                                                            [PUBLISH]

            IN THE UNITED STATES COURT OF APPEALS

                      FOR THE ELEVENTH CIRCUIT           FILED
                       ________________________ U.S. COURT OF APPEALS
                                                  ELEVENTH CIRCUIT
                                                     JUNE 11, 2012
                             No. 09-16412
                                                      JOHN LEY
                       ________________________
                                                       CLERK

              D. C. Docket No.05-00585-CV-UNAS-RBP-W


THE UNIVERSITY OF ALABAMA BOARD OF TRUSTEES,


                                                              Plaintiff-
                                                     Counter-Defendant-
                                                              Appellee,

                                 versus

NEW LIFE ART, INC.,
DANIEL A. MOORE,


                                                           Defendants-
                                                     Counter-Claimants-
                                                            Appellants.

                       ________________________

                             No. 10-10092
                       ________________________

              D. C. Docket No. 7:05-CV-00585-UNAS-RBP


THE UNIVERSITY OF ALABAMA BOARD OF TRUSTEES,
                                                                                  Plaintiff,
                                                                         Counter Defendant,
                                                                                 Appellant,

                                            versus

NEW LIFE ART, INC.,
DANIEL A. MOORE,

                                                                               Defendants,
                                                                         Counter Claimants,
                                                                                 Appellees.


                             ________________________

                     Appeals from the United States District Court
                        for the Northern District of Alabama
                           _________________________

                                     (June 11, 2012)

Before MARTIN and ANDERSON, Circuit Judges, and SCHLESINGER,*
District Judge.

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

__________________

* Honorable Harvey E. Schlesinger, United States District Judge for the Middle District of
Florida, sitting by designation.


                                               2
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.

                                           I. FACTS

       From 1979 to 1990, Moore painted historical Alabama football scenes

without any kind of formal or informal relationship with the University.1 From

1991 to 1999, Moore signed a dozen licensing agreements with the University to



       1
                Although there was no relationship before 1991, the University was still aware of
Moore’s work as early as 1980. From 1980 through 1982, the University submitted twenty
separate orders for unlicensed Moore prints that were then resold. Dkt. 294, exh. 20B at 2-10;
dkt. 294, exh. 20C at 1-8; dkt. 294, exh. 20D at 1-8.

                                                3
produce and market specific items, which would often include additional Alabama

trademarks on the border or packaging, or would come with a certificate or stamp

saying they were officially licensed products.

       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.2 In particular, the University asserted that Moore needed permission



       2
               The one exception was that the University did not require that Moore obtain
permission to sell any products that featured his paintings in conjunction with written material.
Thus, the University had no qualms with Moore selling books that featured reproductions of his
paintings along with stories, recaps, or historical information.

                                                4
to portray the University’s uniforms, including the jersey and helmet designs and

the crimson and white colors.

       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.3

Early in the proceedings, discovery was stayed on all issues not relevant to the


       3
              There was also a previous appeal to this Court. See Bd. of Trs. of the Univ. of
Ala. v. New Life Art, Inc., 336 Fed. App’x. 860 (11th Cir. 2009) (dealing with issues of
immunity).

                                               5
University’s Lanham Act claims.4 After discovery, both parties moved for

summary judgment.

       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 that Moore receive permission to portray the University’s uniforms

because the uniforms were not included in the agreements’ definition of “licensed

indicia”; (2) the University’s colors had some secondary meaning5 but were not

especially strong marks on the trademark spectrum6; (3) Moore’s depiction of the

uniforms in paintings and prints was protected by the First Amendment and also

was a fair use; and (4) Moore’s depiction of the uniforms on mugs, calendars, and

       4
               In particular, the University contended that Moore re-issued one product whose
licensing agreement specifically prohibited re-issuance without first receiving the University’s
permission. The University also claimed that Moore had not paid royalties when he later re-
issued certain works that had been the subject of a licensing agreement.
       5
                See Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1357 (11th Cir. 2007)
(“Trademark or service mark protection is only available to ‘distinctive’ marks, that is, marks
that serve the purpose of identifying the source of the goods or services. Some marks are
inherently distinctive; some marks, though not inherently distinctive, acquire distinctiveness by
becoming associated in the minds of the public with the products or services offered by the
proprietor of the mark; and some marks can never become distinctive.”) (citations omitted).
       6
                See id. at 1357-58 (“Trademark law distinguishes four gradations of
distinctiveness of marks, in descending order of strength: fanciful or arbitrary, suggestive,
descriptive, and generic. An arbitrary or fanciful mark bears no logical relationship to the
product or service it is used to represent. A suggestive mark refers to some characteristic of the
goods, but requires a leap of the imagination to get from the mark to the product. A descriptive
mark identifies a characteristic or quality of the service or product. . . . [A] generic name refers
to a ‘particular genus or class of which an individual article or service is but a member.’”)
(citations omitted).

                                                  6
other “mundane products” was not protected by the First Amendment, was not a

fair use, and would likely result in consumer confusion.

       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.7 Fed. R. Civ. P. 54(b) (“When an action presents more than

one claim for relief . . . , the court may direct entry of a final judgment as to one or

more, but fewer than all, claims . . . only if the court expressly determines that

there is no just reason for delay.”); Edwards v. Prime Inc., 602 F.3d 1276, 1288

(11th Cir. 2010) (“Appellate jurisdiction over an appeal from an interlocutory



       7
               We have jurisdiction pursuant to Rule 54(b), thus resolving the jurisdictional issue
carried with the case. Thus, we address the claims involving products (i.e., creations of Moore)
which were never the subject of a specific, written licensing agreement. These claims involve
primarily Lanham Act issues but also include incidental contract issues of whether some broad
language in the licensing agreements constitutes a conveyance by Moore of First Amendment or
copyright interests that Moore might otherwise have had in the absence of the licensing
agreements. By contrast, our Rule 54(b) jurisdiction does not extend to, and we do not address,
claims involving objects which were the specific subject of a particular, written licensing
agreement, and with respect to which the University argues that Moore re-issued prints, etc.,
without the University’s permission. Issues relating to such specifically licensed paintings are
primarily contractual issues which have not been addressed by the district court.

                                                7
decision certified under Rule 54(b) is limited to the rulings or orders certified by

the district court.”).

       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.

       We believe that the simplest way to address all of the arguments in this

appeal is to divide the opinion based on the two categories of objects produced by

Moore. With respect to both categories, we address only objects which were never

the subject of a specific, written licensing agreement.8 First we address the

arguments of the respective parties with respect to a category of objects composed

of paintings, prints, and calendars. Then we address the arguments of the parties

with respect to a second category of objects composed of mugs and other

“mundane products.”9

                     II. PAINTINGS, PRINTS, AND CALENDARS

       8
               See supra note 7 (noting that we have Rule 54(b) jurisdiction over claims
involving these never-licensed objects).
       9
                The record suggests that there is only one set of mugs that was never licensed, and
the only other “mundane products” we have noticed in the record are postcard-sized mini-prints.
See dkt. 264, exh. V at 2-4.

                                                 8
       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].”10 Moore is appellant for calendars.

We address these items together.11

       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.”12

Accordingly, for the sake of simplicity, we focus on the 1995 Agreement’s

language, although we note that previous licensing agreements used substantially

similar language in most respects.



       10
               Dkt. 322 at 1.
       11
               Even if we did not address calendars together with the paintings and prints, we
would find as a matter of law that the University acquiesced with respect to the calendars. See
Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1207 (11th Cir. 2008).
       12
               Dkt. 262, exh. H at 11, ¶27.

                                                9
       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:

       “Licensed Indicia” means the names, symbols, designs, and colors of
       the [University], including without limitation, the trademarks, service
       marks, designs, team names, nicknames, abbreviations, city/state
       names in the appropriate context, slogans, logographics, mascots,
       seals and other symbols associated with or referring to the
       [University]. Licensed Indicia includes those in Appendix B and
       indicia adopted, used and approved for use by the [University]. Any
       newly adopted indicia shall be deemed to be additions to the Licensed
       Indicia in Appendix B and shall be subject to the terms and
       conditions of the Agreement.13

       The items listed in Appendix B are the phrases “University of Alabama,”

“Roll Tide,” “Crimson Tide,” “U of A,” “Bama,” and “Alabama.” It also lists the

colors “Crimson PMS 201”14 and “Gray PMS 429” and includes images of the

University’s official seal, an elephant wearing a sweater with an “A” on it, an “A”

with an elephant charging through it, and an “A” with the University’s official seal


       13
               Id. at 2, ¶ 1(b).
       14
               “PMS” refers to the Pantone Matching System, which is an “organizational
scheme that matches particular colors with individual identification numbers.” Pantone, Inc. v.
Esselte Letraset, Ltd., 878 F.2d 601, 602-03 (2d Cir. 1989). This allows very specific colors to
be referenced using just a general color code in combination with a number.

                                               10
superimposed.

       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.15

       The 1995 Agreement also requires that Moore “shall not use the Licensed

Indicia for any purpose other than upon or in connection with”16 explicitly

licensed items, and that the “terms and conditions of this Agreement necessary to

protect the rights and interests of the [University] in [its] Licensed Indicia . . . shall

survive the termination or expiration of this Agreement.”17

       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.18 The district court disagreed with the University

and held that the parties did not intend “licensed indicia” to include colors on

       15
               In the PMS, white is considered a shade of gray.
       16
               Dkt. 262, exh. H at 3, ¶2(f)(1).
       17
               Id. at 10, ¶22(a); see also id. at 4, ¶6(e); id. at 10, ¶20(a).
       18
               As noted supra at note 2, the one exception is that the University does not contend
that Moore must obtain permission when his paintings are reproduced in conjunction with
written material.

                                                   11
uniforms. The court concluded that the colors in Appendix B were listed only

with respect to the logos and words actually shown in the appendix. Uniforms are

not shown in the appendix, nor are they otherwise listed anywhere in the 1995

Agreement. Thus, the district court held as a matter of law that Moore’s portrayal

of the University’s colors on uniforms in his paintings and other objects was not

prohibited by the licensing agreements.

      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.”19 Other sections refer to “licensed indicia” being

used “on” products.20 Another provision instructs that Moore “shall not contract

with any party for the production or application of Licensed Indicia by that party”

without authorization.21 It seems unlikely that uniforms in a painting would be

“produced” or “applied.” This language implies that the parties intended “licensed

indicia” to refer to the packaging or labels placed upon products, rather than


      19
             Dkt. 262, exh. H at 2, ¶1(c); id. ¶1(f); id. at 3, ¶2(f)(5).
      20
             Id. at 2, ¶2(a); id. at 4, ¶4(a); id. at 6, ¶12(a).
      21
             Id. at 3, ¶2(f)(3); see also id. ¶2(f)(2).

                                                  12
uniforms depicted within the content of a painting, print, or calendar.

      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.”22 Under the

University’s view, this would apparently require that every player portrayed in a

painting would need an “R” or “TM” symbol accompanying his uniform.

      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


      22
             Id. at 6, ¶12(a).

                                         13
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., 431 S.E.2d 437, 443 (Ga. Ct. App. 1993) (quotations

and alteration omitted).23 The most relevant evidence for this analysis would be

the parties’ behavior—active or passive—during and after the time when they

were entering into licensing agreements (i.e., from 1991 until this litigation).

       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.

       23
               Some of the previous licensing agreements indicate that they will be construed
under Alabama law, but Alabama similarly allows course of conduct to clarify an ambiguous
contract. “If one must go beyond the four corners of the agreement in construing an ambiguous
agreement, the surrounding circumstances, including the practical construction put on the
language of the agreement by the parties to the agreement, are controlling in resolving the
ambiguity.” Voyager Life Ins. Co. v. Whitson, 703 So. 2d 944, 949 (Ala. 1997).

                                              14
      From 2001 to 2004, the University sold over $12,000 worth of Moore’s

unlicensed calendars in its campus store.24 On at least one occasion, the

University detached the images from an unlicensed calendar, then framed and sold

them.25 The Bryant Museum, which is run by the University, displayed and sold

unlicensed Moore prints and featured an unlicensed painting on the cover of its

brochure.26

      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.27 For many years, the University had

displayed unlicensed Moore prints in its own athletic department office and had

granted Moore press credentials so he could take photographs to be used as source

material for paintings, many of which were never licensed.28

      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

      24
              Dkt. 294, exh. 20A at 2-9.
      25
              Dkt. 116, exh. I at 25.
      26
              Id., exh. K at 9.
      27
              Dkt. 294, exh. 4 at 2-3.
      28
              Dkt. 116, exh. A at 29.

                                           15
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.29

       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



       29
                Since this case is before us on Rule 54(b), we address the licensing agreements
only to the extent necessary to resolve the University’s Lanham Act claims. See Edwards, 602
F.3d at 1288 (“Appellate jurisdiction over an appeal from an interlocutory decision certified
under Rule 54(b) is limited to the rulings or orders certified by the district court.”). Therefore, to
the extent necessary, the district court upon remand will need to resolve the University’s claims
that (1) Moore re-issued one product whose licensing agreement specifically prohibited re-
issuance without first receiving the University’s permission, and (2) Moore has failed to pay
royalties when he later re-issued certain works that had explicitly been the subject of a licensing
agreement. See dkt. 260 at 28; dkt. 262, exh. E at 6, ¶ 9.

                                                  16
confusion to sustain a Lanham Act violation by Moore. See 15 U.S.C. §

1125(a)30; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S. Ct.

2753, 2758 (1992).31 Contrary to the University’s argument, the district court

concluded there was a “weak mark and [merely] some likelihood of confusion.”32

And contrary to the University’s argument that its trademarks triggered the sales

of Moore’s products, the district court concluded with respect to the paintings and

prints that “the plays and Moore’s reputation established during a period when his



       30

       Any person who, on or in connection with any goods or services, or any container
       for goods, uses in commerce any word, term, name, symbol, or device, or any
       combination thereof, or any false designation of origin, false or misleading
       description of fact, or false or misleading representation of fact, which–

              (A) is likely to cause confusion, or to cause mistake, or to deceive as to the
              affiliation, connection, or association of such person with another person,
              or as to the origin, sponsorship, or approval of his or her goods, services,
              or commercial activities by another person, or

              (B) in commercial advertising or promotion, misrepresents the nature,
              characteristics, qualities, or geographic origin of his or her or another
              person’s goods, services, or commercial activities,

       shall be liable in a civil action by any person who believes that he or she is or is
       likely to be damaged by such act.

15 U.S.C. § 1125(a)(1).
       31
              Although the University’s uniforms are not registered with the United States
Patent and Trademark Office, “it is common ground that § 43(a) protects qualifying unregistered
trademarks.” Two Pesos, 505 U.S. at 768, 112 S. Ct. at 2757.
       32
              Dkt. 321 at 4.

                                                 17
art was agreeably not licensed are what predominantly trigger the sales.”33

Similarly, with respect to the University’s survey upon which the University relies

to support likelihood of confusion, the district court concluded “that the survey

lacks strength because of its manner of taking, the form of the questions, the

nature of the surveyed customers, and the number of responders. It involved only

one print. The questions are loaded with suggestions that there is a ‘sponsor’

other than the artist.”34 We note that Moore’s signature was prominent on the

paintings, prints, and calendars, clearly telegraphing that he was the artist who

created the work of art. We also note that the one print used in the survey was in

fact specifically licensed, and thus had an actual, historical sponsorship

association with the University. Although we are in basic agreement with the

district court’s evaluation of the mark and the degree of confusion as to the source

and sponsorship of the paintings, prints, and calendars, we need not in this case

settle upon a precise evaluation of the strength of the mark or the degree of

likelihood of confusion. As our discussion below indicates, 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


      33
             Dkt. 311 at 6-7.
      34
             Id. at 8.

                                         18
conclude that there has been no violation of the Lanham Act with respect to the

paintings, prints, and calendars.

      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 (1973); see also Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of

Bos., 515 U.S. 557, 569, 115 S. Ct. 2338, 2345 (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 (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 (1959). Like other expressive

speech, Moore’s paintings, prints, and calendars are entitled to full protection

                                         19
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 University’s trademark rights. We are not the first circuit to confront

this issue. In 1989, the Second Circuit decided Rogers v. Grimaldi, 875 F.2d 994

(2d Cir. 1989), which is the landmark case for balancing trademark and First

Amendment rights. In Rogers, the defendant created a film about two fictional

Italian dancers who were called “Ginger and Fred,” which was the film’s title. Id.

at 996-97. Ginger Rogers, a famous dancer who often worked with Fred Astaire,

sued under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), arguing that the film’s

title falsely implied that she was endorsing or featured in the film. Rogers, 875

F.2d at 997.

      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:

      We believe that in general the Act should be construed to apply to
      artistic works only where the public interest in avoiding consumer
      confusion outweighs the public interest in free expression. In the

                                          20
       context of allegedly misleading titles using a celebrity’s name, that
       balance will normally not support application of the Act unless the
       title has no artistic relevance to the underlying work whatsoever, or if
       it has some artistic relevance, unless the title explicitly misleads as to
       the source of the work.

Id. at 999.35

       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


       35
                Examples given in Rogers of titles that—if done without permission—would be
explicitly misleading included “Jane Fonda’s Workout Book,” “Nimmer on Copyright,” and any
work claiming to be an “authorized biography.” Rogers, 875 F.2d at 999.

                                            21
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 use of the plaintiff’s trademark. Id. at 1099-101.

      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

                                         22
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,36 and we have never

treated false endorsement and trademark infringement claims as distinct under the

Lanham Act. See Tana v. Dantanna’s, 611 F.3d 767, 777 n.9 (11th Cir. 2010)


       36
             Rogers, 875 F.2d at 997; ETW, 332 F.3d at 936-37.

                                           23
(“[W]e have . . . never recognized a separate claim of false endorsement, distinct

from trademark infringement under § 43(a) . . . .”); see also Landham v. Lewis

Galoob Toys, Inc., 227 F.3d 619, 626 (6th Cir. 2000) (“A false designation of

origin claim . . . under § 43(a) of the Lanham Act . . . is equivalent to a false

association or endorsement claim . . . .”).37

       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



       37
               Indeed, false endorsement and trademark infringement are derived from the same
sentence of the Lanham Act. 15 U.S.C. § 1125(a)(1).

                                             24
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 history. Also there is

no evidence that Moore ever marketed an unlicensed item as “endorsed” or

“sponsored” by the University, or otherwise explicitly stated that such items were

affiliated with the University. Moore’s paintings, prints, and calendars very

clearly are embodiments of artistic expression, and are entitled to full First

Amendment protection. The extent of his use of the University’s trademarks is

their mere inclusion (their necessary inclusion) in the body of the image which

Moore creates to memorialize and enhance a particular play or event in the

University’s football history. Even if “some members of the public would draw

the incorrect inference that [the University] had some involvement with [Moore’s

paintings, prints, and calendars,] . . . that risk of misunderstanding, not engendered

by any overt [or in this case even implicit] claim . . . is so outweighed by the

interest in artistic expression as to preclude” any violation of the Lanham Act.

Rogers, 875 F.2d at 1001.

      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

                                          25
respect to calendars.38

                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.”39 Moore is appellant for these items, which we will

refer to as “mugs and 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



       38
                Accordingly, for Moore’s paintings, prints, and calendars, we need not decide (1)
whether the University acquiesced to Moore’s conduct, (2) whether any copyrights Moore owns
in the original paintings allow him to produce derivative prints or calendars without concern for
trademark law, (3) whether the University’s marks are functional, or (4) whether Moore’s actions
constitute fair use.
       39
              Dkt. 322 at 2.

                                               26
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 least when reproduced on

mugs. However, the symbol in question appears to be an “A” with an elephant

charging through it, which was a symbol explicitly included in the 1995

Agreement’s Appendix B.40 This provides no insight into how the parties viewed

Moore’s depiction of the University’s uniforms on mugs and other “mundane

products.”

      40
             See dkt. 262, exh. N at 2-3; id., exh. D at 6.

                                               27
      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

                                          28
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).41


       41
                Several reasons persuade us that Moore has waived any First Amendment/fair use
challenge to the district court’s holding with respect to the mugs and other “mundane products.”
First, we do not believe that Moore’s ambiguous and conclusory assertions in his brief’s
summary of the argument and in his conclusion fairly raise the issue on appeal. It is true that the
First Amendment and fair use are mentioned in Moore’s summary of the argument. It is also true
that the vague inference there that the district court’s rationale with respect to the paintings
should also apply to the other objects is asserted more clearly in a single sentence in the
conclusion of Moore’s initial brief. However, the brief mention of the First Amendment or fair
use in the summary of the argument seems to focus on the paintings themselves, and any separate
focus on the mugs and “mundane products” seems to anticipate only Moore’s argument under his

                                                29
brief’s first argument-heading about his right to incorporate his copyrighted images into
derivative works. More significantly, Moore does not, in the summary of the argument or
anywhere else in his initial brief, elaborate upon the bald and conclusory assertion that the district
court’s First Amendment rationale with respect to the paintings should apply with equal force to
the mugs and other “mundane products.” See Fed. R. App. P. 28(a)(9)(A) (requiring that an
appellant’s brief must contain, under an appropriate heading, the “appellant’s contentions and the
reasons for them, with citations to the authorities”); see also Jernigan, 341 F.3d at 1283 n.8 (to
the same effect). For example, Moore’s brief never explains how the Rogers balancing test
should operate with respect to the mugs, and never explains why the district court’s rulings with
respect to the paintings and prints should apply with equal force to the mugs and other “mundane
products.”

        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 (2003), which is made in the Amicus brief. See Br. of Amici Curiae Intellectual Property

                                                 30
       Acquiescence is the only remaining trademark argument that Moore has

preserved on appeal for these items. Acquiescence is a statutory defense under 15

U.S.C. § 1115(b)(9). “The defense of acquiescence requires proof of three

elements: (1) the plaintiff actively represented it would not assert a right or claim;

(2) the delay between the active representation and assertion of the right or claim

was not excusable; and (3) the delay caused the defendant undue prejudice.”

Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1207 (11th Cir.

2008) (citation and quotation omitted). “The difference between acquiescence and

laches is that laches denotes passive consent and acquiescence denotes active

consent.” Id. Thus, the relevant evidence for acquiescence would be active

behavior by the University during the time that Moore has been portraying the

University’s uniforms (i.e., since 1979).

       “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).


Law Professors at 7-9.

                                            31
      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.

                                 IV. CONCLUSION

      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

                                          32
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.42

       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 “mundane products.” We remand this case to the district court for further

proceedings, consistent with this opinion.

       AFFIRMED IN PART, REVERSED IN PART, AND REMANDED.


       42
                We disagree with the district court with respect to such calendars for several
reasons. First, the First Amendment interests in expressive art apply with equal (or near equal)
force to prints used in Moore’s calendars. Second, prints replicated on calendars would be of a
size more comparable to other prints, and would be more analogous to those than to the smaller
replications on mugs or post-card-sized mini-prints, where the artistic work is much less likely to
have been considered significant by the purchaser. Finally, as noted above, the course of conduct
of the parties with respect to the calendars establishes acquiescence.

                                                33
