Five lawsuits every artist should be familiar with

It’s not uncommon for artists to settle disputes out of court to avoid protracted litigation. For instance, in 1980 Robert Rauschenberg settled with photographer Morton Beebe after discovering that his photograph was used in Rauschenberg’s seminal work Pull (1974). The agreement included $3,000 and a copy of the work.

Whether for financial or PR reasons, the tendency to settle stifles much needed paradigm shifts in the court system. It took the Supreme Court some 38 years (from 1956-1994) to hear whether parody has an obvious claim to transformative value in a Fair Use defense. While landmark cases are few, the following list touches on a variety of legal transgressions in the arts.

5. Serra v. U.S. General Services Administration, 847 F.2d 1045 (2d Cir. 1988).

In 1979, the United States General Services Administration (GSA) selected Richard Serra to create an outdoor sculpture for installation at 26 Federal Plaza in lower Manhattan. The sculpture was commissioned under GSA’s art-in-architecture program which mandated that one half of one percent of the construction cost of federal buildings is reserved for funding artworks by living American artists.

Serra received a fee of $175,000 for building a sculpture on Federal Plaza. The contract he entered provided that “all designs, sketches, models, and the work produced under this Agreement.. . . shall be the property of [the United States].”  Furthermore, the agreement contained no provisions restricting the Government’s use of the sculpture after it was purchased.

Tilted Arc was completed and installed at Federal Plaza in 1981. All was not well following the installation of the 120 foot long sculpture. According to the Second Circuit’s factual background,

The pigeons had barely begun to roost on “Tilted Arc” before the sculpture became the object of intense public criticism. GSA received hundreds of letters from community residents and federal employees complaining about the sculpture’s appearance and its obstruction of Federal Plaza’s previously open space.

Because the sculpture created such widespread dissent, the GSA held a public hearing on the matter. Many heralded the sculpture for its artistic merit while others bemoaned the obstruction of Federal Plaza and the sculpture’s “unappealing aesthetic qualities.” In May 1985, it was decided that Tilted Arc would be relocated.

Serra filed a lawsuit in December 1986 alleging that the GSA’s decision to remove Tilted Arc violated his rights under the Free Speech Clause of the First Amendment, the Due Process Clause of the Fifth Amendment, federal trademark and copyright laws, and state law. In addition to a declaratory judgment and an injunction against removal of the sculpture, Serra sought damages in excess of $30,000,000. The district court dismissed his suit stating  that the decision to relocate Tilted Arc was “a content-neutral determination made to further significant government interests and that the hearing provided all the process that was due.”

On appeal, Serra would challenge the rejection of his free expression claim. Unfortunately, the Second Circuit did not agree with him, holding that while private works are protected under the First Amendment, nothing in that guarantee precludes the Government from controlling its own expression or that of its agents. The court continued, “Tilted Arc is entirely owned by the Government and is displayed on Government property. Serra relinquished his own speech rights in the sculpture when he voluntarily sold it to GSA.”

On March 15, 1989, Richard Serra’s Tilted Arc was removed from 26 Federal Plaza in Lower Manhattan. Just where is the sculpture today? Sold as scrap to a recycler? Chipped into bits and incorporated into a Richard Tuttle show? The answer is: None of the above. Apparently, the sculpture is languishing in a Brooklyn warehouse where it has been for the 20+ years since its removal from Lower Manhattan. According to Serra, Tilted Arc is site-specific and he will not sanction any attempts to relocate the piece.

Above all, the lesson to be learned from Serra v. U.S. General Services Administration is in the power of contract formation. When Serra entered the agreement with the GSA, he effectively relinquished control of the completed sculpture.

4. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

In 1989, Luther R. Campbell (a.k.a. Luke Skyywalker) of 2 Live Crew, wrote a song titled Pretty Woman. Based loosely the Roy Orbison and William Dees rock ballad Oh, Pretty Woman (published by Acuff-Rose), Campbell described his intent to to satirize the original work through comical lyrics:

2 Live Crew informed Acuff-Rose, Dees, and Orbison of the recording and offered to credit them with authorship of the original song in addition to paying a fee for its use. Acuff-Rose refused. A year and a quarter of a million copies later, Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker Records, for copyright infringement.

The district court granted summary judgment for 2 Live Crew, reasoning,

that the commercial purpose of 2 Live Crew’s song was no bar to fair use; that 2 Live Crew’s version was a parody, which “quickly degenerates into a play on words, substituting predictable lyrics with shocking ones” to show “how bland and banal the Orbison song” is; that 2 Live Crew had taken no more than was necessary to “conjure up” the original in order to parody it; and that it was “extremely unlikely that 2 Live Crew’s song could adversely affect the market for the original.

The Court of Appeals reversed, noting that the effect on the potential market for the original (and the market for derivative works) is “undoubtedly the single most important element of fair use” and “harm for purposes of the fair use analysis has been established by the presumption attaching to commercial uses.”

The U.S. Supreme Court did not agree. It reasoned that the presumptions by the lower court (commercial purpose of the 2 Live Crew album, etc.) amounted to a rigid application of copyright that threatened to “stifle the very creativity which that law is designed to foster.” The court noted that parody has an obvious claim to transformative value, and, like other comment or criticism, may claim fair use under 17 U.S.C. § 107 (Fair Use).

As with most things, all parodies are not created equal. The court went on to state that while parody may be a defense for some appropriation, it does not create bright line rule, rather,

[t]he threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived. Whether, going beyond that, parody is in good taste or bad does not and should not matter to fair use [...] While we might not assign a high rank to the parodic element here, we think it fair to say that 2 Live Crew’s song reasonably could be perceived as commenting on the original or criticizing it, to some degree.

The take-away from Acuff-Rose is that a parodic appropriation, be it literary or artistic,  must reasonably be perceived as commenting on or criticizing the original in order to claim transformative value in a Fair Use defense.

3. Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003).

In 1997, Utah artist Thomas Forsythe (a.k.a. Walking Mountain Productions) developed a series of 78 photographs entitled Food Chain Barbie, in which he depicted Barbie in various compromising  positions.  Forsythe used the word “Barbie” in some of the titles of his works, including Malted Barbie (Barbie in a malt machine),  Fondue a la Barbie (Barbie heads in a fondue pot), and Barbie Enchiladas (Barbie wrapped in tortillas and covered with salsa).

Forsythe described his intent to “critique the objectification of women [...] lambast the conventional beauty myth and the societal acceptance of women as objects.”  He chose Barbie because the figure is “the most enduring of those products that feed on the insecurities of our beauty and perfection-obsessed consumer culture.” On August 23, 1999, Mattel sued Forsythe, alleging that Forsythe’s Food Chain Barbie series infringed Mattel’s copyrights, trademarks, and trade dress.

On August 22, 2001, the Los Angeles federal District Court granted Forsythe’s motion for summary judgment. The district court held that Forsythe’s use of Mattel’s copyrighted work was Fair Use, that use of Mattel’s trademark and trade dress caused no likelihood of confusion as to Mattel’s sponsorship of Forsythe’s works and dismissed Mattel’s trademark dilution claim because it found that Forsythe’s use had been “noncommercial.”

On appeal, the United States Court of Appeals for the Ninth Circuit would again balance the four Fair Use factors and readdress Mattel’s trademark and trade dress claims. The four factors considered in a Fair Use analysis are:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copy-righted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

Citing the U.S. Supreme Court in Campbell, the court first determined that because Forsythe, “transform[ed] associations with Mattel’s Barbie doll, [he] has created the sort of social criticism and parodic speech protected by the First Amendment and promoted by the Copyright Act.” Additionally, the court addressed the commercial/non-profit dichotomy, noting that because of the extremely transformative nature and parodic quality of Forsythe’s work, its commercial qualities become less important.

As to the amount and substantiality used, the court found that Forsythe used only so much of Barbie as needed to convey his message and portions of the old work (Barbie) are incorporated into the new work, but “emerge imbued with a different character.”

The court went on to discuss Mattel’s trademark, trade dress and dilution claims in turn. It found that the Barbie mark in the titles of Forsythe’s works/website merely describe the subject of the photographs and do not explicitly mislead as to Mattel’s sponsorship of the works. Furthermore, the court found that artistic expression greatly outweighs its interest in potential consumer confusion as to Mattel’s sponsorship of Forsythe’s works. Thus, Mattel does not have the right to control public discourse via “trademark laws to . . . censor all parodies or satires which use [its] name or dress.”

If nothing else, this should be an example of how to stave off a corporate bully. The Ninth Circuit called Mattel’s case “objectively unreasonable” and “frivolous” and ordered Mattel to pay Forsythe’s legal team over $1.8 million to cover legal fees and court costs. Kudos to Forsythe and his legal team for seeing it through.

2. Wojnarowicz v. American Family Association, 745 F.Supp 130 (1990).

In 1990, artist David Wojnarowicz sued Donald E. Wildmon, Executive Director of American  Family Association (AFA). Wojnarowicz, a multi-media artist from New York, claimed copyright infringement, defamation, violation of the Lanham Act and New York Artists’ Authorship Rights Act (NYAARA).

Wojnarowicz’s Tounges of Flame exhibition dealt with the political and religious indifference towards the AIDS epidemic. Wildmon campaigned against the National Endowment for the Arts (NEA) for supporting what he claimed was “blasphemous” and “offensive” artwork. In an effort to undermine Wojnarowicz and the NEA, Wildmon made photo-copies of the purportedly offensive work, created a pamphlet articulating his agenda and circulated thousands of copies.

Wojnarowicz’s claims for defamation and violation of the Lanham Act failed. Similarly, his claim for copyright infringement was futile as the court found that Wildmon’s use of the images was “for the purpose of commenting and criticizing on an issue of public concern” and thus, protected as Fair Use. While his other claims failed, Wojnarowicz was successful in arguing that Wildmon violated his right to integrity under NYAARA.

NYAARA states that “no person shall knowingly publish a work of fine art (or reproduction) in an altered, defaced, mutilated or modified form.” Thus, under the New York act, an artist’s moral right to integrity includes the right to prevent the reproduction of a work in an altered form. It is important to note that the court discussed the defendant’s intention to harm Wojnarowicz’s reputation. The court stated,

By attributing the modified images contained in the pamphlet to plaintiff as his works of art, defendants have created a likelihood of damage to his reputation as a serious artist and to his earning potential, and have thereby violated New York’s Artists’ Authorship Rights Act.

In the end, Wildmon was enjoined from further distribution or publication of his pamphlets (as he clearly sought to harm the Wojnarowicz’s professional and personal reputation) and ordered to pay damages of $1.00 (Yep, one dollar b/c Wojnarowicz could not prove actual damages).

The Visual Artists Rights Act (VARA) (17 USC 106A) of the Copyright Act embodies an artist’s “Moral Rights.” Moral Rights generally include the right to attribution of one’s work, the right of integrity, and the right to disclosure. While twelve states have moral rights acts, they serve to supplement VARA since its implementation in 1990.

1. Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992)/Blanch v. Koons, 396 F.Supp.2d 476 (S.D.N.Y.2005).

The number one spot is occupied by two cases. Taken together, Rogers v. Koons and Blanch v. Koons represent a marked shift in a transformative use analysis.

Artist Jeff Koons’ 1988 Banality series focused on the exploitation of elements of mass culture which are “typical, commonplace and familiar.” Prior to the exhibition, Koons discovered a note card entitled Puppies in a museum gift shop. The black and white photograph depicts a couple sitting on a bench holding eight German Shepherd puppies.

Finding Puppies to be an adequate study for his work, Koons commissioned artisans to create a three-dimensional wooden sculpture entitled String of Puppies. The puppies were painted varying shades of blue, given overstated, bulbous black noses and clown-like ruffled collars. Additionally, the couple’s clothing and flesh is painted and flowers were carved in the ears of the woman and emerging from atop the man’s head. The couple is situated on a bench with their legs truncated at the knees, but the sculpture is devoid of any further surroundings.

Puppies was photographed by Art Rogers, a successful portrait photographer from Point Reyes, California. According to Rogers, he does “groups, multi-generations, men, women, children, and babies [...] even animals. I’ve inserted into my portraits not only a wide array of cat and dog companions but I’ve also photographed horses, elephants, pigs, birds, and reptiles.” Upon finding that Koons made a sculpture based on his photograph, Rogers sued for copyright infringement.

The district court found that Koons’ use of Puppies in String of Puppies was copyright infringement. Further, it entered a permanent injunction enjoining Koons and Sonnabend Gallery (Koons’ representative) from “making, selling, lending or displaying any copies of, or derivative works based on Puppies.”

On appeal, Koons again mounted a Fair Use defense, arguing at length that his work is a fair social criticism, drawing from a tradition of American artists who incorporate mass produced images in order to criticize the political and economic system which created it. The Second Circuit held that for a secondary use to be parody, it must criticize the primary work directly.

The court noted:

[for a] copied work [to] be an object of the parody, we merely insist that the audience be aware that underlying the parody there is an original and separate expression, attributable to a different artist[…]The problem in the instant case is that even given that “String of Puppies” is a satirical critique of our materialistic society, it is difficult to discern any parody of the photograph “Puppies” itself.

It is notable, however, that this case predates the decision in Acuff-Rose where the U.S. Supreme Court held that a parodic work need only be reasonably perceived as commenting on or criticizing the original in order to claim to transformative value.

As to the amount and substantiality of the portion used, the court found that Koons appropriated Rogers’ photo nearly in toto.

In looking at the effect of the use on the market of the original in Rogers, the court focused very narrowly on the commercial nature of Koons’ work, reasoning, “it’s not implausible that another artist, who would be willing to purchase the rights from Rogers, would want to produce a sculpture like Rogers’ photo and, with Koons’ work extant, such market is reduced.”

In the end, Koons would not be triumphant. The court unequivocally found that use of Rogers’ photo was copyright infringement. More than a decade later, however, the court would take a very different approach in assessing Fair Use in the context of appropriation art.

In his 2000 suite Easyfun-Ethereal, Koons “combine[d] familiar yet unrelated images to create collage-like paintings rendered with photorealist perfection [which] recall[ed] the advertising iconography.” His painting, Niagara depicts four pairs of legs dangling in front of a surreal landscape of the waterfalls, sky, and pastries.

One pair of legs is derived from an Andrea Blanch photograph used in a Gucci Advertisement. Blanch is a well known fashion photographer. Her photograph, Silk Sandals, shows the lower part of a woman’s bare legs crossed at the ankles, with Gucci sandals dangling from her feet. The woman, resting her legs in a man’s lap, is seated in an airplane cabin. The photo captures elements of the cabin, such as the floor, wall, window and part of a seat.

Blanch sued Koons for copyright infringement.  Again, Koons mounted a Fair Use defense. This time, however, the district court agreed with Koons’ transformative use argument, and finding that Niagara was fair use, granted him summary judgment.

The Blanch court began its Fair Use analysis by assessing the transformative elements of Koons’ work under the purpose and character factor. In his affidavit, Koons stated “for Niagara I removed these anonymous legs from the context of the photograph, and totally inverted their orientation. I then added these legs to other contrasting images of legs…and along with ice cream, donuts and pastries, floated them ethereally above a liberating landscape of grass, a waterfall and sky.”

Koons further commented on the nature of his artwork, “in order to make statements about contemporary society…I must present real things that are actually in our mass consciousness.” The court agreed with Koons’ description and found that Niagara did not duplicate the objective of Blanch’s photo, rather was transformative and “used it as raw material in a novel context to create new information, new aesthetics, and new insights.” The court only noted in passing that both works were created for commercial purposes.

Regarding the amount and substantiality of the portion used, the court noted that the copyright protection for the crossed legs is very weak. The court reasoned, “without the Gucci Sandals, all that is left is a representation of a woman’s legs, crossed at the ankle” which “is not sufficiently original to deserve much copyright protection.”

It also found that Niagara does not harm the market of the photograph because it isn’t a market substitute for the original. “Niagara’s market” the court stated “is one in which the photograph had no chance to capture.” Further, the court explained that when the only possible adverse effect is a potential market or value which the copyright holder has not typically sought to, or reasonably been able to obtain or capture, this factor will favor Fair Use.

As the Blanch court recognized, a derivative transformative use will often only appropriate elements which have very thin copyright protection. When taken from their original context these elements become scènes à faire and not copyrightable. A typical American scene-a smiling husband and wife holding a litter of charming puppies, for example, becomes banal.