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self-study / Intellectual Property

Oct. 5, 2018

The writing is on the wall: Copyright protection for street art

Victoria Burke

Scott + Scott Attorneys at Law, LLP


Victoria is an adjunct professor of Fashion Law at Southwestern Law School.

White paint covers graffiti on the abandoned warehouse known as 5Pointz, a mecca for street artists from around the world, in New York, Nov. 19, 2013. (New York Times News Service)

Recent cases have highlighted the question as to what, if any, intellectual property rights do graffiti artists, who use buildings as their communal canvas, have over their art.

The interpretation of these intellectual property rights is akin to the story of Belshazzar's feast in the "Book of Daniel." During this feast, King Belshazzar witnesses a mysterious hand begin writing on the wall. The apparition frightens Belshazzar, and he commands his astrologers and wise men to interpret the text on the wall, but they are unable to do so. The king then summons Daniel, renowned as a seer, to decipher the writing. Daniel reads the lettering as Aramaic words, "MENE, MENE, TEKEL, UPHARSIN," and he proclaims the meaning as, "MENE; God hath numbered thy kingdom, and finished it. TEKEL; Thou are weighed in the balances, and art found wanting. Peres; Thy kingdom is divided, and given to the Medes and Persians."

In the present scenarios, the courts are the seers tasked with interpreting protections afforded the metaphorical and literal 'writing on the wall' left by street artists. The most common methods of asserting protection for the artists are through the Copyright Act and the Visual Artists Rights Act, or VARA.

Copyright Protection

In the fashion industry, the issue of whether copyright protection applies to street art has arisen due to the surging popularity of this open air art. Integration of what some label as "graffiti" into a fashion brand's image lends a level of street cred and edgy appeal. Whether used in background brand advertisements or as an outright design on clothing itself, the issue of whether this art warrants protecting keeps surfacing.

Clothing maker H&M recently encountered a marketing nightmare when it decided to use the handball court at a public park in Brooklyn as the backdrop for a modeling shoot. The handball court wall had spray-painted art on it. H&M attained permission from the parks department to use the location; in fact, H&M even queried whether a license was necessary to use the graffiti captured in the photographs. H&M said a member of the department responded that, "The graffiti should NOT have been on the hand ball wall. Whom ever [sic] placed this on the wall caused me to fail this feature when inspected last week. I am unaware who did this." The problem was the parks department did not hold the copyright to the art.

The graffiti turned out to be a work by Jason Williams, aka Revok, a Los Angeles-based graffiti artist. Revok sent a cease-and-desist letter to H&M asking the company to stop using his work in their ads on the basis of copyright infringement. H&M clapped back by preemptively filing a federal lawsuit against Revok (H&M Hennes & Mauritz GBC AB et al. v. Williams, 1:18-cv-01490 (E.D.N.Y. Mar. 09, 2018)) requesting a declaratory judgment that Revok did not own the copyrights to graffiti that was painted on the park without the city's permission.

The Copyright Act extends protection to "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. Section 101. But the statute is mostly silent on unlawful works, except in the narrow scope of derivative works (derivative meaning based on preexisting material in which a copyright subsists). 17 U.S.C. Section 103.

Anemic case law surrounds the issue regarding whether the art in question must be lawful before protection attaches. Fifteen years ago, a federal judge hinted that illegality of the art itself might be a bar to protection. Villa v. Pearson Educ., 03 C 3717 (N.D. Ill. Dec. 9, 2003). The judge said the case "turn[ed] on questions of fact," such that, "[t]he first would require a determination of the legality of the circumstances under which the mural was created. The second would necessitate an evaluation of the degree of creativity exhibited in his original mural." Since that case settled before trial, the question of lawfulness was never heard to conclusion.

H&M faced a backlash over their lawsuit, and the company ultimately dropped its case against Revok. Sunglasses maker Oakley picked up that baton. In 2015, Donald Robbins and Noah Darr (aka Kepitone and DJ Rakus, respectively) were authorized to paint murals in San Francisco as part of a global art project known as "Meeting of Styles." Their art encompassed "highly stylized signatures of each of the artist." Oakley used a portion of the design in a multilayered advertising campaign. The artists felt the public would view the appropriation of their work, "as if the Oakley brand created the Murals itself, or, alternatively, as if the Oakley brand was endorsed by the Artists." The artists filed for federal copyright protection and then -- before the registration was granted -- sued for copyright infringement. Robbins et al. v. Oakley, Inc. et al., 2:18-cv-05116 (C.D. Cal. Jun. 08, 2018). Part of their claim was for falsification of copyright management information (17 U.S.C. Section 1202). The artists claimed that by using only a portion of the stylized pseudonym, the ad removed information identifying the true author of the work. There is a circuit split as to whether an artist must wait for the Copyright Office to act on a registration application before filing a copyright infringement lawsuit (the "registration approach"), or whether merely filing the application is sufficient (the "application approach"). Compare Fourth Estate Public Benefit Corp. v., LLC, 856 F.3d 1338 (11th Cir. 2017) (following the registration approach); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) (same); with Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 618-19 (9th Cir. 2010) (following the application approach); Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384 (5th Cir. 1984)(same). The U.S. Supreme Court is set to decide the issue this term in Fourth Estate Pub. Benefit Corp. v., LLC, 17-571.

Katy Perry and Jeremy Scott arrive at the Met Gala, in New York, May 4, 2015. Perry's dress displays art by Joseph Tierney, aka Rime. (New York Times News Service)

Graffiti art has made its way onto the runway as part of designs on fashion clothing. A number of cases have been filed against large-name designers and fashion houses alleging copyright infringement and falsification of copyright management information due to alleged misappropriation. Fashion brand Moschino and its creative director Jeremy Scott faced heat for the dress they designed for Katy Perry's 2015 Met Gala appearance. Tierney v. Moschino S.P.A., 2:15-cv-05900 (C.D. Cal. Aug. 05, 2015). Recognized street artist Joseph Tierney, aka Rime, alleged the designs on Perry's dress and other clothing/accessories from that line were lifted from his mural called "Vandal Eyes" located in Detroit. Rime claimed the infringed designs included not just "mechanical copies of the Mural" but also "inclusion of the brand name 'Moschino' made to appear as if it were part of the original work or giving the impression that the work was created for Moschino and/or Jeremy Scott." This is in addition to the fake signature of "Rime" being incorporated into the design featured on clothing and accessories giving the impression the artist endorsed the use of his work

Roberto Cavalli faced nearly identical claims by Revok -- the handball court artist -- along with several other artists. Williams et al. v. Cavalli, S.p.A. et al., 2:14-cv-06659 (C.D. Cal. Aug. 25, 2014). The artists assert the irony that, "Mr. Cavalli has been an outspoken critic of 'knocking off' in the fashion world, complaining loudly that his own work has been grossly misappropriated by his peers, and that such copying is 'scandalous.'" Like Scott, the complaint alleges that Cavalli not only mechanically reproduced a mural image, but also used the artist's signature in the design. Cavalli also allegedly added his brand's name to the design "as if it were part of the original work or giving the impression that the work was created for Just Cavalli."

How a judge would have rule on these two cases of copyright infringement is unknown since the cases were settled out of court. An artist can protect his work by acquiring a visual arts copyright for his aerosol arts: 17 U.S.C. Section 113(d)(3) allows for "any author of a work of visual art that has been incorporated in or made part of a building, may record his or her identity and address with the Copyright Office."

Moral Rights and the Visual Artists Rights Act

Jonathan Cohen, a graffiti artist who painted under the name Meres One, climbing a ladder at the former 5Pointz building in Long Island City, Queens, Aug. 22, 2011. (New York Times News Service)

One strong legal quake this year came from what is commonly known as "the 5Pointz litigation" and dealt with VARA, which is the codified "moral rights" protections for artists. Cohen et al. v. G & M Realty L.P. et al., 1:13-cv-05612 (E.D.N.Y. Feb. 12, 2018) (Cohen II). VARA gives the author the right to proper attribution of his work, to disallow false claim of his authorship to work he either did not produced or of any distorted versions of his own work, and to prevent the destruction (whether intentional or gross negligence) of his work so long as the visual art is of a recognized stature. 17 U.S.C. Section 106A. VARA rights continue until the death of the artist.

Where copyright protection ends, VARA begins. Although the Copyright Act protects the visual art from unauthorized copying, its protection limits do not reach the ownership and control of the art's actual canvas. For graffiti art, the canvas happens to be a building's exterior. Thereby, the building owner has ownership rights to the medium. Yet, the building owners do not have the ability to destroy visual art that is of a recognized stature if it is removable. VARA distinguishes between art that is removable and not removable. If the art is removable from real property, then VARA affords the artist 90 days to salvage the work at the artist's own costs. With today's technology, nearly everything can be removed.

In Cohen II, the building's effective owner, Gerald Wolkoff, granted the artists permission to use the exterior walls for their art. The art on the face of the building was inherently ephemeral, for most of the curated art would be routinely covered to make way for a new rotation of works. Wolkoff later decided to knock down the 5Pointz building to make way for two apartment complexes. The artists sued under VARA to protect the art that remained on the exterior. In the initial ruling, the court denied the artists request for an injunction to prevent the destruction of the building. Cohen v. G & M Realty L.P., 988 F. Supp. 2d 212 (E.D.N.Y. 2013) (Cohen I). Between the denial of the preliminary injunction and the issuance of the court's opinion, Wolkoff had the structure whitewashed whereby the art was destroyed.

In a follow up ruling, the judge found 45 works at 5Pointz to have been of recognized stature. The artists of these 45 works were awarded monetary damages of $6,750,000 ... equaling $150,000 for each work, the maximum allowed under VARA. The reason why an injunction was denied but monetary damages were awarded was money was deemed to be adequate compensation. The judge said, "paintings generally are meant to be sold."

One option for building owners is to require any artist hired (or simply allowed) to paint the exterior of his building to sign a VARA waiver as protection from liability. Also, an owner should become aware that unauthorized graffiti left on his building could someday have recognized stature and thereby acquire VARA rights that impact the building.


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