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“.

*** ***

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.

foto(1)

(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.

*** ***

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.

 

*** ***

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)“.

foto 1

foto 2

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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.

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Maya Hayuk vs. copyright infringers: part I

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