The Art of Football

In University of Alabama Board of Trustees v. New Life Art, Inc., 2013 WL 5442191 (ND Ala., September 2013), on remand from the Eleventh Circuit Court of Appeals, the court addressed issues of whether an artist re-issued products (prints depicting the university football team) in violation of licensing agreements that prohibited issuance without first receiving permission from the university and whether the artist failed to pay royalties with respect to those products.  The Eleventh Circuit Court of Appeals had already determined that “depictions of the University’s uniforms in [the artist’s] paintings, prints, and calendars did not violate the Lanham Act because [he] had a First Amendment right to include the University’s color, trade dress/uniforms, and trademark symbols in the artwork, prints and calendars that celebrated and commemorated the historic moments in Alabama football.”  On remand, the artist maintained that he had not breached licensing agreements with the university and that, even if he had, the university had acquiesced by purchasing and reselling the reissued products.  The district court found that the defendant had not violated four of five relevant licensing agreements because he had not reissued products depicting the university’s “indicia,” as prohibited by the specific terms of the agreements. While the district court found that the artist had breached the fifth licensing agreement by reissuing a certain print on certain products, it further held that the university had acquiesced in the breach by purchasing and reselling unlicensed products from the artist containing the print at issue and, thus, was barred by the equitable doctrine of acquiescence from recovering damages for the breach.