This blog has written before about acclaimed conceptual artist Cady Noland, who has a reputation for being particular about how her works are installed, maintained, exhibited, and sold.  As our previous posts explain, she has even, on more than one occasion, disavowed an artwork she created, prompting litigation.  See Marc Jancou Fine Art Ltd. v. Sotheby's, Inc., 2012 WL 7964120 (N.Y.Sup., Nov. 13, 2012), aff’d, 107 A.D.3d 637, 638, 967 N.Y.S.2d 649 (1st Dep’t 2013); Mueller v. Michael Janssen Gallery Pte. Ltd., 225 F. Supp. 3d 201 (S.D.N.Y. 2016).  Disavowal is a reference to the federal Visual Artists Rights Act of 1990 (17 U.S.C. § 106A) (“VARA”), which governs artists’ “moral rights,” including their right to receive attribution for and preserve the integrity of their work; certain VARA provisions effectively give an artist the right to “disclaim” authorship of a work by preventing the use of his or her name as its author in the event that the work is mutilated or otherwise modified in a way that would be prejudicial to the artist’s “honor or reputation.”  17 U.S.C. § 106A(a)(2).  
 
Now, a federal judge has issued a ruling in Noland’s most recent legal skirmish, dismissing her attempt to bring copyright infringement claims related to the restoration of one of her artworks.
 
Recap of the Log Cabin Saga
 
Around 1990, Noland created "Log Cabin," a work consisting of a large wooden front façade of a log cabin with American flags affixed to it.  The work was purchased by a German Collector, Wilhelm Schurman, who in turn loaned it to a German museum, where it was exhibited outdoors for several years and consequently suffered deterioration.  This led the owner, working with another gallery called KOW, to arrange for its restoration.  The restoration was essentially a rebuilding; the original logs were replaced and a new log cabin façade was constructed by the original fabricator of the work, using the artist’s original and exact specifications and the same type of wood.
 
In 2014, American collector Scott Mueller bought the restored work for $1.4 million, in a deal brokered by the Galerie Michael Janssen (“the Gallery”).  Apparently foreseeing that the artist might react negatively to the restoration, the sales contract, among other things, disclosed the restoration and provided that the Gallery would buy the work back from Mueller in the event that the artist “refuses to acknowledge or approve the legitimacy of the work; seeks to disassociate her name from the work; or claims that her moral rights…. have been violated.”
 
That is indeed what happened; upon learning of the restoration and sale, Noland contacted Mueller and his agent, angrily denouncing the restoration and telling them that any future display or sale of the work “must include notice that the piece was remade without the artist’s consent, that it now consists of unoriginal materials, and that she does not approve of the work.”   Given the artist’s reaction, Mueller invoked the buy-back provision.  That course of action spawned litigation between the Gallery and Mueller (see S.D.N.Y. Docket No. 15-CV-04827), in which Mueller sought a full refund; he also sued Marisa Newman Projects, LLC, an entity that he says acted as “an independent art advisor” who facilitated the sale of the work (and later refused to return her fee following the buy-back).  That case was resolved in 2016; Mueller never served the Gallery, and his claim against Newman for breach of fiduciary duty were dismissed on grounds that she was not a fiduciary.
 
Noland’s Claims
 
But in July 2017, Noland herself brought a lawsuit, naming as defendants the Gallery and its owner; Schurmann; KOW; and an advisor (who was later dropped from the case).  See S.D.N.Y. Docket No. 1:17-cv-05452-JPO.  In her suit, Noland alleged that the restoration of Log Cabin was so extensive as to actually constitute an unauthorized copy of her work.  She asserted a claim for copyright infringement, arguing that the defendants made an exact reproduction of her work without her consent.  She also alleged that Schurmann, or his agents, were negligent in failing to prevent the deterioration of the work, thereby causing a violation of her moral rights under VARA (and a state analogue, New York Arts & Cultural Affairs Law §14.03, also known as the New York Artists Authorship Rights Act).
 
In March 2019, the Court dismissed Noland’s claims without reaching the merits.  Judge Paul Oetken held that Noland’s copyright claims could not proceed because, as a general matter, U.S. copyright law does not have extraterritorial application, and here, the artist’s claims were grounded in conduct (the alleged destruction and unauthorized copying of the original work, and the eventual display and sale of the allegedly infringing work) that occurred entirely in Germany.  Noland argued that U.S. law can apply where there is a “predicate act” in the United States—i.e., an infringement occurring in the U.S., which permits further infringement to occur abroad.  Here, she urged, defendants’ predicate acts included purchasing the wood for the restoration of the work, as well as the later-aborted sale of the refurbished work to an American buyer.  The Court was unconvinced; the mere purchase of the wood was not in itself an infringement, and there was never any actual delivery of the “copied” work to the United States.
 
Having dismissed the federal copyright claims, the Court then declined to hear her remaining claims under state and German law.  The Court did, however, give her “leave to replead one final time,” to see if she might be able to salvage her claims.  
 
This Week’s Ruling
 
Noland promptly filed a final amended complaint, and the defendants again moved to dismiss it.  The motion was fully briefed as of last July.  And on June 1, 2020, Judge Oetken ruled that the defendants should prevail.
 
Noland’s briefing regarding extraterritoriality focused on two potential predicate acts.  The first was the purchase of the wood; the court rejected that for the same reasons it had outlined last year.  The second, Noland argued, was the fact that the defendants had distributed in the United States plans and photographs of the refurbished work, for the purposes of marketing it for sale; she urged that, because the distribution and display of those photographs and plans were independent copyright violations, they could constitute a predicate act.  The court, however, was unpersuaded, reasoning that those actions could not be a predicate act because “the attempted sale of the refurbished work postdates the alleged reproduction in Germany” (emphasis original).  In other words, a predicate act should happen before the overseas act at issue; here, the “causal and temporal relationship between the infringement at home and abroad runs the other way.”  
 
Noland also sought to assert copyright claims based on independent acts of infringement in the United States.  The court rejected these as well.  Noland first argued that the defendants had violated her copyright in the work when they circulated, within the United States, plans and photographs of the refurbished work, for the purposes of marketing it for sale.  But the court held that this constituted fair use, other court decisions that have found that disseminating photographs of copyrighted works “to provide information to legitimate purchasers under the first sale doctrine” rather than for “the artistic purpose of [the creator’s] original” work is transformative, and such photographs did not usurp (indeed, they were intended to enhance) the market for the original work.
 
Finally, Noland sought to advance claims under VARA.  But the original Log Cabin work was undisputedly created before VARA went into effect, and is not protected under that statute.  To plead around this problem, Noland alleged that, at one point, she authorized Schurman to stain the work; this, she urged, created a derivative work to which VARA could apply.  The court, however, reasoned that, even assuming staining the work did create a derivative work, Noland was not the author of that derivative work; Schurman was. 
 
What the Ruling Means—And Doesn’t Mean
 
This week’s decision is of interest in the art law sphere for several reasons.
 
First, it spotlights an issue we have discussed before (see here): the challenges inherent in enforcing copyrights across international borders.  Here, Noland’s claims faced an uphill battle in that many of the key events had occurred in Germany, and her attempts to tie them to the United States through so-called “predicate acts” stateside were unsuccessful.
 
Second, the court’s ruling adds to a line of cases that generally leans toward protecting, on fair use grounds, the use of photographs or other images of artworks in promotional materials meant to help market and sell an artwork.  This is not to say that artworks can be copied with impunity as long as there is some promotional purpose, but courts have recognized that buyers and sellers often need to have some leeway to use images of artworks for the purpose of initiating and negotiating sales of the originals. 
 
Third, the decision speaks to one major limitation on the statutory scheme of VARA; it does not protect works created prior to its effective date.  This means that the rights outlined in VARA are simply inapplicable to many artworks, even those created by prominent artists like Noland.  (As a side note, VARA rights are also time-limited in another way; they can only be asserted during an artist’s lifetime.)
 
The decision also, however, leaves several key questions unanswered.  For example, there was some question about whether Noland’s Log Cabin was sufficiently original to warrant copyright protection in the first place.  When she initially tried to register her copyright in Log Cabin, her application was denied.  In his most recent opinion, Judge Oetken specifically notes that he was not ruling on the question of whether the work was copyrightable at all; he simply assumes that it is, and dismisses the claims on other grounds.
 
And more fundamentally, the decision also does not wade into the merits at the heart of the case, including whether the restoration was tantamount to creating an unauthorized copy for purposes of an infringement claim, and whether it might constitute the kind of mutilation or destruction that would support a VARA claim. Exploration of questions regarding how VARA might apply to art restoration activities will have to await another case.
 
One press report indicates that Noland is mulling an appeal to the Second Circuit; if she does appeal, we’ll be sure to follow it.