5Pointz: a stronger legal protection for street art … or not?

The 1709 Blog is delighted to host the following contribution by Angela Saltarelli (Chiomenti) on the recent decision of the US District Court for the Eastern District of New York in the in the 5Pointz case.

Here’s what Angela writes:

“The US District Court for the Eastern District of New York has recently ordered a real estate developer to pay millions of dollars in damages to a group of artists to compensate them for destroying their 45 famous aerosol artworks which were at the 5Pointz building in Queens, New York City.

5Pointz was a former factory owned by Jerry Wolkoff, who bought the 19^th century Neptune Meter factory in Long Island City in Queens in the early 1970s. He started leasing the space as artists’ studios in the 1990’s. As a result, street and graffiti artists started using his building to create their works. In 2002, Wolkoff appointed famous street artist Jonathan Cohen as 5Pointz’s de facto curator. 5Pointz thus became soon a tourist attraction drawing thousands of daily visitors, including busloads of tourists. Movie, television and music video producers used 5Points as a location.   

Starting in 2011, there were rumours that Wolkoff wanted to destroy 5Pointz and turn this space into luxury condos. Subsequently, Cohen filed an application before the City Landmark Preservation Commission to preserve the site as one of cultural significance, but the application was denied because the artistic work was of too recent creation. 

After the City of New York declined to declare the building a landmark, 21 artists (including Mr Cohen) decided to sue Wolkoff and four of his real estate entities asking for a preliminary injunction to prevent the planned demolition. As soon as the Court denied the plaintiff’s application for preliminary injunction, Wolkoff whitewashed the entire complex overnight without waiting the final Court’s decision.

After the demolition, the plaintiffs’ requests for damages went on claiming that the defendants had acted contrary to the Visual Artists Rights Act (VARA), which introduced a new provision into the US Copyright Act added in 1990 to comply with the Berne Convention granting some moral rights, namely the right of attribution and the right of integrity.

As to the right of integrity, the author can prevent the destruction of the work of visual art when can be prejudicial to artist’s honor or reputation or when the work is of recognized stature, namely when the visual artwork is viewed as meritorious and this stature is recognized by art experts or other members of the artistic community. The Court found that 28 of 49 destroyed works at 5Pointz achieved recognized stature, and eight more were modified to the prejudice of the artists’ honour or reputation. 

One of the exception raised by the defendants in this case was that street art works are ephemeral per se and that VARA should not afford protection to temporary works. Before this case the application of VARA to the works of exterior aeorosol artists had not been discussed in courts.

The court rejected this legal approach saying that VARA resolves the tension between building owners’ rights and the artist’ rights, including also temporary works. Indeed, Section 113 of VARA provides for two hypotheses when a protected work of art has been integrated into a building: (i) when the artwork cannot be removed from the building (in this case the artist may sue to prevent the destruction of the work unless he waived this right) and (ii) when the artwork can be removed, so contemplating that the work can be temporary.

In the latter case, VARA gives the opportunity to the artist to save the work upon receipt of a 90 days’ written notice from the building owner. If the artist fails to remove within the 90 days or if the owner could not notify the artist after making good effort, the artist’s VARA rights are deemed waived and the owner may destroy them without consequences. 

The Court finally held that the artists’ works were legally protected under VARA and that each artworks could have been removed from 5Pointz walls. Then the Court stated that the defendants broke the law in willfully destroying 5Pointz before having the Court’s permit and failing to give the 90 days’ notice to the artists to remove their works provided by VARA.

The Court awarded the owner to pay the maximum statutory damages under VARA for each works for the whole sum of USD 6,750,000.

The decision was greeted with enthusiasm by the artistic community as a further validation of street art. For the future, more real estate owners will probably give artists the time to remove their works.

On the other side, this decision could also hinder street art as many real estate owners could be reluctant in the future to authorize artists to use their walls as Wolkoff did in 5Pointz.”

Cabin Fever: Is Reconstructing a Work to Preserve It Copyright Infringement?

Lolita wrote about this copyright infringement suit on last week’s CopyKat. It deserves a second glance.

Artist Cady Noland created her Log Cabin sculpture in the nineties, which is made out of wood and resembles the façade of a log cabin, along with two U.S. flags which are “an integral part of the sculpture.” The work is approximatively 12 feet high, 18 feet long, and a little less than 6 feet wide.

Art collector Wilhelm Schurmann bought the work in the nineties. He loaned it to a museum which exhibited it outside for ten years. Log Cabin was then exhibited at the Michael Janssen Gallery. However, it had deteriorated over time, and an art conservator recommended in 2010 to reconstruct it entirely with new materials and new logs. The complaint alleges that Cady Noland was not informed about this decision at the time but instead learned for the first time in 2014 that the work had deteriorated, had been reconstructed, and the decayed material thrown away.

Cady Noland has taken the position that her work has thus been destroyed, and filed a copyright infringement suit in the Southern District of New York against the Michael Janssen gallery, Michael Janssen, and Wilhelm Schurmann, claiming that rebuilding Log Cabin was copyright infringement, and that its destruction had violated her moral rights under the Federal Visual Artists Rights Act of 1990 (VARA), 17 USC § 106A.

This is not the first time Log Cabin is at the origin of a law suit. The Michael Janssen Gallery had found a buyer for the work in 2014, but Candy Nolan disowned it after discovering it had been rebuilt. The deal fell through, as the purchase agreement had a clause which directed the gallery to buy back the work if the author disowned it. The buyer then sued the gallery claiming he was owed money, but lost.

Disowning a work

VARA, 17 USCA § 106A(a)(2),  gives the authors of some works of visual arts the right “to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation. . . ." Cady Nolan used her right under VARA for Log Cabin. She also disowned her Cowboys Milking work, and was then sued in 2012 by the art dealer who had consigned it to Sotheby’s, which had to take it down from sale following the disownment. The owner of the work then sued the artist and the auction house, but lost.

A little bit of comparative law… Article L. 121-4 of the French Intellectual Property Code gives authors the right to disown their work, provided that they financially compensate the owner of the work.

Is Log Cabin protected by copyright?

The complaint in our case informs that Log Cabin is not registered with the Copyright Office, as copyright registration has been refused. Plaintiff is seeking to have her ownership of Log Cabin’s copyright recognized by a declaratory judgment. 

Since Cady Noland has disowned her work, should her request be interpreted as asking the court to declare that she owned the copyright in the original Log Cabin, now destroyed? Or is Cady Nolan only, or also, asking the court to declare that she owns the copyright in Log Cabin, in its current state?

For the sake of discussion, let’s assume that Cady Noland owns Log Cabin’s copyright.

Is rebuilding Log Cabin copyright infringement?

Section 106 of the Copyright Act grants several exclusive rights to an owner, among them the right to reproduce the work: “the owner of copyright under this title has the exclusive rights to … reproduce the copyrighted work in copies or phonorecords.” If Log Cabin is indeed protected by copyright, and if Cady Nolan owns that copyright, only she has the right to reproduce it. Cady Nolan considers the reconstructed Log Cabin an unauthorized copy, not an act of preservation.

VARA gives authors of a work of visual arts the right “to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and… to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.”

Does the owner of a work protected by copyright have a duty to preserve it?

Cady Nolan also claims that Wilhelm Schurmann was negligent or indifferent in preserving the work, which led to its deterioration, and thus its destruction, leading to the violation of Plaintiff’s copyright and moral rights. 

The case is an Art Law professor’s dream come true…

Saving Picasso’s Le Tricorne and other pre-1991 Artworks: Can VARA help?

Mira T. Sundara Rajan's blogpost last month, "Picasso and Potato Chips", on this weblog here, attracted a good deal of attention and a number of comments.  In this, a sequel to her earlier blog post, Mira elaborates on the theme of art works that are damaged or destroyed when moved, also addressing a number of issues raised following her earlier post. This is what she writes:

Saving Picasso’s Le Tricorne and other pre-1991 Artworks: Can VARA help?

Many thanks to readers for their interest in the issue of moral rights in the Picasso artwork whose fate quite literally “hangs” in the hands of the owners of the Four Seasons Hotel property in New York. In my earlier piece, I focused on the concept of using law to prevent the destruction of artworks. This issue has been debated by copyright experts over the years because, it is argued, the destruction of an artwork may or may not have a negative impact on the reputation of the artist – the test established by Article 6bis of the Berne Convention, and mirrored in most copyright laws in the world, for claiming a violation of the artist’s right of integrity (in the context of Amar Nath Sehgal v Union of India, I commented: “destruction of a work can prejudice an author’s reputation by reducing the volume or quality of his creative corpus”, language reproduced by the court in para 31 of the judgment; see also para. 41). I noted the interesting point that U.S. law, in the form of the Visual Artists Rights Act of 1990, explicitly seeks to prevent works from being destroyed.

To be precise, section 106A (a) (3) (B) provides that the author “shall have the right— ...(B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.” This provision is “subject to the limitations set forth in section 113 (d),” which deals with artworks incorporated into, or installed in, buildings. In the case of a work that is “incorporated in or made part of a building in such a way that removing the work from the building will cause the destruction...of the work,” and the artist has “consented to the installation of the work in the building either before the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, or in a written instrument executed on or after such effective date that is signed by the owner of the building and the author and that specifies that installation of the work may subject the work to destruction, distortion, mutilation, or other modification, by reason of its removal,” the right to prevent destruction “shall not apply.” If, on the other hand, the work “can be removed from the building without the destruction... of the work,” then the owner needs to make a “diligent, good faith attempt ... to notify the author of the owner’s intended action affecting the work of visual art.” Once such notice has been provided, the onus is on the artist to respond, and to “remove the work or to pay for its removal.” If the artist fails to respond to good faith attempts to notify him or her of the intention to move it, the owner is within his or her rights to remove the artwork after 90 days.

The scheme overall seems well-focused on protecting murals and other works installed in buildings, like the Picasso, from destruction (the approach under California’s Art Preservation legislation was different; see California Civil Code, s. 987(h). Presumably, this provision has been pre-empted for post-VARA works, and those pre-VARA works that qualify for VARA protection). As I noted previously, when compared to moral rights legislation worldwide, and to Berne, U.S. law seems quite ambitious in this respect.

The specific question of whether VARA could apply to the Picasso artwork in this case, or to another artwork in similar circumstances, calls for several legal hurdles to be leapt. The key issues are the passage of title in the original work, duration of VARA rights, standing, and the concept of a work of “recognized stature” under VARA.

Let’s deal with title first, since it affects the other issues. VARA came into effect in 1991, but that leaves us with a factual paradox – a statute that seeks to protect artworks confronted the problem of what to do about artworks that already existed at the time the statute was adopted. Harm to an artwork is harm, after all, whenever the art was first created.

VARA doesn’t exclude pre-existing artworks; rather, it tells us that, for artworks created before 1991, the issue is one of whether or not the original artist has retained title in the artwork. Section 106A (d)(2) provides that, for “works created before the effective date set forth in subsection (a) but title to which has not, as of such effective date, been transferred from the author,” the rights “shall be coextensive with, and shall expire at the same time as, the rights conferred by section 106” – the copyright provisions.

Copyright aficionados will sense a potential issue here, as ownership of an artwork and copyright in that work are distinct from one another. Which, exactly, does “title” mean? According to experienced VARA (and CAPA) litigator, Brooke Oliver, the transfer of “title” under VARA should be taken at face value: it simply means transfer of ownership. In other words, if the artwork has been sold by the artist prior to 1991, VARA cannot be invoked. Oliver cites William Patry’s famed copyright treatise, noting:

“Ownership,” not “title” is the term of art used throughout the Copyright Act when referring to ownership of copyright. The statutory language in Section 106 (a)(d)(2) refers to title to tangible property, i.e., the installed mural or sculpture. The legislative history makes clear that “title” refers to the particular copy. Both the legislative history and rationale are explained in PATRY,COPYRIGHT LAW AND PRACTICE, Vol. II at 1061 (Bureau of National Affairs 1994) c 5, The Visual Artists’ Rights Act of 1990.”" 

He explains:

“The House agreed to limit VARA to copies (including the original) of “works of visual art” created before the effective date (June 1, 1991), the title to which had not, as of that date, been transferred by the author. The term “title” refers to title to the physical copy of the work of visual art at issue, and not to title to any intellectual property rights. Id. at 1061". 

The applicable footnote also explains:

“By focusing on the title to particular copies, VARA permits retroactive application where a work created before the date of enactment may be protected as embodied in some copies, but not others. Where title to a particular copy was not transferred before June 1, 1991, the copy is protected; where title to a particular copy was transferred before that date, that particular copy is not protected.” Id. at 1061". [emphasis removed].

But this perspective is not universally shared: Nicholas O’Donnell, discussing a pending lawsuit on behalf of Los Angeles artist Victor Henderson comments:

“The effective date of VARA is June 1, 1991. This paragraph thus first means that as long as the original author (Henderson) still holds the copyright, his VARA rights will exist as long as his copyright does, and expire at the same time. Assuming that Henderson had never transferred the copyright in the 1969 mural, those rights would not have expired, and his VARA rights would still be enforceable for a previously-created work.”

... An opening for a different approach to interpretation?

William Brutocao and Eric Bjorgum, lead trial attorney and team member in the case of the famed Los Angeles mural of Ed Ruscha by Kent Twitchell point out that “a mural is [a] piece of property comprising separate ownership rights of title, possession, copyright and moral rights”.

In the case of “Le Tricorne,” the work was painted by Picasso for Serge Diaghilev, and a deeper examination would be needed to uncover the intricacies of their arrangements. We can imagine that their relationship was probably informal and not regulated by a written contract. Nevertheless, the work was made for Diaghilev and was also physically delivered into his possession for the purpose of staging the ballet; the existing artwork at the Four Seasons has already been “cut down from its original size” (see here). As noted earlier, the work is not a mural per se, but the different interests identified by Brutocao and Bjorgum would seem to apply to an artwork like this one – part of a set design prepared for a collaborative, interdisciplinary, and creative use by another artist. Per Oliver’s assessment, if title in Le Tricorne passed out of Picasso’s hands into Diaghilev’s, the artworks would clearly be beyond the reach of VARA. If, however, title to the work had remained with Picasso, and passed to his heirs upon his death – and this is something to keep in mind in relation to other pre-1991 works of art – VARA could reach the work despite the fact that it was created long before anyone had ever dreamt of the statute.

The issue of standing is also interesting, and, at a practical level, is related to the question of duration. VARA specifies that the moral rights provided by the statute are personally held by the artist and cannot be waived. For the most part, this will mean that VARA rights can only be exercised by the artist: in works created on or after the effective date of VARA, the rights endure only for the lifetime of the artist. In the case of pre-existing works that are eligible for protection, however, VARA rights will endure after the author’s death (perhaps one of the policy anomalies arising from VARA). In line with copyright practice, the heirs of the artist would be able to act after the author’s death; but, what about other organizations, to whom the artist might bequeath works and, implicitly or explicitly, rights?

For example, if an artist were to appoint an organization like the New York Landmarks Conservancy to protect his or her works for the post mortem auctoris period when they would remain under copyright protection, it would seem that the designated organization should be able to assert VARA rights on behalf of the deceased artist. Nevertheless, the general position of VARA is not to recognize the rights of public interest organizations. In this respect, VARA offers more limited protection than state statutes in at least two states, California and Massachusetts, which both allow public interest organizations to sue for integrity. Writing in the year 2000, Christopher J. Robinson aptly commented that this approach amounts to “granting a public cause of action for what are effectively community moral rights” – and these provisions in state law, which go beyond the scope of VARA, should not be pre-empted by the federal statute. Internationally, Russian copyright law, which gained some U.S. exposure in the Russian Kurier case of 1998 provides for such contingencies, stating that “any interested person” can sue for moral rights protection; Russian law also allows an author to designate a moral rights “executor” who will take care of the author’s moral rights after his or her death (see Russian Civil Code Art. 1228.2; Arts. 1266 & 1267).

“Recognized stature” is something that would need to be shown before the VARA provisions on destruction could be invoked. In the case of the Picasso, the test would seem to be easily satisfied; but the recent destruction of the murals at 5 Pointz raises some sobering reflections about the limits of courts (and others) to perceive recognized stature in contemporary and unconventional creative works (see IPKat here and here; Lexology here).

... And, what about the resale right, droit de suite, in works that are no longer owned by the original artist but sold on for ever more fabulous sums by subsequent owners? It’s beyond the scope of VARA, but California, once again in the vanguard, has its own Artists Resale Royalty Act (s. 986 of the California Civil Code, available here). The Act has faced Constitutional invalidation in the United States (2012, currently pending appeal), but the U.S. Copyright Office is interested in introducing a resale royalty in the United States to reflect the harmonized droit de suite in the European Union (see here and here). The title of the latest proposed bill?... “American Royalties, Too” (Feb. 2014).

Posted for Mira by Jeremy