Maya Hayuk – Starbucks and the substantial similarity test. Idea vs. expression

72andSunny is an advertising agency that in October 2014 was developing an advertising and media campaign for Starbucks. On October 10, 2014, 72andSunny contacted Maya Hayuk by email to see if she was interested in creating artwork for the proposed Starbucks campaign. Maya Hayuk declined the offer.

Notwithstanding Hayuk’s decision “Starbucks brazenly created artwork that is substantially similar to one or more of Hayuk’s copyrighted Works and used the substantially similar art for the Frappuccino Campaign. The Frappuccino Campaign is essentially identical to the Starbucks campaign72andSunny proposed to Hayuk” (Hayuk complaint).

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The paintings cited in Maya Hayuk complaint are:

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Hands across the Universe

 

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The Universe

 

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The Universe II

 

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Sexy Gazebo

 

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Kites # 1

And this is a comparision taken from the complaint between Maya Hayuks’s artworks and the Starbucks’ works

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Hayuk sues Starbucks and 72andSunny in front of New York Southern District Court  1:2015cv04887 alleging she has suffered and continues to suffer damages and irreparable injury as a result of Starbucks’ infringement of her copyrights.

Hayuk asks the Court to

1. Issue a preliminary order enjoining Starbucks and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them from all further reproduction, display, distribution, and other uses of the Infringing Frappuccino Campaign Artwork during the pendency of this litigation;

2. Issue a preliminary order enjoining 72andSunny and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them from all further reproduction, display, distribution, and other uses of the Infringing Frappuccino Campaign Artwork during the pendency of this litigation;

3. Issue an order that Starbucks and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them be required to deliver up for impoundment all Infringing Frappuccino Campaign Artwork and all other infringing copies and/or derivatives of any works of art created by Hayuk, in all forms whatsoever, which are in Starbucks’ possession or under its control;

4. Issue an order that 72andSunny and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them be required to deliver up for impoundment all Infringing Frappuccino Campaign Artwork and all other infringing copies and/or derivatives of any works of art created by Hayuk, in all forms whatsoever, which are in 72andSunny’s possession or under its control;

5. Issue an order permanently enjoining Starbucks and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them and all other persons and business entities from using any and all of the Infringing Frappuccino Campaign Artwork in any way whatsoever, including but not limited to all further reproduction, distribution, display, manufacture, importation, exportation, sale, and advertising of all said manufactured products, printed and related materials, as well as all electronic and digital images containing any of the Infringing Frappuccino Campaign Artwork;

6. Issue an order permanently enjoining 72andSunny and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them and all other persons and business entities from using any and all of the Infringing Frappuccino Campaign Artwork in any way whatsoever, including but not limited to all further reproduction, distribution, display, manufacture, importation, exportation, sale, and advertising of all said manufactured products, printed and related materials, as well as all electronic and digital images containing any of the Infringing Frappuccino Campaign Artwork;

7. Award Hayuk all of her direct and consequential damages arising from Starbucks’ infringement of any of Hayuk’s copyrights;

8. Award Hayuk all of her direct and consequential damages arising from 72andSunny’s infringement of any of Hayuk’s copyrights

9. Award Hayuk all of her actual damages as well as all profits earned by Starbucks from the infringement of any of Hayuk’s copyrights in accordance with § 504(b) of the Copyright Act;

10. Award Hayuk all of her actual damages as well as all profits earned by 72andSunny from the infringement of any of Hayuk’s copyrights in accordance with § 504(b) of the Copyright Act;

11. Issue an order that Starbucks be required to pay Hayuk such statutory damages within the provisions of the Copyright Act in a sum not less than $750.00, nor more than $30,000.00, per infringed work, or if the Court finds that any of the infringements were committed willfully, such statutory damages within the provisions of the Copyright Act in a sum up to and including $150,000.00 per infringed work;

12. Issue an order that 72andSunny be required to pay Hayuk such statutory damages within the provisions of the Copyright Act in a sum not less than $750.00, nor more than $30,000.00, per infringed work, or if the Court finds that any of the infringements were committed willfully, such statutory damages within the provisions of the Copyright Act in a sum up to and including $150,000.00 per infringed work;

13. Award Hayuk her reasonable attorneys’ fees, costs of suit, and interest; and

14. Award Hayuk such other and further relief as the Court deems just and proper.

The Defendants argue that a proper comparison of Hayuk’s works to Defendants’ works shows that they are not substantially similar as a matter of law and that any similarities between the two sets of works extend only to unprotectible elements of Hayuk’s works. Accordingly, Hayuk’s claims should be dismissed in their entirety, with prejudice.

Defendants say that to evaluate substantial similarity, courts generally apply the “ordinary observer test,” which asks “whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.” Peter F. Gaito Architecture, LLC, 602 F.3d at 66 .

According to the Defendants, however, “when faced with works that have both protectible and unprotectible elements,” the Court should apply the “more discerning ordinary observer” test, in which it “must attempt to extract the unprotectible
elements from consideration and ask whether the protectible elements, standing alone, are substantially similar.”

In Defendants’ opinion the Hayuk Works make extensive use of standard geometric forms such as circles, rectangles, and rays, and the more discerning observer test applies here -citing Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 132 (2d Cir. 2003) (“the catalogue of standard geometric forms” falls within the public domain)-.

Defendants moreover add that courts routinely hold that works are not substantially similar when their dissimilarities substantially outweigh their similarities, as “dissimilarity in realization or expression can make clear . . . that the similarity extends only to unprotectible concepts or ideas.”

Defendants then consider that in their opinion plaintiff seeks protection for “her works in the aggregate, effectively for her artistic style“. So they argue that “style, independent of any particular expression of it, is not protectible and thus does not form a proper object of comparison to the Frappuccino Works“. And again that “neither plaintiff nor any other artist has a monopoly on the common idea or style of artwork that explores colors and shapes” citing  “Dean, 53 F. Supp. 3d at 648 (finding on a motion to dismiss that “Plaintiff does not have a monopoly on the idea of floating or airborne land,” citing Jonathan Swift’s Gulliver’s Travels and Led Zeppelin’s Stairway to Heaven)“.

Defendants conclude that the “Hayuk Works and the Frappuccino Works share some similar basic geometric shapes and some similar colors. Neither of these elements, standing alone, are protectible under the copyright law (“The Copyright Act does not protect common geometric shapes” and “Mere coloration or mere variations in coloring alone are not eligible for copyright protection.”). Moreover, courts regularly dismiss infringement claims for lack of substantial similarity where, as here, the selection, coordination, and arrangement of unprotectible elements yields works that differ markedly in total concept and feel. See, e.g., Cameron, 338 F. App’x at 71“. Finally Defendant request that the Court “enter an order: (i) dismissing the complaint with prejudice, in its entirety, (ii) awarding Defendants’ their costs and attorneys’ fees and (ii) granting such other and further relief as the Court deems just and proper“.

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Plaintiff opposes two arguments.

  1. The “ordinary observer test” shall be applied and not the more stringent “more discerning observer test“: in the Second Circuit, the “standard test for substantial similarity between two items is whether an ‘ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.’” Peter F. Gaito, 602 F.3d at 66 (quoting Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir. 2001)). The ordinary observer test asks whether “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995); Peter F. Gaito, 602 F.3d at 66“. The Plaintiff’s argument is that “contrary to what Defendants argue, the Hayuk Works are not composed of unpreotecable elements — they are works of fine art, creations of pure imagination. As original works of fine art, the Hayuk Works are incapable of being parsed into protectable and unprotectable elements. Rather, each Hayuk Work is protectable in its entirety“.
  2. Anyway, the court should not “dissect [the works] into their separate components and compare only those elements which are themselves entirely copyrightable“. Doing so would lead to a paradox: a) “we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past.” Knitwaves, Inc., 71 F.3d at 1003; and b) “to do so would be to take the ‘more discerning’ test to an extreme, which would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors and symbols.”Boisson, 273 F.3d at 272 .

So in plaintiff’s opinion the court should compare the works’ “total concept and overall feel . . . as instructed by [its] good eyes and common sense.” Peter F. Gaito, 602 F.3d at 66. So plaintiff argues that a visual comparison of the competing works shows there is remarkable similarity.

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On January 12, 2016 the District Court decided to dismiss the complaint in its entirety.

In the memorandum and order the Court agrees with the Defendants’a arguments.

The Court firstly concedes that “apart from exact copying of a portion of a work, a defendant may infringe upon a plaintiff’s work by misappropriating the “total concept and feel” of the protectible elements of a particular work. The total concept and feel test functions as a reminder that infringement of a work can occur through not only literal copying but through “parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff’s work of art . . . are considered in relation to one another.” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 134 (2d Cir. 2003)“.

On the other side the court reminds that “it is  an axiom of copyright law that copyright does not protect “ideas,” only their expression and, when “a given idea is inseparably tied to a particular expression” so that “there is a ‘merger’ of idea and expression,” courts may deny protection to the expression “in order to avoid conferring a monopoly on the idea to which it inseparably is tied.” citing Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, 455-56 (S.D.N.Y. 2005), and that raw materials” such as colors, letters, descriptive facts and “the catalogue of geometric forms” are a part of the public domain, and not protectible” citing Tufenkian, 338 F.3d at 132.

So the court chooses the “more discerning test” because the works have, in the court point of view, both protectible and unprotectible elements (standard geometric forms such as circles, lines and rays, as well as colors and textures), and clarifies that:

a) the analysis involves an “attempt to extract the unprotectible elements from . . . consideration and ask[s] whether the protectible elements, standing alone, are substantially similar.” and

b) that the “more discerning” test is not a directive to “dissect [the works] into their separate components” and simply compare only those elements which are in themselves copyrightable“. So  “the inquiry remains principally guided by a comparison of the “total concept and overall feel” of the works in question and, in the end, “necessarily focuses on whether the alleged infringer has misappropriated the original way in which the author has selected, coordinated, and arranged the elements of his or her work.” and

c) “at the same time, the “total concept and feel” inquiry “is not carte blanche to rest findings of infringement on vague or amorphous determinations.” Mena v. Fox Entm’t Grp., Inc., No. 11 Civ. 5501, 2012 WL 47441389, at 6 (S.D.N.Y. Sept. 29, 2012)“.

The court refuses the plaintiff ‘s argument when she “urges the Court to apply the “ordinary observer” test, asserting that “the Hayuk Works are not composed of unprotectable elements – they are fine art, creations of pure imagination” and “incapable of being parsed into protectable and unprotectable elements.
The court replies that “the mere status of being “fine art,” does not, however, confer automatic protection over the entirety of the works“, while courts “routinely have distinguished protectible and unprotectible elements in analyzing claims for infringement of works of “fine art.” See, e.g., Dean v. Cameron, 53 F. Supp. 3d 641, 648 (S.D.N.Y. 2014) (comparing paintings to the movie Avatar)“.

So the court concludes:

The Court finds, as a matter of law, that none of the Frappuccino Works is substantially similar to “the total concept and feelof protectible elements of any of the Hayuk Works. Although the two sets of works can be said to share the use of overlapping colored rays in a general sense, such elements fall into the unprotectible category of “raw materials” or ideas in the public domain. The far more dominant dissimilarities in the specific aesthetic choices embodied in the particular works distinguish them in total concept and feel and preclude a finding of substantial similarity (….).

Likewise, what the Plaintiff has described as the “core” of her work in the aggregate, namely the use of overlapping colored rays, and colors and shapes, is tantamount to a set of unprotectible concepts or methods over which there can be no copyright monopoly conferred. See Mannion, 377 F. Supp. 2d at 455-56. The total concept and feel of the protectible expression of those ideas in the Hayuk Works and the expression of those ideas in the Frappuccino Works are not substantially similar (…) the differences between each of the Hayuk Works and each of the Frappuccino Works “overwhelm any superficial similarity.” See Dean, 53 F. Supp. 3d at 650. No reasonable jury, properly instructed, could find the works substantially similar. See Peter F. Gaito Architecture, 602 F.3d at 64. Plaintiff has thus failed to allege facts framing plausibly any cause of action for copyright infringement and her Complaint fails to state any direct infringement claim upon which relief may be granted.

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In Hayuk v. Urban Outfitters (see here) the Defendant filed an expert report to support the argument that the similarities between Hayuk’s works and the infringing works can be found in ideas fallen in public doman only.

The expert report by Chana Messer from UCLA exposes the history of geometric abstract expressionism, arguing that in Western art was developed around the turn of the 20th Century. The expert cites as early pioneers, Wassily Kandinsky and Piet Mondrian.

The expert adds:

As the genre developed, many artists infused it with a sense of expressionism going beyond self-containment to trying to express a certain feeling or concept using these abstract geometric patterns. Geometric abstraction is a form of abstract art, based on the use of different geometric forms, placed in the space in either realistic or non-realistic ways. Geometric abstraction is characterized by its use of geometric shapes, especially a heavy reliance on intersecting lines and linear shapes such as triangles and squares. Color can be used either as an exercise in abstraction, or to infuse the geometric abstraction with a sense of expressionism“.

Then the expert considers Paul Klee use of geometric shapes to emphasize particular combinations and progressions of colors within those shapes (intersecting and overlapping triangles) and the New York School artists in the 1950s and 1960s that  made heavy use of geometric abstractionism. For example Frank Stella and Kenneth Noland took the idea of a stacked series of V’s .

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Paul Klee, Double Tent, 1923                          Wassily Kandinsky, Color Studies, 1913

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Frank Stella, Itafa I, 1968                      Kenneth Noland, Bridge, 1964

As a result” the expert says “of this prevalent use of V’s as the subject of geometric abstract work by many prominent artists, by the end of the 1960s, use of multi-colored rows of V’s was pervasive and a generic idea in geometric abstraction“.

So the expert concludes that “the idea of taking stacks of V’s and intersecting them, either side by side, top to bottom, or overlapped, was within the public domain well before any of the artwork here was created. The further idea of applying a multivariant array of colors to the V’s within the stack of V’s is also an idea in the public domain, and has been since artists such a Paul Klee and Kenneth Noland made revalent use of the basic idea. If anything, use of the idea of multi-colored stacked V’s leads me to conclude at most that each of the artists shared common inspiration in this earlier geometric abstractionist artwork, ideas which are free for the taking and were not laid exclusive claim to evenby those artists” and “any similarities between the two pieces of work relate only to basic ideas that are fully within the public domain, and very common in the field of Adobe Illustrator design, and the actual way these ideas are expressed in the two works is completely different. It is my opinion that there is no probative similarity between the two works, and ultimately the Panic Rainbow design is not a copy or plagiarism of the Pilgrim design no matter how carefully or cursorily the two are compared“.

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Ralph E. Lerner and Judith Bresler (Art Law – The Guide for Collectors, Investors, Dealers and Artists – 4th Ed. – 2012 – Vol. II – 994 – 998)  remind how the term “substantial similarity” started to be applied in copyright infringement trials starting with the two pronged test established by the leading case on copyright infringement (Arnstein v. Porter, 1946, even if the term substantial similiarity does not appear in Arnstein test)

a) are the similarities sufficient to prove that the defendant copied the plaintiff’s work

b) if so, is such copying an improper appropriation of plaintiff’s protected expression?

Lernet and Bresler point out that in addressing the first prong of Arnstein “courts analyze the two works in toto, comparing their protected expression and their unprotectable underlying ideas (…) and if the defendant’s work does contain probative similarities, Arnstein’s second prong must be addressed“.

About improper appropriation, the courts “must be able to distinguish the protectable elements from the unprotectable elements” and have developed a number of tests among which Lerner and Bresler remind these:

  1. Abstractions test – The process requires the court to first identify the increasing levels of abstraction of the work. At some point on the spectrum of abstraction, the elements are no longer protected as they enter in the realm of ideas rather than expression, but the test cannot pinpoint the line of demarcation between protectable expression and unprotectable ideas;
  2. Total concept and feel – Developed by the Ninth Circuit in the 70s compares elements of the works but has been criticized because, considering the total concept, this test could subvert the very essence of copyright;
  3. Aesthetic appeal -Developed by the Seventh Circuit in 1994 compares the works both in their entirety and disassembled, element by element, considering if the ordinary lay observer would regard their aesthetic appeal as the same.
  4. Successive filtering approach – The test takes the copyrighted work and distilles from it a core of protectable elements denying the infringement if the defendant copied only unprotectable material.

Another test has emerged, the abstraction filtration comparison: the process requires the court to first identify the increasing levels of abstraction of the work. Then, at each level of abstraction, material that is not protectable by copyright is identified and filtered out from further examination. The final step is to compare the defendant’s work to the plaintiff’s, looking only at the copyright-protected material as identified in the previous two steps, and determine whether the plaintiff’s work was copied.

An interesting reading is Lippman, Katherine. “Beginning of the End: Preliminary Results of an Empirical Study of Copyright Substantial Similarity Opinions in the US Circuit Courts, The.” Mich. St. L. Rev. (2013): 513 that compares the results of trials where the substantial similarity tests occurred.

For example (the figures are taken from Lippman):

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So despite the different standards adopted by the the Circuits, the different success rates for the plaintiffs depending on the Court and the chosen similarity test, the question should be whether in contemporary art an artist’s work is protected enough when the similarity test is based on the extraction of  the so called unprotectible elements: raw materials” such as colors, letters, geometric forms.

In abstract art after the extraction of colors and geometric forms (the so called raw materials), considered unprotectible elements, which protectible elements do remain to allow a copyright infringement lawsuit?

And in broader terms in contemporary art -where ideas have overcome the importance of expression: just think to Yves Klein’s Blue Monochromes;  John Cage’s composition 4′33, described as four minutes thirty-three seconds of silence; Martin Creed’s Work No. 227: The lights going on and off an empty room in which the lights switched on and off at 5 second intervals- has still sense to mantain  as an axiom of copyright law that copyright does not protect “ideas,” only their expression?

 

Maya Hayuk – Starbucks and the substantial similarity test. Idea vs. expression

Rime vs Moschino – Scott : settlement?

 

On June 27th Rime entered a stipulation to dismiss defendant Jeremy Scott

IT IS HEREBY STIPULATED by and between the parties to this action through their designated counsel that all of Plaintiff’s causes of action against Defendant Jeremy Scott in the above captioned action be and hereby are dismissed with prejudice pursuant to FRCP 41(a)(1)(A)(ii), and that Defendant Jeremy Scott be and hereby is dismissed from this suit with prejudice.

On June 29th Rime confirmed that the case has been settled

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But on the same day Moschino pointed out:

The only remaining defendant in this case, Moschino, S.p.A. (“Moschino”), submits this corrective response to Plaintiff’s Notice of Settlement [Dkt. No. 66] filed earlier today. Moschino and Plaintiff have yet to reach agreement on all terms of a contemplated Master Settlement Agreement.

Really strange settlement story: in May it was reached an agreement but, in Rime words,  Defendant Scott “ultimately torpedoed the settlement, making new demands after the material terms had been agreed upon and on the eve of the court’s early deadline to file summary judgment”. Now the case is settled with Scott, while Moschino ponts out the parties still have to reach an agreement on all terms.

On July 1st  Judge Stephen V. Wilson stated

In light of the notice of settlement, and the response thereto, the hearing on the Motion for Summary Judgment 56 is continued to August 15, 2016. A status conference regarding the settlement is set for July 25, 2016 at 1:30 p.m. The parties are advised that the motion hearing and the status conference will be vacated and no appearance will be required provided that a Stipulation to Dismiss is filed no later than July 22, 2016.

So let’s wait for the next update on July 22.

Rime vs Moschino – Scott : settlement?

Space Invader and the removed mosaic in Paris

On April 28, 2013 in Paris, 3 arrondissement, two persons were caught while removing a Space Invader mosaic (PA_696 in the picture below)

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Space Invader asked the Court (the Tribunal Correctionnel de Paris) to declare them guilty of contrefaçon (see here the English translation of French Code de la propriété intellectuelle, article 335-3: “any reproduction, performance or dissemination of a work of the mind, by any means whatsoever, in violation of the author’s rights as defined and regulated by law shall also constitute an infringement“) arguing they were going to sell the artwork through the web. Space Invader asked also for damages (€ 18.000) and publication of the judgement on newspapers.

As reported by France Press the Court on March 22, 2016 rejected Space Invader arguments assuming that defendants removed the mosaics thinking they were illegally affixed and that they had no intention to disseminate or sell the artwork, but they wanted to keep it for them.

 

Space Invader and the removed mosaic in Paris

RIME v. MOSCHINO update

The Court on May 19 allowed both parties to submit an addendum to their pleadings by Monday, 27 June, and decided to continue the hearing scheduled for May 23 to Monday, July 11. And adds:

If Defendants’ illegality defense remains an issue before the Court following further discovery , the parties are instructed to include discussion of Dream Games of Arizona v. PC Onsite, 561 F. 3d 983 (Ninth Circuit).

In Dream Games the Court stated:

  1. As Professor Nimmer has written, the defense of illegality or unclean hands is “recognized only rarely, when the plaintiff’s transgression is of serious proportions and relates directly to the subject matter of the infringement action
  2. The Mitchell/Belcher principle leads to the conclusion that illegal operation of a copyrightable work neither deprives the work of copyright protection nor precludes generally available remedies. See 1  Nimmer on Copyright § 2.17 (applying the Mitchell principle to conclude that “the fact that a copyrightable work is being used for illegal purposes should not constitute a defense in a copyright infringement action”). If work that contains illegal content is copyrightable, then a work that contains legal content, but which may be used for illegal purposes is surely copyrightable.
  3. Thus, illegal operation of an otherwise copyrightable work does not deprive the work of copyright protection, nor is it a defense to infringement.
  4. Nothing in the Copyright Act suggests that plaintiff’s statutory right to elect the type of damages it seeks is forfeited upon presentation of evidence of illegality. Thus, we
    hold that an award of either type of damages available under the Copyright Act—actual or statutory—is not precluded by evidence of illegal operation of the copyrighted work, at least where the illegality did not injure the infringer.

 

RIME v. MOSCHINO update

RIME vs. Moschino: does illegal street art have copyright protection?

RIME is a well known street artist who has been resident in Brooklyn. RIME alleges in the complaint that in 2012  he created a giant mural, entitled “Vandal Eyes” covering the broad side of a building in Detroit (here is a video of the artist working on the mural). In a following declaration by an employee of the building’s owner -allegedly located in 4559 Weston Street, Detroit- she testifies either to be not aware that the owner ever invited the artist to create the mural or that the artist asked for permission. We will see that this declaration will become relevant as a last argument at the end of the trial.

UPDATE: May 4, 2016 – RIME (on May 2) filed a memorandum in opposition to defendant’s motion for summary judgement claiming that his mural was not illegal and part of the Detroit Beautification Project after specific invitation of the Project’s founders and with explicit assurances that the artwork was being undertaken legally and with the permission of the affected property owners.

UPDATE: May 11, 2016 – Moschino and Scott filed two different replies (on May 9) insisting that RIME’ s mural was an act of trespass and vandalism

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In 2013, Moschino (a high-end apparel brand based in Italy, and among fashion’s most prominent names) hired independent fashion designer Jeremy Scott as its new creative director, publicly debuting his first official namesake Fall/Winter clothing and accessories collection for Moschino in February 2015, for the Fall/Winter 2015 fashion season. As part of that collection, Moschino and Scott released a capsule collection featuring graphic designs that included literal copies of images of the Mural.

The collection was made available for sale throughout the world, and and was shown in February 2015 in Milan worn by supermodel Gigi Hadid to close out the show. Moschino again singled out and spotlighted the clothing when Katy Perry and Jeremy Scott appeared for Moschino at the high profile Met Gala in May 2015, for the purpose of publicly displaying the apparel that featured Plaintiff’s artwork.

Below the pictures of the mural, the dress worn by Katy Perry at Met Gala, by Gigi Hadid in Milan, and by Jeremy Scott at Met Gala (pictures from the complaint).

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So RIME sued Moschino and Scott (California Central District Court, 2:2015cv05900) claiming copyright infringement for misappropriation of his artwork. Considering that the defendants exploited signature elements too, including Plaintiff’s own pseudonymous name and signature, plaintiff also brings trademark claims under the Lanham Act; and unfair competition, and appropriation of name and likeness claims under California law.

While defendants benefitted from the misappropriation and infringement, RIME has been harmed by the misappropriation and infringement “including damage to Plaintiff’s reputation and credibility in the art world based upon the perceived association with and endorsement of the Moschino and Jeremy Scott brands“. As written in the complaint “nothing is more antithetical to the outsider “street cred” that is essential to graffiti artists than association with European chic, luxury and glamour—of which Moschino is the epitome“.

RIME brings the following causes of action:

  • Relief For Copyright Infringement
  • Relief For Falsification, Removal and Alteration of Copyright Management Information in Violation of 17 U.S.C. § 1202
  • Relief for Unfair Competition Under Section 43(a) of The Lanham Act (15 U.S.C. § 1125(a))
  • Relief for Unfair Competition Under California Business And Professions Code §§ 17200 et seq.
  • Relief For Unfair Competition Under California Common Law
  • Appropriation of Name and Likeness in Violation of California Civil Code §3344
  • Relief For Negligence

RIME asks for judgement against defendants:

  • That Plaintiff is awarded all damages, including future damages, that Plaintiff has sustained, or will sustain, as a result of the acts complained of herein, subject to proof at trial
  • That Plaintiff is awarded his costs, attorneys’ fees and expenses in this action
  • That Plaintiff is awarded pre-judgment interest
  • For an order permanently enjoining Defendants and their employees, agents servants, attorneys, representatives, successors, and assigns, and any and all persons in active concert or participation with any of them, from engaging in the misconduct referenced herein
  • That Defendants be ordered to immediately recall and sequester inventories of the infringing products, and to supply accountings to Plaintiff’s counsel
  • That Defendants be ordered to deliver their entire inventories of infringing products to a mutually selected third party for supervised destruction
  • That Defendants be ordered to deliver their entire inventories of infringing products to a mutually selected third party for supervised destruction
  • That Defendants be ordered to file with this Court and serve upon Plaintiff’s counsel within thirty (30) days after services of the judgment demanded herein, a written report submitted under oath setting forth in detail the manner in which they have complied with the judgment
  • That Defendants be adjudged to have engaged in unlawful, unfair and/or fraudulent business practices and unfair competition in violation of California Business and Profession Code §§ 17200 et seq.
  • For disgorgement of all proceeds, and restitution of all monies received by Defendants as the result of their wrongful conduct, including copyright and trademark infringement, appropriation of name and likeness, and unlawful, unfair, and deceptive business practices
  • For punitive damages in an amount sufficient to deter Defendants, and each of them, from their wrongful conduct
  • Such other damages and further relief, as the Court may deem appropriate

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Defendants filed motions to dismiss causes (challenging the legal sufficiency of the claims stated in the complaint) and special motions to strike causes (California law permits for pre-trial dismissal of strategic lawsuits against public participation -SLAPPs-: the anti-SLAPP statute was enacted to prevent and deter lawsuits brought primarily to chill the valid exercise of the constitutional rights of freedom of speech).

I. Motions to dismiss

The Court denies the motions to dismiss causes for these reasons:

Copyright infringement – Moschino does not seek to dismiss RIME’s copyright infringement claim on the merits. Scott argues that RIME has not adequately alleged Scott’s involvement in Moschino’s alleged actions. The Court finds that Scott’s position as Moschino’s creative director is sufficient to create a reasonable inference that he was involved in Moschino’s collection. So the Court denies the motions.

 

Falsification, Removal and Alteration of Copyright Management Information – RIME brings two sub-causes of action under 17 U.S.C. § 1202(a) and (b).

Section 1202(a) is a falsification claim, which requires the plaintiff to allege that the defendant “knowingly and with the intent to induce, enable, facilitate, or conceal infringement . . provide(d) copyright management information that is false“. RIME argues that defendants violated Section 1202(a) adding their brand “Moschino” to the clothing featuring RIME’s graffiti, suggesting that Moschino is the author of the  designs. Defendants argue that RIME has failed to plead that Defendants acted knowingly under Section 1202. However, the Court finds that when Defendants’ use of RIME’s work is considered in context, a reasonable inference can be drawn that Defendants knowingly committed the alleged conduct. Then Defendants argue that their name, “Moschino,” falls into the exception of Section 1202(c), as “personally identifying information about the user of a work”. The Court agrees with the plaintiff that taking Defendants’ theory to the extreme, virtually any person who took another’s work and placed their·name or brand on it could be considered a “user of a work” rather than an infringer, and escape liability. So the Court denies the motions.

Section 1202(b) is a removal claim, which requires the plaintiff to allege that the defendant “intentionally remove [d] or alter [ed] any copyright management information” with the intent to conceal the defendant’s infringing conduct:  RIME argues that defendants violated Section 1202(b) by removing the CMI (Copyright Management Information, like signature and other source identyfing elements) present in “Vandal Eyes” in defendants’ clothing. Defendants note that RIME’s signature does not appear·anywhere on the “Vandal Eyes”mural. In RIME’s opposition to the motion to dismiss, he clarified that the relevant CMI is the asterisk-like symbol at the bottom left of the mural. Plaintiff explained that the symbol refers to RIME’s artist collective known as “The Seventh Letter.” Thus, according to RIME, his copyrighted work, “Vandal Eyes,” contained CMI in the form of the symbol, and Defendants’ clothing included po1tions of “Vandal Eyes” but omitted the symbol in violation of Section 1202(b).Then Defendants argue that Section 1202 violations can only occur if a technological process was used in either placing or removing CMI (because, according to the Defendants, Section 1202, as part of the Digital Millennium Copyright Act “DCMA”, only creates violations when CMI is added or removed through a digital or technological process). For example Williams v. Cavalli S.p.A. , 2015 WL 1247065 (C.D. Cal. 2015) -by the way a similar case with the famous street artist REVOK in the role of the plaintiff- has held that the plain language of Section 1202 refers to CMI as “including in digital form” thus indicating that CMI is not limited to copyright notices that are digitally added or removed. The court denies the motion to dismiss.

 

Unfair Competition Under Section 43(a) of The Lanham Act (15 U.S.C. § 1125(a)) – Unfair Competition Under California Business And Professions Code §§ 17200 et seq. – Relief For Unfair Competition Under California Common Law – The court states that a claim under Section 43(a) of the Lanham Act, a plaintiff must establish that: (1) it has a valid mark; (2) the defendant used the mark in commerce, and (3) the defendant’s use of the mark is likely to cause confusion. See 1800 Contacts, Inc. v. WhenU Com, Inc., 414 F.3d 400, 407 (2d Cir. 2005). RIME argues that Defendants’ use of his graffiti tag, “RIME,” on certain clothing in the collection created the false impression that RIME endorsed, sponsored, or  designed the collection. Defendants argue that RIME has not clearly alleged that he has used his mark, “RIME,” in commerce, or that  Defendants  used plaintiff’s mark, “RIME,” in commerce, both of which are necessary. However, RIME has alleged that his work has been featured in various museums, that he has been commissioned by Converse and Adidas to create original artwork on shoes, and that he was invited by Disney to reinterpret Mickey Mouse. As to Defendants’ use of “RIME” in commerce, the plaintiff alleged that “The Collection” generally was made available for sale extensively around the world. Thus,  a reasonable inference could be drawn that Defendants also sold the particular clothing featuring “RIME”.

Defendants have raised affirmative defenses under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), in their words:

Lanham act claims are “limited by the First Amendment” via the Rogers defense. Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1239 (9th Cir. 2013); See also Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.2002) (adopting the Rogers test in the Ninth Circuit). “Under the Rogers test, § 43(a) will not be applied to expressive works ‘unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of the trademark or other identifying material] explicitly misleads as to the source or the content of the work.’” Brown, 724 F.3d at 1239 (citing Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1989)). In other words, use of a trademark in an expressive work is only infringing if (1) the use of the mark has no artistic relevance to the underlying work whatsoever, or (2) it has some artistic relevance, but explicitly misleads as to the source or the content of the work“.

and nominative fair use, in their words:

The nominative fair use analysis is appropriate where a defendant has used the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal is to describe his own product.” Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002)(emphasis in original). A defendant’s use falls under nominative fair use if “the [plaintiff’s] product or service in question [is] one not readily identifiable without use of the trademark; second, only so much of the mark or marks [is] used as is reasonably necessary to identify the [plaintiff’s] product or service; and third, the user [did] nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder”.

The Court finds that a determination of these fact-intensive inquiries would be better suited in a motion for summaiy judgment.  So the court denies the motion to dismiss.

 

Appropriation of Name and Likeness in Violation of California Civil Code §3344Section 3344 prohibits the knowing use of another’s “name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods . . .” Cal. Civ. Code § 3344. RIME alleges that Defendants knowingly used his name by placing his false signature on clothing without his authorization. Defendants reply that: (1) RIME has failed to plead a “knowing” use of his name, and (2) RIME has failed to plead that any clothing with “RIME”was sold within the United  States. The Court finds that when Defendants ‘ use of RIME’s mark is considered in context, RIME has sufficiently alleged that Defendants knowingly used his name. Similarly, the Court has aheady stated that RIME has sufficiently alleged that clothing with “RIME”was sold within the United States.

Then Defendants raise additional arguments in their defense: that their use was (1) transformative, (2) incidental, and (3) that Section 3344 does not protect imitations of one’s name or pseudonyms. As to Defendants’ third argument, the Court agrees that some cases have held that imitations of likeness and imitations of voices do not violate Section 3344. See, e.g., Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988). However, the Court finds that Defendants ‘ argument is inapposite considering the scope of RIME’s allegations. If RIME had alleged that Defendants misappropriated his signature, perhaps Defendants could prevail in their argument that imitations are not subject to Section 3344 liability. However, here, RIME has alleged misappropriation of his name, which was used in a literal sense. Therefore, because RIME alleges that Defendants used his actual name, “RIME,” Defendants’ imitation defense is unavailing.

Defendants also argue that pseudonyms are not protected under Section 3344, but have not adequately supported this contention. The Court recognizes that there is little case law on the subject. However, in at least one case, the Ninth Circuit recognized that “Cher”could be protected under Section 3344.

As to Defendants ‘ arguments under the transformative and incidental use defenses, the Court finds that such fact-intensive inquiries would be more appropriately resolved in a motion for summary judgment. Therefore, the Court denies Defendants ‘ motions on this claim too.

 

Negligence – RIME alleges that Defendants owed him a duty of care and breached that duty by “failing to prevent injurious falsehoods from reaching the public”. The parties dispute whether RIME can ground his negligence claim on his tradematk and right of publicity claims. Defendants argue that RIME’s negligence claim cannot be saved by his trademark and right of publicity claims because they all relate to his allegedly copyrighted work “Vandal Eyes”. However, “Vandal Eyes”relates almost exclusively to RIME’s copyright claims. The Court states that because RIME’s trademark and right of publicity claims are grounded in his tag, “RIME,”his negligence claim is not preempted. Accordingly, the Court denies Defendants’ motions on this  claim.

*** ***

II. Motions to strike

The Court denies the motions to strike causes pursuant California’ anti-SLAPP statute for these reasons:

Defendants seek to strike all of RIME’s state claims pursuant to California’s anti-SLAPP statute, Cal. Civ. Code § 425.16.

Defendants argue that their fashion line is protected activity because the development and design of creative works is subject to First Amendment protection. Defendants have not cited to any case finding that fashion is protected activity under anti-SLAPP statutes. However, courts have found that television shows, comic books, video games, as well as holiday cards, are protectable creative works under anti-SLAPP. See, e.g., Hilton, 599 F.3d at 904. Defendant Scott explains that he uses fashion to express himself creatively and to speak to political and cultural matters, and that, as to the specific works in the present case, he came up with the graffiti concept to subvert the seriousness of traditional black-tie fashion while also commenting on the way in which society objectifies women by literally imposing cultural symbols and meaning upon them. Scott explains that his intention was to create a metaphor of a sophisticated woman literally tagged with graffiti, much like any light pole, brick wall or mail box on the street corner. The Court finds that Defendants ‘ fashion line satisfies this low threshold showing.

Next, Defendants must show that their actions were in connection with an issue of public interest. Whether a defendant ‘s activity is in connection with a public issue is interpreted broadly in light of the anti-SLAPP statute’s purpose to encourage participation in matters of public importance or consequence. Hilton, 599 F.3d at 906. Although California courts have applied slightly different tests, one commonly cited test comes from Rivero v. American Federation of State, County, & Municipal Employees , 105 Cal. App. 4th 913 (2003). There, the court articulated three categories of public issues:

(1) statements concerning a person or entity in the public eye,

(2) conduct that could directly affect a large number of people beyond the direct participants, and

(3) a topic of widespread, public interest. Id. at 923.

Defendants contend that their fashion was displayed at the Met Gala and involved celebrity Katy Perry, who is constantly in the public eye. However, RIME’s state claims subject to the anti-SLAPP statute are all grounded in Defendants ‘ use of “RIME” in their collection, not on their appropriation of “Vandal Eyes” in the dress worn by celebrity Katy Perry and suprmodel Gigi Hadid.

Therefore, although Katy Perry’s fashion choices may be of public interest, that conduct is not the basis for RIME’s state claims.

That being said, the Court finds that Defendants ‘ fashion line qualifies as an issue of public interest given that Jeremy Scott and Moschino are household names in high fashion. Therefore, the Court finds that Defendants have satisfied the first prong.

The second prong requires a determination as to whether “the complaint is both legally sufficient and supported by a sufficient prima facie showing of facts to sustain a favorable judgment  if the evidence submitted by the plaintiff is credited.” Id. at 902. Defendants ‘ anti-SLAPP motion applies to RIME’s claims under California unfair competition law, Section 3344, and negligence. As the Court discussed, RIME has adequately pled these claims. Moreover, at this early stage of the case, the Courts finds that RIME has shown a probability of success on the merits. Although Defendants may have only used “RIME”on two articles of clothing in their collection, the pieces appeared alongside the highlight dress of the collection, which heavily featured RIME’s “Vandal Eyes”mural. In this context, the Court cannot find as a matter of law that Defendants ‘ use of “RIME”was not explicitly misleading or would not lead to a likelihood of confusion. Accordingly, the Court denies also Defendants’ special motions to strike.

*** ***

Does illegal street art have copyright protection?

At this point the Court finds that many of the relevant issues, along with Defendants’ affirmative defenses, may be suitable for determination on an expedited basis. Therefore, the Court sets the briefing schedule: Defendants shall file motions for summary judgment by Monday, April 18, 2016. Plaintiff shall file his oppositions by Monday, May 2, 2016. Defendants shall file their replies by Monday, May 9, 2016. The hearing on the motions shall be on Monday, May 23, 2016, at 1:30 p.m.

Probably after the Court decision to deny motions to dismiss and motions to strike negotiations occurred to reach a settlement, but on April 18 the Defendants filed a final defense (see The Fashion Law report) that introduces a new argument of discussion (based as a matter of fact on the declaration of the property employee described at the beginning of this post). And it does with an audacious  comparison:

As one of the greatest unsolved mysteries in Los Angeles history, the Black Dahlia murder continues to stir the public imagination and, in this case, provides a useful illustration of the most essential thing Plaintiff is lacking: a valid copyright. The Black Dahlia’s killer was, no doubt, a felon. But was he also a valuable copyright holder as a result of his illegal activities? Plaintiff’s theory of this case necessarily concludes so, and, in the process, he reveals the manifest untenability of his claims. The Black Dahlia’s killer, of course, famously hacked up the bodies of his victims in a particularly original and artistic way. So when photographs of the killer’s criminal handiwork were distributed by police and media, could the Black Dahlia’s killer sue them for copyright infringement, claiming that the photographs unlawfully reproduced his copyrighted work—his fixation of an original series of markings into the tangible medium of a victim’s body—without authorization or payment to him? In a word: no. Such an audacious claim would properly be rejected. After all, copyright is a government-granted monopoly, a privilege given only to those who “promote the Progress of Science and useful Arts.” U.S. Const. Art. I, § 8, cl. 8. And there is no basis to think that felons should be rewarded with a government-sanctioned monopoly for the tangible fixation of their felonious activity. In short, brazen and willful violations of the law cannot and, indeed, should not result in the award of copyright privileges. The undisputed evidence in this suit shows that Plaintiff committed a felony in creating the subject matter of this lawsuit: the graffiti work known as “Vandal Eyes.” As the very name of his graffiti work (and the video RIME has posted on his website about his creation) admits, “Vandal Eyes” was an unapologetic act of vandalism and trespass. And, contrary to his conclusory and unsupported allegation in his Complaint, RIME unequivocally did not seek or obtain any permission for his actions from the owner of the building at 4559 Wesson Street, Detroit, Michigan 48210 which “Vandal Eyes” defaced. In short, true to its title, “Vandal Eyes” was a felony“.

 If you want to know more about the Black Dahlia murder take a view here.

*** ***

UPDATE May 4, 2016 – The reply by RIME is appropriate:

By defendants’ logic, that there would have been no copyright protection for This Land is Made for You and Me if it were written by Woody Guthrie while “trespassing” on somebody’s meadow. Or for Jack Kerouc if he wrote On the Road using a pilfered typewriter. Or for William Burroughs if he wrote Naked Lunch while under the influence of an illegal substance.

UPDATE May 11, 2016 – The reply by Moschino and Scott:

Contrary to Plaintiff’s implications, Defendants are not arguing that Plaintiff should lose his copyright because he is a bad person or has engaged in immoral conduct during his life. Clearly, these distortions of Defendants’ arguments are simply a diversion and, in any event, irrelevant to the issuance of a copyright. And it is not a necessary consequence of Defendants’ argument that the copyrights to Burroughs’s Naked Lunch would be invalid if he wrote it while under the influence of an illegal substance or Kerouac’s On the Road invalid if written on a pilfered typewriter. In these inapposite examples, the illegal action (using unlawful substances or stealing a typewriter) is not inextricably related to, or a but for cause of, the creation of the work over which protection is sought. In other words, neither Naked Lunch nor On the Road is an illegal work in and of itself. But Plaintiff’s “Vandal Eyes” is; it is literally tangible residue of an act of trespass and vandalism. Thus, Defendants’ argument is much more pointed and limited than Plaintiff allows. Specifically, Defendant asserts that Plaintiff should not be vested with a property right which he can enforce against the world (i.e., a copyright) when the very act which purportedly gave rise to the vesting of that property right was an illegal act (trespass and vandalism) that involved Plaintiff brazenly violating someone else’s property rights. In said context, Defendants’ analogy to the Black Dahlia murderer claiming a copyright in his unique slashing marks is entirely apt. Plaintiff is no murder, of course; but he is no more entitled to a copyright for his illegal conduct than the Black Dahlia murderer is. Plaintiff’s original murals where he obtained authorization from a property owner may well be copyrightable. Those, however, that are the result of trespass and vandalism are not.

It sounds, in my opinion, that the Defendants don’t consider the distinction between the work and the physical support that embodies it and the legal implications of this distinction (see below conclusion § 7).

Another argument in Defendants’ replies is the following:

In addition, it is not just copyright law that declines to grant intellectual property rights to illegal actions. Copyright’s neighboring intellectual property field—trademark law—does not extend protection to illegal works either.

As stated below (conlusion § 4) unlike Copyright Act, Lanham Act prohibits registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt”. There are many reasons for these different provisions. The difference is in the European laws as well.

*** ***

Coming back to copyright issues, the Defendants’ argument is that “as a brazenly unlawful and felonious act, “Vandal Eyes” is not entitled to copyright protection” and that “works that are the product of illegal conduct are not entitled to copyright protection” . To support their arguments the Defendants argue that “the only court to be posed the question of copyright protection for illegal graffiti strongly implied that the
graffiti placed on a building without permission of a property owner would not be entitled
to copyright protection”, citing  Villa v. Pearson Education, Inc., No 03-C3717, 2003 WL
22922178, *2-3 (N.D. Ill. Dec. 9, 2003). The Defendants use the term “implies” because in Villa “the court does not state explicitly that a finding of illegality would preclude copyright protection, and engages in no substantive discussion of the issue” (as explained by Janison Davies, “Art Crimes? Theoretical Perspectives on Copyright Protection for Illegally Created Graffiti Art“,  in Maine Law Review, Vol. 65: 31).

So the Defendants conclude:

In short, regardless of how much the literati and cognoscenti may romanticize graffiti, it is not entitled to copyright protection if it constitutes vandalism and trespass. After all, graffitists shun respect for the property rights of those who own the defaced buildings upon which they scrawl graffiti without permission. It would be perverse, indeed, to allow such purveyors of graffiti to start enforcing their own purported intellectual property rights when they do not demonstrate respect for the property rights of others“.

Other arguments are less interesting (ownership of the copyright; involvement of Scott in the design; Defendants’ knowledge to infringe copyright; presence of CMI in the mural; reiteration of Rogers defense and nominative fair use defense; Defendants’ knowledge of RIME identity appropriation; transformative use).

But we will never read the Court decision on the point in this case. The Parties, exactly the day after Defendants’ last motion, filed a “Notice of Settlement-in-Principle and Stipulation to Stay All Future Dates“.

UPDATE: May 4, 2016 With the Plaintiff’s memorandum filed on May, 2, we learn that while the parties agreed to all material terms of a settlement considering it a done deal,  Defendant Scott “ultimately torpedoed the settlement, making new demands after the material terms had been agreed upon and on the eve of the court’s early deadline to file summary judgment”.

The first Plaintiff’s argument is that RIME was not guilty of trespass or vandalism because the mural was made after invitation of the Detroit Beautification Project.

Then RIME points out that the right of reproduction is essentially in the  intangible work, which is protected independently from its physical embodiment, while if there were a violation of law, the illicit conduct of the artist is eventually punished otherwise in our legal system, without compromising the workings of the copyright laws.

UPDATE: May 11, 2016 – Moschino replies that the settlement agreement was solely between RIME and Moschino and that the Plaintiff reneged on his agreement—excusing his behavior on the failure to come to a separate agreement with Scott. Scott in a separate reply says that there was never any settlement agreement between Plaintiff RIME and Defendant Scott

*** ***

How to answer to the question is illegally created street art protected by copyright against alleged infringements?

Moschino and Scott remind the Villa decision.

Hiram Villa is an artist who paints wall murals and is known by his fans by the name UNONE. Many of Villa’s works consist of stylized letters spelling UNONE. One of Villa’s wall paintings is entitled “UNONE Piece 20.” Villa owns the copyright in UNONE Piece 20. Defendant Brady Publishing published a book entitled Tony Hawk’s Pro Skater 2 Official Strategy Guide. In the book, Brady published a repainted reproduction of UNONE Piece 20 without Villa’s permission. Villa acted against Brady alleging copyright infringement, unfair competition, invasion of privacy, and appropriation. In the motion to dismiss Brady  advance three arguments in support of the motion. Brady contends that the court previous rulings in this case preclude Villa from asserting the copyright claim in his latest complaint. Then also asserts that the mural in question is not protected by copyright, either because it is illegal graffiti or because it incorporates words or letters.

The memorandum opinion of United States District Court, N.D. Illinois (here) denies the motion to dismiss arguing that the argument that the mural is not protected by copyright because it is illegal graffiti turns on questions of fact; thus neither belongs in a 12(b)(6) motion, and “would require a determination of the legality of the circumstances under which the mural was created“. The parties reached an agreement and about this point we don’t have (as it will happen in RIME case) a substantive decision. Anyway the decision could be read, in the eyes of alleged infringers, as an evidence that courts may be reluctant to grant copyright protection to a piece of unsanctioned street art (see Cathay Y.N. Smith “Street Art: an Analysis under U.S. Intellectual Property Law and Intellectual Property’s Negative Space Theory”, in DePaul J. Art Tech & IP Law, Vol. . XXIV: 265 – 266).

Another argument is the unclean hands defense. Moschino and Scott argue:

Finally, the adoption of the unclean hands doctrine in prior precedent makes clear that the illegal conduct of a plaintiff can and should invalidate his copyrights, particularly where, as here, there is a strong nexus between the illegal conduct and the copyrights. See Saxon v. Blann, 968 F.2d 676, 680 (8th Cir. 1992) (affirming, based on plaintiff’s illicit conduct, application of unclean hands defense against enforcement of copyright in infringement suit); Affiliated Enters., Inc. v. Gantz, 86 F.2d 597, 599 (10th Cir. 1936) (holding that the purportedly copyrighted subject matter was “too closely akin [to an illegal lottery] to have the protection and assistance of a court of equity”); Stone & McCarrick, Inc. v. Dugan Piano Co., 220 F. 837, 841 (5th Cir. 1915) (rejecting copyright protection in “advertising matter the effect of which is to mislead and deceive the public”); Hoffman v. Le Traunik, 209 F. 375, 379 (N.D.N.Y. 1913) (“to be entitled to be copyrighted, the composition must be . . . free from illegality”). As NIMMER ON COPYRIGHT notes, when a plaintiff commits wrongdoing “of serious proportions,” the unclean hand defense precludes enforcement of what would otherwise have been a valid copyright. See 1-3 NIMMER ON COPYRIGHT, § 13.09[B]. Felonious trespass and vandalism committed in the very fixation of the plaintiff’s work in a tangible medium undoubtedly constitute wrongdoing of a serious proportion“.

The origins of the unclean hands defense and of the obscenity defense are explained by Bonnie Wilkinson, “Recent Development” in 46 Fordham L. Rev 1037 (1978) and T. Leigh Anenson, “Limiting Legal Remedies: An Analysis of Unclean Hands, in 99 Kemtucky L Journal 63 (2010-11).

It is important to remind that the Fifth Circuit decision Mitchell Brothers Film Group v. Cinema Adult Theater 604 F.2d 852 (1979) rejected the unclean hands defense in a copyright infringement action.

Mitchell Brothers had the exclusive right to distribute and exhibit the movie “Behind the Green Door” starring Marilyn Chambers (here is the trailer) . An operator of the Cinema Adult Theater in Dallas, acquired several pirated copies of the film and showed them in his theater. Plaintiffs then brought suit in federal district court alleging copyright infringement and seeking both injunctive relief and damages. Defendants contended that the copyright on “Behind the Green Door” was invalid because the movie was obscene and therefore under the equitable rubric of inclean hands plaintiffs were barred from relief.

The Court decided:

The maxim of unclean hands is not applied where plaintiff’s misconduct is not directly related to the merits of the controversy between the parties, but only where the wrongful acts “in some measure affect the equitable relations between the parties in respect of something brought before the court for adjudication.” Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245, 54 S.Ct. 146, 148, 78 L.Ed. 293, 297 (1933). The alleged wrongdoing of the plaintiff does not bar relief unless the defendant can show that he has personally been injured by the plaintiff’s conduct. Lawler v. Gillam, 569 F.2d 1283, 1294 (CA4, 1978). The doctrine of unclean hands “does not purport to search out or deal with the general moral attributes or standing of a litigant.” NLRB v. Fickett-Brown Mfg. Co., 140 F.2d 883, 884 (CA5, 1944). Here it is clear that plaintiffs’ alleged wrongful conducthas not changed the equitable relationship between plaintiffs and defendants and has not injured the defendants in any way“.

Just consider that the only defendant that could be harmed by the (street artist) plaintiff’s conduct and so use the unclean hands defense would eventually be the property owner (and not the copyright infringer).

Then citing Chafee, Coming into Equity with Clean Hands, 47 Mich.L.Rev. 1065, 1068 (1947)

The penalties for obscenity are defined by statute. Why should the courts add a new penalty out of their own heads by denying protection to a registered copyright which complies with every provision of the copyright act? . . . I think that the added penalty is justifiable only if there is a serious need for extra pressure to induce obedience to the criminal law. In the obscenity situation, this need is not obvious“.

Just replace obscenity with the illegal action of the street artist on someone else’s property.

And finally:

In the present case the copyright holders’ actions are not inconsistent with any policy of the copyright laws. The infringers’ attempt to immunize their illegal acts by wrapping themselves in the mantle of a “public injury” caused by plaintiffs is antithetical to the purpose of these laws. The effort cannot be sustained. In an appropriate case a misuse of the copyright statute that in some way subverts the purpose of the statute the promotion of originality might constitute a bar to judicial relief. This is not such a case. The unclean hands doctrine was not applicable“.

Similarly unclean hands doctrine should not be applicable to unsanctioned street art.

*** ***

Conclusion

  1. Copyright law  grants copyright protection to original works of authorship fixed
    in any tangible medium of expression (and the artwork on a mural even if ephemeral  meets copyright’s fixation requirement).
  2. Nature of a work (the illicit content of the work, but a fortiori the illicit process to realize the work) does not affect the rights or defenses that the Copyright Act provides.
  3. If the illicit process of creation should affect the copyrightably of the work also an artwork realized with stolen spray cans or a painting of a landscape created by an artist trespassing  someone else’s property would not be protected.
  4. Unlike Copyright Act, Lanham Act prohibits registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt”. The reasons  for denying the trademark registration in this context, is the potential risk that the government would be viewed as approving of such a scandalous mark (Timothy R. Holbrook, The Expressive Impact of Patents, 84 WASH. U. L. REV. 573); trademarks have characteristics of private goods, whereas copyright has characteristics of public goods; unlike copyright, trademark law is not concerned with the dissemination of knowledge and does not enrich the public domain; trademarks are concerned with the marketplace of goods while copyright mainly concerns with the marketplace of ideas.The First Amendment protect the right to freedom to speech.
  5. The unclean hands defense should not be applicable when there is not a strong nexus between the illegal conduct and the copyrights, and if the Defendant (the infringer) is not directly harmed by the illegal conduct (the only one directly eventually affected by illegal graffiti is the property owner  and not the third party infringer).
  6. Denying a protection against infringements due to the alleged illegality of the process of creation would lead to the unaccettable result to award a profit deriving from the asserted illicit conduct of the artist  to a third party (the infringer).
  7. Copyright law distinguishes between the work and the physical support that embodies it. Consequently while the illicit conduct of the street artist is punished with civil sanctions and criminal penalties (the unlawful process on the physical support), copyright should be neutral towards works even if created by illegal means.

For these reasons illegal street art should be protected by Copyright Law against infringements.

 

*** ***

Bibliography:

Anenson, T. Leigh. “Limiting Legal Remedies: An Analysis of Unclean Hands.” Kentucky Law Journal 99 (2010).

Chafee, Zechariah. “Coming into Equity with Clean Hands. I.” Michigan Law Review 47.7 (1949): 877-906

Davies, Jamison. “Art Crimes: Theoretical Perspectives on Copyright Protection for Illegally-Created Graffiti Art.” Me. L. Rev. 65 (2012): 27.

Grant, Nicole A. “Outlawed Art: Finding a Home for Graffiti in Copyright Law.” (2012).

Haber, Eldar. “Copyrighted Crimes: The Copyrightability of Illegal Works.” Yale Journal of Law and Technology 16.2 (2015): 5.

Holbrook, Timothy R. “Expressive Impact of Patents, The.” Wash. UL Rev. 84 (2006): 573.

Lerman, Celia. “Protecting artistic vandalism: Graffiti and copyright law.” NYU Journal of Intellectual Property and Entertainment Law (2012).

Roundtree, Al. “Graffiti Artists Get Up in Intellectual Property’s Negative Space.” Cardozo Arts & Ent. LJ 31 (2012): 959.

Schwender, Danwill. “Promotion of the Arts: An Argument for Limited Copyright Protection of Illegal Graffiti.” J. Copyright Soc’y USA 55 (2007): 257.

Smith, Cathay YN. “Street Art: An Analysis Under US Intellectual Property Law and Intellectual Property’s’ Negative Space’Theory.” DePaul Journal of Art, Technology & Intellectual Property Law 24.259 (2014).

Wilkinson, Bonnie. “Recent Developments”. Fordham L. Rev. 46.1037 (1978)

RIME vs. Moschino: does illegal street art have copyright protection?

Maya Hayuk vs. copyright infringers: part I

Maya Hayuk is one of the most active street artist in defending copyright against infringers.

At least seven times  she has been in front of a judge alleging copyright infringement:

01) Hayuk v. Urban Outfitters (Filed: July 30, 2009 as 1:2009cv11281)

02) Hayuk v. RCA Records –  Sony Music Entertainement (Filed: February 24, 2012 as 1:2012cv10357)

03) Hayuk v. Coach Services – Midley Inc. (Filed: August 19, 2014 as 1:2014cv06668)

04) Hayuk v. Sony Music Entertainement – 42West, LLC, Paradigm Talent Agency, LLC, Epic Records, Inc., Bill Young Productions, Inc. and Sara Bareilles (Filed: August 19, 2014 as 1:2014cv06659)

05) Hayuk v. Target Corporation – Grand Image, Ltd. (Filed: October 10, 2014 as 1:2014cv08182)

06) Hayuk v. Heinsensport, Inc. (Filed: June 9, 2015 as 1:2015cv044538)

07) Hayuk v. Starbucks Corporation – 72andSunny Partners, LLC (Filed: June 23, 2015 as 1:2015cv04887).

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As explained in the most recent complaints, Maya Hayuk is a well known artist:

“Hayuk’s career includes more than 150 group and solo gallery shows, installations, and murals throughout the United States and in more than a dozen foreign countries on five continents. Her artwork has been published in numerous books and magazines and has been featured on countless websites“.

Hayuk’s work has been featured widely in popular online and print publications, such as The New York Times (United States), Huffington Post (United States), Juxtapoz Art & Culture Magazine (United States), Hypebeast (Hong Kong), Arrestedmotion (United States), Laughing Squid (United States), Web Urbanist (United States), NYLON Magazine (United States), Graffiti Art Magazine (France), and StreetArtNews (United States)“.“Hayuk’s artwork has also been extensively reported on in art-related blogs, in news articles, and is regularly shared through social media” also by famous people like the performing artist Usher.

Hayuk is often commissioned to paint murals. Hayuk’s mural commissions include work for Facebook (Menlo Park, California), Longchamp (London, England), Lane Crawford (Beijing, China), DGI-byen (Copenhagen, Denmark), Bonnarroo Music and Arts Festival (Manchester, Tennessee), Columbia University (New York, New York), City of Toronto (Toronto, Canada), and Form Contemporary Craft and Design (Perth, Australia),among others”.

Hayuk has selectively licensed her artwork for use on, among other things,apparel, eyewear, and consumer electronics. For example, Hayuk has licensed her artwork to such companies as Billabong, Microsoft, Sony Electronics, General Motors, Cantao (Brazil), Vans, Reebok, Dell Computers, Burton Snowboards, among others“.

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In the  Urban Outfitters case, discussed in front of the District Court of Massachusetts, the artist alleged to have created in November 2007 an original and distinctive work of art entitled Pilgrim originally exposed in an art gallery in New York. The work has been registered in the United States Copyright Office. On January 24, 2008,  Maya Hayuk was approached  with an offer to license her work for apparel and housewares, but the artist declined the offer. Urban Outfitters proceeded anyway to use Maya Hayuk’s work without her consent, producing, promoting and selling a t-shirt that the artist assumes to be an exact copy of (or substantially similar to) her artworks (Pilgrim and other artpieces). The unauthorized use of Hayuk’s artwork is an infringement of  the artist’s copyright for which she is entitled to damages and injunctive relief.

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(on the left Pilgrim, Maya Hayuk artwork; on the right the t-shirt)

 

The Defendants (Urban Outfitters and New Name, the designer and producer of the t-shirt) noted that the case should be dismissed for lack of jurisdiction as to New Name and, considering that New Name would be an indispensible party, the entire case should be dismissed.

On the other hand two major issues were considered in the defenses of plaintiff and defendant.

 

A. Substantial similarities

The first issue is related to the copyright infringement: plaintiff must prove:

(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.

Particurarly with respect to the second element, according to the plaintiff, copying may be established by showing (that the defendant had access to the copyrighted work and) that the allegedly infringing work is substantially similar to the copyrighted work. Lotus Development Corp. v. Borland Intern., Inc., 49 F.3d 807, 813 (1st Cir. 1995).

Minor differences do not defeat a claim of infringement.

Whether two works are substantially similar should be determined by the “ordinary observer” test (Segrets, Inc. v. Gillman Knitwear Co., Inc., 207 F.3d 56, 62; 1st Cir. 2000):

The test is whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectable expression by taking material of substance and value”.

Hayuk enumerates the striking similarities between her artwork and the t-shirt. Moreover the plaintiff asserted that “ordinary observers would unhesitatingly conclude that the T-shirt is substantially similar to Hayuk’s preexisting works of art“.

Urban Outfitters replied on the point that the idea (of interlocking V’s) is entitled to no protection – it is only the expression that matters. Concrete Mach. v. Classic Lawn Ornaments, 843 F.2d 600, 606 (1st Cir. 1988) (“An artist can claim to ‘own’ only an original manner of expressing ideas, not the ideas themselves”).

So “substantial similarity refers only to the expression of the artist’s concept, not the underlying idea itself; mere identity of ideas expressed by two works is not substantial similarity giving rise to an infringement action. An artist can claim to ‘own’ only an original manner of expressing ideas, not the ideas themselves.” Concrete Machinery, 843 F.2d at 606 (1st Cir. 1988); Rice v. Fox Broad., 330 F.3d 1170, 1174 (9th Cir. 2003) (“similarities derived from the use of common ideas cannot be protected; otherwise, the first to come up with an idea will corner the market”)“.

Here, according to the defendant, the expression is not substantially similar:  “intersecting lines and shapes are heavily used, with stacked and intersecting V’s being made prominent by famous artists such as Frank Stella and Kenneth Nolan” and “any similarities between the two pieces of work relate only to basic ideas that are fully within the public domain and the actual way these ideas are expressed in the two works is completely different“.

 

B. Limitation of Damages

Maya Hayuk assumes to be entitled to recover damages and to be required only to prove gross revenues from the sale of the infringing t-shirts; then the burden shifts to the defendant to prove deductable expenses and the elements of profits atributable to factors other than the copyrighted work.

Speaking about the elements of profit attributable to factors other than the copyrighted work according to 17 U.S.C. § 504 b , Urban Outfitters assumes that “all accused infringement is subject to this apportionment (…). One fair method is to apportion away the profits attribuable to the popularity of defendants or the use of features in the public domain or similar to features in the public domain” (see Walker v. Forbes, 28 F 3rd 409, 412-13 4th Cir. 1994; Rogers v. Koons F 2d at 313; Caffey v. Cook 409 F Supp. 2d 484, 507 S.D.N.Y. 2006) “or modification by defendants” (Frank Music Corp. V. Metro-Goldwin-Mayer Inc., 886 F. 2d 1545, 1549 9th Cir. 1989).

Urban Outfitters adds that “it is self-evident that Urban’s sales generally come from the quality of the goods, pre-existing reputation, popularity as a retailer. People buy clothing at Urban Outfitters (and pay a premium) because of the materials used, the feel of the fabric, and Urban’s reputation as an International retailer with a particular image –all things other that the design on the t-shirt“. Urban Outfitters suggests a 66% reduction.

Urban Outfitters considers to be entitled to general overhead deduction even if not able to determine  specifically whether or not the overhead contributed to the sale of the specific infringing items. According to the defendant it should be allowed to calculate overhead in proportion to the number of infringing sales versus the percentage of total sales as an acceptable method for estimating overhead costs (New Line Cinema Corp. v. Russ Berrie & Co., Inc., 161 F. Supp. 2d 293, 303 S.D.N.Y. 2001).

According to the plaintiff the defendant is not allowed to deduct neither general overhead citing In Design v. Lauren Knitwear Corp., 782 F. Supp. 824, 832 (S.D.N.Y 1991) (denying deduction for overhead where defendant did not prove specifically how each item of overhead contributed to the infringing  items); nor taxes for t-shirts sold after the reception of the notice of copyright infringement.

At the end the case was settled after mediation.

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Target is a “big box store” with over 1,700 retail locations throughout the United States, selling various products including home decor. Hayuk alleges that Target sold to the general public a printed canvas titled “Urban Sphere”. The canvas bears a substantial similarity to one or more of the Hayuk works. Such unauthorized use constitues an infringement of Hayuk’s copyright for which she is entitled to damages and injuctive relief.

 

Target denies to have infringed Hayuk’s copyright,  assumes that to the extent the works are similar, those similarities are not subject to Hayuk’s copyrights, that claims are however barred by the doctrine of fair use, that the works are not substantially similar, that the plaintiff attempts to protect uncopyrightable artistic style.

The case has been soon dismissed with prejudice, and probably has been settled.

 

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Heisensport owns and controls the brand Nancy Gonzalez, a designer handbag label. The handbags are sold through Nancy Gonzalez boutiques and luxury retailers.

Maya Hayuk assumes that Heisensport without authorization “manufactured, displayed, distributed, offered for sale, and sold a collection of Nancy Gonzalez handbags and clutches bearing nearly identical patterns to Chem Trails Wynwood” one of the most famous Hayuk’s wall (artwork copyrighted). “These handbags included the Woven Crocodile Flap Clutch Bag (retail price $1,650.00), the Large Patterned Crocodile Clutch (retail price $2,750.00), and the Small Woven Satchel Bag (retail price $3,050.00)“.

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Such unauthorized use constitutes an infringement of Hayuk’s copyright for which she is entitled to damages and injunctive relief. The artist complains also about the removal of her signature (originally put on the wall) protected by 17 U.S.C. 1202(b).

The case has been voluntary dismissed with prejudice by Maya Hayuk before the defendant’s answer, and probably has been settled by the parties.

Maya Hayuk vs. copyright infringers: part I

Norm vs. McDonald’s

Norm is an acclaimed street and tatoo artist based in Los Angeles well known in the world for his unique signature “NORM” and for the original arrangements and coloration of lettering.

On March 25 he  filed a complaint in front of California Central District Court ( case number 2:2016cv02063 ) against McDonald’s alleging “blatant,  unlawful,  and pervasive  copying  and use of Plaintiff s  artwork,  name,  and  trademark  in  advertising  campaigns  around the world,  without  his consent“.

Norm assumes that McDonald’s “consciously decided  to paper  the  walls  of  its restaurants  around  the  world  with Norm’s name, artwork,  signature, trade name,  trademark,  and persona” and that McDonald’s  “installed, and continues  to  install,  without  permission,  unauthorized  copies,  photographs, and/or depictions of this work  as the wallpaper  in dozens of its McDonald’s  restaurants   in Europe  and Asia“. The work  of art at issue  in the litigation  is currently  on display  in Brooklyn, New York, 31 Bartlett Street, is titled “Norm Fire Escape on Bartlett” and registered with the United States Copyright Registration Office (see here).

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(picture from the complaint)

 

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(picture from beautifuldecay.com)

Norm assumes that “McDonald’s’ conduct has caused, is currently causing,and is substantially  likely  to continue to cause mistake and confusion in the minds of consumers,  as well  as to deceive them regarding  whether Norm  endorses, sponsors, or  is  in  any  way affiliated  with  McDonald’s.  In  reality, Norm  does  not endorse, sponsor, or affiliate with McDonald’s in any way”.

Norm explains the impact of the unauthorized use made by McDonald’s of his works assuming that sponsors and business partners could no longer do business with him due to his perceived affiliation with McDonald’s and he lists examples of contracts cancelled because sponsors and partners don’t want to associate themselves with an artist that displays his art in McDonald’s restaurants: “the projected value of all the relationship destroyed by McDonald’s unauthorized use of Norm’s work exceeds $ 10 millions“.

Norm alleges as a first claim Copyright Infringement, as a second claim Unfair Competition in violation of section 43 (a) of Lanham Act 15 U.S.C. 1125 (a), as a third claim Misappropriation of Likeness under Civil Code Section 3344, as a fourth claim False Advertising in violation of California Business and Professions Code Section 17200 and seq.

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The story behind this case is a bit more complex and is described here , here and here (comment by Jake Dobkin).

McDonald’s basically used in Europe and Japan without authorization pictures taken from a book by Hugo Martinez with works by Norm, but also by Rev and Cost.It sounds that Hugo Martinez obtained compensation for the use of the photos.

But the case with the artists (at the moment only Norm) is actually in front of the court.

UPDATE – MAY 14 – The plaintiff filed on May, 5 a Notice of Voluntary Dismissal without prejudice.

 

 

 

 

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Norm vs. McDonald’s