Landslide Digital Feature

Street Art: Growing Clarity on VARA’s Applicability to Unsanctioned Street Art

By Brittany M. Elias and Bobby A. Ghajar

©2017. Published in Landslide, Vol. 10, No. 1, September/October 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In May 2015, we published an article discussing the protectability of unsanctioned street art under the Copyright Act and the Visual Artists Rights Act (VARA).1 We focused largely on the gray area in which unsanctioned street art resides when assessing the scope of street artists’ moral rights under VARA. With the rising appreciation for street art and the booming graffiti art market, the question of whether VARA extends to protect unsanctioned street art is of growing importance. Although there are relatively few decisions analyzing VARA claims and street art, a recent string of new cases increases the prospects of greater clarity in this area of law.

The Conflict: Does VARA Apply to Unsanctioned Street Art?

VARA was enacted in 1990 to protect the moral rights of artists. Unlike traditional copyright law, VARA grants artists the right to attribution and integrity, and to prevent the destruction of their work.2 In the context of unsanctioned street art (i.e., street art that is applied without the property owner’s consent), artists are increasingly concerned with the latter. Under VARA, real property owners are required to make a good faith attempt to notify an artist of the property owner’s intent to destroy the artist’s work of art (e.g., by painting over or removing a wall on which the art appears). If the artist fails to remove the work or pay for its removal within 90 days, the property owner may proceed to destroy the work.3

As we discussed in our previous article, artists have had difficulty applying VARA when the artwork in question is illegal—that is, where the art was applied without permission. While case law on the topic is sparse, courts have primarily looked to whether the artwork is removable or nonremovable when assessing the applicability of VARA to unsanctioned street art. As shown below, courts tend to favor real property owners when nonremovable works are installed on their premises without their consent. We previously analyzed two leading cases on the topic—English v. BFC&R East 11th Street LLC and Pollara v. Seymour—which focused primarily on the removable-permanent dichotomy.

In English, the district court dealt with the issue of whether six artists could use VARA to prevent the destruction of their unsanctioned murals affixed to a building wall in a community garden in New York.4 The artwork in question consisted of approximately five murals and five sculptures. One mural in particular was illegally affixed to the wall of a city-owned building. Years after the work was created, the city-owned building was sold to a partnership as part of an affordable housing program. By 1997, financing was secured to commence construction on the lot containing the artists’ works. After the New York City Coalition for the Preservation of Gardens unsuccessfully attempted to prevent the destruction of the community garden, the six artists filed suit alleging entitlements under VARA.5

Siding with the defendants, the court denied the plaintiffs’ request for a preliminary injunction and granted the defendants’ summary judgment motion, dismissing the complaint in full. In its order, the court emphasized that “VARA is inapplicable to artwork that is illegally placed on the property of others, without their consent, when such artwork cannot be removed from the site in question.”6 While unfavorable to the artists, the court did leave open the possibility that VARA could apply in the case of removable works, even when they are created illegally.

In Pollara, the district court also dealt with the issue of whether a property owner’s removal and partial destruction of an unsanctioned mural was in violation of the artist’s moral rights under VARA.7 There, plaintiff Joanna Pollara was hired by a public interest group to create a mural to protest funding cuts for legal aid. She painted the mural on a long sheet of paper affixed to a large metal frame, which was later installed without a permit in the Empire State Plaza (ESP). After the work was installed, ESP employees removed the work from its frame, tearing and severely damaging the work in the process.8 Pollara filed suit against the ESP plaza manager and the commissioner for the New York State Office of General Services, alleging violation of her rights under VARA.

In denying the property owners’ summary judgment motion, the court relied on a removable-permanent assessment. In rejecting the defendants’ argument that VARA fails to protect works illegally placed on the property of others without their consent, the court emphasized that the work in question was removable (albeit unsanctioned) and there was “no basis in [VARA] to find a general right to destroy works of art that are on property without the permission of the owner.”9 Although the Second Circuit eventually deemed the work unprotectable under VARA because the primary purpose of the work was for promoting or advertising (a use expressly carved out from VARA protection under § 101 of the Copyright Act10), the district court’s ruling suggested that VARA may protect removable unsanctioned street art.

These cases provide minimal guidance to artists as to whether VARA protects their unsanctioned street art, including whether the scope of VARA protection hinges on whether the artwork is removable or permanently affixed to the structure it inhabits illegally. Other issues related to VARA are otherwise left to future courts to decide.

The Revival of 5Pointz Sheds Additional Light on the Issue

To date, the issue of removable/nonremovable work is one of the few concepts litigated in the context of street art. As mentioned, other important principles have yet to be analyzed thoroughly by the courts. But to the surprise of many, potential clarity on the issue of whether graffiti is of a “recognized stature” (defined below) arises from a forgotten story.

5Pointz was an outdoor art exhibition space in Long Island, New York. It was acclaimed as the world’s premiere “Graffiti Mecca,” attracting graffiti artists from all over the world to leave their mark on the walls of a 200,000-square-foot building.11 The cultural phenomena began in 1993 when uninvited graffiti artists began coloring the building’s exterior walls. In 2002, the property owner, Gerald Wolkoff, made a deal with Jonathan Cohen, a local artist, to act as a volunteer curator to control any future works to be painted on the walls. Yet in 2013, Wolkoff decided to destroy the 5Pointz building to make room for two high-rise luxury rental living spaces.12

Upon receiving word of Wolkoff’s intent to destroy the 5Pointz building, Cohen and several other artists filed suit and requested a temporary restraining order against Wolkoff and various other defendants, invoking VARA to prevent the destruction of their works. But by November 2013, the court denied the artists’ request for injunctive relief despite leaving the door open for the artists to pursue monetary damages.13 The developers quickly whitewashed the building in the dead of night, which sat as a blank canvas for months before the building was ultimately demolished. Nearly two years later, several of the artists filed a separate lawsuit against the defendants for violation of their rights under VARA.14 In a recent order on the parties’ motions for summary judgment, the district court touched on a principle that had not been fully analyzed in the context of graffiti art—“recognized stature.”

At the crux of both parties’ briefing was the issue of whether graffiti art constitutes a work of “recognized stature.”15 Under VARA, an artist bears the right “to prevent any destruction of a work of recognized stature.”16 While “recognized stature” is not expressly defined by the statute, courts have interpreted this legal term of art to mean “works of artistic merit that have been ‘recognized’ by members of the artistic community and/or the general public.”17 Thus, to achieve VARA protection, the artist must demonstrate not only that the work has artistic merit, but also that the work is or may be recognized as having such merit.18

Both parties provided expert testimony to support their positions, and while the court did not ultimately determine whether the graffiti in question was of “recognized stature,” the court did clarify what evidence may be relied on to support this issue. Namely, the court held that acceptable methods of determining “recognized stature” include “inferring a particular work’s recognized stature on the basis of its creator’s reputation, or employing iconoclastic and disputable aesthetic theories.”19 Additional evidence may include the artist’s previously commissioned works, social media followers and Google hits, private and public exhibitions, etc.20 The court ultimately held that a triable issue of fact existed, foreclosing judgment in favor of either party. It noted that “the matter shall proceed to trial on the VARA claim issue.”21

While there was little resolution in the court’s order, it represents one of the most in-depth discussions of a VARA claim in the context of street art. Should this case see through to trial, there is potential for clarification on the scope of artists’ rights under VARA for street art, and particularly whether graffiti art is of “recognized stature” such that VARA applies. Trial in that case is currently scheduled for October 16, 2017.

More Cases on the Rise

Although 5Pointz presents an opportunity to shed light on the scope of VARA’s applicability to unsanctioned street art, the Central District of California may also have an opportunity to weigh in on the issue.

On April 24, 2017, Thrasher, a designer and illustrator most well known for his work on Star Trek: The Next Generation, brought suit against individual and corporate defendants alleging violation of his rights under VARA.22 In 1992, Thrasher began work on his mural “Six Heads,” affixed to a building wall, which bridges his science fiction work experience with a homage to Los Feliz, California.23 Over the years, Thrasher periodically returned to the mural to touch up any damage or general wear. The mural not only received numerous accolades but also was engrained in Los Feliz culture.24 In July 2014, the mural was destroyed in broad daylight without any notice to Thrasher, despite the fact that Thrasher had intentionally provided his contact information directly on the mural.25

In response to the destruction of his work, Thrasher filed suit alleging, among other claims, infringement of his right to integrity and attribution under VARA, on the ground that “Defendants willfully and intentionally distorted, mutilated or otherwise modified ‘Six Heads’ in a way that would be prejudicial or harmful to Plaintiff’s honor and reputation.”26 Thrasher further alleges that the mural could have been removed without the destruction, distortion, mutilation, or other modification as contemplated under VARA.27

While still in the early stages of any litigation, and if it does not settle, the case presents the opportunity to better define the rights of graffiti artists. The court will have the opportunity to revisit the removable-permanent dichotomy set forth in English and Pollara, and to independently determine whether an illegal graffiti work affixed to a property’s wall is “removable,” one important factor in determining protectability under VARA.

Alternative Claims for Consideration

Presumably due to the uncertainty artists face in availing themselves of VARA protection, street artists have endeavored to allege alternative claims in the last several years as an effort to protect their rights in unsanctioned street art.

For example, in Tierney v. Moschino S.p.A., Brooklyn graffiti artist Rime filed a lawsuit in the Central District of California against Jeremy Scott and Moschino for use of his artwork on Moschino products and advertising, alleging more than the standard copyright and VARA claims.28 At issue in Moschino was a mural that Rime painted in 2012 entitled “Vandal Eyes,” which was featured on the side of a Detroit building at the property owner’s request. In 2015, Moschino released a Fall/Winter 2015 apparel collection branded under “Moschino,” featuring graphic designs that reproduced portions of Rime’s “Vandal Eyes” mural, as well as his graffiti tag.29

In August 2015, Rime alleged various claims against Moschino including copyright infringement, Lanham Act violations, and right of publicity violations.30 At the heart of his Lanham Act claim, Rime alleged that Moschino’s improper use of his trade name, “Rime,” and professional signature, “RTME,” on Moschino products, advertising, and photographs created the false impression that Rime was the designer of the collection.31 He emphasized that the public and professionals in the art industry had come to recognize the plaintiff’s professional name and signature as belonging to the plaintiff, establishing that “Rime” and “RTME” had acquired secondary meaning.32

In ruling on the defendants’ motion to dismiss, the court noted that while it could not determine whether the defendants’ use of the marks was misleading, Rime had adequately alleged Lanham Act violations relating to his “Rime” trade name and “RTME” professional signature.33 This case provided the court with a rare opportunity to analyze and rule on Lanham Act violations in the context of street art. The case settled before the court could rule on the parties’ summary judgment motions, leaving no final resolution as to the plaintiff’s Lanham Act claim.34

More recently, in Berreau v. McDonald’s Corp., the estate of graffiti artist “Secret Snow” sued McDonald’s for, among other claims, copyright and trademark infringement, based on McDonald’s unauthorized use of Snow’s graffiti and tag in hundreds of McDonald’s restaurants worldwide.35 The use of Snow’s artwork and tag only occurred in international McDonald’s locations, and not in the United States. Thus, while the case presented the opportunity to add to the body of case law of Lanham Act violations in street art cases, the court eventually dismissed the case without prejudice on the ground that the court lacked personal jurisdiction over the alleged violations abroad.

In sum, as is the case for the majority of street art cases litigated, the matters were either dismissed or settled before any substantive ruling could be made.

A Clearer Future?

The foregoing cases are just a few examples from a flurry of ligation, extending even beyond the realm of street art, to considerations of artists’ entitlements under VARA relating to a wide variety of artworks. Recently, for example, the artist of “Trinity Root,” a 9/11 memorial located in lower Manhattan, filed suit against the Parish of Trinity Church, alleging claims under VARA for the unauthorized removal of and damage caused to his artwork.36 Similarly, the creator of Wall Street’s “Charging Bull” has threatened to file suit over the unauthorized placement of the “Fearless Girl” statue in the bull’s path, claiming that the addition distorts the meaning and message behind his original work.37

Aside from this spike in litigation of VARA claims, scholars and federal entities have likewise taken interest in the scope and applicability of VARA. In 2014, a congressional review of the nation’s copyright law took place, inspiring further studies in 2015 and a symposium hosted by the Copyright Office on moral rights in April 2016 to discuss the then-current issues relating to VARA.38 Now, the Copyright Office is undertaking a public study on moral rights for authors, seeking to assess whether any additional protection is advisable in this area of law.39

While many questions still remain, cases with the potential to provide artists with substantive answers to their VARA questions such as 5Pointz and Six Heads suggest that it is only a matter of time before cases will shed more light on the scope of artists’ rights under VARA.

Endnotes

1. Brittany M. Elias & Bobby Ghajar, Street Art: The Everlasting Divide between Graffiti Art and Intellectual Property Protection, 7 Landslide, no. 5, May/June 2015, at 48.

2. 17 U.S.C. § 106A (“Subject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art—(1) shall have the right—(A) to claim authorship of that work, and (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create; (2) shall have 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; and (3) subject to the limitations set forth in section 113(d), shall have the right—(A) 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 (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.”).

3. Id. § 113(d)(2).

4. English v. BFC&R E. 11th St. LLC, No. 97 Civ. 7446(HB), 1997 WL 746444, at *1 (S.D.N.Y. Dec. 3, 1997).

5. Id.

6. Id. at *4.

7. Pollara v. Seymour, 150 F. Supp. 2d 393, 395 (N.D.N.Y. 2001).

8. Id. at 394–95.

9. Id. at 396 n.4 (finding the defendants’ argument that VARA does not protect illegally created work unpersuasive where the work in question may be removed without being destroyed).

10. 17 U.S.C. § 101 (“A work of visual art does not include . . . any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container[.]”).

11. About, 5Pointz NYC, http://5ptz.com/about/ (last visited July 30, 2017).

12. Cohen v. G&M Realty L.P. (5Pointz), Nos. 13-CV-05612 (FB) (RLM) & 15-CV-3230 (FB) (RLM), 2017 WL 1208416, at *1 (E.D.N.Y. Mar. 31, 2017).

13. Id.

14. Id. at *2.

15. Id. at *3.

16. 17 U.S.C. § 106A(a)(3)(B).

17. Scott v. Dixon, 309 F. Supp. 2d 395, 400 (E.D.N.Y. 2004); see also Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303, 325 (S.D.N.Y. 1994) (“[F]or a work of visual art to be protected under [VARA], a plaintiff must make a two-tiered showing: (1) that the visual art in question has “stature,” i.e. is viewed as meritorious, and (2) that this stature is ‘recognized’ by art experts, other members of the artistic community, or by some cross-section of society. In making this showing, plaintiffs generally, but not inevitably, will need to call expert witnesses to testify before the trier of fact.”), rev’d and vacated in part and aff’d in part, 71 F.3d 77 (2d Cir. 1995).

18. Scott, 309 F. Supp. 2d at 400.

19. Cohen, 2017 WL 1208416, at *3 (citation omitted).

20. Id.

21. Id. at *5.

22. Complaint, Thrasher v. Siegel (Six Heads), No. 2:17-cv-03047-PSG-GJS (C.D. Cal. Apr. 24, 2017), https://www.courthousenews.com/wp-content/uploads/2017/04/Bukowski.pdf.

23. Id. ¶ 14.

24. Id. ¶ 15.

25. Id. ¶ 18.

26. Id. ¶ 31.

27. Id. ¶ 33.

28. Complaint, Tierney v. Moschino S.p.A., No. 2:15-cv-05900-SVW-PJW (C.D. Cal. Aug. 5, 2015) [hereinafter Tierney Complaint], http://online.wsj.com/public/resources/documents/2015_0806_rime.pdf.

29. Tierney v. Moschino S.p.A., No. 2:15-cv-05900-SVW-PJW, 2016 WL 4942033, at *1 (C.D. Cal. Jan. 13, 2016).

30. See Tierney Complaint, supra note 28.

31. Id. ¶ 43.

32. Id.

33. Tierney, 2016 WL 4942033, at *5.

34. Tierney v. Moschino S.p.A., No. 2:15-cv-05900-SVW-PJW (C.D. Cal. July 22, 2016) (dismissing the case with prejudice).

35. No. 2:16-cv-07394-FMO-AS, 2017 WL 696080, at *1 (C.D. Cal. Jan. 30, 2017).

36. Bill Donahue, “Star Trek” Artist Sues over Destroyed LA Mural, Law360 (Apr. 24, 2017), https://www.law360.com/ip/articles/916349.

37. Id.

38. Study on the Moral Rights of Attribution and Integrity, U.S. Copyright Office, https://www.copyright.gov/policy/moralrights/ (last visited July 30, 2017).

39. Id.

Brittany M. Elias

Brittany Elias is an intellectual property litigator and the lead associate for trademark prosecution at Glaser Weil LLP. Although her practice covers a wide range of intellectual property matters, her practice focuses primarily on copyright, trademark and unfair competition litigation.

Bobby A. Ghajar

Bobby Ghajar is a trial attorney and partner in Cooley’s Santa Monica office, and focuses on trademark, trade dress, advertising, copyright, and right of publicity litigation.