LawFont.com

The New York Times is carrying a story about an artist who is being sued by the University of Alabama. His wrongdoing? Selling paintings of football matches that include players wearing the university’s “famous crimson and white color scheme”.

According to the article, the suit is a trade mark action, and it is not someone’s idea of a joke. The artist, Daniel Moore, has been painting football pictures for over 25 years, and says he paints using photographs for reference, but adds his own interpretation and style to them. The accompanying photos suggest that Moore does have an ultra-realistic style. The lawsuit alleges that Moore’s paintings are effectively facsimile images of a football ‘play’ and “adds no message whatever not conveyed by the play itself”.

There must surely be something more to the suit than this, because it seems hard to justify on the reported facts alone. Trade marks are effectively badges of origin for goods and services. There could be some merit if the painting were dressed up in University colours in such a way as to imply that the University sponsored or authorised the paintings — such as being in crimson and white frames bearing some UA logo — (and assuming, of course, that the scope of the goods and services covered by the registered mark covered the kind of paintings in issue).

But if that is the get-up that the players actually wear, then it is impossible to paint them in play in any realistic sense without reproducing that getup. To that extent, the painting is not using the trade mark as a badge of origin, but reproducing them as part of a representation of reality. This seems no different from the practice of one competitor referring to another’s goods by a name which happens to be a trade mark — a useful practice for consumers, and one which cannot be done without reproducing the mark to some extent. But both are a long way away from using a trade mark as a trade mark.

If that is the case, then this suit seems particularly aggressive. A line in the article may suggest why: the university seems most concerned about the use of paintings on mugs and other merchandise, suggesting that this case is about seeking a ruling over the extent of IP owners’ control of merchandising revenues.

But even then, there is a difference between, say, selling a crimson mug and putting the Harvard logo on a mug. But even with logos, the position is not necessarily clear cut. There is probably even a difference between putting a Harvard logo onto a mug (which would almost assuredly be a trade mark usage) and, say, putting a painting on a mug of a scene from a game which contains Harvard football player, who happens to be wearing a uniform containing the logo. Questions of degree, certainly, but otherwise the rights of trade mark owners become very great.

Could the owner of any logo on a billboard or building in Times Square prevent someone taking a photo which contains that logo and printing it onto a shirt? Would a prospective shirt vendor have to airbrush out or fuzz out all logos? That would be the logical extension of the university’s argument here. (Leaving aside the fact that Sony was sued by the owners of buildings and billboards in Times Square for covering up ads for Samsung–a Sony rival–with ads for USAToday in the picture Spiderman. Last I heard, the state and federal claims were dismissed at first instance and on appeal, but the appellate court reinstated some of the owners’ state law claims on the basis that they contained novel questions of trespass law.)

I particularly like the quote from a (former?) journalism professor at the university, Jamse Stovall: “I can see why, if you’re sitting in a roomful of lawyers, you might come to that conclusion. But no one outside of that room would say: ‘Hey, that’s a good idea. Let’s sue Daniel Moore.'”