Although a decision from the US 11th Circuit Court of Appeals has limited precedential value in Canadian courts, the decision in University of Alabama vs New Life Art, Inc. (filed June 11, 2012) (hat tip: Hollywood, Esq.) is useful for Canadian entertainment lawyers because it indicates the analytical framework which courts use in assessing whether infringement has occurred when a trade-mark is incorporated into an artistic work. The case is particularly instructive for lawyers trying to provide guidance to clients who want to make use of trade-marked material (for example, a sports team jersey) in a different work (such as a movie).
The case involved artist Daniel A. Moore, who has built a reputation for creating realistic paintings depicting scenes from sporting events, with particular focus, relevant to this dispute, on scenes involving the University of Alabama football team (a sample of Mr. Moore's work can be found here). Moore's paintings are sold, reproduced as prints (which are also sold) and reproduced on paraphenalia such as mugs and calendars. Although the University and Moore had, for about a decade, entered into agreements relating to Moore's work, for a much longer period of time Moore had been preparing his paintings without any involvement with, or permission from, the university. As these things go, the University demanded that Moore stop executing his paintings without their permission - Moore refused, and the University sued Moore for, among other things, trade-mark infringement.
While the entire decision is interesting in its own right, the nub of the court's conclusion is this:
"we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act [the US analogue of the Trade-marks Act (Canada)]" (pages 18-19 of the .pdf of the decision)
While US First Amendment jurisprudence does not map precisely onto Canadian freedom of expression analysis, the emphatic nature of the 11th Circuit's decision is worth noting - and, as the court notes when citing a string of precedents, the danger of restricting free expression will factor heavily into a court's decision when confronted with expressive materials (even materials which can be used in commerce and have a significant commercial component). As the court states:
"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.” 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.” (citations omitted)(page 24 of the .pdf of the decision)
The primary elements in a successful defence to a claim of trade-mark infringement appear then to be that the use of the mark must have some artistic relevance to the underlying expressive work, unless there is an explicit attempt to mislead consumers as to source or content.
The decision in the University of Alabama case can be comfortably read with the recent Southern District of New York decision in the "Hangover: Part II" case where Louis Vuitton Malletier, S.A. sued Warner Bros. for trade-mark dilution because of a scene in the movie making use of counterfeit Louis Vuitton handbags. (For earlier Signal coverage of the case, see here; for Hollywood, Esq.'s coverage, see here; and for LawLawLand's coverage, see here.) The court granted the defendant's motion to dismiss the plaintiff's claim because the use of a knock-off bag was "protected ... because it has some artistic relevance to the Film and is not explicitly misleading".
While it is worth stressing again that the cases noted above are US decisions and so would not be controlling in Canadian courts, it is also worth highlighting that claims for trade-mark infringement should not be viewed by producer's counsel as open-and-shut cases. Mere use of a trade-marked item in a new work will not automatically trigger liability - there are countervailing freedom of expression issues which should be taken into account.