IP News

A resident of London, Kapoor is a prominent sculptor, who has won many awards for his artwork, including the Turner Prize, the Premium Imperiale and the Genesis Prize. His work is in public collections worldwide, including the MoMA, Tate Modern, and the Guggenheim in Bilbao.

Kapoor is also no stranger to both legal and artistic controversy. In 2016, when he obtained the exclusive artistic rights to use the world's “blackest” black pigment called “Vantablack,” artists worldwide shared their dismay at being unable to use the shade. Artist, Peter Semple, went so far as to develop the world's “pinkest pink” in retaliation. The shade was available for use by any artist except Kapoor. Anyone purchasing the pink pigment was required to provide a declaration indicating: “By adding this product to your cart you confirm that you are not Anish Kapoor, you are in no way affiliated to Anish Kapoor, you are not purchasing this item on behalf of Anish Kapoor or are an associate of Anish Kapoor. To the best of your knowledge, information and belief this material will not make it's [sic] way in to the hands of Anish Kapoor.” A spokesperson for Kapoor indicated Kapoor's lawyers were investigating Semple's use of Kapoor's name and goodwill in connection with the promotion of the “pinkest pink” and that his legal team would take appropriate action against Semple.

The nuance of this disagreement demonstrates that Kapoor is well aware of his intellectual property rights, and is not shy about exploring, and potentially enforcing them in atypical ways.

Overview and History of the Action

In 1999, Kapoor began creating a large scale sculpture in the city of Chicago. Titled “Cloud Gate,” the sculpture took six years to finish. The artwork is well known and commonly referred to by its shape — most people call it the “Bean.” Tourists and locals alike love to pose for photographs in front of the sculpture. Its highly polished surface, typical of Kapoor's steel work, reflects other Chicago landmarks and lends itself to unique photographs. The sculpture is credited as being one of the reasons Millennium Park is one of the most visited attractions in the United States.

In June of 2017, the NRA published a video advertisement called “The Clenched Fist of Truth” or “The Violence of Lies,” which incorporated an image of the Bean while the narrator of the video was discussing former U.S. president Barack Obama. Appearing at about the 17 second point of the video, a black and white image of the Bean was displayed (in its entirety) for less than a second. See, Dkt. No. 64, ¶15, Defendant's Answer and Affirmative Defenses to the Complaint. The display was without Kapoor's permission, and Kapoor alleges that had he been asked permission, he would have declined. See, Dkt. No. 1, ¶4, Plaintiff's Complaint. Kapoor wrote to the NRA on June 30, 2017, demanding that the NRA remove the infringing work from its promotional video. Id. ¶23. The NRA declined. Eventually, Kapoor brought suit in the Northern District of Illinois, where the sculpture is located. Citing a lack of personal jurisdiction, on Aug. 15, 2018, the NRA sought to transfer the case to the Eastern of Virginia where it is headquartered. See, Dkt. Nos. 25-28. On Sept. 13, 2018 Kapoor opposed, and in the alternative requested jurisdictional discovery. See, Dkt. Nos. 31-36. On Oct. 23, 2018 the court transferred the case to the Eastern District of Virginia, and denied Plaintiff's request for jurisdictional discovery. Kapoor v. NRA of Am., No. 18 C 4252, 2018 U.S. Dist. LEXIS 181472, at 12 (N.D. Ill. Oct. 23, 2018).

Copyright Infringement

While the physical sculpture is owned by the City of Chicago and is installed and publically displayed in Millennium Park, Kapoor retains the intellectual property rights associated with the work. Id. at 2. A copyright registration was filed for the work with the United States Copyright Office in early 2016, identifying Kapoor as author and copyright claimant. See, Registration No. VA 1-983-425; see also, Dkt. No. 1, ¶19.

The parties do not contest that Kapoor is the author (to the extent the Bean is protectable expression). They also do not dispute that permission was never sought for the use of the Bean in the NRA's promotional video which solicits viewers to join the NRA (a dues paying organization). Dkt. No. 64 ¶4; 16. Rather, the parties dispute whether the “fleeting” use of image for less than a second in the NRA video was in fact copyright infringement. Kapoor's position is that Defendant engaged in an unauthorized use of his copyright protected work for an unsanctioned commercial purpose. The NRA's position is that it did not need permission from Kapoor to fleetingly display his work in the video (i.e. that their use was de minimis), that the use was a fair use, and/ or that the sculpture was not original or copyrightable subject matter. See, e.g., Dkt. No. 64, Defendant's Affirmative Defenses.

Free Speech

The intersection and tension between copyright law and the First Amendment right to free speech has long been the subject of debate between academics and legal practitioners alike. In its defense the NRA primarily relied on its right to free speech. The NRA made clear in its response to Plaintiff's complaint that it did not and would not remove the putatively infringing image from the video because its display of the image was consistent with “fair use” and well within its rights. Dkt. No. 64, ¶27; 64. While the parties ultimately settled (the NRA removed the image, and neither party paid the other damages or attorney's fees), this case raised many interesting questions about how far an individual artist's rights can extend to stop the use of his or her work when it is publically displayed, and where (arguably), an express or implied license has been granted for the public at large to photograph the work.

Analysis

This case highlights many interesting legal issues that sound in copyright but extend more broadly. For one, it demonstrates the challenge of delineating commercial speech from protected expression. In practicality, the critical fact here was that the video at issue was used to promote the NRA, and ended with a solicitation for contributions in the form of paid memberships from the viewer. Considering the potential strength of its freedom of speech argument, had the video excluded this solicitation language would the NRA have capitulated? Perhaps not. It also raises the question of whether Kapoor would have filed suit had the “fleeting display” of his work been used by another organization for a commercial purpose with which he agreed.

A ruling on whether the display of the work in the video was de minimis would also have helped inform the analysis of many other copyright infringement suits when public art, that by definition is displayed in public places, is reproduced without the permission of the artist, and is used for an arguably commercial purpose. Generally, with contemporary commissions and purchases of public art, the artist is asked to grant a blanket license to the public to make non-commercial reproductions of the work. However, this is not always the case, and just because a work of art is publically displayed, does not mean that anyone can reproduce the work for any purpose without the permission of the rights owner. While it would perhaps be challenging for an artist to enforce his or her rights against a non-commercial selfie taker, it remains an open question whether an artist would in fact be able to enforce his or her rights against a commercial use of the publicly displayed work. While most cases addressing the issue settle because of the litigation costs (and associated public relations issues), a decision on the merits here would have provided both helpful and interesting precedent.

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Howard J. Shire is Editor-in-Chief of this newsletter and a Partner in the New York office of Pepper Hamilton LLP. He can be reached at [email protected]. Christine E. Weller is a staff attorney in the Intellectual Property Department of Pepper Hamilton LLP, resident in the Philadelphia office.