When international fast-food chain McDonald’s launched a campaign featuring images of graffiti art decorating some of its restaurants, the restaurant opened itself up to litigation asserting, among other things, copyright and trademark claims by artists who say their work has been copied without permission.  As graffiti art has become increasingly artistically and commercially valuable in recent years, courts and litigants have had to examine how copyright law applies to this unique art form.

Berreau v. McDonald’s Corp.

Earlier this week, the administrator of the estate of late graffiti artist Dash Snow filed a complaint in federal court against burger giant McDonald’s, alleging that the fast-food chain has been using reproductions of Snow’s graffiti “as décor in hundreds of McDonald’s restaurants.”

The estate alleges that McDonald’s, to appeal to young urban customers, has launched an international campaign including television commercials and in-store displays featuring graffiti artwork.  As part of this campaign, the complaint alleges, McDonald’s purposely copied without permission “stylized versions of [Snow’s] signature and logo,” “SACE,” which has been prominently featured in McDonald’s new graffiti-themed restaurants.  The estate says it has asked McDonald’s to cease its use of Snow’s work, to no avail.

The first claim is for straightforward copyright infringement.  But because McDonald’s also allegedly misappropriated what the complaint calls “source-identifying elements” of Snow’s work, i.e., his pseudonym and signature, the complaint also sets forth claims for “falsification of copyright management information” under 17 U.S.C. § 1202 of the Digital Millennium Copyright Act; trademark claims under the federal Lanham Act; and state law claims for unfair competition and negligence.  To bolster these claims, the complaint emphasizes that the problem is not just the copying, but that the placement of Snow’s work is “the largest and most prominent element on display” in the restaurants, surrounded by more “generic” graffiti scribbles, thus effectively “suggesting that Mr. Snow created all of the surrounding artwork” displayed in the restaurants; that his work was “singled out and spotlighted in media coverage” of these newly decorated restaurants; and that the overall effect is to imply that Snow authorized and endorsed the use.  The complaint even states that some news accounts have mentioned Snow in connection with the campaign, suggesting that McDonald’s has succeeded in creating a false impression that the use was authorized.

The complaint explains that Snow carefully controlled the use of his work, and that McDonald’s commercial use of it damages the “street cred” of his brand.  The relief sought includes not only damages and disgorgement of McDonald’s profits attributable to the complained-of conduct, but injunctive relief including the removal of Snow’s work from all McDonald’s locations.

Rosenbaum v. McDonald’s Corp.

Snow’s estate is not the first plaintiff to sue McDonald’s over its graffiti décor campaign.  This spring, a less-publicized but quite similar suit was filed by L.A.-based graffiti artist “Norm” (real name: Eric Rosenbaum), who alleged that photographs of a graffiti work he created in Brooklyn were being displayed as wallpaper in dozens of McDonald’s locations “in Europe and Asia.”  His complaint, among other things, alleges that he actually lost other business partnerships because potential partners did not wish to associate themselves with an artist whom they perceived to be working with McDonald’s.  His claims were similar to Snow’s: copyright, Lanham Act, misappropriation of likeness, and false advertising.  Norm’s case, however, has since been voluntarily dismissed, without prejudice to possible refiling.  Court filings suggest that the dismissal may be related to an inquiry by the court as to why the case should not be transferred to New York or dismissed for lack of jurisdiction, given that the work at issue is in New York and the alleged infringing activities occurred abroad; thus, it seems possible that the case will resurface in another court.  See Docket No. 16-cv-2063 (C.D. Cal.).

Graffiti Art and Copyright

Graffiti art, like tattoo art, uses an unconventional “canvas.”  But that doesn’t mean these art forms don’t enjoy copyright protection.  The primary statutory requirements for copyright protection are that the work must be sufficiently original, and that it must be fixed in a tangible medium of expression.  Although graffiti might someday be painted over, it generally is sufficiently permanent and stable—“fixed,” in statutory terms—to be copyrightable.  And while it’s possible to envision graffiti that is not “original” enough to be copyrightable (perhaps a generic statement like “Kilroy was here” in a plain, unremarkable style of writing), the threshold for originality in copyright law generally is relatively low and many works of graffiti should qualify.  And while it’s arguable that graffiti that is created illegally should not enjoy copyright protection, that position has not gained much support in case law or scholarship; moreover, the distinction between legal street art and illegal graffiti may be unhelpful to some defendants, given that it’s not unheard of for graffiti artists to do their work with the permission of—or even at the behest of—those who own the property on which the graffiti appears.

A defendant might also be able to avoid copyright liability for copying graffiti by invoking a fair use defense.  For example, a few years ago, the rock band Green Day prevailed on a fair use defense in a lawsuit over their use of a graffiti artwork in a backdrop for their live concert performances.  But important to the court’s ruling in that case was evidence that the artwork in question had never appeared on merchandise or promotional materials advertising the band or its concerts or music; a fair use defense is generally less likely to succeed where the would-be infringer used another’s work in a patently commercial way, as McDonald’s apparently did here.  Moreover, courts are sometimes reluctant to rule on fair use issues early in a case, preferring to wait until parties have engaged in discovery, meaning that even a defendant with a reasonable fair use defense may nevertheless incur significant litigation costs.

Recent years have brought an increase in litigation by graffiti artists and tattoo artists seeking to defend their work from copyright infringement by larger consumer brands.  For example, we have written before about graffiti artist Rime’s lawsuit against fashion house Moschino, which incorporated some of Rime’s artwork into high-end couture garments; that case settled this past summer, following a ruling in which a federal court denied the defendants’ motions to dismiss Rime’s claims (which included copyright, trademark, and unfair business practice claims).  See Docket No. 15-cv-5900 (C.D. Cal.).  Other cases involving major corporate defendants like Coach and American Eagle have also ended in confidential settlements.  See Docket No. 14-cv-6668 (S.D.N.Y.) and Docket No. 14-cv-5618 (S.D.N.Y.).

Such cases suggest that many defendants—often, large consumer brands—either do not understand that graffiti art qualifies for copyright protection (so they assume they cannot be legally liable for infringement), or they are gambling that, as a practical matter, street artists lack the wherewithal or resources to protect their rights (so they assume they can infringe with little risk of being held responsible).  But as these cases continue to arise, work their way through the courts, and garner public attention, those interested in “borrowing” graffiti art images—particularly if the images are to be used in commercial ventures—would be well-advised to reassess those flawed assumptions, or at the very least consult legal counsel for an expert opinion before they do so.