## Facts

- Daniel A. Moore, through New Life Art, Inc., created realistic paintings of historic University of Alabama football scenes featuring the team’s uniforms and crimson-and-white color scheme.
- Moore sold the images as paintings and prints and also reproduced them on calendars, mugs, and other items.
- Between 1991 and 1999, Moore and the University entered roughly a dozen licensing agreements covering specified products; licensed items commonly included extra University branding or “officially licensed” indicia.
- During and after the licensing period, Moore also sold certain Alabama-related works without royalties, including works created before 1991 and other unlicensed depictions; for years, the University did not demand royalties for those sales.
- In 2002, the University asserted that Moore needed permission to depict the uniforms because they functioned as trademarks; Moore maintained the depictions were part of accurately portraying historical events.
- After negotiations failed, the University sued in 2005 alleging breach of contract and Lanham Act trademark infringement/unfair competition, including claims based on unregistered trade dress in uniforms, colors, and helmet designs.
- The district court granted summary judgment for Moore on paintings and prints, granted summary judgment for the University on calendars and “mundane products” (including mugs), and the parties cross-appealed.

## Issues

1. Whether the licensing agreements required Moore to obtain permission to depict the University’s uniforms and colors within the content of his paintings, prints, and calendars.
2. Whether Moore’s use of the University’s alleged marks and trade dress in paintings, prints, and calendars violated the Lanham Act, or was protected expression under the First Amendment.
3. Whether and to what extent contract issues remained regarding mugs and other utilitarian merchandise, including re-issuance restrictions and royalty obligations.

## Decision

- Affirmed summary judgment for Moore that the licensing agreements did not require permission to depict the uniforms within the content of Moore’s paintings, prints, and calendars.
- Held Moore’s use of the University’s alleged marks and trade dress in paintings, prints, and calendars was protected by the First Amendment and did not violate the Lanham Act.
- Affirmed in part and reversed in part as to mugs and other ordinary merchandise, and remanded for the district court to resolve limited, product-specific contract questions (including re-issuance restrictions and unpaid royalties tied to particular licensing agreements).

## Legal Principles

- Contract interpretation looks to the agreements’ text in context and, where ambiguity exists, to course of dealing; references to “indicia” and colors in licensing agreements do not necessarily create a content-based restriction on artistic depictions absent clear language.
- For expressive works using trademarks, the Lanham Act is construed to avoid conflict with the First Amendment under the Rogers v. Grimaldi framework.
- Under Rogers, trademark claims against expressive works generally fail unless (1) the mark has no artistic relevance to the work, or (2) the use is explicitly misleading as to source, sponsorship, or endorsement.
- Realistic depiction of historically accurate details (including team uniforms and colors) can satisfy artistic relevance; absent explicit claims of endorsement (e.g., “officially licensed”), the use is not “explicitly misleading” for Rogers purposes.
- Utilitarian merchandise may present different contractual questions; product-specific royalty and re-issuance restrictions can survive summary disposition where factual disputes remain.

## Conclusion

The Eleventh Circuit held that Moore’s historically realistic Alabama football paintings, prints, and calendars were expressive works protected under the First Amendment and not actionable under the Lanham Act under Rogers, while remanding narrow contract disputes concerning certain mugs and other merchandise subject to specific licensing terms.


Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. 2012)