We’ve written before about the ongoing conversation—not just in the art world, but in the courts—regarding how American copyright law should apply to the unique art form of graffiti.  In this post, we review some recent developments that may add to that conversation.
 
5Pointz Is Before The Second Circuit

We’ve been following the 5Pointz case since its inception, through summary judgment, a trial, an advisory jury verdict for the plaintiffs, and a decision by federal district judge Frederic Block, who issued an award of $6.75 million (and later declined to reconsider that award).  
 
To recap, the plaintiffs are a group of more than a dozen graffiti artists whose works were destroyed by defendants, real estate developer Gerald Wolkoff and various Wolkoff-owned entities.  Our previous posts contain more detail, but in short, the defendants own a property in Queens known as 5Pointz.  Starting in the early 1990s, Wolkoff allowed artists to create works on the old industrial buildings on the site; over the years, the site, with the aid of a volunteer “curator,” became a remarkable collection of graffiti art.   Renowned graffiti artists vied for the opportunity to create works there, and fans flocked to the site to enjoy the results.
 
In 2013, the owners announced the 5Pointz buildings would be demolished to make way for a residential development.  Several artists (led by their volunteer curator, artist Jonathan Cohen) sued to prevent the destruction of the artworks, invoking the Visual Artists Rights Act, 17 U.S.C. § 106A (also known as VARA), which provides, among other things, that artists have a right, under certain circumstances, to prevent the destruction of “work[s] of recognized stature.”  A federal court held that the plaintiffs had not met the high standard required to obtain a preliminary injunction to preserve the works while the lawsuit proceeded, but the court did not rule out the possibility that the plaintiffs’ claims might have merit.  Just days later, the owners, without warning, whitewashed the site.  In his earliest major ruling on the case, Judge Block warned that, although he had declined to interfere with the owners’ ability to develop the property, the owners could still face money damages.  See Cohen v. G & M Realty L.P., 988 F. Supp. 2d 212, 214 (E.D.N.Y. 2013).  The artists pressed on with their claims, seeking damages under VARA, in part based on allegations that the whitewashing was “gratuitous and unnecessary” and done so as to cause maximum indignity and shock, and robbed plaintiffs of any chance they might have had to preserve, or document their work before the demolition.  On summary judgment, the court ruled that the case should proceed to trial.  See Cohen v. G & M Realty L.P., Case Nos. 13-CV-05612 & 15-CV-3230, 2017 WL 1208416 (E.D.N.Y. Mar. 31, 2017). 
 
In late 2017, after a three-week trial, an advisory jury found that the artists’ rights under VARA had been violated as to most of the works of art at issue and that Wolkoff had acted willfully.  In early 2018, Judge Block awarded $6.75 million to the plaintiffs, which represented the maximum statutory damages available.  Cohen v. G&M Realty L.P., 2018 WL 851374, at *2 (E.D.N.Y. Feb. 12, 2018).  And in June 2018, he denied defendants’ motion for reconsideration, noting pointedly his grounds for finding that Wolkoff had acted willfully, including by whitewashing the works immediately after the court’s preliminary injunction ruling, months before the buildings were actually torn down; by misleading the court about the timing of the planned demolition; and by offering what the Court found to be less-than-credible testimony at trial.  Cohen v. G&M Realty L.P., No. 13-CV-05612(FB)(RLM), 2018 WL 2973385, at *2 (E.D.N.Y. June 13, 2018).  The Court also took care to defend his conclusion that the works at issue were of “recognized stature” for purposes of VARA.
 
Now, Wolkoff’s appeal is before the Second Circuit, which held oral argument in late August.  Wolkoff’s arguments included an insistence that VARA should not protect temporary works, and the 5Pointz works were temporary where community norms among the artists included a constant process of creation and destruction as old works were painted over by new ones, a process overseen by the curator.  Wolkoff also argued that, to be protected under VARA, a work must have achieved “recognized stature” before its destruction, and all the plaintiffs’ proffered evidence on that point were retrospective assessments made after the works were gone.  Along these same lines, defendants also argued that it was improper for the court to rely, in examining a work’s stature, on testimony about the 5Pointz site as a whole, or on curator Cohen’s allocation of wall space to certain works.  Finally, defendants sought to undermine the district court’s finding of willfulness, emphasizing that Wolkoff—given the sparse and unsettled state of case law on VARA at the time— reasonably thought his whitewashing decision was lawful, and disputing the district court’s conclusion that Wolkoff had misled the Court at the preliminary injunction phase of the case.  Reports from the oral arguments noted that the panel’s questioning seemed to signal some skepticism about more than one of Wolkoff’s arguments, but no opinion has yet been issued.
 
Mercedes Clears Early Hurdle In Dispute Over Use Of Murals In Promotional Shots
 
Last year, we wrote about a mural artist’s case against General Motors, which focused on a GM social media campaign using photos featuring the artist’s mural, which he had painted (with permission) on a Detroit parking garage.  In that case, GM had sought to rely on a statute, 17 U.S.C. § 120(a) of the Architectural Works Copyright Protection Act (AWCPA), which provides that a “copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.”  GM had urged that, because the mural at issue was incorporated into a publicly-visible building, GM could not be liable for simply photographing that building.  But the Court there was unconvinced, holding that the mural itself was not an architectural work, nor was it “part of” the architectural work of the parking garage; it had not been designed as part of the building, nor did it serve any functional purpose related to the building (rather, the mural was created after the garage was built, and the artist had total creative freedom).  Thus, the Court held, § 120(a) did not apply at all to the mural, because the mural was not part of an architectural work as a matter of law.  The artist’s claims for copyright infringement survived summary judgment, and the parties thereafter reached a settlement.  See Falkner v. General Motors Co., Case No. 2:18-cv-00549-SVW-JPR (C.D. Cal.).
 
Now, a similar case is revisiting some of these issues.  In a lawsuit initiated this spring, Mercedes-Benz asked a federal court for a declaration that it had not infringed the copyrights in a handful of Detroit murals that were depicted in an advertising campaign by the car company.  See Mercedes-Benz, USA, LLC v. Lewis et al., Case No. 2:19-cv-10948-AC-EAS (E.D. Mich.).  Mercedes argued, among other things, that its depiction of the murals was fair use, and further, that it was protected by the same statute invoked in the GM case, 17 U.S.C. § 120(a). 
 
The artists sought to dismiss Mercedes’s suit; but earlier this month, the court ruled that Mercedes’s claims may go forward.  As a threshold matter, the Court rejected the artists’ argument that they could not be sued until they registered their copyrights.  Moving on to the substance of the claims, the Court refused to dismiss Mercedes’s claims on the basis of § 120(a) of the AWCPA, holding that the complaint alleged the murals were part of the architectural works on which they were painted, and thus, the buildings could be photographed without incurring copyright liability to the murals’ creators.
 
The Mercedes decision is at least arguably at odds with that of the court in the General Motors dispute.  But it’s worth noting that the Mercedes case is at a very early stage, and the court there took care to state that it was only holding that Mercedes has a plausible claim that § 120(a) protected its right to photograph the buildings on which defendants’ murals appeared; it was not opining definitively on the issue.  It’s possible that, after discovery, the Court might conclude, as the General Motors case did, that the works at issue were not “part of” the buildings on which they were painted. 
 
Meanwhile, An Artist’s Case Against a Grocery Chain Emphasizes Damage To His Credibility
 
As we await a decision in the 5Pointz appeal, and as the Mercedes case continues, yet another similar case is just beginning.  In August, artist Chris Williams sued over the appearance of his mural in a marketing campaign by grocery store chain Hy-Vee.  See Case No. 2:19-cv-06671-AS  (C.D. Cal.).  The complaint alleges that “lingering shots” of his mural were featured in a commercial that aired, among other things, during the Super Bowl; the plaintiff emphasizes that this use of his work is “particularly damaging” because he has long declined to align himself with ‘corporate culture or mass-market consumerism,” asserting that “nothing is more antithetical to a street artist’s credibility than association with something as banally commercial as a chain of grocery stores,” and that having his mural appear in this manner will lead others to believe he has “sold out,” thereby diminishing the value of his work.
 
Like other artist plaintiffs before him, he puts forward a claim for copyright infringement.  He further alleges that, because Hy-Vee “removed his signature” (by cropping the shots of the mural so as to omit the portion of the mural where he had placed his pseudonym and contact information), Hy-Vee should also be liable for alteration and removal of copyright management information under the Digital Millennium Copyright Act (17 U.S.C. § 1202).  He seeks damages including unspecified amounts to be calculated from the defendant’s profits attributable to the infringement, damage to his reputation, and statutory damages based on the removal of copyright management information.  (He is presumably ineligible for statutory damages for infringement because he only registered his copyright in the work this past spring.)  He also asks the court for an injunction preventing further use of the images of the work, and punitive damages.
 
What’s Next For Graffiti Art and The Law?
 
While many cases involving street art have arisen in recent years, they often settle without reaching some of the central unanswered legal questions  (see here for just one example).  The cases discussed in this post, however, have the potential to add to the growing body of case law regarding how copyright applies to street art. 
 
With the 5Pointz case, the Second Circuit may have the opportunity to provide some clarity regarding some of VARA’s language, including the undefined term “recognized stature.”
 
And the Mercedes dispute is a reminder that the state of the law is still somewhat unsettled as to when § 120(a) of the AWCPA might protect photography of artwork on buildings.  If courts find the reasoning from the General Motors case persuasive, that would likely provide greater protection to many works of graffiti art, because such artwork is often not an integrated part (either design-wise or function-wise) of the building on which it is created.  If, on the other hand, courts as a blanket matter begin treating murals and other art on buildings as simply a part of the buildings themselves, that would likely limit artists’ ability to seek redress for unauthorized uses of their work for commercial ends.  As counsel for the artist-plaintiffs argued recently, if a consensus emerges that companies and brands are free to commercially exploit murals without compensation to artists, artists may well be deterred from creating such works in the first place.  It’s important to note that § 120(a) would not impact an artist’s ability to sue for infringement where their work is taken out of its physical context—for example, by placing an image of the work on an article of clothing (see here for an example).   Rather, it would only foreclose claims that are based on the defendant’s depiction of an artwork in situ on the building where it was created.
 
And all of the cases continue to highlight the complexity of the question of damages in cases involving street art.  Courts and litigants alike struggle to discern how to put a monetary figure on concepts such as the value of a work that is fixed to a building, an artist’s reputation and street cred, or what kind of value a work of art adds to a commercial endeavor.
 
We’ll continue to follow these cases with interest.