, any Indicia adopted hereafter and used or
`
`approved for use by the University shall be deemed to be additions to the Indicia as though
`
`shown above and shall be subject to the terms and conditions of the Agreement.” (Emphasis
`
`added.) See attached Exhibits 1, 2, 3 and 4. Uniforms are not pictured or shown on any exhibit
`
`to any agreement.
`
`If the uniforms are to be considered trade dress marks, there is no reasonable inference
`
`that it results from language in the license agreements.5 In addition to the foregoing, the
`
`following language in the agreements suggests that the argument that the “Indicia” term of the
`
`agreements includes the unifonns is a late blooming stretch.
`
`“‘Prints” means the fine art limited addition prints listed in Appendix
`C attached hereto and bearing Indicia.” (Emphasis added.)
`
`“No license is granted hereunder for the use of Indicia for any
`purpose other than upon or in connection with the Prints named and
`specified in Appendix C.” (Emphasis added)“
`
`“NLA agrees to assist in the protection of the several and joint rights
`of the University and CM in and to the Indicia. NLA acknowledges
`that any rights, including copyright or other proprietary rights that it
`might have in artwork or designs created by it, pursuant to this
`Agreement, extend only to those elements of the artwork or designs
`
`5If the parties intended that agreements already applied to the quality paintings and prints, a question might
`be reasonably asked as to why the dispute arose in 1999 or 2000.
`
`6Distinguishing “Prints” and “Indicia.”
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 5 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 5 of 29
`
`which are not part of or included in the Indicia or any derivatives.”
`(Emphasis added.)
`
`“The proper symbol to identify the Indicia as a trademark, (viz, the
`circle ‘A’ symbol
`is registered in the United States Patent and
`Trademark Office or the ‘TM’ symbol if not so registered shall be
`placed next to the Indicia.”
`
`After expiration or termination of this Agreement, NLA shall have
`no further right to manufacture, distribute, sell or otherwise deal in
`any Prints or other products which utilize the Indicia except as
`hereinafter provided.” (Emphasis added.)°
`
`“Whereas licensee desires to be licensed to utilize certain Indicia in
`
`connection with the manufacture, distribution and sale of certain
`products, and CLC is willing, subject to certain conditions, to grant
`such a license.” (Emphasis added.)
`
`“Licensed Articles’ means the products listed in Appendix C and
`bearing licensed Indicia.” (Emphasis added.)
`
`“Licensee shall not provide any method of application of licensed
`Indicia to any party unless CLC authorizes licensee to provide said
`application under
`the terms of an authorized manufacturer’s
`agreement.”‘° (Emphasis added.)
`
`7It is difficult to imagine how the created “elements of the artwork or designs” could not be a part of the
`“artwork or designs.” It is apparent that the pictured and “shown”symbols in the various agreement exhibits are the
`intended “Indicia.” This is notwithstanding the various references to the “colors” of these “Indicia.”
`
`8Does this realistically apply to unifonns?
`
`9Again, a distinction between the “Prints” and the “Indicia.”
`
`'0 “Application” of a painting of uniforms?
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 6 of 29
`Case 7:O5—cv—OO585—AKK Document 311 Filed 11/02/09 Page 6 of 29
`
`There may be other such provisions which distinguish “Indicia” from paintings and prints.
`
`Plaintiffs Positions
`
`The following is a partial summary of the plaintiffs positions as stated in its briefs filed
`
`on August 8, 2006 and in 2009, along with the court’s comments..
`
`(1) The defendants “have violated the Lanham Act in connection with their sale of
`
`products bearing University trade dress “Indicia,” specifically, the University’s distinctive
`
`crimson and white colors and football team uniforms.” The court does not agree that they are
`
`inherently distinctive." They may have gained secondary meaning in some quarters.”
`
`(2) The case is partially controlled by University ofGa. Athletic Ass ’n. v. Laite, 756 F.2d
`
`1535 (1 1th Cir. 1985); Boston Prof Hockey Ass ’n v. Dallas Corp & Emblem Mfg, Inc., 520 F.2d
`
`1001 (5th Cir. 1975); and Board ofSupervisors ofLSU. v. Smack Apparel Co. , _F.3d _ (5th
`
`Cir.
`
`). This court agrees only to the extent that the cases involve non-artistic products such as
`
`T-shirts, mugs, etc. As to those type products, the court will grant plaintiffs motion. Laite also
`
`involves indicia, a bulldog, of the type pictured and shown in some exhibits of the licensing
`
`agreements involved in this case, not just colors; and neither is fine art involved.
`
`(3) The trade dress “has secondary meaning and is a strong mark.” This court agrees that
`
`it has some limited secondary meaning, but not that it is a strong mark.
`
`(4) “The University’s trade dress attracts the attention of University fans and triggers the
`
`“Being somewhat memorable does not necessarily equate with being distinctive. By law they are not
`“inherently “distinctive. See Wal—Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000). If they have
`secondary meaning, they become distinctive of a non-inherent son. Id. It is highly questionable as to whether “in
`the minds of the public, the primary significance of [the uniforms] is to identify the source of the product rather than
`the product itself.” Id.
`
`.
`.
`2
`I See later dlSCLlSSl0n of other users.
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 7 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 7 of 29
`
`sale of Moore’s products.” The court is of the opinion that the plays and Moore’s reputation
`
`established during a period when his art was agreeably not licensed are what predominantly
`
`trigger the sales.”
`
`(5) The paintings are not transformative. The court is of the opinion that they are
`
`transformative to the extent that they memorialize a football play in a fashion that it can be
`
`relished and preserved. The plaintiff has repeatedly complimented the work. If transformation
`
`means that it changes history or gives a different meaning to the play, other than significantly
`
`highlighting it, it may not be transformative. ‘4 The well known painting of Washington crossing
`
`the Delaware may transform a mere description of people rowing in a boat. Plaintiff says that,
`
`“Experts for both Moore and the University agree Moore’s work captures the most important
`
`elements of the game for the fan”and the “overall tone or mood of the enviromnent.” In a
`
`response filed on October 9, 2009, the plaintiff states:
`
`Regardless of that evidentiary issue, a dispute over transformation
`does not impede this Court from deciding the motions for summary
`judgment because the courts which have used the transformative or
`similar tests have resolved the issue as a matter of law. See ETW
`
`Inc., 332 F.3d 915 (6"‘ Cir. 2003)
`v. Jereh Publishing,
`Corp.
`(resolving balance between right of publicity and First Amendment
`as a matter of law); Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989)
`(resolving balance between trademark rights and First Amendment as
`a matter of law); Westchester Media v. PRL USA Holdings, Inc. , 214
`F.3d 658 (5th Cir. 2000) (same); Arzheiser-Busch, Inc. v. Balducci
`Publ ‘n, 28 F.3d 769 (8th Cir. 1994) (same).
`
`(6) Plaintiff states that the crimson—white color scheme is “unique and distinctive,” but
`
`“Perhaps some loyalty to the University’s team, but not the trade dress as such.
`
`“In the October 25, 2009 Birmingham News, a colunmist referred to an Alabama blocked Tennessee field
`goal attempt in the previous day’s game as a “Daniel Moore moment.” That may suggest that his paintings are
`transformative. It may filrther suggest what motivates some purchasers of his paintings are his own distinctive mark
`which also has secondary meaning, not crimson uniforms as such.
`
`7
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 8 of 29
`Case 7:O5—cv—OO585—AKK Document 311 Filed 11/02/09 Page 8 of 29
`
`also notes that there have been references concerning the team to “Thin Red Line,” “Red
`
`Elephants,” and “Redwood Forest.” Crimson is a variation of red colors used by many teams.
`
`(7) “Nothing about the color scheme serves a functional purpose.” As indicated by
`
`attached Exhibit 6, the first use of crimson by Harvard was “so that spectators could differentiate
`
`Han/ard’s crew team from other teams during a regatta in 1858.”'5
`
`(8) The plaintiff repeatedly emphasizes the reality of Moore’s paintings as if it is a further
`
`indication of infringement. That reality is what adds strength to the degree of the artistry,
`
`distinction and secondary meanings of his paintings.
`
`(9) Plaintiff substantially relies upon a survey to establish likelihood of confusion. The
`
`court is of the opinion that the survey lacks strength because of its manner of taking, the form of
`
`the questions, the nature of the surveyed customers, and the number of relied upon responders. It
`
`involved only one print. The questions are loaded with suggestions that there is a “sponsor”
`
`other than the artist.
`
`The court suggests a full reading of the “Notice of Filing [of] Survey Questions” filed on
`
`October 27, 2009. The questions and answers create a reasonable inference that the likelihood of
`
`confusion may be with the survey. The court has not prepared a compilation of the categories of
`
`answers but there is certainly no overwhelming indication of sponsorship by the plaintiff. The
`
`names of Moore and New Life and a familiarity with them is somewhat overwhelming.
`
`Apparently, any time the University of Alabama is mentioned in a response, it was considered to
`
`be the sponsor. The court also notes the emphasis placed in the answers on the fact that Moore’s
`
`and New Life’s names are prominent on paintings. Just as an example, Response Codes 1101-
`
`15One is reminded of YMCA shirt and skin basketball games.
`
`8
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 9 of 29
`Case 7:O5—cv—OO585—AKK Document 311 Filed 11/02/09 Page 9 of 29
`
`1171 answer either Daniel Moore, New Life or both except 1110 and 1169 which say “no idea.”
`
`This type sequence is somewhat repeated throughout. At one point, the question changes from
`
`“Who do you believe is sponsoring or promoting the art work ...” to “Who else, if anyone, do you
`
`believe is sponsoring or promoting the art work
`
`?”
`
`(10) The court does not agree that the uniforms of a variation of the color red are
`
`inherently distinctive and non-functional. As stated, they may have limited secondary meaning
`
`in the region and, thus, become somewhat distinctive. The plaintiff argues that the term
`
`“Indicia” used in the various license agreements includes football uniforms because of their
`
`colors. The plaintiff further argues that the license agreements and controlling law require that
`
`after the termination of the license agreements, the defendants cannot paint and sell play scenes
`
`which include the uniforms of University of Alabama football players without infringing on
`
`plaintiffs trademark. This court disagrees with both premises. In various exhibits to the license
`
`agreements, various “lndicia” are clearly pictured. None of the pictured “lndicia” include
`
`football uniforms. As earlier indicated, the agreements state, “In addition to the lndicia shown
`
`above, any lndicia adopted hereafter and used or approved for use by the University of Alabama
`
`shall be deemed to be additions to the Indicia as though shown above. ”
`
`(11) The plaintiff relies on estoppel resulting from references to “lndicia” in licensing
`
`agreements. For reasons herein stated, the court does not agree that there is any such estoppel.
`
`(12) The court does not agree that likelihood of confusion exists as a matter of law
`
`because the defendants have continued to use marks after termination of the license agreement.
`
`Among other reasons which are elsewhere discussed, the court is of the opinion that the cases
`
`relied upon by the plaintiff are distinguishable. These include Bunn-O-Matic Corp. V. Bunn
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 10 of 29
`Case 7:O5—cv—OO585—AKK Document 311 Filed 11/02/09 Page 10 of 29
`
`Coffee Serv., Inc., 88 F.Supp. 2d. 914 (CD111. 2000); Burger King v. Mason, 710 F.2d 1480
`
`(1 1th Cir. 1983); and Professional Golfers Ass ’n ofAmerica v. Bankers Life & Cas. Co., 514
`
`F .2d 665 (5th Cir. 1975). These cases involve the continued use of the same written name
`
`trademarks, full franchise agreements and a deceit not present here.
`
`Plaintiff also relies on Ansheuser-Busch, Inc. v. Balducci Publ ’n, 28 F.3d 769 (8th Cir.
`
`1994). It should be noted that the court stated that:
`
`(1) Anheuser-Busch possessed several very strong trademarks
`[conceded by Balducci] displayed virtually unaltered in the ad
`parody.” Id at 774.
`
`..-.-
`
`“Moreover, Balducci published the parody on the back cover of a
`magazine-a location frequently devoted to real ads, even in Snicker.
`[Ba1ducci’s own magazine].” Id. at 774.
`
`“Balducci carefully designed the fictitious ad to appear as authentic
`as possible. Several ofAnheuser-Busch's marks were used with little
`or no alteration.” Id. at 774.
`
`“Balducci even included a ® symbol after the words Michelob Oily.”
`Id. at 774.
`
`“We do not hold that Balducci’s extensive borrowing of Anheuser-
`Busch’s trademarks amounts to a per se trademark violation.” Id. at
`777.16
`
`It is likely that people who buy the Moore paintings do so, at least partially, because of
`
`“It should also be noted that Balducci’s ad was highly negative, suggesting that the plaintiffs products
`were tainted with oil.
`
`10
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 11 of 29
`Case 7:O5—cv—OO585—AKK Document 311 Filed 11/02/09 Page 11 of 29
`
`their loyalty to the University of Alabama and its football teams. That, however, does not create
`
`any reasonable inference that they do so because of confusion based on the color of the uniforms.
`
`Plaintiff cites Ambrit, Inc. v. Kraft, Inc. , 812 F.2d 1531, 1542 (11th Cir. 1986). That court stated:
`
`Kraft's intent in adopting the Polar B'ar trade dress is a critical
`factor
`
`Kraft chose to name its new product “Polar B'ar”, a name
`that conveys a double meaning: ‘polar bear’ and ‘cold bar.”’ At the
`time it chose the name, Kraft was aware that the Klondike wrapper
`featured a polar bear.”
`
`Moore’s intent was to paint interesting plays. A number of the cases cited by the plaintiff
`
`involve confusion resulting from the confusion of names of competitors in the same general
`
`business.
`
`Likelihood of Confiision
`
`Plaintiff argues that there is likelihood of confusion as to whether plaintiff sponsors the
`
`paintings of the defendants. In this regard, the court is directed by Frehling Enterprises, Inc. v.
`
`International Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999) to consider:
`
`(1) The type of mark used by the plaintiff;
`
`(2) The similarity of the marks;
`
`(3) The similarity of the goods or services represented by the marks;
`
`(4) The similarity of the retail outlets and the customers served;
`
`(5) The similarity of the advertising media used by the parties;
`
`(6) Whether the defendant had the intent to infringe; and
`
`(7) Any evidence of actual confusion.
`
`"The court cannot address all the distinguishing features of all the cases cited by either party. However, the
`purported generality of certain language is ofien over-emphasized.
`
`11
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 12 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 12 of 29
`
`The court will address each of the foregoing in the numbered order.
`
`(1) The marks here concerned are the uniforms and their colors. These “marks” do not
`
`lend themselves to TM type designations; nor would the general public usually consider them to
`
`be “marks.” They are descriptive at best and are not inherently distinctive. The following
`
`Division 1-A football teams have crimson as part of their colors: Indiana, Kansas, New Mexico
`
`State, Oklahoma, Southern Methodist, Utah, Washington State, Cornell and Harvard. Cornell
`
`has been known as “Big Red” for many years. New Mexico State, Utah and Harvard all have
`
`crimson and white colors. Other teams with variations of red include Arizona, Arkansas,
`
`Arkansas State, Ball State, Fresno State, Georgia, Houston, Iowa State, Miami of Ohio,
`
`Mississippi, Nebraska, North Carolina State, Northern Illinois, Ohio State, Rutgers, San Diego
`
`State, Stanford and Wisconsin, (not to mention the Kansas City Chiefs)”
`
`Color schemes can usually be protected as trademarks only when the color is non-
`
`functional. Football uniform colors clearly perform a function. They help avoid confusion as to
`
`team members for the benefit of officials, opposing team members and spectators.” Compare
`
`Epic Metals Corp. v. Souliere, 99 F.3d 1034, 1038-1039 (1 1th Cir. 1996).
`
`(2) The uniform colors are crimson and white. Obviously, they are the same.
`
`(3) Presumably other painters could paint similar scenes.
`
`(4) All customers would be people who want to buy paintings depicting Alabama football
`
`plays.”
`
`“For interesting histories of early use of the color crimson in a college or university athletic context see
`attached Exhibits 5, 6, 7, 8 and 9.
`
`“See early use by Harvard in attached Exhibit 7.
`
`2° The plaintiff agrees that the plays and the players are not marks.
`
`12
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 13 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 13 of 29
`
`(5) The advertising media may be similar. That of the defendants would likely be more
`
`extensive and particularized.
`
`(6) The defendants clearly intend to do what they do; that is, to depict football scenes and
`
`sell paintings. They do not believe that they are infringing,
`
`(7) There is arguably some evidence of actual confusion which this court believes is weak
`
`if existent. The plaintiffs survey and surveyor might not be able to withstand a Daubert hearing.
`
`The court will not repeat the defendants’ criticisms of the survey which appear to have some
`
`merit, but see this court’s discussion above.
`
`While the court deems the evidence of actual confusion to be weak, it will assume, for the
`
`purposes of this opinion, that there is at least a factual issue as to confiision. Alabama fans may
`
`purchase the paintings for reasons of loyalty and nostalgia rather than confiision. It is highly
`
`unlikely that a purchaser would not know that Moore is the moving force behind the paintings. If
`
`the statement in Leigh v. Warner Brothers, Inc. that, “Trademarks are not merely descriptive;
`
`they answer the question ‘who made it?’ rather than ‘what is it?’” is applicable, the answer to
`
`“who made it” is clearly “Moore.”
`
`Defenses
`
`The court next turns to the defenses of the defendants involving the First Amendment,
`
`Fair Use and Artistic Expression.
`
`Artistic Expression
`
`The plaintiff has not only acknowledged the high quality and excellence of Moore’s
`
`works in depositions and in arguments, it has repeatedly applauded his work. The plaintiff has
`
`stated that Moore has “undeniable skill.” That his paintings are artistic is unquestioned. They
`
`13
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 14 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 14 of 29
`
`are fine art. Each side has its respective argument as to the significance of this fact. This court
`
`concludes that the depiction of the uniforms in the paintings is incidental to the purpose and
`
`expression of the paintings; that is, to artistically depict and preserve notable football plays in the
`
`history of University of Alabama football. The only relevance of the colors is to correctly depict
`
`the scene.“ The court in Boston Professional Hockey Assn. V Dallas Cap & Emblem, 510 F.2d
`
`1004, 1011 (5th Cir. 1975) recognized the distinction between artistic reproductions and product
`
`sales. The court stated: “We need not deal here with the concept of whether every artistic
`
`reproduction of the symbol would infringe upon plaintiffs’ rights. We restrict ourselves to the
`
`emblems sold principally through sporting goods stores for informal use by the public in
`
`connection with sports activities and to show public allegiance to or identification with the teams
`
`themselves.”
`
`This court sees a total distinction between cases involving fine artistic creations and cases
`
`involving cards, T-shirts, cups, mugs, posters, mini prints, calendars, etc.” This court’s opinion
`
`approves only paintings and prints treated as art without the use of any symbols, logos, etc. of the
`
`University of Alabama depicted thereon. It does not approve the depiction of the same paintings
`
`and prints on other products.
`
`First Amendment
`
`Perhaps the landmark case on the issue is Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir.
`
`1980). The opinion in Rogers sheds light on the significance of the First Amendment in Lanham
`
`“At the oral argument on October 20, 2009, the plaintiff agreed that if the uniforms were shown in purple,
`there would be no false representation of the mark. This suggests that the way to avoid a false representation is to
`falsely represent the scene.
`
`22Mona Lisa on a mug would not be considered fine art unless the mug itself were fine sculpture.
`
`14
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 15 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 15 of 29
`
`Act cases. The so—called Rogers test has been applied in other cases involving artistic
`
`expression. The court stated: “We believe that in general the Act should be construed to apply to
`
`artistic works only where the public interest in avoiding consumer confusion outweighs the
`
`public interest in free expression.” Id., at 999. Further:
`
`“The title “Ginger and Fred” contains no explicit indication that
`Rogers endorsed the film or had a role in producing it. The survey
`evidence, even if its validity is assumed, indicates at most that
`some members of the public would draw the incorrect inference
`that Rogers had some involvement with the film. But that risk of
`misunderstanding, not engendered by any overt claim in the title, is
`so outweighed by the interests in artistic expression as to preclude
`application of the Lanham Act. We therefore hold that the
`sponsorship and endorsement aspects of Rogers’ Lanham Act claim
`raise no ‘genuine’ issue that requires submission to a jury.”
`
`Id., at 1001.
`
`It is not clear in Rogers what forms the basis for its First Amendment analysis unless it
`
`involves whether a particular application of the Lanham Act could be in violation of the First
`
`Amendment. The fact that the plaintiff here is a governmental entity could make the need to
`
`consider the First Amendment even more obvious. Even if there is some likelihood of confusion,
`
`the Rogers test calls for a balancing with the public interest. Also see “The Pub1ic’s Domain in
`
`Trademark Law: A First Amendment Theory of the Consumer,” Laura A. Heymann, Georgia
`
`Law Review, Spring 2009, Volume 43, No. 3. (Emphasis added.) The players might arguably
`
`have First Amendment rights.
`
`Source of Work
`
`The opinion in Leigh v. Warner Brothers, 212 F.3d 1210 (1 1th Cir. 2000) provides
`
`insight to the application of the Lanham Act to photographic images. The court summarized:
`
`15
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 16 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 16 of 29
`
`“As for Leigh‘s Lanham Act claims, the evidence that Leigh used the
`Bird Girl photograph to identify the source of his other work prior to
`the Warner Brothers movie is insufficient to establish the photograph
`as a trademark. We therefore affirm the district court's grant of
`summaryjudgment to Warner Brothers on Leigh's trademark claims.”
`
`Id , at 1213.
`
`The court’s discussion includes:
`
`“In order to prevail on a claim of trademark infringement, a plaintiff
`has the burden of showing (1) that he had a valid trademark and (2)
`that the defendant had adopted an identical or similar mark such that
`consumers were likely to confuse the two. See 15 U.S.C. § 1125(a);
`Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106
`F.3d 355, 358 (11th Cir.1997). Trademarks are “any word, name,
`symbol, or device, or any combination thereof [used] to identify and
`distinguish [one's] goods
`from those manufactured or sold by
`others and to indicate the source of the goods.” 15 U.S.C. § 1 127.FN5
`Trademarks are not merely descriptive;* 1217 they answer the
`question “Who made it?” rather than “What is it?” See 1 J. Thomas
`McCarthy, McCarthy on Trademarks and Unfair Competition § 3:6
`(4th ed.2000). Finally, the plaintiffs use ofthe mark must predate the
`defendant's potentially confusing mark. See Tally-Ho, Inc. v. Coast
`Community College Dist, 889 F.2d 1018, 1022 (11th Cir. 1990) (per
`curiam); 2 McCarthy, supra, at § 16:1, 16:4.”
`
`Id., at 1216.
`
`Further,
`
`“As used in the materials submitted by Leigh, the Bird Girl image
`“strikes us not as a separate and distinct mark on the good, but, rather,
`as the good itself.” Rock & Roll Hall of Fame & Museum, Inc. v.
`Gentile Prods., 134 F.3d 749, 754 (6th Cir.1998).”
`
`Id , at 1218.
`
`Fair Use
`
`The case of International Stamp Art, Inc. v. U. S. Postal Service, 456 F.3d 1270 (11th
`
`Cir. 2006) discusses the “Fair-use defense” in Lanham Act cases. The court defined “trademark”
`
`as follows:
`
`16
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 17 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 17 of 29
`
`“A trademark is “any word, name, symbol, or device, or any
`combination thereof [used] to identify and distinguish [one’s]
`goods
`from those manufactured or sold by others and to indicate
`the source of the goods.” Gift ofLearning Foundation, Inc. v.
`TGC, Inc., 329 F.3d 792, 797 (1 1th Cir.2003) (per curiam)
`(quoting 15 U.S.C. § 1127). “A plaintiff seeking to prevail on a
`trademark infringement claim must show 1) that he had a valid
`trademark and 2) that the defendant had adopted an identical or
`similar mark such that consumers were likely to confuse the two.”
`
`Id. at 1274.
`
`The court further stated:
`
`“A fair-use defense is established if a defendant proves that its use
`is “(1) other than as a mark, (2) in a descriptive sense, and (3) in
`goodfaith.” EMI Catalogue P’ship v. Hill, Holliday, Connors, &
`Cosmopulos, Inc., 228 F.3d 56, 64 (2d Cir.2000) (citing 15 U.S.C.
`§ 1115(b)(4)); see also Soweco, Inc. V. Shell Oil C0,, 617 F.2d
`1178, 1185 (5th Cir.1980). “The ‘fair-use’ defense, in essence,
`forbids a trademark registrant to appropriate a descriptive term for
`[its] exclusive use and so prevent others from accurately describing
`a characteristic of their goods.” Soweco, 617 F.2d at 1185.
`(Emphasis added.)
`
`Id., at 1274.
`
`.....
`
`“Where, as here, use of the mark, as the “only [symbol] reasonably
`available” to indicate that the image on the card is meant to be a
`postage stamp, “does not attempt to capitalize on consumer
`confusion or to appropriate the cachet” of the mark holder, it fails
`to “implicate the source-identification function that is the purpose
`of trademark.” See New Kids on the Block v. News Am. Publ'g Inc. ,
`971 F.2d 302, 308 (9th Cir.1992). Thus, it cannot constitute
`infringement.”
`
`Id., at 1277.
`
`There is no substantial evidence here, as to the artistic paintings and prints, that the
`
`defendants “implicated the source-identification function that is the purpose of the trademar .”
`
`The defendants used their own marks to identify the source. This is evidence of good faith. Also
`
`17
`
`

`
`Case 7:05-cv-00585-AKK Document 311 Filed 11/02/09 Page 18 of 29
`Case 7:05—cv—OO585—AKK Document 311 Filed 11/02/09 Page 18 of 29
`
`see K. P. Permanent Make-Up, Inc. v. Lasting Impression 1