The United States Court of Appeals has handed down a ruling that tries to clarify the overlap of First Amendment protected artistic expression and unregistered and registered trade-marks.

The case arises from a dispute between the painter Daniel A. Moore and the University of Alabama. Moore, whose popular paintings depict famous moments in sports, started painting unlicensed football scenes involving the University of Alabama college football team in 1979. Due to the popularity of his work among University of Alabama fans, Moore entered into a licensing agreement with the university in 1991 and produced licensed artwork until the end of the agreement in 1999. Moore also continued to produce unlicensed work during this time until the University asked him to stop, from 1991-2002.

The University of Alabama sued Moore under 15 U.S.C. § 1125(a), a provision that covers infringement of an unregistered trade-mark or trade dress, for his depiction of the University’s football uniforms and uniform colours within his work. Moore argued that his use of the uniforms and colours fell outside the area of infringement because they were used to realistically portray historical events. At first instance the United States District Court found that Moore’s depiction of the uniforms and uniform colours in paintings and prints was protected by First Amendment freedom of speech rights and trade-mark fair use, however use of these items on mugs, calendars and other “mundane products” was not protected. The Court of Appeals was hearing an appeal to the original judgment.

One of the points that the Court of Appeals had to grapple with was the legal issue of free speech rights conflicting with trade-mark rights. The University argued against the free speech judgement of the previous court, saying that Moore’s work fell under commercial speech and was therefore entitled to a lower level of First Amendment protection. The court disagreed and found that Moore’s work should be considered expressive speech and should be entitled to full First Amendment protection. Using the test established in Rogers v Grimaldi, that trade-mark laws such as 15 U.S.C. § 1125(a) should be applied “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression” , the court found that the trade-mark interests of the “weak” value of the crimson and white and University of Alabama uniform unregistered trade-marks did not outweigh the First Amendment interests of Moore’s artistic expression.

This is a situation that could occur in Canada, where freedom of expression rights protected under section 2(b) of the Canadian Charter of Rights and Freedoms could be raised as a defense against trade-mark infringement. Canadian courts have not yet dealt with the specific issue of the Moore case, where freedom of artistic expression was analyzed, but have rejected and accepted the defense in other cases. These cases include (but are not limited to) rejecting a freedom of expression defense against an infringement of a trade-mark where goodwill has suffered (Source Perrier S.A. v Fira-Less Marketing Co, [1983] 2 FC 18 (Fed TD)), and allowing a freedom of expression defense in a trademark claim of passing-off against a union website (BCAA v Office and Professional Employees' International Union, 2001 BCSC 156).

Ultimately the United States Court of Appeals confirmed the District Court’s judgement that the paintings and prints fell under freedom of speech and fair use, while also reversing the District Court’s decision on calendars to also place them under this protection. The decision on whether Moore infringed the University of Alabama’s trade-mark on mugs and other “mundane products”, however, has been remanded to the District Court.

Mark Bowman is a JD candidate at Osgoode Hall Law School.