Crimson Chaos: Sports Team Trademarks In Artwork And The Functionality Doctrine

AuthorTodd Thurheimer
PositionSuffolk University Law School
Pages27-43
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Crimson Chaos: Sports Team Trademarks in Artwork and the
Functionality Doctrine
Todd Thurheimer
Suffolk University Law School
tthurheimer@gmail.com
Abstract: Alabama University has sued a rtist Daniel Moore for trademark infringement
over his use of the university's team colours and other indicia in his artwork. The Court of Appeals
for the 11th Circuit will be releasing a decision soon. This paper asserts that the inclusion of
sports team trademarks in artwork is a functional use. Therefore, in ad dition to fair use and 1st
amendment defences, the functionality doctrine of trademark law protects such artists from being
held liable for trademark infringement.
I. Introduction
The artist must know the manner whereby to convince others of the truthfulness of his lies.”
– Pablo Picasso
1
Every kno wn human ci vilization has p layed spo rts.
2
In the modern era, a massive industry channels sporting
events, merchandise, and t wenty-four hour news coverage to the po pulace.
3
Universities and professional teams
develop and protect their valuable assets, including the logos and colo urs that distinguish their team.
4
These
symbols harness the goodwill felt by the customer base towards the team.
5
Individuals express support by
wearing expensive merchandise exhibiting the sports teams’ logos and colours.
6
The teams control the
proliferation of this merchandise primarily through licensing.
7
Sports permeate our society to such a degree that an expansive market exists for art portraying important
sporting events and figures.
8
In identifying teams or individuals in their visual works, artists may infringe upon
1
P
EGGY
H
ADDEN
,
T
HE
Q
UOTABLE
A
RTIST
211 (2002). Please excuse Mr. Picasso’s failure to use a gender-neutral pronoun.
2
See Tim Delaney & Tim Madigan, T
HE
S
OCIOLOGY OF
S
PORTS
1 (prefacing sociology textbook). See also Ancient Roman
Recreation & Sports, archived at http://www.webcitation.org/5tqy0mYTz (describing Ancient Roman sports); Ancient
Egyptian Sports, archived at http://www.webcitation.org/5tqyAtthu (listing Ancient Egyptian sports); The Sport of Life and
Death: The Mesoamerican Ballgame, available at http://www.ballgame.org (exhibiting Mesoamerican sports). America is
no exception. See Joshua R. Keefe, R eligion, Commodity, or Escape: Sports in Modern American Culture, archived at
http://www.webcitation.org/5tqxkHM8w (describing prevalence of sport in American culture). See also David Bauder, Super
Bowl 2010 Ratings: 106 Million Watch, Top-Rated Telecast EVER, archived at http://www.webcitation.org/5tqxbawUC
(noting that 106 million Americans tuned into the 2010 Super Bowl).
3
See Plunkett Research, Ltd., Sports Industry Overview, archived at http://www.webcitation.org/5tqySMRep (valuing sports
industry in America at $414 billion US dollars).
4
See B
LACK
S
L
AW
D
ICTIONARY
: Trademark - “A word, phrase, lo go, or other graphic symbol used by a manufacturer or
seller to distinguish its product or products from those of others.”
5
See Mark Sableman, Trademark La ws Underlie Sports Fortunes, 1998 SJR St. Louis Journalism Review (categorizing
evolution of sports trademark licensing).
6
See NFL Shop, archived at http://www.webcitation.org/5tqzJ3Qq7 (cataloging available Pittsburgh Steelers uniforms).
7
See John Grady & Steve McKelvey, Trademark Pro tection of School Colors: Smack Apparel and Sinks Decisions Trigger
Color-ful Legal Debate for the Collegiate Licensing Industry, 18
J.
L
EGAL
A
SPECTS
S
PORT
207 (stating that collegiate
licensing industry tops $3 billion in annual merchandise sales).
8
See http://www.fathead.com (providing life size images of athletes); ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915 (2003)
(finding no infringement or dilution in artist’s painting of Tiger Woods).
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28
the sports teams’ trade dress by utilizing their colours and logos.
9
Thus, a conflict can arise between the right of
these artists to convey their message and the interest of compa nies in protecting their trademark assets.
10
Artists
typically assert affirmative defences if sued by trademark owners to a void infringement (and the licensing fees
that follow).
11
However, a trademark determined to be functional receives no protection.
12
Trademark la w’s
functionality doctrine can obviate the need for an artist to plead an affirmative defence while making
determinations of infringement more predictable.
13
This note proposes applying the aesthetic functionality doctrine to prevent sports teams from asserting
trademark rights over their team colours used in artwork. Section II (History) commences by summarizing
contemporary US trademark law and depicting the movement in courts towards protecting colour as a trademark.
Section II (History) also describes the functionality doctrine, outlines the merchandising right, and briefly
examines alternative defences to infringement. Section III (Facts and Premises) describes recent developments
in sports merchandising cases in which universities and sports teams attempted to enforce their trademark rights
against infringers. Section IV (Analysis) concludes t his note by examining the benefits of applying the
functionality doctrine to artistic uses of sports team’s colours.
2. History
2.1 Trademarks Generally
A trademark “identif[ies] the origin or ownership of the article to which it is affixed.”
14
Trademark infringement
developed as a state common-law action.
15
The Trademark Act of 1946 (“Lanham Act”) codified common law
trademark principles into federal la w for marks used in inter state commerce; Congress amended the Lanham Act
several times.
16
Under the Lanham Act, a trademark “includes any word, name, symbol, or device . . . used . . .
to identify and distinguish his or her goods . . . and to indicate the source of the goods.”
17
The Lanham Act
9
See University of Alabama Bd. of Trustees v. New Life Art Inc., 677 F.Supp.2d 1238 (2009) (suing artist over inclusion of
Alabama football team colors in realistic paintings). See also B
LACK
S
L
AW
D
ICTIONARY
: Trade Dress – “The overall
appearance and image in the marketplace of a product or a commercial enterprise. For a product, trade dress typically
comprising packaging and labeling. For an enterprise, it typically comprises design and color.”
10
See id. In other words, a multi-million dollar market exists: the sports teams want to maximize their earnings and the
artists want to be able to make a living.
11
See Lanham Act, 15 U.S.C. § 1115 (codifying common law fair use defense).
12
See 1 M
C
C
ARTHY ON
T
RADEMARKS AND
U
NFAIR
C
OMPETITION
§5:10 (4th ed. 2010) (describing 1998 Amendment to
Lanham Act making functionality an explicit ground for ex parte rejection).
13
See Brief for et al. as Amici Curiae Supporting Appellant/Cross-Appellee, Alabama v. New Life Art, Inc., 677 F.Supp.2d
1238 (2009) (Nos. 09-16412-AA, 10-10092-A) (commenting on behalf of New Life, Inc.).
14
Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 412 (1916) (defining proper function of trademark).
15
See 1 M
C
C
ARTHY ON
T
RADEMARKS AND
U
NFAIR
C
OMPETITION
§4: 4 (4th ed. 2010) (defining technical trademark under
state common law). Marks have been used for centuries to indicate the source of goods. See Paul Goldstein, C
OPYRIGHT
,
P
ATENT
,
T
RADEMARK AND
R
ELATED
(rev. 5
th
ed. 2004) (introducing trademark law). Actions for infringement were originally
limited to competing goods. See Bord en Ice Cream Co. v. Borden’s Condensed Milk Co., 201 F.510 (7
th
Cir. 1912) (holding
that Borden Ice Cream does not infringe on Borden’s Condensed milk). In the 20
th
century, this expanded to include any use
likely to cause confusion. See Lanham Act, 15 U.S.C. § 1125(a) (defining the conditions for a civil infringement action).
Geographical use restrictions apply. See Dawn Donut Co., Inc v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959)
(finding no confusion where junior mark-user resides in a geographically separate market).
16
See Lanham Act, 15 U.S.C. §1051-1141 (administering federal statutory trademark law). The constitutional vehicle by
which the Lanham Act was created is th e Commerce Clause. Contrast this with federal protections of Patents and
Copyrights, which are constitutional under Article I, Section I, Clause 8 o f the Constitution. See also 1 M
C
C
ARTHY ON
T
RADEMARKS AND
U
NFAIR
C
OMPETITION
§5:5 (4th ed. 2010) (listing amendments to the Lanham Act).
17
Lanham Act, 15 U.S.C. § 1127 (defining the term trademark).

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