Bubbling to the surface: copyright for graffiti

In March, retailer H&M  filed a complaint for a declaratory judgment that the artist Revok has no copyright rights in certain unauthorised graffiti located in New York, which H&M used as a backdrop in its “New Routine” advertising campaign.

The artist had sent H&M a cease-and-desist letter claiming a violation of his copyright in the images used. H&M’s position was that because the images are illegal graffiti, they are not protectable as art under the copyright law and thus, there is no copyright infringement.

It is often the case that a financially powerful retailer or entertainment or social media company accused of copyright infringement jumps the gun and files a declaratory judgment action.

The benefit is that, subject to requirements of personal jurisdiction over the copyright holder, it gives the alleged infringer the choice of where the lawsuit will take place. It also imposes a financial burden on the artist or copyright owner, particularly if the artist is located in another jurisdiction.

In some instances, it may also provide the alleged copyright infringer with the ability to choose a forum with more favourable interpretations of the copyright law to “alleged infringers”. For example, the Ninth Circuit, which includes the US District Court for the Northern District of California, San Jose, is home to many internet content user companies, such as Flipboard. In February, a judge in Goldman v Breitbart News Network, distinguished the US Court of Appeal for the Ninth Circuit's Perfect 10 v Amazon.com to find framing a violation of the copyright owner's right of display.

Following a negative social media campaign against the retailer, H&M voluntarily dismissed its declaratory judgment action.

“H&M respects the creativity and uniqueness of artists, no matter the medium. We should have acted differently in our approach to this matter. It was never our intention to set a precedent concerning public art or to influence the debate on the legality of street art,” said a press release from the company.

Although H&M clearly dismissed the declaratory judgment action for public relations reasons, it’s highly unlikely that the declaratory judgment action would survive a motion to dismiss. The declaratory judgment action is poorly drafted, runs contrary to basic copyright law principles and asserts defences which, to the extent they have any merit, are not available to H&M for lack of standing.

Protection for street art

The theory that graffiti art is not protected by copyright law has not been the subject of question. The copyright act requires, for protectable subject matter, “originality and that the work is fixed in a tangible medium of expression”.

In 1985, I successfully negotiated licence fees for graffiti artists whose artwork was the subject of a book on graffiti art in the East Village. Some of the art was on murals, commissioned by an organisation called City Art, which had obtained permission of the owners. Other graffiti artists were not authorised and the works were simply, as in this case, placed on available walls.

The publisher did not question that the graffiti art was the subject of copyright protection. The only question was whether the defence of fair use applied.

If there were a need for a nail in the coffin, the February 2018 5-Pointz case (Cohen v G&M Realty) confirms beyond doubt that graffiti art is protected, not only under the copyright law as appropriate subject matter of copyright, but also under the Visual Artists Rights Act of 1990, which imposes a somewhat higher standard than the minimal originality and fixation required for copyright protection.

It’s likely that Revok and H&M will arrive at a negotiated settlement. On the subject of damages, the artist will most likely not have registered the graffiti art and therefore will be limited to actual damages and no attorney’s fees. The issue of wilfulness may also factor in to a reduction in the negotiated settlement, based on the fact that H&M did make an effort to license the work, but requested it from the wrong party.

On the other hand, actual damages based on the unauthorised use of the artwork and the benefits to H&M from the advertising campaign, including the amount paid for the advertising campaign and its intended market, are relevant factors. This could result in the artist legitimately demanding a very high settlement in actual damages, notwithstanding that statutory damages might be unavailable.

Barbara Hoffman is an art and intellectual property lawyer. She is the founder of The Hoffman Law Firm www.hoffmanlawfirm.org, and can be contacted at: artlaw@hoffmanlaw.org