683 F.3d 1266 (11th Cir. 2012), 09-16412, University of Alabama Bd. of Trustees v. New Life Art, Inc.

Docket Nº:09-16412, 10-10092.
Citation:683 F.3d 1266, 103 U.S.P.Q.2d 1070
Opinion Judge:ANDERSON, Circuit Judge:
Party Name:The UNIVERSITY OF ALABAMA BOARD OF TRUSTEES, Plaintiff-Counter-Defendant-Appellee, v. NEW LIFE ART, INC., Daniel A. Moore, Defendants-Counter-Claimants-Appellants. The University of Alabama Board of Trustees, Plaintiff, Counter Defendant, Appellant, v. New Life Art, Inc., Daniel A. Moore, Defendants, Counter Claimants, Appellees.
Attorney:Stephen D. Heninger, Heninger Garrison Davis LLC, Birmingham, AL, for Defendants-Counter-Claimants-Appellants. Jay M. Ezelle, Tabor R. Novak, III, Walter W. Bates, Starnes & Atchison LLP, Birmingham, AL, for Plaintiff-Counter-Defendant-Appellee. Susan J. Hightower, Pirkey Barber, Louis T. Pirkey,...
Judge Panel:Before MARTIN and ANDERSON, Circuit Judges, and SCHLESINGER,[*] District Judge.
Case Date:June 11, 2012
Court:United States Courts of Appeals, Court of Appeals for the Eleventh Circuit
 
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683 F.3d 1266 (11th Cir. 2012)

103 U.S.P.Q.2d 1070

The UNIVERSITY OF ALABAMA BOARD OF TRUSTEES, Plaintiff-Counter-Defendant-Appellee,

v.

NEW LIFE ART, INC., Daniel A. Moore, Defendants-Counter-Claimants-Appellants.

The University of Alabama Board of Trustees, Plaintiff, Counter Defendant, Appellant,

v.

New Life Art, Inc., Daniel A. Moore, Defendants, Counter Claimants, Appellees.

Nos. 09-16412, 10-10092.

United States Court of Appeals, Eleventh Circuit.

June 11, 2012

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Stephen D. Heninger, Heninger Garrison Davis LLC, Birmingham, AL, for Defendants-Counter-Claimants-Appellants.

Jay M. Ezelle, Tabor R. Novak, III, Walter W. Bates, Starnes & Atchison LLP, Birmingham, AL, for Plaintiff-Counter-Defendant-Appellee.

Susan J. Hightower, Pirkey Barber, Louis T. Pirkey, Austin, TX, J. Michael Murray, Berkman, Gordon, Murray & DeVan, Lorraine R. Baumgardner, Berkman Gordon Murray, Cleveland, OH, Mark P. McKenna, Notre Dame, IN, Michael Todd Sansbury, Spotswood, LLC, Birmingham, AL, for University of Arkansas, American Society of Media Photographers, Inc., Intellectual Property Law Professors, Amici Curiae.

Richard Randolph Edwards, R. Charles Henn, Jr., Jerr B. Swann, Kilpatrick Townsend & Stockton, LLP, Atlanta, GA, for Plaintiff, Counter Defendant, Appellant.

Robert Larry Bradford, Johnstone Adams Bailey Gordon & Harris LLC, Gayle L. Douglas, Heninger Garrison Davis, LLC, Thomas C. Phelps, III, Shane T. Sears, Bradford & Sears, PC, W. Staneil Starnes, Starnes Davis Florie, LLP, Birmingham, AL, for Defendants, Counter Claimants, Appellees.

Mark McKenna, Notre Dame, IN, for American Society of Media Photographers, Inc., University of Arkansas, Auburn University, Boise State University, Intellectual Property Law Professors, Amici Curiae.

Appeals from the United States District Court for the Northern District of Alabama.

Before MARTIN and ANDERSON, Circuit Judges, and SCHLESINGER,[*] District Judge.

ANDERSON, Circuit Judge:

Since 1979, Daniel A. Moore has painted famous football scenes involving the University of Alabama (the " University" or " Alabama" ). 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.

In 2002, the University told Moore that he would need permission to depict the University's uniforms because they are trademarks. Moore contended that he did not need permission because the uniforms were being used to realistically portray historical events. The parties could not reach a resolution, and in March 2005, the University sued Moore in the Northern District of Alabama for breach of contract, trademark infringement, and unfair competition.

The outcome at the district court was split. The court granted summary judgment to Moore with respect to paintings and prints, and granted summary judgment to the University with respect to calendars, mugs, and other " mundane products." This appeal resulted. We affirm in part, reverse in part, and remand.

I. FACTS

From 1979 to 1990, Moore painted historical Alabama football scenes without any kind of formal or informal relationship with the University.1 From 1991 to 1999, Moore signed a dozen licensing agreements with the University to produce and

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market specific items, which would often include additional Alabama trademarks on the border or packaging, or would come with a certificate or stamp saying they were officially licensed products.

From 1991 to 2002, Moore produced other Alabama-related paintings and prints that were not the subject of any licensing agreements. He also continued to sell paintings and prints of images that had originally been issued before 1991. He did not pay royalties for any of these items, nor did the University request that he do so. Moore said that he would enter into a licensing agreement if he felt that it would help increase the sales of that particular product, or if he wanted the University— his alma mater— to benefit from royalties.

During this time, the University issued Moore press credentials so he could obtain material for his work. The University also asked Moore to produce an unlicensed painting on live television during a football game.

However, in January 2002, the University told Moore that he would need to license all of his Alabama-related products because they featured the University's trademarks.2 In particular, the University asserted that Moore needed permission to portray the University's uniforms, including the jersey and helmet designs and the crimson and white colors.

Moore contended that he did not need permission to paint historical events and that there was no trademark violation so long as he did not use any of the University's trademarks outside of the " image area" of the painting (i.e., outside the original painting). Despite this disagreement, the University still sold Moore's unlicensed calendars in its campus stores for several years. It also displayed unlicensed paintings at its Bryant Museum and athletic department office.

The parties were unable to reach a satisfactory resolution, and the University brought suit on March 18, 2005, in the Northern District of Alabama. The University contended that (1) Moore had breached several terms of his prior licensing agreements and (2) Moore's paintings, prints, calendars, mugs, and other objects violated the Lanham Act by infringing the University's trademark rights in its football uniforms. See 15 U.S.C. § 1125(a).

The case took a meandering path through the district court, having been assigned at various points of the litigation to seven different district court judges.3 Early in the proceedings, discovery was stayed on all issues not relevant to the University's Lanham Act claims.4 After discovery, both parties moved for summary judgment.

The only issues on appeal in this case are those decided by Judge Propst, who concluded in November 2009 that (1) the prior licensing agreements did not require

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that Moore receive permission to portray the University's uniforms because the uniforms were not included in the agreements' definition of " licensed indicia" ; (2) the University's colors had some secondary meaning 5 but were not especially strong marks on the trademark spectrum 6; (3) Moore's depiction of the uniforms in paintings and prints was protected by the First Amendment and also was a fair use; and (4) Moore's depiction of the uniforms on mugs, calendars, and other " mundane products" was not protected by the First Amendment, was not a fair use, and would likely result in consumer confusion.

In accordance with these findings, the district court granted summary judgment to Moore on the paintings and prints, and to the University on the calendars, mugs, and other " mundane products." Both parties appealed the conclusions of the district court, which certified under Rule 54(b). The parties also agree that the district court's Rule 54(b) certification was proper, and we accept that the certification provides authority for this Court to address just the Lanham Act claims.7Fed.R.Civ.P. 54(b) (" When an action presents more than one claim for relief ..., the court may direct entry of a final judgment as to one or more, but fewer than all, claims ... only if the court expressly determines that there is no just reason for delay." ); Edwards v. Prime Inc., 602 F.3d 1276, 1288 (11th Cir.2010) (" Appellate jurisdiction over an appeal from an interlocutory decision certified under Rule 54(b) is limited to the rulings or orders certified by the district court." ).

We review de novo a grant of summary judgment. Alvarez v. Royal A. Developers, Inc., 610 F.3d 1253, 1263 (11th Cir.2010). " We will affirm if, after construing the evidence in the light most favorable to the non-moving party, we find that no genuine issue of material fact exists and the moving party is entitled to judgment as a matter of law." Id. at 1263-64.

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We believe that the simplest way to address all of the arguments in this appeal is to divide the opinion based on the two categories of objects produced by Moore. With respect to both categories, we address only objects which were never the subject of a specific, written licensing agreement. 8 First we address the arguments of the respective parties with respect to a category of objects composed of paintings, prints, and calendars. Then we address the arguments of the parties with respect to a second category of objects composed of mugs and other " mundane products." 9

II. PAINTINGS, PRINTS, AND CALENDARS

In accordance with the district court's rulings, the University is appellant with respect to paintings and prints that " are of the same or larger sizes and of the same or better quality of such paintings and prints previously created, produced, manufactured and distributed by [Moore]." 10 Moore is appellant for calendars. We address these items together.11

The University first argues that it is unnecessary to reach the trademark issues in this appeal because the language of Moore's prior licensing agreements prohibits his unlicensed portrayal of the University's uniforms. We disagree.

A. Licensing Agreements

Through addenda, the parties renewed their 1995 licensing agreement (" 1995 Agreement" ) annually through 2000. The 1995 Agreement states that it " cancels, terminates, and supersedes any prior agreement or understanding." 12 Accordingly, for the sake of simplicity, we focus on the 1995 Agreement's language...

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