Art as Sport . . . or Sport as Art

If I were to say “college football,” chances are your thoughts would not go to studio art. Likewise -- and I’m just guessing here -- if I were to say “oil painting,” chances are your thoughts would not go immediately to professional golfing.

After you’ve stopped comparing me to the Amazing Kreskin, I’ll continue. Ready?

Well you may not immediately connect sports with art, but some people do. In a couple of fairly recent instances, you’d refer to these people as “the plaintiffs.” Unless, of course, you were an artist, in which case the “plaintiffs” might refer to you as the “defendant.”

What the heck am I talking about? A couple of cases – one of which has recently reemerged into the public eye -- in which artists depicted sporting scenes, and those doing the sporting weren’t very happy about it.

First, in a case dating back to 2005, the University of Alabama sued Birmingham-based artist Daniel Moore based on his depiction of the school’s football team mid-game. Some of his works depict purportedly classic moments in the school’s athletic history, such as “The Goal Line Stand” from the 1979 Sugar Bowl against Penn State.

The University of Alabama brought a claim for trademark infringement, claiming that Moore’s work infringed the school’s marks by depicting its logo and insignia on the player’s uniforms. It claimed that if Moore wanted to depict these marks, he was obligated to obtain and pay for a trademark licensing fee.

Moore maintained he had the same right to depict these images as would a photographer from Sports Illustrated. He asserted that the images he painted were nothing more than anyone in attendance at the game would have witnessed, and claimed that his artistic depiction players in uniform was protected by the First Amendment.

The case went to trial before U.S. District Court Judge Robert Propst in 2009. The ruling was mostly in Moore’s favor. The Court found that Moore’s paintings did not violate the school’s trademark law, but that his sale of those paintings on mugs, T-shirts and other items did infringe.

Moore was apparently pleased with this result. The University of Alabama, however, wanted more. It appealed, and the 11th Circuit Court of Appeals in Atlanta held a hearing on that appeal just last week.

No ruling yet. (Hey, it took three years for a hearing, give these people some time.)

Still, the issue is an interesting one. Is an artist required to secure a licensing agreement before engaging in painting images of athletes on the job?

I’m not even sure how the school felt that this would have infringed their mark. Infringement requires that the infringer use the mark in commerce in connection with his/her goods or services. 15 U.S.C. sections 1112(1), 1125(a)(1). Doesn’t seem it. See WHS Entertainment Ventures v. United Paperworkers Int’l Union, 997 F. Supp. 946 (M.D. Tenn 1998) (use of plaintiff’s protected logo on leaflets distributed by union organizers on and near plaintiff’s restaurant premises was not sufficient to meet statutory requirement).

In addition, there must be a likelihood of consumer confusion, meaning that an appreciable number of ordinarily prudent purchasers are likely to be confused as to the source, sponsorship or affiliation of defendant’s goods or services. Western Pub. Co. v. Rose Art Indus. Inc., 910 F.2d 57, 59 (2d Cir 1990); see also AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 351 (9th Cir. 1979) (setting forth likelihood of confusion factors).

Even if the school could get beyond that, why wouldn’t the use of the team logos in the painting merely fall under the rubric or nominative use? A defendant is permitted to use the plaintiff’s mark to describe the plaintiff’s product. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002).

Artist Rick Rush fought a similar trademark infringement claim in 1998. That one was based on Rush’s painting "The Masters of Augusta." The painting showed Tiger Woods' (based on his win from the prior year), and a collage of images that included portraits of Ben Hogan, Bobby Jones, Jack Nicklaus, Arnold Palmer and Sam Snead.

Woods was having none of it. His company, ETW Corporation, sued the publisher of Rush's painting, alleging (among other things) trademark infringement as ETC owned a trademark in Woods' name (and had rights in his image).

The lower court and the Court of Appeals ruled in favor of Rush, holding that the painting contained expressive content, and that a person's likeness could not function as a trademark.

What’s the takeaway from all of this? One point may be that greater license will be given the artist where the case turns, at least in part, on the journalistic nature of the works. So portray the team at play, not an individual member.

Of course, that doesn’t entirely explain the result of the Woods case, although I suppose even that had a news-reporting aspect to it: past and present victors? Sometimes even I don’t have the answers. Now if only we could consult the Amazing Kreskin!


Jonathan Pink is an intellectual property attorney resident in the Orange County and Los Angeles offices of Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.