Steve Heninger in New York Times: Free Speech vs. Infringement in Suit on Alabama Artwork

By DANIEL GRANT

Published: January 30, 2012

In the specialized field of sports art, Daniel Moore is well known for his paintings of the University of Alabama football team in action. But he soon may become similarly recognizable in legal circles as his fight against the university’s charge of copyright infringement heads to the Alabama Appeals Court.

The lawsuit, which Moore has been contesting since 2005, seeks to prevent him from selling posters made from his paintings without first obtaining a license from the university. In November 2009, a United States District Court in Birmingham ruled largely in his favor and against the university. The outcome of Thursday’s Appeals Court hearing could set a precedent in the world of sports art.

Moore paints scenes and sells poster and inkjet print versions of them that range in price from $35 to $3,000, depending on whether the image is printed on paper or canvas, and is signed and/or numbered. His 1992 work “The Tradition Continues,” which commemorated a national championship season, sold 19,920 prints and posters.

For Moore, the issue, he said, is one of “free speech, my right to paint what I want and sell my work.” But the university has accused him of trading on its name and the accomplishment of its football teams without permission, infringing on university trademarks by depicting its recognizable uniform, logo and other insignia.

Trademarks are words, logos or images that specifically symbolize or refer to a company’s products and services. Infringement occurs when they are used without authorization. According to Moore, University of Alabama officials stipulated during a meeting in 2002 that he pay an 8 percent royalty for both new work and everything university-related he had done since 1979.

The case is of great interest to “artists all over the country whose free speech rights should not be subject to licensing arrangements by colleges and universities,” said Mark P. McKenna, a law professor at Notre Dame who was part of a group of professors that wrote a friend-of-the-court brief to the Appeals Court on Moore’s behalf.

No less interested in the outcome is the Atlanta-based Collegiate Licensing Company, which wrote a friend-of-the-court brief on the university’s behalf. A spokeswoman for the company said the overall retail market for collegiate licensed products is valued at $4.3 billion a year, less than 1 percent of which is in the “art category.”

The District Court Judge Robert Propst wrote in his 2009 ruling that there was no reason for buyers of Moore’s prints to assume that the products were licensed and endorsed by the university. Rather, he wrote, “it is likely that people who buy the Moore paintings do so, at least partially, because of their loyalty to the University of Alabama and its football team.”

The judge, however, did prohibit Moore from selling his images on products of a more commercial nature, like coffee mugs and calendars, without obtaining a license from the university, and his ruling was vague on the number of prints in an edition that the artist could create.

Steve Heninger, Moore’s lawyer, said Moore was appealing that aspect of Propst’s decision.

“All of our art is copyrighted, and copyright gives us the right to do derivative works on coffee mugs, calendars” and other items, he said.

The university, too, is appealing. Deborah Lane, Alabama’s assistant vice president for university relations, said it was seeking to protect “the value and reputation of our trademarks, name, colors, indicia and logos, by determining who uses them, as well as when and how they are used.”

She said that the university has about 600 licensing agreements under which businesses that “profit from the university’s name and reputation pay a few cents in licensing fees out of each dollar they receive from the sale of merchandise bearing university trademarks.” She said the fees finance academic scholarships.

Moore, who lives in Hoover, Ala., and graduated from Alabama in 1976, views his paintings as a form of loyalty to the university. He believes that for more than two decades the university perceived his work as good publicity for the football program and for the university. Athletic directors gave him sideline passes and permitted him to borrow items (old game programs, helmets, jerseys, trophies) from the university’s Paul W. Bryant Museum that he used in his paintings.

In 1999, however, the university proposed a plan for Moore to pay a licensing fee for all his images of the football team, which he declined to accept. In 2001, Moore was barred from the sidelines, although he continued to paint Alabama football scenes, and none of the five judges who had heard the case between 2005 and 2009 ever issued an injunction preventing him from doing so.

Moore said he received cease-and-desist letters from university lawyers whenever he produced a new edition. He said he would have lost money had he signed a licensing agreement because the N.C.A.A. does not allow member institutions to license products containing the likenesses of student athletes who are eligible to play in varsity games. One of the five images Moore created for his 2009 season series included the running back and Heisman Trophy winner Mark Ingram, then a junior with another year of eligibility.

Moore said that licensing would limit his freedom to choose subjects and require approval of university officials as well as perhaps anyone whose likeness he used, including referees.

“There would be painting by committee,” he said. “Can I do this? What do you think alumni would like to see more?” He added, “It’s a slippery slope down that path.”

Fighting a major university is not for the faint of heart or light of wallet. Moore noted that his legal fees have reached hundreds of thousands of dollars.

During the last seven years, Moore said that he had been “fearful, concerned that I might owe Alabama a lot of money if the university had won.”

“It was a sword of Damocles hanging over my head,” he said.

http://www.nytimes.com/2012/01/31/sports/ncaafootball/artist-still-fighting-alabama-over-football-paintings.html?pagewanted=2&_r=1