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

March 3, 2015 · by ·

This post originally appeared on The 1709 Blog. 

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 Williams et. Al v. Roberto Cavalli S.p.A. et al., cv 14-06659.c

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 (!) (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.

Image is courtesy of Flickr user Horia Varlan under a CC BY 2.0 license. 

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Be Mindful of Your Ability to Copy Street Art

February 2, 2015 · by ·

This blog post was originally published on The 1709 Blog. 

Mark Anthony Miller is a Brooklyn street artist, known as CAM, whose works can be seen in Brooklyn’s DUMBO neighborhood. His work is often inspired by stained glasses, as could be seen last year in theAlways be Mindful of your Ability to Fly exhibition at the DUMBO Art Festival.

On January 21, he filed a complaint in the Eastern District Court of New York for copyright infringement against Toll Brothers, Inc., a real estate development company, claiming that Defendant used without permission a reproduction of one of his works, a mural in DUMBO now destroyed. The case is Craig Anthony Miller v. Toll Brothers, Inc.,no. 1:15-cv-0032. Here is a link to the complaint, courtesy of New York attorney Mark Jaffe.

Plaintiff, as part of the 303 Collective, painted in 2009 a90-foot “elephant mural” on a warehouse located at Water Street in DUMBO. The owner of the wall had given the artists permission to paint it. The work was a striking piece, featuring lush vegetation, angels, and wild animals, including elephants, over a vivid orange background. As explained on his web site, CAM is inspired by the Hindu God Ganesh, who is represented as having the head of an elephant. The elephant mural was painted over in 2009, and the warehouse itself was eventually torn down for make way to, surprise, surprise, a luxury apartment development.

Plaintiff claims that Defendant used in 2012, without his permission, a photograph of the elephant mural in advertisements for its 205 Water Street in Brooklyn luxury condominium development. At the time, the mural had not yet been destroyed, and had, according to the complaint, “served as the backdrop for countless videos, weddings, engagements, fashion shoots, television and print advertisements” (p.2). Defendant’s advertisements were posted in the New York City subways, telephone booths and bus shelters, and also in the print and the online version of The New York Times.dumbo

The complaint states that Plaintiff contacted Defendant after learning about the advertisement and that they engaged in negotiations over possible compensation for this unauthorized use. However, while “Plaintiff produced work for [Defendant] for a number of months,… no projects ever materialized and no payment was ever made to Plaintiff for the  infringing use of the [elephant mural]”(p. 4).

Plaintiff has registered the copyright for the mural, and he is claiming infringement of his exclusive rights. He is seeking either actual or statutory damages, as provided by §504 of the Copyright Act, attorney’s fees, as provided by §505 of the Copyright Act, and injunctive relief, under §502 of the Copyright Act, asking the Court to order Defendant to destroy all copies of the allegedly infringing advertisement.

There have been several similar cases lately, where graffiti artists sued a company for infringement of their copyright (see here, here and here). It will be interesting to see when this trend will die down, signaling that corporate counsels are finally aware that street art is, well, art, and as such, original enough to be fully protected by U.S. copyright.

Image is courtesy of Flickr user dumbonyc under a CC BY-SA2.0 license.

 

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Gentrification, Moral Rights and Graffiti Art: a New York Story

December 10, 2013 · by ·

@ 5pointzOn November 12, 2013, Senior District Judge Block from the Eastern District Court of New York (EDNY) declined to issue an injunction which would have prevented the 5Pointz buildings in Long Island, New York, to be demolished. The EDNY published its opinion on November 20. The case is Cohen v. G&M Realty LP.

The seventeen plaintiffs in this case are graffiti artists who had painted their works on the walls of 5Pointz, which would be destroyed by demolishing the buildings. This is why they filed suit against defendants, real estate development companies and owners of the buildings, asking the EDNY to issue a temporary restraining order to prevent 5Pointz from being torn down.

Plaintiffs argued that any intentional distortion, mutilation, modification or destruction of 24 of their works would be prejudicial to their honor and reputation pursuant to the Visual Artists Rights Act of 1990 (VARA), the federal law which provides some moral rights to some visual artworks.

5Pointz

5Pointz is not just one building, but several buildings in Queens covering 200,000 square feet which have been covered by graffiti since the mid 90’s or so. In 2002, one of the plaintiffs, Jonathan Cohen, a professional artist under the name “Meres One, approached Gerald Wolkoff, who owns the building, to become the curator of the space. Wolkoff agreed and Cohen started selecting which artists could display their works. Each artist retained all copyrights to their work, and none were paid.

Graffiti artists from all around the world came to the site, which became known as 5 Pointz. The ever-changing facades and interiors became world-famous and were quite a sight from the 7 line, as the train snaked around the buildings.

What are Moral Rights?

Moral rights are non-economic rights that authors may enjoy, and are even considered human rights under article 27-2° of the Universal Declaration of Human Rights, which states that “[e]veryone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.”

Moral rights are:

a) The right of first disclosure, that is, the right to reconsider the work or to withdraw its publication; b) the right of attribution, that is, the right to be recognized as the author of the work, or to publish the work anonymously; and c) the right of integrity, that is, the right to have the work respected and to prevent is mutilation or distortion.

The Visual Artists Rights of 1990

VARA recognizes only two moral rights, the right of attribution and the right of integrity. However, the scope of VARA is limited to works of visual arts, defined by 17 U.S.C. § 101 as single copies of drawing, print or sculpture, or limited editions of 200 copies or fewer signed and numbered by the author.

Artists have the right to claim authorship of a work and the right to prevent its distortion or mutilation or other modification which would be prejudicial to the artist’s honor or reputation , 17 U.S.C. § 106A(a)(3)(A). They also have the right to prevent its destruction if the work is “of recognized stature” under 17 U.S.C. § 106A(a)(3)(B).

What is a Work of Art of “Recognized Stature”?

VARA, however, does not define what “recognized stature” means. The Southern District Court of New York (SDNY) proposed in 1994 in Carter v. Helmsley-Spear to use a two-tiered test to prove such stature.

First, plaintiff must show that the work has stature, meaning that it is ‘meritorious’. This is necessary as copyright protects works of authorship as long as they are original, but the level of originality required is very low. No need to be Picasso to have one’s drawings protected by copyright. But a ‘meritorious’ work would induce some awe that a competent amateur drawing may not bring.

But whose opinion about the work should the judge take into consideration? The second tier of the SDNY Carter test requires the plaintiff to prove that the stature is ‘recognized’ by art experts, the artistic community, or by some cross-section of society, but not necessarily everybody.

The EDNY acknowledged the two-tiered Carter test, and heard testimony from three of the seventeen plaintiffs during a preliminary injunction hearing. The court also heard expert testimony. Defendant’s art expert testified that in her view, people came to see 5Pointz not to see a particular work, but to see the ensemble.

The court seems to have been convinced by this testimony, as it found that 5Pointz could not be protected by VARA, as the law only protects a work of visual art, while 5Pointz is a “tourist site.”

The Transient Nature of Graffiti Art

Artists took turn at 5Pointz to cover some parts of the buildings, which were used to rotate quickly from one art work to another. Cohen is quoted in a 2007 interview with the Christian Monitor, cited by the EDNY, that some works only last 12 hours, some remain for two years.

Some walls, however, bore artworks which Cohen wanted to preserve, not allowing subsequent artists to paint over, among them the 24 works of the plaintiffs in this case.

The transient nature of graffiti, even its ephemeral nature, also weighed in the EDNY decision, as Judge Block noted that, because the artists knew that the buildings were intended to be demolished, they had “created their own hardships.”

During the trial, Wolkoff, the owner of the building, testified that he had told Cohen that the buildings would eventually be torn down. Some of the 5Pointz artists also testified that they knew the buildings would be eventually be torn down.

The EDNY also quoted a 2002 NDNY case, Pollara v.Seymour, where the court denied VARA protection to a mural commissioned to the artist as a “single use” piece for a particular event, reasoning that “[i]t defies the underlying purposes of VARA to assume that the statute was intended to protect works of artistic merit without regard to whether…[they] were otherwise intended to be preserved for posterity as works of artistic merit.”

The owners of 5Pointz have now white washed the buildings. However, the case is not over and a trial court will review whether plaintiffs are entitled to damages. While doing so, it will decide whether the 24 works are of recognized stature under VARA. If the trial court recognizes the plaintiff’s works are of “recognized stature” under VARA, defendants may have to pay monetary damages to the artists.

The EDNY noted that New York City could have exercised its power of eminent domain to acquire the site, but it chose not to do so. That leaves us with the regret that 5Pointz will not become officially what it had been, unofficially, for years: the world’s greatest museum of graffiti, in the very city where this art was first born.

Image is @5pointz courtesy of Flickr user Pelle Sten pursuant to a CC BY 2.0 license.

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