Does an advertisement that shows street art without the artist’s permission infringe the artist’s rights? Does it matter if the art was painted on a building with the property owner’s permission? Would the answer change if the mural is on a building that is visible to the public? The unfortunate answer to each of these queries is – no one really knows.

With sparse precedent related to urban art in the States, corporations have capitalized on this gray area. Industries that range from auto manufacturers to hamburger suppliers have misappropriated graffiti and street art to project an edgy look and glean profits with little consequence. That may soon change.

View of 5Pointz (Image credit: Ezmosis CC BY-SA 3.0 via Wikimedia Commons)

The American scales tipped in favor of urban artists recently when an appellate court upheld the multi-million dollar 5Pointz verdict. While that case focused on destruction of graffiti and street art deemed to have “recognized stature”, its underlying import – recognizing the rights of urban artists – arguably translates to infringement cases like those surveyed below from across the U.S. 

Settlements On East and West Coasts

New York

In 2018, Jason Williams a.k.a. Revok was pulled into New York federal court by Swedish mega-retailer H&M after it used a mural by Revok in advertising images and videos.[1] In the advertisements, the mural was prominently featured behind a model who performed backflips to promote H&M’s sportswear line. Revok sent H&M a cease and desist letter, which was rebuffed. H&M then made a strategic decision – to seek a declaration from the Court as to its right to use images of Revok’s mural.

The wrinkle in this story lies in the “illegal” nature of the mural. Prior to shooting the advertisement, H&M phoned NYC’s Department of Parks & Recreation to ask the muralist’s name and was told the mural was painted without permission. This highlighted one of the as-yet unanswered questions referenced at the outset – whether U.S. copyright law protects “illegal” art. Before that could be addressed, however, the parties settled after H&M became the butt of public outcry and a boycott encouraged by various street artists.

Notably, this case came before the same court that, shortly before H&M’s filing, had issued the divisive 5Pointz decision. In that case, the court of first instance decided in favor of the artists under copyright legislation passed to protect their moral rights (the Visual Artists Rights Act of 1990), awarding maximum statutory damages under copyright law, totaling more than $6 million ($150,000 for each qualifying work).[2] This decision was affirmed by the Second Circuit earlier this year (as noted above) and stands as current precedent that at least “legal” urban art is protected under copyright law.

California

By even a layman’s judgment, “Art of the Drive” is a campaign that wants the focus to be – wait for it – on the art. It made sense then that GM would feature a portion of a mural by Adrian Falkner a.k.a. Smash 137 in photographs to advertise its newly rolled out Cadillac XT5. What did not make sense was GM’s failure to ask permission to use that mural.

While the legality of this work was not at issue in Falkner’s 2018 lawsuit against GM,[3] its public visibility was. GM’s defense against Falkner’s infringement claim was premised on a law that protects images of buildings “located in or ordinarily visible from a public place” (17 U.S.C. Section 120(a), Architectural Works Copyright Protection Act). GM argued under Section 120(a) that photos of the mural featured in the advert did not infringe the artist’s copyright because the mural was on a public parking garage. The court rejected this argument, holding it could not conclude Section 120(a) applied to the mural since it “is not part of an architectural work as a matter of law”. Due to this ruling, the court did not address the question of whether Section 120(a) allowed photographs of the mural.

Circumspect in his dealings with “corporate culture and mass-market consumerism”, Falkner alleged damage to his reputation, but did not reach the stage of needing to prove those damages. Following the California federal court’s denial of GM’s Section 120(a) argument and refusal to grant GM’s summary judgment motion as to Falkner’s copyright infringement claim, the parties settled.

Actions in the Midwest

Michigan

In early 2019, Mercedes Benz followed GM’s example by asserting that Section 120(a), AWCPA, also protected its unauthorized use of murals to advertise the newly released G500 truck. Artists Daniel Bombardier a.k.a. Enjoy Denial, James Lewis a.k.a. Olayami Dabls, Jeff Soto, and Maxx Gramajo a.k.a. Maxx242 had threatened to sue Mercedes for copyright infringement after multiple photographs advertising the truck were posted with the artists’ murals on Instagram. Mercedes then preemptively filed a declaratory judgment action against the artists.[4]

Thus far, Mercedes has been allowed to proceed under its Section 120(a) argument. However, the Michigan federal court hearing the case noted that it remained to be seen whether Mercedes’s claim could withstand scrutiny going forward.

Iowa (Potentially)

An infringement action by Chris Williams a.k.a. CAW over a grocery chain’s unauthorized use of Williams’ art may be filed in an Iowa court this year.

In 2019, Williams sued Hy-Vee, Inc. in a California federal court after Hy-Vee refused to stop running a commercial featuring a mural by Williams from an Iowa street as its backdrop. The commercial was shown during and after the 2019 Super Bowl in California and posted on social media.[5] As a result, Williams asserted damage to his reputation stemming from this “exploitation” of his art. Like Falkner, Williams pointed to his intentional avoidance of “corporate culture” and “mass-market consumerism” like that displayed by Hy-Vee’s campaign.

A key portion of the mural that was not included was Williams’ signature and Instagram handle even though it is prominently displayed on the mural. For this, Hy-Vee faced a claim under Section 1202 of the Copyright Act, which disallows intentional removal or alteration of “copyright management information” conveyed “in connection with” copyrighted works.

In making his case against the grocery chain, Williams asserted the art was used to advance the commercial’s “central narrative” by repeatedly focusing on his image. The commercial showed the mural “multiple times, close up and in detail, in nearly its entirety, for a substantial period of time”. Whether Hy-Vee’s liberal use of the mural in the advertisement would have made a difference in the outcome was not ruled on in the California action. Williams’ claims were voluntarily dismissed within a few months of filing in California. When asked for comment, Williams said the case would be filed in Iowa in the ensuing months.

Future Protection for the Rights of Urban Artists

It remains to be seen whether the strengthened protection for urban artists given in 5Pointz will impact infringement actions. At a minimum, it has sent a message that at least “legal” graffiti and street art is protected under U.S. copyright, and violation of that copyright may lead to real financial repercussions. So, for those corporate chiefs who may be tempted to continue using art without asking – you’ve been warned.

[1] H&M v. Jason Williams a/k/a Revok, Case No. 1:18-CV-1490-ENV-PK (E.D.N.Y. 2018).

[2] Cohen v. G&M Realty L.P., Case No. 13-CV-05612 at 5-6 (E.D.N.Y. 2018).

[3] Falkner v. General Motors Co., Case No. 2:18-CV-00549-SVW-JPR (C.D. Cal. 2018).

[4] Mercedes-Benz, USA, LLC v. Lewis et al., Case No. 2:19-CV-10948-AC-EAS (E.D. Mich. 2019).

[5] Chris Williams v. Hy-Vee, Inc., Case No. 2:19-CV-06671-AS (C.D. Cal. 2019).