IP News

Many misconceptions currently exist regarding the installation of artwork in public places. The dearth of cases decided on the merits make these actions hard to evaluate. For one, many are left scratching their heads over whose consent is necessary to take photographs of this work for an arguably commercial purpose. Is it the property owner whose building is featured? Is it the commissioning party? Is it the artist? Is it all of these entities? How does one even identify the artist to seek his or her consent? Mercedes even points out that it took steps to ensure it had the appropriate legal rights to shoot these commercials. It sought, and obtained, permits to shoot in the street where the artwork was installed. This emerging legal issue begs the question of whether the commissioning party of the artwork, or the city issuing shoot permits should seek licenses from the artists at the outset of the project to protect against the possibility of lawsuits such as these.

Adding to the layers of confusion in these cases is that the terms street art and graffiti are often used interchangeably. They are related terms, but not the same thing. Graffiti is a term that is often used in connection with stylized writing and visual work placed on buildings without permission. Street art on the other hand can take the form of murals or installations featured on, or incorporated into the property itself. More commonly, street art refers to work that is installed with consent (tacit or explicit) of the property owner.

Each term carries its own baggage — some legal commentators have suggested that graffiti is an illegal act, and as such copyright protection should not attach. Others view street art as a contemporary reflection of popular culture that has financial, as well as cultural value. For example, in a recent Eastern District of New York case brought under the Visual Artist Rights Act (VARA), a group of artists were awarded a $6.75 million dollar judgment against a property owner who white-washed the artwork they installed (with the property owner's permission) on his building in Queens. Cohen et al v. G&M Realty L.P. et al, Docket No. 1:13-cv-05612 (E.D.N.Y. Oct 10, 2013). The critical issue in that case was whether the artwork at issue was of “recognized stature”. In deciding the Cohen case, much ink was spilled on the issue of whether the art at issue (street art) was of sufficient recognized stature such that it should fall under the auspices of VARA. Considering the height of the bar of “recognized stature” even five years ago, nobody would have predicted a $6.75 million dollar judgment, especially for street art. This suggests that while it was overlooked in the past, street art and graffiti have both taken on a new role and prominence in arts communities and popular culture more broadly. That said, the case is currently being appealed. However, many doubters have begun to re-evaluate their preconceived notions about the “value” (financial or otherwise) of street art in the face of that multi-million dollar judgment.

In parallel, perhaps emboldened by changing cultural attitudes towards street art in general and a series of settlements in this arena, street artists have begun bringing lawsuits against brand-owners who featured their artwork in ad campaigns under intellectual property theories, including copyright infringement and trademark infringement under the Lanham Act. See, e.g., Anasagasti v. American Eagle Outfitters, Inc., No. 1:14-cv-05618 (S.D.N.Y. Jul 23, 2014)(copyright infringement lawsuit brought against American Eagle Outfitters by a Cuban-American street artist privately settled); Williams v. Cavalli, 113 U.S.P.Q.2d 1944 (C.D. Cal. 2015) (copyright infringement, trademark infringement, and unfair competition lawsuit brought by street artist against Cavalli clothing, settled); Adrian Falkner v. General Motors Company et al, Docket No. 2:18-cv-00549 (C.D. Cal. Jan 22, 2018) (copyright infringement and DMCA claim, against defendant car company by street artist, settled Feb. 2, 2019). In turn, brand owners have also brought declaratory judgment actions against street artists seeking compensation for use of their work in the brand owner's ad campaigns. In March of this past year, clothing retailer H&M learned the hard way that arguing street art was not protectable expression under the U.S. Copyright Act because it was installed illegally, was an unpopular tactic and legal position, especially in the eyes of their target consumer. H&M Hennes & Mauritz GBC AB et al v. Williams, Docket No. 1:18-cv-01490 (E.D.N.Y. Mar 09, 2018) (declaratory judgment action seeking a declaration of no valid or enforceable copyright rights and no copyright infringement, voluntarily dismissed).

Perhaps distinguishable in the recent slew of cases filed by Mercedes, is the AWCPA claim. While the Falkner case, hinted at some of these issues, the case law in this area as it relates to artworks on the outside of buildings is developing. The crux of the argument in the motion to dismiss brought by the artists in the Mercedes actions was that Mercedes fundamentally misunderstood and misapplied the AWCPA. While the trend for these types of cases is settlement in the face of the expense, uncertainty, and consumer unpopularity of the lawsuits, it will be interesting to see how the Mercedes cases unfold in the coming months.

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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.