University of Alabama Board of Trustees, The v. New Life Art Inc et al

Filing 357

MEMORANDUM OPINION. Signed by Judge Abdul K Kallon on 9/27/2013. (RSC)

FILED
2013 Sep-27 PM 05:24
U.S. DISTRICT COURT
N.D. OF ALABAMA

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
WESTERN DIVISION
THE UNIVERSITY OF ALABAMA )
BOARD OF TRUSTEES,
)
)
Plaintiff,
)
)
v.
)
)
NEW LIFE ART, INC., et al.,
)
)
Defendants.
)

Civil Action Number:
7:05-cv-0585-AKK

MEMORANDUM OPINION
This case is on remand from the Eleventh Circuit for the court to resolve the
remaining contractual issues “related to [Daniel] Moore’s depiction of the
University[] [of Alabama’s] uniforms on ‘mini-prints, mugs, cups, . . . flags,
towels, t-shirts, or any other mundane products,’” i.e., “mugs and other ‘mundane
products.’” See doc. 342-1 at 26 (Univ. of Alabama Bd. of Trustees v. New Life Art,
Inc., 683 F.3d 1266, 1279 (11th Cir. 2012)). The parties agree that the only
remaining issue in this case is whether Moore and New Life Art, Inc. (collectively
“New Life”) “re-issued prints, etc., without the University’s permission,” id. at 7
n.7, in violation of the parties’ agreements for New Life to issue “limited edition”
prints, docs. 344 at 1, 8–9; 349 at 10–11. As the Eleventh Circuit framed it, “the
district court upon remand will need to resolve the University’s claims that (1)
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[New Life] re-issued one product whose licensing agreement specifically
prohibited issuance without first receiving the University’s permission, and (2)
[New Life] has failed to pay royalties when [it] later re-issued certain works that
had explicitly been the subject of a licensing agreement.” Doc. 342-1 at 16 n.29
(citing docs. 260 at 28; 262-5 at 6 ¶ 9).
The University’s and New Life’s cross motions for summary judgment are
presently before the court. Docs. 344 and 350. The motions are fully briefed. Docs.
348–49, 351–52. In a nutshell, the University contends New Life breached
licensing agreements regarding five “limited edition” prints of paintings depicting
scenes of the University’s football team when New Life reissued the prints in
“mugs and other mundane products.” See doc. 344. Alternatively, the University
contends that, even if the court finds that New Life has not breached the
agreements, it is due to prevail based on New Life’s unjust enrichment from the
sale of the re-issued products. See doc. 344. New Life counters that it has not
breached any of the agreements because “limited edition” referred solely to sizes
and formats, that the agreements only precluded New Life from using the
University’s “indicia,” and that the “mugs and other mundane products” it issued
did not bear the University’s “indicia” and were sold in different sizes and formats
than the “limited edition” prints. See doc. 348. Moreover, New Life asserts that,

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even if the court finds that it breached the agreements, it is still due to prevail
because the University acquiesced in the sale of the re-issued products when the
University purchased and resold unlicensed calendars from New Life that included
the “limited edition” prints at issue. See doc. 350.
Based on the court’s review of the law and the facts in this case, the court
finds that New Life breached one of the five licensing agreements—specifically
the agreement covering “The Interception” print—but the University acquiesced in
New Life’s breach by purchasing and selling “mugs and other mundane products”
containing this print, and is therefore precluded from recovering damages based on
the theory of breach of contract. The court further determines that the University is
not entitled to damages based on the theory of unjust enrichment. Accordingly,
New Life’s motion for summary judgment is due to be granted, and the
University’s motion is due to be denied.
I. SUMMARY JUDGMENT STANDARD OF REVIEW
Under Rule 56(a) of the Federal Rules of Civil Procedure, summary
judgment is proper “if the movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” “Rule 56[]
mandates the entry of summary judgment, after adequate time for discovery and
upon motion, against a party who fails to make a showing sufficient to establish the

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existence of an element essential to that party’s case, and on which that party will
bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986). The moving party bears the initial burden of proving the absence of a
genuine issue of material fact. Id. at 323. The burden then shifts to the nonmoving
party, who is required to “go beyond the pleadings” to establish that there is a
“genuine issue for trial.” Id. at 324 (citation and internal quotation marks omitted).
A dispute about a material fact is genuine “if the evidence is such that a reasonable
jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). The court must construe the evidence and all
reasonable inferences arising from it in the light most favorable to the non-moving
party. Id. However, “mere conclusions and unsupported factual allegations are
legally insufficient to defeat a summary judgment motion.” Ellis v. England, 432
F.3d 1321, 1326 (11th Cir. 2005) (per curiam) (citing Bald Mountain Park, Ltd. v.
Oliver, 863 F.2d 1560,1563 (11th Cir. 1989)).
II. FACTUAL BACKGROUND & PROCEDURAL HISTORY
Since 1979, Moore has painted historic University of Alabama football
scenes depicting the University’s football players and coaches and has reproduced
his paintings as prints, calendars, mugs, and other articles. See doc. 3 at 14; doc.
262 ¶ 28. Perhaps naturally, the University and Moore, an alumnus of the

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University, developed a relationship. Eventually, from 1991 to 1999, the
University and New Life executed agreements to produce and market five “limited
edition” fine art prints. The agreements include: (1) “Crimson Legacy”—signed in
October 1991, doc. 262-2, (2) “The Tradition Continues”—signed in January 1993,
doc. 262-3, (3) “The Interception”—signed in April 1994, doc. 262-5, (4) “The
Winning Connection”—signed in December 1994, doc. 262-7, (5) the General
Licensing Agreement—signed in June 1995, doc. 262-8, and (6) “The Grand
Finale,” through an addendum to the General Licensing Agreement—signed in
November 1997, doc. 262-11.1 See doc. 262 at 6 ¶ 28. Additionally, through
addenda, the parties renewed the 1995 General Licensing Agreement annually
through 2000. See id. In each agreement, New Life agreed to pay the University
royalties based on a percentage of the revenue generated during the term of the
agreement. Doc. 262-3 at 4. Each agreement stated that the University’s rights
survived the term of the agreement. See docs. 262-2 at 9–10 ¶ 18(a); 262-3 at 8 ¶
17(a); 262-5 at 7 ¶ 9; 262-7 at 8 ¶ 17(a); 262-8 at 10 ¶ 22(a).

1

Except for “The Interception,” the agreements are actually between New Life and Centennial
Marketing/Collegiate Licensing Company/International Collegiate Enterprises, Inc., which are
entities that “represent[ed] the licensing interests of the University,” and who had “the exclusive
right, as agent, to license . . . for commercial purposes the use of certain University Indicia.”
Doc. 262-2 at 2; see also 262-3 at 2; 262-5; 262-7 at 2; 262-8 at 2; 262-11 at 2.
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Relations between the parties soured when the University asserted that New
Life needed to obtain licensing agreements to depict the University’s trademarks
and licensed indicia on New Life’s other University-related products, i.e., prints,
calendars, and “mugs and other mundane products.” See docs. 3 at 16–17; 258-2 at
7; 351-2 at 15, 34. According to the University, New Life needed permission to
portray the University’s uniforms (the jersey, helmet designs, and the crimson and
white colors) on these products because the uniforms were protected “trade dress”
rising to the level of trademarks. See doc. 351-3 at 45–48. New Life maintained
that the depiction of the University’s uniforms within the “image area” of New
Life’s paintings enjoyed First Amendment protection since the paintings consisted
of historical events. Docs. 351-2 at 15; 351-3 at 46–47.
Despite the disagreement, the University continued to sell New Life’s
unlicensed calendars that contained the disputed prints in its campus stores. From
2001 to 2004, the University sold over $12,000 worth of unlicensed calendars.
Doc. 294-20 at 2–10. In fact, on at least one occasion, the University framed the
images from an unlicensed calendar and sold the framed prints. Doc. 116-9 at 25.
The University also displayed and sold unlicensed paintings at the University-run
Paul W. Bryant Museum. Doc. 116-11 at 9–12.

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The University eventually sued Moore and New Life in 2005 for breach of
contract, trademark infringement, unfair competition, and unjust enrichment. Doc.
1. New Life counterclaimed, arguing, in part, that Moore’s artwork is protected by
the First Amendment, and sought declaratory relief for Moore’s rights under the
Lanham Act. See doc. 3. On cross motions for summary judgment, in an opinion
written by Judge Robert Propst, this court held that Moore’s First Amendment
rights prevailed over the University’s trademark claims with regard to the fine art
paintings and prints, and that New Life had not “infringe[d] on any trademark or
trade dress mark of [the University] by creating, manufacturing, producing, selling,
distributing or otherwise dealing in paintings and/or prints which are of the same or
larger size and equal or greater quality than the limited edition paintings and prints
that [New Life had] heretofore created and produced.” Doc. 311 at 28–29. Also,
noting that the agreements did not include uniforms in the definition of “licensed
indicia,” Judge Propst found that the parties did not intend for “licensed indicia” to
include colors on uniforms. Id. at 3–4. Consequently, Judge Propst granted New
Life partial summary judgment on the paintings and prints, specifically holding
that Moore’s depiction of the University’s uniforms in his paintings and prints did
not infringe on the University’s protectable trade dress mark. However, Judge
Propst found for the University with respect to Moore’s use of the University’s

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uniforms on calendars and “mugs and other mundane products.” See docs. 311,
322.
Both parties appealed. See doc. 342-1. The main issue on appeal centered on
whether the First Amendment protected Moore’s depiction of the University’s
football uniforms in paintings, prints, calendars, and “mugs and other mundane
products,” or if the University had a protected trademark in its uniforms. Id. The
Eleventh Circuit declined to address the “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.” Id. at 7 n.7. However, with respect to the Lanham Act
claims, the court affirmed the district court regarding the paintings and prints, but
reversed with respect to calendars. The Eleventh Circuit held that depictions of the
University’s uniforms in Moore’s paintings, prints, and calendars did not violate
the Lanham Act because New Life 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. Id. at 25–26. With respect to the portrayal of the University’s
uniforms on “mugs and other mundane products,” the court found that the
licensing agreements were ambiguous as to whether New Life needed permission

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to portray the University’s uniforms on these items and, consequently, reversed the
summary judgment in favor of the University. Id. at 26–28.
On remand, the Eleventh Circuit instructed this court to resolve the
University’s claims that New Life re-issued products in violation of the licensing
agreements, id. at 16 n.29 (citing docs. 260 at 28; 262-5 at 6 ¶ 9), and to conduct
further proceedings, if necessary, on New Life’s acquiescence defense. On this
issue, the court stated that “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, unless the University can show that ‘inevitable
confusion’ arises from the continued dual use of the marks.” Doc. 342-1 at 32
(internal citation omitted).
III. ANALYSIS
The parties have filed cross motions for summary judgment on the
remaining issues, i.e., whether New Life purportedly breached the licensing
agreements by re-issuing the “limited edition” prints in different sizes and placing
the images on calendars and “mugs and other mundane products.” According to the
University, the contractual language “clearly prohibit[s] New Life from ‘sell[ing]
or otherwise deal[ing] in any Prints or other products’” without the University’s
permission. Doc. 349 at 4 (emphasis removed). New Life counters that the

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licensing agreements2 granted it the right to sell products using Moore’s
copyrighted prints that do not bear the University’s “licensed indicia” and that
“limited edition” referred solely to prints bearing the University’s “indicia” and the
number of prints New Life could sell measuring a certain size and format. Docs.
350 at 7; 348 at 8–10; 352 at 4–7. In a nutshell, the court must decide whether the
terms of the agreements dictate licensing of the prints or licensing of the “indicia,”
whether the “limited edition” prints include prints without the “indicia,” and the
role New Life’s copyrights play in relation to the licensing agreements. The court’s
analysis of the parties’ respective contentions begins in section A with the
University’s claim that New Life breached the agreements and New Life’s
assertion that the University acquiesced to New Life’s depictions of the images on
the prints and “mugs and other mundane products.” Finally, in section B, the court
addresses the University’s alternate contention that it is due to prevail on an unjust
enrichment theory.

2

Out of the five licensing agreements and one addendum at issue, the parties acknowledge that
only “The Interception” agreement is significantly different in the language used. In fact, “The
Interception” agreement is apparently not a true licensing agreement at all. See doc. 262-5.
Because of the vast differences between this agreement and the other four, the court will take up
the parties’ contentions regarding “The Interception” separately in Section A(2). In other words,
references to the “contracts” or the “agreements” in Section A(1) do not include “The
Interception” agreement.
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A.

Breach of Contract
Under Alabama law,3 “[w]hen interpreting a contract, a court should give the

terms of the agreement their clear and plain meaning and should presume that the
parties intended what the terms of the agreement clearly state.” Public Bldg. Auth.
of City of Huntsville v. St. Paul Fire and Marine Ins. Co., 80 So. 3d 171, 180 (Ala.
2010) (internal citations omitted). “If the terms within a contract are plain and
unambiguous, the construction of the contract and its legal effect become questions
of law for the court and, when appropriate, may be decided by a summary
judgment.” McDonald v. U.S. Die Casting & Dev. Co., 585 So. 2d 853, 855 (Ala.
1991) (citing Dill v. Blakeney, 568 So. 2d 774 (Ala. 1990)). However, a court may
not twist the plain meaning of the terms to create an ambiguity under the guise of
interpretation. Southland Quality Homes, Inc. v. Williams, 781 So. 2d 949, 953
(Ala. 2000) (citing Universal Underwriters Life Ins. Co. v. Dutton, 736 So. 2d 564,
570 (Ala. 1999)). Moreover, the determination of whether an instrument is

3

With respect to choice of law, three of the agreements are governed by Georgia law, and two by
Alabama law. See docs. 262-2 at 11; 262-3 at 10; 262-5 at 9; 262-7 at 10; 262-8 at 11. However,
since the relevant rules for contract interpretation are generally the same under Alabama and
Georgia law, see Bd. of Com’rs of Crisp County v. City Com’rs of City of Cordele, 727 S.E. 2d
524, 526–28 (Ga. Ct. App. 2012) (citing Holcim (US), Inc. v. AMDG, Inc., 596 S.E. 2d 197 (Ga.
Ct. App. 2004); ALEA London Ltd. v. Woodcock, 649 S.E. 2d 740 (Ga. Ct. App. 2007); Verret v.
ABB Power T & D Co., 515 S.E. 2d 435 (Ga. Ct. App. 1999); Payne v. Middlesex Ins. Co., 578
S.E. 2d 470 (Ga. Ct. App. 2003)) (detailing the rules for contract construction under Georgia
law), and since the parties acknowledge implicitly that a resolution of their dispute does not
hinge on which state’s law the court applies, the court’s analysis will focus only on Alabama
law.
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ambiguous is a question of law, Austin v. Cox, 523 So. 2d 376, 379 (Ala. 1988),
and one which the court should analyze by “apply[ing] the common interpretation
of the language alleged to be ambiguous.” Miller v. Allstate Ins. Cos., 896 So. 2d
499, 503 (Ala. Civ. App. 2004) (quotation marks and citations omitted); see also
Caribbean I Owners’ Ass’n, Inc. v. Great Am. Ins. Co. of N.Y., 600 F. Supp. 2d
1228, 1245 (S.D. Ala. 2009) (internal quotation marks omitted) (“ambiguities
cannot be constructed from thin air by strained or twisted reasoning in interpreting
the language”). In doing so, “the court must examine more than an isolated
sentence or term; [rather,] it must read each phrase in the context of all other
provisions.” Royal Ins. Co. of Am. v. Thomas, 879 So. 2d 1144, 1154 (Ala. 2003)
(citations and internal quotations marks omitted). Significantly, “[e]ven if some
ambiguity does exist in a contract, a court has the duty to accept a construction that
will uphold the contract, rather than one that will make it invalid.” McDonald, 585
So. 2d at 855 (citing Wilson v. World Omni Leasing, Inc., 540 So. 2d 713, 716
(Ala. 1989)).
1.

The Crimson Legacy, The Tradition Continues, The Winning
Connection, and The Grand Finale Prints

Consistent with the general principles of contract interpretation, the court
begins its analysis with the terms of the licensing agreements. The parties agree
generally that the agreements granted New Life the right to produce “limited
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edition,” fine art prints utilizing the University’s “indicia.” The disagreement
centers on New Life’s rights to the prints, if any, after the agreements expired. The
University maintains that the agreements prohibited New Life from utilizing the
prints with other formats and New Life maintains the prohibition applied solely to
the University’s “indicia.” Relevant to this dispute, the agreements state that
“[a]fter expiration or termination of this Agreement for any reason, [New Life]
shall refrain from further use of the Indicia or any further reference to them,” and
“shall have no further right to manufacture, advertise, distribute, sell, or otherwise
deal in any Prints or other products which utilize the Indicia . . . .” See docs.
262-2 at 9 ¶ 16(b); 262-3 ¶ 15(b); 262-5 ¶ 11; 262-7 ¶ 15(b); 262-8 ¶ 20(b)
(emphasis added). In other words, contrary to the University’s contention, the
agreements did not prohibit New Life from re-issuing the “limited edition” prints.
Rather, based on the plain language of the agreements, the parties agreed only that
New Life would not use the University’s “indicia” after the agreements expired.
Therefore, the resolution of this matter turns, in part, on the meaning of “indicia.”
Only two of the agreements, “Crimson Legacy” and the 1995 General
Licensing Agreement, define “indicia.” “Crimson Legacy” defines it as:
the names, symbols, designs, and colors of the University, including
without limitation, the trademarks, service marks, designs, logographics,
slogans and other symbols or terms that have been developed, adopted
and/or used by the University in connection with its centennial
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celebration programs. Indicia are set forth in Appendix B attached
hereto. Indicia also includes or incorporates various other standard
University indicia if such indicia are approved for use herein.
Doc. 262-2 at 2 ¶ 1(b). Similarly, the 1995 General Licensing Agreement, cited in
Eleventh Circuit opinion, states:
“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.
Doc. 262-8 at 2 ¶ 1(b). The appendices, in turn, state that the:
University is the owner of all rights, title, and interest in and to the
following Indicia, which includes trademarks, service marks, trade
names, designs, logos, seals and symbols
VERBIAGE
University of Alabama ®
Roll Tide ®
Crimson Tide ®
U of A ®
Bama ®
Alabama ®
Docs. 262-2 at 13; 262-3 at 11. Also, the graphics displayed in the appendices
include four main images: (1) a big “A” with an elephant coming through the
middle of the “A,” (2) the University’s seal, (3) an elephant standing up wearing a

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sweater with an “A” on it, and (4) a big “A” with the University’s seal in the
middle of it. Docs. 262-2 at 13; 262-3 at 11.
Based on this contractual language, New Life contends that “indicia” refers
only to the University’s symbols, verbiage, and seals used in packaging or on the
border of the image, rather than the actual prints. Docs. 350 at 6; see e.g., docs.
262-2 at 6; 262-3 at 5; 262-7 ¶ 7(b). Consequently, based on its copyrights, New
Life asserts that it has the right to publish derivative or ancillary works (with the
exception of “The Interception”) that do not use the University’s “indicia.” Doc.
348 at 15. The language of the agreements supports New Life’s contention. For
example, the agreements state that New Life “acknowledges that any rights,
including copyright or other proprietary rights that it might have in artwork or
designs created by it pursuant to this Agreement, extend only to those elements of
the artwork or designs which are not part of or included in the Indicia or any
derivatives.” Doc. 262-7 at 5 ¶ 7(b) (emphasis added). In light of this and other
similar language, the court finds that the unambiguous terms of the agreements
show clearly that New Life simply licensed the use of the University’s
“indicia”—the trademarked symbols, “official product” language, and special
medallions and packaging, see docs. 262-2 at 13; 262-3 at 11,and that the
agreements did not prohibit New Life from using its artwork in other products. As

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the Eleventh Circuit noted, the contractual “language implie[d] that the parties
intended ‘licensed indicia’ to refer to the packaging or labels placed upon products,
rather than uniforms depicted within the content of a painting, print, or calendar”
since the agreements refer to products “bearing” the indicia. See doc. 342-1 at
12–13. The Circuit reached this finding, in part, by pointing out that the
agreements required that New Life label the “indicia” as either a registered
trademark or a non-registered mark, see doc. 262-8 at 6, that there is no evidence
that such labels were included in the content of the image area, and that “[u]nder
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,” doc.
342-1 at 13. Therefore, since the language in the agreements only prohibits New
Life from producing “any Prints or other products which utilize the Indicia,” see
docs. 262-2 at 9 ¶ 16(b), and because there is no evidence New Life re-issued
products that “utilized” the University’s indicia, the court finds that New Life and
Moore have not breached the licensing agreements related to “Crimson Legacy,”
“The Tradition Continues,” “The Winning Connection,” and “The Grand Finale”
when they used these prints to produce derivative products and that their motion
for summary judgment is due to be granted.4
4

The holding is the same even if the terms of the agreements are even remotely ambiguous
because, “under the rule of contra proferentem, any ambiguity must be construed against the
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2.

“The Interception” Agreement

The parties agree that “The Interception” agreement is not a licensing
agreement and does not address New Life’s right to use the University’s “indicia.”
In fact, the terms “indicia,” “licensee,” and “licensing” are not used in this
agreement. See doc. 262-5. Moreover, New Life concedes that “The Interception”
agreement, which covered a print depicting a student-athlete with remaining
eligibility, is more restrictive than the other agreements. Doc. 348 at 13.
Specifically, because of the remaining eligibility, National Collegiate Athletic
Association rules required that the University publish and distribute the prints.
Doc. 351 at 8. Consequently, the agreement specifically provided that the “limited
edition prints will be produced and sold exclusively by the University” and “[a]ll
material prepared for public distribution must indicate that the University is the
publisher and seller of the limited edition prints.”5 Doc. 262-5 at 2 ¶ 1 and 3 ¶ 2
drafter of the contract.” Extermitech, Inc. v. Glasscock, Inc., 951 So. 2d 689, 694 (Ala. 2006)
(citation omitted); but see FabArc Steel Supply, Inc. v. Composite Const. Systems, Inc., 914 So.
2d 344, 357 (Ala. 2005) (contra proferentem “is generally a rule of last resort that should be
applied only when other rules of construction have been exhausted”) (citations omitted).
5

Based on this restrictive language, and the clause stating that, except as provided in the
agreement, New Life “shall not create, reproduce, print or publish any prints or posters, limited
edition or otherwise, or any ancillary products or items from the original art work without the
prior written consent of the University,” doc. 262-5 at 6 ¶ 9 (emphasis added), New Life
contends that “The Interception” agreement supports its assertion that it did not breach the other
agreements. Basically, New Life contends that the parties could have negotiated similar
language restricting New Life in the other agreements if they so intended and that the absence of
similar language in the other agreements indicates that the parties did not intend for those
agreements to prohibit New Life from producing the other prints in non-“limited edition”
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(emphasis added). In light of this language, New Life clearly breached “The
Interception” agreement when it produced and sold derivative products of the
prints covered by that agreement. See docs. 348 at 13–14; 352 at 5–6.
3.

Equitable Defense: Acquiescence

Although it admits breaching “The Interception” agreement, New Life
contends that the University’s acquiescence precludes the University from
recovering damages. See doc. 350. Acquiescence, a form of estoppel, is an
equitable remedy used to promote equity and justice by preventing a party from
asserting rights under a technical rule of law when its own conduct renders the
assertion of such rights contrary to equity and good conscience. First National
Bank of Opp v. Boles, 165 So. 586, 592 (Ala. 1936); see also Mazer v. Jackson Ins.
Agency, 340 So. 2d 770, 772 (Ala. 1976) (citation omitted) (Estoppel is
“interposed to prevent injustice and to guard against fraud by denying to a person
[or entity] the right to repudiate his acts, admissions, or representations, when they
have been relied on by persons to whom they were directed and whose conduct
they were intended to and did influence.”). Relevant to this case, “[a] contract will

formats. Doc. 352 at 5–6. New Life further asserts that the difference is critical since “The
Interception” was the third of five agreements and the only one in which the University
explicitly includes the limiting language. Id. The court does not have to reach this argument in
light of its finding that the agreements only prohibited New Life from producing “any Prints or
other products which utilize the [University’s] Indicia . . . .” See Doc. 262-2 at 9 ¶ 16(b).
Page 18 of 26

be treated as abandoned or rescinded where the acts and conduct of one party
inconsistent with its existence are acquiesced in by the other party.” Humphreys v.
Laile, 398 So. 2d 703, 705 (Ala. Civ. App. 1981); see also Matthews v. S.A. Martin
& Motors, 394 So. 2d 943, 944 (Ala. 1981). The acquiescing party does not have
to do so by an “explicit statement” because the court can infer abandonment from
all the circumstances surrounding the conduct of the parties. Matthews, 394 So. 2d
at 944. However, the court can only find abandonment or rescission “when such
acts and conduct of the one and the acquiescence of the other are found by the trier
of facts to be positive and unequivocal.” San–Ann Service, Inc. v. Bedingfield, 305
So. 2d 374, 377 (Ala. 1974).
To support its acquiescence defense, New Life contends that the University
knew that New Life included “The Interception” print in its 2004 calendar and that
the University purchased, sold, and profited from the resale of that calendar. Doc.
348 at 11–13. Allegedly, the University sold approximately 360 of the unlicensed
calendars with “suitable for framing art prints” that included “The Interception,”
and purportedly cut out, framed, and sold some of the images, at times with
commemorative coins on them. See docs. 294-20 at 3; 352-2; 81-15 at 2–3; 81-12
at 7, 15–18. New Life asserts that these acts establish the University’s consent to
the sale of these unlicensed items. Docs. 350 at 7–9.

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The University raises two points in response. First, the University asserts
that New Life waived its acquiescence defense by failing to specifically plead it in
its answer. See doc. 351 at 15. This contention is unavailing since New Life
asserted the equitable defense of laches, which is similar to acquiescence, in its
answer and specifically raised the acquiescence defense in an earlier summary
judgment motion. See docs. 3 at 12; 77 at 2; 79-1 at 19–26; see also doc. 117 at
18–27 (The University’s substantive response to New Life’s acquiescence
defense). Additionally, New Life included acquiescence as a defense in the Pretrial
Order approved by the parties for the jury trial set in 2008. Doc. 163. Moreover,
the failure to plead acquiescence specifically in the answer is not dispositive.
While “[a]dmittedly, the general rule is that, when a party fails to raise an
affirmative defense in the pleadings, that party waives its right to raise the issue at
trial[,] . . . the liberal pleading rules established by the Federal Rules of Civil
Procedure apply to the pleading of affirmative defenses.” Hassan v. U.S. Postal
Serv., 842 F.2d 260, 263–64 (11th Cir. 1988) (citing American National Bank v.
Federal Deposit Insurance Corp., 710 F.2d 1528, 1537 (11th Cir. 1983)). “The
court must avoid hypertechnicality in pleading requirements and focus, instead, on
enforcing the actual purpose of the rule.” Id. In that regard, “[t]he purpose of Rule
8(c) is simply to guarantee that the opposing party has notice of any additional

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issue that may be raised at trial so that he or she is prepared to properly litigate it.”
Id. (citing Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation,
402 U.S. 313, 350 (1971)). Therefore, when, as here, “a plaintiff has notice that an
affirmative defense will be raised at trial, the defendant’s failure to comply with
Rule 8(c) does not cause the plaintiff any prejudice. And, when the failure to raise
an affirmative defense does not prejudice the plaintiff, it is not error for the trial
court to hear evidence on the issue.” Id. (citing Bull’s Corner Restaurant v.
Director of the Federal Emergency Management Agency, 759 F.2d 500, 502 (5th
Cir. 1985)); see also Jones v. Miles, 656 F.2d 103, 107 n.7 (5th Cir. 1981)
(“Failure to affirmatively plead the defense is simply noncompliance with a
technicality and does not constitute a waiver where there is no claim of surprise.”).
Based on the facts here, even ignoring the laches defense New Life raised in its
answer, there is no prejudice or unfair surprise to the University in allowing New
Life to raise acquiescence since the University received notice of the defense as
early as 2006. See docs. 77, 79.
Alternatively, the University contends that New Life cannot establish
acquiescence since it informed New Life in 2002 that it objected to New Life’s
unauthorized use of its marks. This contention fails also because the record shows
that the University purchased calendars containing “The Interception” print after

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the meeting in 2002 in which the University noted its objection. See doc. 352-2 at
1. To establish equitable estoppel, New Life must show: (1) the actor, who usually
must have knowledge of the facts, communicates something in a misleading way,
either by words or conduct, or silence, (2) another relies upon that communication,
and (3) the other party would be harmed materially if the actor is later permitted to
assert any claim inconsistent with his earlier conduct. In re Joe Morgan, Inc., 985
F.2d 1554, 1562 (11th Cir. 1993) (citing Ex parte Baker, 432 So. 2d 1281, 1285
(Ala. 1983)); see also Ford v. Jackson Square, Ltd., 548 So. 2d 1007 (Ala. 1989).
New Life has established these elements by showing (1) that the University
purchased and sold New Life’s unlicensed 2004 Calendar that included a “suitable
for framing art print” of “The Interception,” (2) that New Life relied upon the
University’s acquiescence when it continued to sell the University its unlicensed
calendars, and (3) that the University knew New Life would be harmed if the
University subsequently asserted a position that was inconsistent with its actions
allowing New Life to sell its unlicensed calendars. See In re Joe Morgan, Inc., 985
F.2d at 1562. Moreover, unlike the other agreements, the University failed to
include a “no waiver of rights” clause in “The Interception” agreement.6 The

6

The other agreements contain “NO WAIVER, ASSIGNMENT, ETC.” sections, which
specifically state that “failure of either party to require performance of any term in this
agreement or the waiver by either party of any breach thereof shall not prevent subsequent
enforcement of such term nor be deemed a waiver of any subsequent breach.” Docs. 262-2 at ¶
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failure to include this language communicates something in a misleading way and
suggested to New Life that the University regarded this print differently from the
others. Put differently, the University’s decision, first, to not include the “no
waiver” clause, and, second, to sell the unlicensed calendars, establishes
acquiescence. Accordingly, the court holds that New Life has established that the
University acquiesced to its breach of “The Interception” agreement and that
justice and equity require a finding that the University is estopped from asserting
its claim of breach of contract with regard to that agreement.
B.

Unjust enrichment claim
Finally, the University contends that, even absent a contractual breach, it is

entitled to relief because New Life enriched itself unjustly by taking advantage of
the University’s marketing efforts in order to mislead the University’s fans and
alumni into believing that the University would receive royalties from purchases of
the unlicensed prints and “mugs and other mundane products.” Docs. 344 at 8–9;
349 at 10–11. The University asserts that its promotion of the original licensed
products resulted in a nine fold increase of New Life’s sales and that by
purportedly failing to distinguish the “limited edition, officially licensed” prints
from the other materials it sells, “New Life [is] committing a fraud on the

22; 262-3 at ¶ 21; 262-7 at ¶ 21; 262-8 at ¶ 27.
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consuming public through it [sic] sale of these Reissued Products.” Doc. 349 at
10–12.
“The doctrine of unjust enrichment is an old equitable remedy permitting the
court in equity and good conscience to disallow one to be unjustly enriched at the
expense of another.” Mantiply v. Mantiply, 951 So. 2d 638, 654 (Ala. 2006)
(quoting Avis Rent A Car Sys., Inc. v. Heilman, 876 So. 2d 1111, 1123 (Ala.
2003)). “In order for a plaintiff to prevail on a claim of unjust enrichment, the
plaintiff must show that the defendant holds money which, in equity and good
conscience, belongs to the plaintiff or holds money which was improperly paid to
defendant because of mistake or fraud.” Id. (internal quotation marks and citations
omitted). “In order to prove fraud, the plaintiff must establish that there was a
misrepresentation of a material fact, that it was made willfully to deceive or
recklessly without knowledge, that it was justifiably relied upon, and that it thereby
proximately caused damage to the plaintiff.” McLemore v. Ford Motor Co., 628
So. 2d 548, 550 (Ala. 1993). The University failed to make this showing.
The University’s sole basis of fraud or misrepresentation is its contention
that New Life created confusion in the marketplace by failing to differentiate
between the licensed and the unlicensed products. Doc. 348-9 at 21. However, this

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contention is insufficient to establish the fraud necessary for an unjust enrichment
claim. As the University concedes, it has no evidence of fraud:
Q: But do you know of any occasions when he [Moore] lied, said
something that was absolutely false or New Life lied, said something that
was absolutely false that some work that showed Alabama in the image
area was licensed when it really wasn’t?
A: No.
Q: Or that it lied saying it was sponsored or gained its origin from the
University of Alabama when it wasn’t?
A: No.
Doc. 348-9 at 22 (deposition of University Corporate Representative, Finus
Gaston, Vol. III). Significantly, it is undisputed that the University benefitted
financially from the sale of the “limited edition” prints through unlicensed
calendars and framed prints at the University’s campus stores, see doc. 294-20, and
non-financially since it admits that Moore’s artwork has “done positive things for
the university,” see doc. 348-3 at 45–46. Finally, the unjust enrichment claim fails
also because of the University’s unclean hands through its acquiescence in
purchasing and selling the unlicensed calendars with the prints at issue. See
Matthews v. Matthews, 288 So. 2d 110, 119 (1973) (“The familiar maxim, ‘He who
comes into equity must come with clean hands’, which, expressed in different
form, ‘He that committeth iniquity shall not have equity,’ is recognized as a

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fundamental principle of equity jurisprudence which governs the discretionary
powers of courts of equity in the exercise of their remedial functions and furnishes
a universal rule affecting their entire administrations as to remedies and remedial
rights.”). For all these reasons, the University is not entitled to damages based on
the theory of unjust enrichment.
IV. CONCLUSION
Consistent with this opinion, the court will issue a separate order denying the
University’s motion for summary judgment and granting New Life’s motion.
DONE this 27th day of September, 2013.
________________________________
ABDUL K. KALLON
UNITED STATES DISTRICT JUDGE

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