The Merchandising Right Gone Awry: What “Moore” Can Be Said?

DOIhttp://doi.org/10.1111/ablj.12047
AuthorSteve McKelvey,Ari J. Sliffman
Date01 June 2015
Published date01 June 2015
The Merchandising Right Gone
Awry: What “Moore” Can Be Said?
Steve McKelvey* and Ari J. Sliffman**
INTRODUCTION
The protection and enforcement of trademarks can be viewed as a pen-
dulum. On one end lies the jurisprudence that adheres to the original
intent and purpose of trademark law: to prevent consumer confusion
about the source of goods and services.
1
On the other end lies the juris-
prudence that accords greater weight to the trademark owner’s financial
interests and goodwill.
2
In the context of sports licensing, the pendulum
has arguably swung much too far in favor of trademark owners, as evi-
denced by the eight-year saga of University of Alabama Board of Trustees v.
New Life Art and Daniel Moore (NLA).
3
The NLA decision lies at the inter-
section of trademark law and the First Amendment freedom of artistic
*Associate Professor, Mark H. McCormack Department of Sport Management, Isenberg
School of Management, University of Massachusetts Amherst
**Attorney, Law Offices of Ari J. Sliffman, Esq.
1
See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); see also N.Y. Racing Ass’n v. Perlmut-
ter Publ’g, Inc., 959 F. Supp. 578 (N.D.N.Y. 1997).
2
See, e.g., Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 153 (11th Cir. 1985); Boston Prof’l
Hockey Ass’n v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975); Bd. of
Supervisors of LSU v. Smack Apparel Co.. 438 F. Supp. 2d 653 (E.D. La. 2006), aff’d, 550
F.3d 465 (5th Cir. 2008).
3
Univ. of Ala. Bd. of Trs. v. New Life Art, Inc. (NLA Dist. Ct.), 677 F. Supp. 2d 1238 (N.D.
Ala. 2009); Univ. of Ala. Bd. of Trs. v. New Life Art, Inc. (NLA 11th Cir.), 683 F.3d 1266
(11th Cir. 2012); Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., No. 7:05-cv-0585-AKK,
2013 U.S. Dist. LEXIS 139864 (N.D. Ala. Sept. 27, 2013).
V
C2015 The Authors
American Business Law Journal V
C2015 Academy of Legal Studies in Business
317
American Business Law Journal
Volume 52, Issue 2, 317–363, Summer 2015
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expression. Unfortunately, the NLA courts missed an ideal opportunity
to swing the pendulum back toward trademark law’s original intent and
purpose. The following scenarios help to set the stage.
A professional artist paints a bucolic scene of a rolling country farm
that includes an “Enjoy Coca-Cola” billboard advertisement. She repro-
duces her painting on coffee mugs and T-shirts that she sells at the local
arts and crafts fair. Another artist uses his distinctive painting style to
capture the panoramic view of New York City’s iconic Times Square,
complete with its many neon-lighted corporate logos. He sells prints, T-
shirts, and coffee mugs that display his painting. Another renowned
artist has built a reputation painting scenes of horse races at her local
track. Her realistic paintings, capturing horses competing side-by-side
down the stretch in high-profile stakes races, include the name of the
racetrack as it appears on the rails; other paintings include the track’s
iconic spire in the background. She sells her artwork in the form of
prints and reproductions of her pictures on T-shirts and greeting
cards.
4
Under the First Amendment freedom of artistic expression,
these artists have a legal right to pursue livelihoods as commercial
artists, regardless of their use of logos and trademarks as they appear
within the scenes or the manner or medium in which the artwork is dis-
played;
5
artists may legally use the logos and trademarks that are
already part of the scene, so long as the marks are represented exactly
as they would be in the actual scene.
6
Imagine, now, Daniel Moore, a famous sports artist who has fashioned
a career out of painting memorable and historic football scenes of his
alma mater, the University of Alabama, which annually fields one of the
most successful college football teams in the land. His paintings depict
the team’s players in their crimson-and-white uniforms, engaged in run-
ning, blocking, and tackling plays. The paintings are imbued with the
4
This scenario is based on New York Racing Association, 959 F. Supp. 578. See infra note 40
and accompanying text.
5
See U.S. Const. amend. I; 15 U.S.C. § 1125(a)(1) (2013). Freedom of artistic expression
entails the First Amendment principle that an artist (e.g., a painter, singing group, or
sculptor) should not be restrained by the law in the creation of artwork. Typically, artistic
freedom is threatened when the art is challenged not on the basis of its artistic merits or
quality but because of its content, viewpoint, or message. See infra Part II.
6
See N.Y. Racing Assn, 959 F. Supp. 578.
318 Vol. 52 / American Business Law Journal
artist’s distinctive talent for photorealistic artwork. For decades, the
artist and his alma mater each have been selling his artwork in many
different forms—prints, calendars, and even coffee mugs—sometimes
through license agreements and sometimes without. Then, unexpect-
edly, the University declares that it owns trademark rights in its team’s
uniforms and colors.
7
The artist objects and is subsequently served with
different kinds of papers than the diploma he had received in 1976.
Finally, after nearly a decade of litigation, the artist is found to have the
right, under the First Amendment freedom of artistic expression, to
paint the football team in its crimson-and-white uniforms and to sell his
artwork in print form, including the incorporation of his works into cal-
endars.
8
However, this First Amendment right is inconsistently held not
to apply to the artist’s ability to reproduce his works on so-called mun-
dane products such as T-shirts and coffee mugs.
9
The resolution of the eight-year saga of NLA presents a thought-
provoking legal quandary lying at the nexus of the First Amendment’s
freedom of artistic expression, federal trademark law, and the business
of sports licensing. If an artist’s works are protected by the First Amend-
ment, on what legal basis would that artist be prohibited from reproduc-
ing his artwork on any products he chooses, including “mundane”
products like T-shirts and mugs? The courts’ decisions prohibiting
Moore from reproducing his art on “mundane” products serves as the
primary focus of this article.
Part I of this article provides a detailed review and analysis of the
legal saga of NLA. Part II explores the legal parameters in the delicate
7
The University of Alabama failed to require licensing agreements with Moore and his
company, New Life Art, prior to 1991. The authors speculate two reasons for this. First,
the University believed it was helping an alumnus to develop his career and business that
brought added recognition to the University. Second, the collegiate licensing business was
still in its relative infancy, and the University had yet to comprehend the monetary poten-
tial of licensing Moore’s artwork.
8
NLA 11th Cir., 683 F.3d 1266 (11th Cir. 2012)
9
Id. The final disposition of the case enabled the artist to reproduce his artwork on
“mundane” products (characterized by the district court as “ordinary” products). Id.at
1240. The decision was based on a narrow interpretation of the parties’ license agreement
and not on a legal holding that First Amendment artistic expression trumped trademark
law in the context of sports-related merchandising. Id. at 1241. See infra Part I.D.
2015 / The Merchandising Right Gone Awry 319

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