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.
From 1979 to 1990, Moore painted historical Alabama football scenes without any kind of formal or informal relationship with the University.
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.
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.
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
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.
We review de novo a grant of summary judgment. Alvarez v. Royal Atl. 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.
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]."
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."
The University contends that even after the 1995 Agreement and its addenda expired, Moore had to obtain permission to use any of the University's "licensed indicia," which the University argues includes football uniforms, on any items he produced.
The 1995 Agreement's definition of "licensed indicia" is very broad:
The design and colors of uniforms are not specifically mentioned anywhere in the 1995 Agreement, but the University contends that they are nonetheless covered by the broad language defining "licensed indicia" and the reference in Appendix B to the colors "Crimson PMS 201" and "Gray PMS 429" — the University's crimson and white colors.
The 1995 Agreement also requires that Moore "shall not use the Licensed Indicia for any purpose other than upon or in connection with"
The University contends that these clauses, when taken together, clearly require Moore to obtain permission whenever he depicts the University's football uniforms in any of his products.
We believe that the 1995 Agreement is ambiguous on this issue. While the definition of "licensed indicia" is broad, there is also language indicating that it would not include the portrayal of uniforms in the content of a painting, print, or calendar. For instance, the 1995 Agreement repeatedly refers to products "bearing" "licensed indicia."
Also weighing in favor of ambiguity is a section indicating that there must be a circled "R" or the "TM" symbol beside all "licensed indicia."
Additionally, the University's proffered interpretation of the 1995 Agreement would mean that, just in exchange for the right to label his annual calendars as officially sponsored, Moore had effectively indentured himself to the University, in that he would need to perpetually obtain permission to paint any historically accurate scenes from Alabama football games. Given the contradictions present in the 1995 Agreement, we conclude that it is ambiguous as to whether the parties intended that Moore would have to obtain permission to depict Alabama uniforms in his products.
However, for paintings, prints, and calendars, we can resolve this ambiguity on the basis of the parties' subsequent course of conduct. The 1995 Agreement states that it will be governed by Georgia law. In Georgia, where "the contract is ambiguous to such a degree that the question of the parties' intent in this regard cannot be ascertained as a matter of law by applying usual statutory rules of contract construction," courts should examine "the course of conduct and actions of the various parties" with the understanding that "the construction placed upon a contract by the parties thereto, as shown by their acts and conduct, is entitled to much weight and may be conclusive upon them." Am. Honda Motor Co. v. Williams & Assocs., Inc., 208 Ga.App. 636, 431 S.E.2d 437, 443 (1993) (quotations and alteration omitted).
There is considerable evidence indicating that the parties did not intend that Moore's portrayal of the uniforms in unlicensed paintings, prints, and calendars would violate the licensing agreements. Between 1991 and 2002, Moore produced several new paintings and prints that ubiquitously featured the University's uniforms. He also continued to sell paintings and prints of works that had originally been issued before 1991. Despite the public notoriety of Moore's work, the University never requested (until this litigation) that he pay royalties on these unlicensed items.
From 2001 to 2004, the University sold over $12,000 worth of Moore's unlicensed calendars in its campus store.
In 2001, the University asked Moore to complete a sketch on live television during a nationally televised football game; this sketch was unlicensed and featured the University's football helmet.
The parties' course of conduct clearly indicates that they did not intend that Moore would need permission every time he sought to portray the University's uniforms in the content of his paintings, prints, and calendars. See Am. Honda Motor Co., 431 S.E.2d at 443. There is no genuine dispute on this issue, and accordingly we reject the University's argument that the licensing agreements end this appeal.
B. Trademark Claims
Because we find that the licensing agreements were not intended to prohibit Moore's depiction of the University's uniforms in unlicensed paintings, prints, or calendars, we proceed to address the University's trademark claims with respect to these items. The University's claim is that Moore's unlicensed paintings, prints, and calendars infringe on the University's trademarks because the inclusion in these products of the University's football uniforms (showing the University's crimson and white colors) creates a likelihood of confusion on the part of buyers that the University sponsored or endorsed the product.
The University argues that its uniforms are "strong" trademarks and that its survey provides strong evidence of confusion sufficient to establish a likelihood of confusion to sustain a Lanham Act violation by Moore. See 15 U.S.C. § 1125(a)
The First Amendment's protections extend beyond written and spoken words. "[P]ictures, films, paintings, drawings, and engravings ... have First Amendment protection[.]" Kaplan v. California, 413 U.S. 115, 119-20, 93 S.Ct. 2680, 2684, 37 L.Ed.2d 492 (1973); see also Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Bos., 515 U.S. 557, 569, 115 S.Ct. 2338, 2345, 132 L.Ed.2d 487 (1995) ("[T]he Constitution looks beyond written or spoken words as mediums of expression.").
The University argues that Moore's paintings, prints, and calendars "are more commercial than expressive speech and, therefore, entitled to a lower degree" of First Amendment protection. See Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n of N.Y., 447 U.S. 557, 562-63, 100 S.Ct. 2343, 2350, 65 L.Ed.2d 341 (1980) ("The Constitution ... accords a lesser protection to commercial speech than to other constitutionally guaranteed expression."). However, these items certainly do more than "propos[e] a commercial transaction." Id. at 562, 100 S.Ct. at 2349. Naturally, Moore sells these items for money, but it "is of course no matter that the dissemination [of speech] takes place under commercial auspices." Smith v. California, 361 U.S. 147, 150, 80 S.Ct. 215, 217, 4 L.Ed.2d 205 (1959). Like other expressive speech, Moore's paintings, prints, and calendars are entitled to full protection under the First Amendment. Accord ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 925 (6th Cir.2003).
Thus, we must decide whether Moore's First Amendment rights will give way to
The court noted that the purchaser of artistic works, "like the purchaser of a can of peas, has a right not to be misled as to the source of the product." Id. at 997-98. However, the court concluded that the Lanham Act should be read narrowly to avoid impinging on speech protected by the First Amendment. Id. at 998-1000. Thus, the court adopted a balancing test:
Id. at 999.
Under the facts of Rogers, the court concluded that "the slight risk that such use of a celebrity's name might implicitly suggest endorsement or sponsorship to some people is outweighed by the danger of restricting artistic expression." Id. at 1000. Accordingly, the court ruled in favor of the movie's producers because the title was artistically relevant to the film, there had been no evidence of explicit misleading as to source, and the risk of confusion was "so outweighed by the interests in artistic expression as to preclude application of the Lanham Act." Id. at 1001.
Circuit courts have also applied Rogers in cases where trademark law is being used to attack the content — as opposed to the title — of works protected by the First Amendment. In Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, 886 F.2d 490 (2d Cir.1989), the defendant published humorous versions of "Cliffs Notes" study books and had imitated the plaintiff's trademarked black and yellow covers. Id. at 492. The court held that the Rogers test was "generally applicable to Lanham Act claims against works of artistic expression" and found that the parody books were protected by the First Amendment because the defendant had not explicitly misled consumers as to the source or content of the books. Id. at 495-96.
In ESS Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir.2008), a scene in the defendant's video game featured the trademark of the plaintiff's entertainment club located in Los Angeles. Id. at 1096-98. The Ninth Circuit held that there "is no principled reason why [Rogers] ought not also apply to the use of a trademark in the body of the work." Id. at 1099. The court found that the defendant's use of the trademark did not explicitly mislead as to the source or content of the video game, and thus the First Amendment protected the defendant's
In the case perhaps most similar to the one sub judice, the Sixth Circuit addressed a claim of false endorsement under the Lanham Act where an artist had painted a collage of Tiger Woods images. ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 918-19 (6th Cir.2003). Woods's publicity company sued the artist, and the court applied the Rogers balancing test and found that Woods's image on the painting had artistic relevance to the underlying work and did not explicitly mislead as to the source of the work. Id. at 936-37. As a result, the painting was protected by the First Amendment against a claim of false endorsement. Id. at 937.
The University contends that none of those cases are analogous to our current set of facts. It argues that Cliffs Notes and ESS Entertainment are not applicable because those cases involved parody, whereas Moore's paintings do not. However, neither Rogers nor ETW dealt with parody, yet the courts in those cases still read the Lanham Act narrowly to avoid First Amendment concerns. See Rogers, 875 F.2d at 999-1000; ETW, 332 F.3d at 937. Additionally, courts adopting Rogers have noted that it is "generally applicable to works of artistic expression," not just parodies. Cliffs Notes, 886 F.2d at 495; see also ESS Entm't, 547 F.3d at 1099 ("artistic works"); ETW, 332 F.3d at 937 ("artistic works").
The University responds by saying that we should not consider Rogers or ETW because those cases dealt with rights of publicity, which the University contends are much weaker than trademark rights. However, Rogers and ETW both dealt also with Lanham Act false endorsement claims,
Therefore, we have no hesitation in joining our sister circuits by holding that we should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark. This requires that we carefully "weigh the public interest in free expression against the public interest in avoiding consumer confusion." Cliffs Notes, 886 F.2d at 494. An artistically expressive use of a trademark will not violate the Lanham Act "unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work." ESS Entm't, 547 F.3d at 1099 (quotations and alterations omitted); see also Rogers, 875 F.2d at 999.
In this case, we readily conclude that Moore's paintings, prints, and calendars are protected under the Rogers test. The depiction of the University's uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniforms' colors and designs are needed for a realistic portrayal of famous scenes from Alabama football
Because Moore's depiction of the University's uniforms in the content of his paintings, prints, and calendars results in no violation of the Lanham Act, we affirm the district court with respect to paintings and prints, and reverse with respect to calendars.
III. MUGS AND OTHER "MUNDANE PRODUCTS"
We now proceed to the issues related to Moore's depiction of the University's uniforms on "mini-prints, mugs, cups, ... flags, towels, t-shirts, or any other mundane products."
A. Licensing Agreements
As with the paintings, prints, and calendars, the University argues that the licensing agreements dispositively determine its claim for royalties with respect to the mugs and other "mundane products." However, as discussed supra at Part II.A, the licensing agreements are ambiguous with respect to whether Moore needed permission to portray the University's uniforms. For paintings, prints, and calendars, we could resolve this ambiguity by looking to the parties' subsequent course of conduct.
However, for mugs and other "mundane products," we conclude that the record is not clear enough for us to resolve the ambiguity as a matter of law. There is a lack of evidence indicating how the parties viewed Moore's portrayal of the University's uniforms on mugs and other "mundane products." In thirty years, Moore has produced only three sets of mugs. The fact that two of the sets were licensed perhaps indicates that the parties thought that Moore would need permission to produce mugs portraying the University's uniforms. However, the fact that one set was not licensed implies the opposite. During the course of this litigation, the parties have focused almost exclusively on the paintings, prints, and calendars, with little attention paid to mugs and other objects.
The University observes that Moore once sought permission from the University before using a symbol on one of his mugs. The University contends that this shows that the parties believed that permission was required before Moore could use the University's colors and symbols, at
Because disputed issues of material fact remain, we reverse the grant of summary judgment to the University on this licensing issue.
B. Moore's Copyright Argument
Moore argues that because his original paintings do not infringe the University's trademarks, he has an unfettered right to produce derivative works featuring those paintings. We disagree with this broad contention. "[T]he defendant's ownership of or license to use a copyrighted image is no defense to a charge of trademark infringement. It should be remembered that a copyright is not a `right' to use: it is a right to exclude others from using the copyrighted work." 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 6:14 (4th ed.2011) (emphasis added); see also Fed. Trade Comm'n v. Real Prods. Corp., 90 F.2d 617, 619 (2d Cir.1937) ("A copyright is not a license to engage in unfair competition.").
If it were otherwise, a person could easily circumvent trademark law by drawing another's trademark and then placing that drawing on various products with impunity. Selling the copyrighted drawing itself may not amount to a trademark infringement, but its placement on certain products very well might. See, e.g., Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F.Supp.2d 965, 983 (N.D.Cal.2006) (holding that the copyright holder of a Marilyn Monroe photograph could not use the photo on wine bottles because it would infringe the trademark rights of another winery that sold wine in bottles that prominently featured images of Monroe); McCarthy, supra, § 6:14. Thus, we reject Moore's argument that his copyright in the paintings gives him an automatic defense to any trademark claims made by the University.
C. Trademark Claims
Because the district court ruled against Moore with respect to the mugs and other "mundane products," Moore is appellant for these items. However, he has waived any challenge to the district court's conclusions that his use of the uniforms on these products was not a fair use and was not protected by the First Amendment. "Under our caselaw, a party seeking to raise a claim or issue on appeal must plainly and prominently so indicate. Otherwise, the issue — even if properly preserved at trial — will be considered abandoned." United States v. Jernigan, 341 F.3d 1273, 1283 n. 8 (11th Cir.2003).
"Active consent" does not necessarily mean an explicit promise not to sue. It only requires "conduct on the plaintiff's part that amounted to an assurance to the defendant, express or implied, that plaintiff would not assert his trademark rights against the defendant." Creative Gifts, Inc. v. UFO, 235 F.3d 540, 547-48 (10th Cir.2000); see also Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1558, 1564 (11th Cir.1991).
Here, a finding of acquiescence on the mugs or other "mundane products" would estop the University from prosecuting its action against Moore with respect to those items, see Coach House, 934 F.2d at 1564, unless the University can show that "`inevitable confusion' arises from the continued dual use of the marks." SunAmerica Corp. v. Sun Life Assurance Co. of Can., 77 F.3d 1325, 1334 (11th Cir.1996). As we noted in our discussion supra at Part III.A, the record is not clear with respect to the parties' course of conduct towards Moore's sale of mugs and other "mundane products." The record relevant to acquiescence on these items is similarly undeveloped. Accordingly, we remand this acquiescence issue for the district court to conduct further proceedings, if necessary.
As evidenced by the parties' course of conduct, Moore's depiction of the University's uniforms in his unlicensed paintings, prints, and calendars is not prohibited by the prior licensing agreements. Additionally, the paintings, prints, and calendars do not violate the Lanham Act because these artistically expressive objects are protected by the First Amendment, by virtue of our application of the Rogers balancing test. The uniforms in these works of art are artistically relevant to the underlying works, Moore never explicitly misled consumers as to the source of the items, and the interests in artistic expression outweigh the risk of confusion as to endorsement. Accordingly, we affirm the judgment of the district court with respect to the paintings and prints, and reverse with respect to the prints as replicated on calendars.
With respect to the licensing agreements' coverage of the mugs and other "mundane products," we reverse the district court because disputed issues of fact remain. See, e.g., Alvarez, 610 F.3d at 1271 (reversing a grant of summary judgment with respect to an employee's retaliation claim, since the employer's motivations for terminating the employee remained unclear from the record, adding that the "issue can be resolved at trial, if necessary"). Moore has not argued on appeal that his actions with respect to these items constituted fair use or were protected by the First Amendment, and therefore any such protection has been waived, and we need not address those issues with respect to the mugs and other
15 U.S.C. § 1125(a)(1).
The second reason persuading us that Moore has not fairly presented on appeal such a First Amendment/fair use challenge is that even the above-mentioned bald and conclusory reference to the First Amendment does not appear under an appropriate heading. There are only two headings in Moore's initial brief: one focused upon Moore's argument, derived from copyright law, that he has a right to incorporate his copyrighted images into derivative works; and the other focused upon the trademark defense of acquiescence. See Jernigan, 341 F.3d at 1283 n. 8 (declining to entertain passing references to an argument embedded under different topical headings). Third, the issues set forth in Moore's initial brief do not include a First Amendment/fair use challenge to the district court's holding with respect to the mugs and other "mundane products." Finally, Moore's initial brief does not even cite the leading case upon which the district court relied, i.e., the Second Circuit decision in Rogers, nor does it cite other relevant cases applying that balancing test.
Although we have some reluctance to invoke this technical rule, we believe its application is soundly based in our caselaw and is warranted in this case. For example, probably because Moore's initial brief wholly failed to elaborate on a First Amendment/fair use challenge to the district court's holding with respect to the mugs and other "mundane products," and wholly failed to explain how the Rogers balancing test would apply with respect thereto, the University's brief in response also contains no discussion of how the balancing test would apply to the mugs and other "mundane products," as opposed to the paintings and prints. See Jernigan, 341 F.3d at 1283 n. 8. We decline to address that issue sua sponte, with no assistance from the parties.
Also waived and abandoned is any challenge to the propriety of the district court's reliance (with respect to the mugs and other "mundane products") on University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535 (11th Cir.1985), and Boston Pro Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir.1975). See dkt. 311 at 6; dkt. 321 at 4. These two cases are not even cited in Moore's initial brief. Nor does the brief assert the argument based on Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003), which is made in the Amicus brief. See Br. of Amici Curiae Intellectual Property Law Professors at 7-9.