5Pointz: a stronger legal protection for street art … or not?

The 1709 Blog is delighted to host the following contribution by Angela Saltarelli (Chiomenti) on the recent decision of the US District Court for the Eastern District of New York in the in the 5Pointz case.

Here’s what Angela writes:

“The US District Court for the Eastern District of New York has recently ordered a real estate developer to pay millions of dollars in damages to a group of artists to compensate them for destroying their 45 famous aerosol artworks which were at the 5Pointz building in Queens, New York City.

5Pointz was a former factory owned by Jerry Wolkoff, who bought the 19^th century Neptune Meter factory in Long Island City in Queens in the early 1970s. He started leasing the space as artists’ studios in the 1990’s. As a result, street and graffiti artists started using his building to create their works. In 2002, Wolkoff appointed famous street artist Jonathan Cohen as 5Pointz’s de facto curator. 5Pointz thus became soon a tourist attraction drawing thousands of daily visitors, including busloads of tourists. Movie, television and music video producers used 5Points as a location.   

Starting in 2011, there were rumours that Wolkoff wanted to destroy 5Pointz and turn this space into luxury condos. Subsequently, Cohen filed an application before the City Landmark Preservation Commission to preserve the site as one of cultural significance, but the application was denied because the artistic work was of too recent creation. 

After the City of New York declined to declare the building a landmark, 21 artists (including Mr Cohen) decided to sue Wolkoff and four of his real estate entities asking for a preliminary injunction to prevent the planned demolition. As soon as the Court denied the plaintiff’s application for preliminary injunction, Wolkoff whitewashed the entire complex overnight without waiting the final Court’s decision.

After the demolition, the plaintiffs’ requests for damages went on claiming that the defendants had acted contrary to the Visual Artists Rights Act (VARA), which introduced a new provision into the US Copyright Act added in 1990 to comply with the Berne Convention granting some moral rights, namely the right of attribution and the right of integrity.

As to the right of integrity, the author can prevent the destruction of the work of visual art when can be prejudicial to artist’s honor or reputation or when the work is of recognized stature, namely when the visual artwork is viewed as meritorious and this stature is recognized by art experts or other members of the artistic community. The Court found that 28 of 49 destroyed works at 5Pointz achieved recognized stature, and eight more were modified to the prejudice of the artists’ honour or reputation. 

One of the exception raised by the defendants in this case was that street art works are ephemeral per se and that VARA should not afford protection to temporary works. Before this case the application of VARA to the works of exterior aeorosol artists had not been discussed in courts.

The court rejected this legal approach saying that VARA resolves the tension between building owners’ rights and the artist’ rights, including also temporary works. Indeed, Section 113 of VARA provides for two hypotheses when a protected work of art has been integrated into a building: (i) when the artwork cannot be removed from the building (in this case the artist may sue to prevent the destruction of the work unless he waived this right) and (ii) when the artwork can be removed, so contemplating that the work can be temporary.

In the latter case, VARA gives the opportunity to the artist to save the work upon receipt of a 90 days’ written notice from the building owner. If the artist fails to remove within the 90 days or if the owner could not notify the artist after making good effort, the artist’s VARA rights are deemed waived and the owner may destroy them without consequences. 

The Court finally held that the artists’ works were legally protected under VARA and that each artworks could have been removed from 5Pointz walls. Then the Court stated that the defendants broke the law in willfully destroying 5Pointz before having the Court’s permit and failing to give the 90 days’ notice to the artists to remove their works provided by VARA.

The Court awarded the owner to pay the maximum statutory damages under VARA for each works for the whole sum of USD 6,750,000.

The decision was greeted with enthusiasm by the artistic community as a further validation of street art. For the future, more real estate owners will probably give artists the time to remove their works.

On the other side, this decision could also hinder street art as many real estate owners could be reluctant in the future to authorize artists to use their walls as Wolkoff did in 5Pointz.”

“Spray” the Word: Graffiti Law is a New Legal Niche

I have been wondering for a while when an attorney will declare that he or she practices “Graffiti Law.” There have been so many graffiti-related cases in the past two years (here, here, here, here and here) that ‘graffiti law’ could very well become a legal niche.

I have not found any ‘graffiti attorney’ yet, but the topic seems to be of interest to scholars. In France, the University of Paris 13 organized a organized a colloquium on law and street art, Droit(s) et Street Art, which took place on October 14 in Paris, at the Bibliothèque Nationale de France (BNF). One of the questions asked to the participants was whether graffiti, was “an act of destruction, or an act of creation?"

In the U.S., the City of New York University School of Law has invited Dr. Enrico Bonadio, an intellectual property scholar from the City Law School in London, to be a visiting scholar for the Fall 2016 semester. Dr. Bonadio’s current research focuses on graffiti, street art and copyright law.

Dr. Bonadio’s plan, according to CUNY’s web site, is “is to interview artists from all five boroughs, as he builds an argument for copyright protections for street artists, particularly against corporations that use the street artists’ work, without compensation.”

Dr. Bonadio will soon present his work in progress to the CUNY law community. We hope that his communication will be published, so we can all learn from Dr. Bonadio’s research.

Photo is courtesy of Flickr User Central Intelligence Agency

A Big Tag with Fries and a Can of Spray Paint for You?

There is yet another copyright infringement case about the use by a corporation of the work of a graffiti artist (see here, here, here and here). This time, it is purveyor of Big Macs and other calorific delicacies McDonald’s which has been accused of copyright infringement for using a graffiti without authorization when creating the décor of its new graffiti-themed restaurants in the U.K. and Asia. 

The protected work had been created by the late Dash Snow, and it is the administrator of his estate who filed the suit in the Central District of California, on behalf of her and Snow’s minor child. Mc Donald’s introduced these graffiti restaurants this year in the U.K., but they did not receive a unanimous warm reception (see here and here). Plaintiff saw the allegedly infringing reproduction in a London McDonald’s and notes that “Hundreds of McDonalds around the world use near-identical interior design.” Plaintiffs had asked McDonald’s to remove the art when they discovered the use in June 2016, but the fast food chain refused, which led to the filing of this suit. The case is Jade Berreau v McDonald’s Corporation, 2:16-cv-07394 (Central District of California).

Snow signed his artwork using the stylized signature of his pseudonym “SACE.” The complaint alleges that an image of a wall in a McDonald’s restaurant in London “includes a brazen copy of Mr. Snow’s work” (see Complaint p. 2). Plaintiff alleges that Snow’s work is prominently placed on the wall, and that it is “the only element created by a famous artist” whereas the “remaining graphic elements are comprised of generic anonymous shapes and scribbles.” The complaint also alleges that McDonald’s reproduced Snow’s work for in-store marketing material. 

Plaintiff claims that McDonald’s infringed Snow’s copyright in his work. The graffiti had been painted by Snow on a New York wall and so it had been fixed in a tangible medium of expression. Plaintiffs filed a copyright registration for the work on September 17.

The complaint further argues that Dash Snow had “carefully avoided any association with corporate culture and mass-market consumerism,” that he was “diligent in controlling distribution channels of his work” and that “nothing is more antithetical to Mr. Snow’s outsider “street cred” than association with corporate consumerism— of which McDonald’s and its marketing are the epitome.” Therefore “Mr. Snow’s reputation and legacy have been irreparably tarnished, diminishing the value of his work” and that such unauthorized is deceptive because it is “ strongly suggesting that Mr. Snow endorses, sponsors, or is affiliated with McDonald’s and its products, causing (and substantially likely to continue to cause) mistake and confusion.” U.S. law provides only limited moral rights, but, under European moral rights laws, such a statement would support a claim of violation of the artist’s moral rights, which are perpetual.

Plaintiff also claims that, by placing Mr. Snow’s signature on the walls of its restaurants, McDonald’s has intentionally falsified copyright management information in violation of 17 U.S.C. § 1202 which forbids anyone to knowingly and intentionally, in order to induce, enable, facilitate, or conceal infringement, to provide false copyright management information. A similar argument had been made by graffiti artists Revok and Steel in their copyright infringement suit against Roberto Cavalli.

What is next? Another graffiti artist, Eric Rosenbaum, known as NORM, had filed a similar copyright infringement suit against McDonald’s last March, in the same court, the Central District of California, claiming copyright infringement, unfair competition, false advertising and misappropriation of likeness for having used one of his graffiti bearing his artist’s signature in McDonald’s restaurants in Europe and Asia. The case has settled, and so it is likely that it will be the case here as well.

Image is courtesy of Flickr user Manuel Faisco under a CC BY-NC 2.0 license.

Graffiti Artist Rime Sues Moschino For Copyright Infringement

The Wall Street Journal Law blog reported this week that graffiti artist Rime is suing Italian fashion house Moschino and its designer, Jeremy Scott, for copyright infringement, in the Central District of California. The article provided a link to the complaint. The case is Joseph Tierney v. Moschino S.P.A., 2:15-cv-05900.

Plaintiff is a graffiti artist and is known as Rime. His work has been shown in several museums and galleries around the world. He claims that Moschino incorporated a reproduction of one of his works, Vandal Eyes, in a dress which was worn by singer Katy Perry at the latest Metropolitan Museum of Art gala, and on a men’s suit worn by Jeremy Scott at the same gala. The complaint takes care to note that Ms. Perry “made a number of “worst dressed” lists as a result” [Ouch!].

Plaintiff also claims that his name and fake signature were reproduced on clothes and accessories, and that “Moschino” was included in the print, making it appear that the print was created by the fashion house.

He is claiming copyright infringement, trademark infringement, unfair competition, and infringement of his right of publicity.

Copyright Infringement

Plaintiff created Vandal Eyes in 2012, when he was invited by a property owner to create a giant mural on a wall of a building in Detroit. There is no doubt that it is protected by copyright, as it has been fixed and is certainly original. Plaintiff has applied to register his copyright in this work. Plaintiff claims that Jeremy Scott attended the 2011 Arts in the Streets exhibition at the Museum of Contemporary Art in Los Angeles which featured Rime’s work, among other graffiti artists. If this access is indeed shown, a lower standard of proof of substantial similarity would be required by the court under Ninth Circuit case law, see for instance Three Boys Music Corp. v. Bolton at 485.

Just as graffiti artists Revok, Reyes and Steel did in their copyright infringement suit against Roberto Cavalli, Rime claims that by intentionally removing and altering his signature, Defendant intentionally concealed copyright infringement and thus violated § 1202 (b) of the Copyright Act. This section protects the integrity of copyright information, and makes it illegal to intentionally remove or alter any copyright management information without authorization of the copyright owner or the law.

Right of Publicity

As this blog concentrates on copyright, I will not comment on the trademark and unfair competition claims. Plaintiff also claims that Defendants infringed his right of publicity, as provided by California civil Code §3344, as they “us[ed] his name in connection with the marketing and sale of Moschino apparel and goods, and for the purpose of advertising, marketing and soliciting purchases of Moschino apparel and goods” and that he sustained damages because of these actions. Indeed, 3344 (a) prevents knowingly using a person’s name “in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent.”

This case is the last of a series of graffiti artists suing fashion companies for copyright infringement (see here and here).

Copyright Infringement Suit Filed By Graffiti Artists against Roberto Cavalli Will Proceed

Will representing graffiti artists soon become a micro niche for US IP attorneys? Here is another case where graffiti artists sued a corporation for allegedly using their art. On February 12, the Central District Court of California (CD California) denied Defendant Roberto Cavalli’s motion to dismiss a copyright infringement suit filed last year by Jason Williams and others graffiti artists. The case is Williamset. Al v. Roberto Cavalli S.p.A. et al., cv 14-06659.

Plaintiffs are Jason Williams, known as Revok, Victor Chapa, known as Reyes, and Jeffrey Rubin, known as Steel. They are graffiti artists who had been invited in 2012 by a San Francisco property owner to create a mural in San Francisco’s Mission District (the “Mural”). Revok and Steel painted their signatures, over a background of “revolutions” imagery which is Chapa’s signature style (CD California p. 1 & 2).

Defendant is Roberto Cavalli, an Italian fashion company known for its colorful prints.  It produces and markets a lower-priced brand called Just Cavalli, which introduced in March 2014 a capsule line of clothing and accessories decorated with graffiti art (the “Graffiti Collection”). Revok, Reyes and Steel claimed that the line reproduced without authorization elements of the Mural, using high-resolution photography. They asked Defendant to stop selling the Graffiti Collection, but Defendant did not comply. One of the reasons for not complying was apparently that Italians are on vacation in August [this is known as the dolce vita demurrer in some legal circles] (amended complaint at 34).

Plaintiffs then filed a copyright and trademark suit against Cavalli, the company producing the goods, and retailers selling the line, such as Amazon and Nordstrom. Defendant moved for summary judgment, which was denied by the CD California.  As this is a copyright law blog, I will only comment about copyright infringement.

Signature and Droit Moral

Revok and Steel had  used their respective signatures as part of the design, and claimed that Defendant made them indiscernible and superimposed the Just Cavalli name over Chapa’s imagery, even adding sometimes its own signature, thus giving the impression that Roberto Cavalli created these designs. Plaintiffs considered this to be “a defacement” and also “a false representation that {Roberto Cavalli] rather than Plaintiffs was the creator” (amended complaint at 32). However, they did not claim that Defendant had thus violated the Visual Artists Rights Act of 1990 (VARA).

VARA, 17 U.S.C. § 106A, was enacted to implement article 6bis of the Berne Convention into U.S law. It provides authors of a work of visual art the right to claim authorship of that work, to prevent the use of his or her name as the author of any work of visual art which he or she did not create, and to prevent “the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation.“ Under § 101 of the Copyright Act, a painting or drawing  existing in a single copy is indeed a work of visual art, and thus it can be argued that VARA applies to the Mural.

However, VARA is not always successfully used by graffiti artists in a court of law. In 2013, New York City graffiti artists claimed in the Eastern District of New York (EDNY) that a realtor about to destroy the 5Pointz buildings in Queens, on which they had painted several of their works, would thus violate VARA, as destroying their work would be prejudicial to their honor and reputation. But Judge Block from the EDNY was not convinced, noting that Plaintiffs knew that the  buildings were intended to be demolished, and that they therefore had “created their own hardships” when painting on a support they knew was doomed (the case is Cohen v. G&M Realty LP).

In our case, the possible VARA issue was not the destruction of the support, but the alteration of the signature, which could possibly prevent the artists to claim authorship of the Mural. However, Plaintiffs chose not to argue that Defendant violated their rights under VARA.

Signature as Copyright Management Information

Instead, they claimed that the signatures on the mural constitute copyright management information (CMI), which is protected by § 1202 (b) of the Copyright Act, under which no person can remove or alter any copyright management information without the authority of the copyright owner or the law.§ 1202(c) lists “[t]he name of, and other identifying information about, the author of a work” as CMI.

For the Plaintiffs, Defendant intentionally removed this information “with the intent to induce, enable, facilitate, or conceal an infringement of Plaintiff’s right under the [Copyright] Act“ and, in some pieces of the Graffiti Collection, even “replaced such information with false, altered and inaccurate copyright management information” (amended complaint at 49).

Defendant argued that section 1202 does not protect signatures. However, as it did not cite any authority for that proposition, this argument failed to convince the court, noting that “a signature seems to be the exact type of information that would identity the author of a work” and, as such, are within the scope of  § 1202(c)(2).

Defendant also argued that, as § 1202 was enacted as part of the Digital Millennium Copyright Act (DMCA), some technological process must be used to place or remove the signature, and that it was not the case here. However, the court cited several cases from courts belonging to the Ninth Circuit which had found signatures not in digital form to be CMIs. Therefore, the CD California denied Defendant’s motion to dismiss Plaintiff’s cause of action for violation of § 1202 of the Copyright Act. The suit will now proceed.