U.S. Legal Standards
The US Copyright Act grants certain exclusive rights to a copyright owner, including the right to make and distribute copies and derivative works, and the right to public display. These exclusive rights also give a copyright owner the right to seek royalties from others wishing to use the copyrighted work.
In the Ringgold case, it was held a copyright infringement must meet the de minimis standard to be actionable. “De minimis” means an infringer must demonstrate the copying of the copyrighted material is so trivial “as to fall below the quantitative threshold of substantial similarity”. The quantitative threshold of “substantial similarity” refers to the amount of the copyrighted work copied, and the observability of the copyrighted work in the infringing work. “Observability” is determined from the “average lay person" perspective, by the length of time the copyrighted work appears in the infringing work, and its prominence in the infringing work as revealed by the lighting and positioning of the copyrighted work.
To determine if the de minimis threshold has been exceeded in a broadcast, a court will also look to the Librarian of Congress’ regulation on royalties. Royalties are to be paid by public broadcasting entities for the use of published pictorial and visual works. There are 2 types of distinctions: a “featured” display and a “background and montage” display. “Featured” display is defined as a “fullscreen or substantially full screen display for more than 3 seconds”, whereas a “background or montage” display is defined as any display “less than full-screen, or full- screen for 3 seconds or less”. Only if the de minimis threshold has been exceeded, a court will examine the fair use defense.
Fair use is use of copyrighted material for purposes such as criticism, comment, news reporting, teaching, scholarship, or re- search. The affirmative defense of fair use consists of 4 factors and the court would balance each of them. They are: 1) the char- acter and purpose of the use; 2) the nature of the original work; 3) the amount taken from the original work; and 4) the market effect to the original work. The market effect is determined by whether the defendant’s unrestricted and widespread conduct of the sort would result in substantially adverse impact on the potential market for the original. The plaintiff needs to show a “traditional, reasonable, or likely to be developed” market for licensing for the infringing purpose.
French Legal Standards
In France, copyright is composed of economic rights and moral rights. The economic rights consist in, 1) the representation right or the “right to display”, which involves the communication of the work to the public by any means; and 2) the reproduction right, which involves the fixing of the work in a material form. Given the ownership of the medium of a work is distinct from its copy- right, a purchaser’s acquisition of a physical or digital work does not entail the transfer of copyright in that work. This is true even if the author has shown some years of tolerance towards these exploitations.The moral rights will be explained under the case study of “Water Lilies” below.
A new work incorporating a pre-existing work constitutes a composite work. If the author of the pre-existing work does not participate in the creation of the composite work, he must give his consent, and may request remuneration. The representation or the re- production of a work without authorization is an infringement. Even the partial reproduction of a work without the author's consent is considered infringing. It should be added that very often, the partial reproduction will also infringe the moral right to the integrity of the work.
There is an infringement when the characteristic elements that make the work original are identifiable. In fact, if the work is clearly identifiable, even if it is a brief communication, the reproduction right is at issue. The French Supreme Court (Cour de Cassation) emphasized this point in connection with the brief appearance of a painting in the background of an advertising film.
However, French jurisprudence tolerates a third party photographing or filming a work without the author's authorization insofar it is only “accessory” to a different main subject. This exception of the accessory or "background" is common to the reproduction and representation rights. First reserved to works (like architecture, sculpture) located in a public place, the exception currently applies whether the work is located in a public place or not, the criterion being that of the accessory, not the location. This theory of the accessory has been applied to the case of postcards depicting Place des Terreaux in Lyon. For the judges, this use did not in- fringe the reproduction rights of the architect and plastic artist (Daniel Buren), who de- signed the square’s modern layout, as it was accessory. In the context of a film, a French court recognized the accessory nature of illustrations that were only briefly filmed in the background of the main elements and were not represented for their intrinsic value.
If the reproduction or the representation of a work is not considered accessory, the alleged infringer can claim, as a defense, legal exceptions to copyright. Under Article L.122-5 of the French Intellectual Property Code, these exceptions include parody and short quotation. Artistic freedom, a corollary of the freedom of expression, is also frequently invoked before the courts.
The short quotation exception must meet strict conditions. It must be justified by the “critical, polemical, educational, scientific or informative character”of the work that incorporates it. The exception cannot therefore be invoked for commercial uses of a work. The judge has a strict appraisal of the critical nature of the work and would concretely analyze the artist’s message and identify whether the use of the work was essential to the message, and whether it could not be substituted.
Considering the parody, the second work must avoid any risk of confusion with the original work. This condition implies the original work must not be copied identically. The purpose of the parody must also be humoristic and must not cause harm. The judge examines whether a parody can be considered one in terms of the artist’s intention and the public’s understanding.
“Fair use” does not exist in France. In the French legal system, the agreement must be obtained from the author of the original work and exceptions are strictly limited. In fact, judges have to make very factual, aesthetic, and cultural assessments, which are difficult to systematize in clear-cut standards.
Non-authorized Use of Joan Mitchell’s Artworks
The “Monet-Mitchell” exhibition was held at the Fondation Louis Vuitton in Paris from 5 October 2022 to 27 February 2023. Before the end of the exhibition period, Louis Vuitton launched a series of ad campaign photos promoting its Capucines bags, featuring Léa Seydoux posing in front of Joan Mitchell’s artworks at the exhibition. The artworks in question were: “La Grande Vallée XIV (For A Little While)” (1983), “Quatuor II for Betsy Jolas” (1976), and “Edrita Fried” (1981).
On 21 February 2023, the Joan Mitchell Foundation published a public statement declaring that Louis Vuitton’s use of the artist’s artworks in its print and digital ad campaigns was unauthorized, and that it violated the agreement between them. A cease- and-desist letter w sent to Louis Vuitton. The Joan Mitchell Foundation stated it denied Louis Vuitton’s several requests to use the artist’s works in an ad campaign “in accordance with its longstanding policy that images of the artist’s work be used only for educational purposes”. As an artist-endowed foundation “dedicated to stewarding Mitchell’s work and legacy”, it had never licensed the artist’s works for use in commercial campaigns or for the promotion of other goods or services.
When a loanee receives an artwork, he/she does not acquire the author’s exclusive copyrights unless the agreement says otherwise. Here, Mitchell’s artworks were on loan for the exhibition at Fondation Louis Vuitton. Assuming the artist has assigned her exclusive copyrights to the Joan Mitchell Foundation, to produce an ad campaign with the artworks in the background, Louis Vuitton should have obtained the artist foundation’s authorization and reached a licensing agreement. The artist’s right of reproduction was implicated when an ad campaign showed the artwork in the background of the campaign photos and/or videos. When the ad photos were uploaded to the maison’s website and/or social media channels, it had violated the artist’s right of public display of the copyrighted works. If Louis Vuitton had printed the ad photos on its fashion catalogues or flyers, the right of distribution would also be implicated.
Applying the Ringgold test to the photos of Louis Vuitton’s ad campaign, the copying was more than de minimis. An “average lay person” would observe Joan Mitchell’s artworks are prominently portrayed as the main backgrounds of these photos. Not only is the lighting bright in the background, the artworks make up the entire background (quasi full-screen) whether the shot is frontal or diagonal, only obscured by the actress standing in the center front holding the bag. Like Ringgold, the artist’s style using a blend of bold colors in broad brushstrokes is easily recognizable from these photos. In one of the photos where the actress leans on a bench with a white Capucines, though the artwork may be considered to have taken up only the upper half background, while the actress and the bag take up the right half foreground, the vivid yellow color of the artwork on the left background catches the focus of the photo. Hence, the amount of the copyrighted work copied was not trivial and the quantitative threshold of “substantial similarity” had been crossed.
Once the de minimis threshold has been exceeded, the fair use defense would be examined. On the first factor of the character and purpose of the use, the campaign photos used the artworks to decorate the photo background, a use different from the artworks themselves which serve as objects of artistic expression and art appreciation. This would swing in favor of the maison. However, a counter-argument can be made as to the decorative purpose of an artwork. In that case, the artist could have the first factor on her side. On the second factor of the nature of the work, both the paintings and photos are creative in nature, both as different media of art. Thus, the copying is not transformative enough. This swings in favor of the artist. Quantitatively, the amount taken from the original work was substantially similar. This swings in favor of the artist.
On the fourth factor of the market effect to the original work, it would not seem to be difficult for the artist to show there is a potential market for licensing her artworks as backgrounds of photos and/or videos. The Joan Mitchell Foundation’s public statement indicated it would never grant a license for use in commercial campaigns. It is more probable than not a traditional market exists, only the foundation is not giving in to play a part. This swings in favor of the artist.
Therefore, under U.S. law Louis Vuitton would not be successful in asserting the defense of fair use. Joan Mitchell Foundation could have easily won in this matter of copyright infringement over the ad campaign photos.
In France, the characteristic elements making Joan Mitchell’s works original are identifiable on the photographs and represent central elements of the visuals that are reproduced for their intrinsic value. These elements would be taken into account by a French judge to conclude the reproduction of Mitchell's artworks in the photographs is not accessory. The question is therefore whether Louis Vuitton could claim a copyright exception for its defense.
In France, as the short quotation exception must be justified by a critical, polemical, educational, scientific or informative character, and the reproduction of Mitchell’s artworks in a commercial ad campaign could not meet the criteria of this exception. Considering the parody exception, as the reproduction copied the works identically and was not humorous, it could not benefit from this exception either.
Consequently, Louis Vuitton would not have succeeded in claiming any benefit of the copyright exceptions. In France too, Joan Mitchell Foundation could easily have won this case of copyright infringement on the advertising campaign photos.
Expiration of Copyright in Monet’s “Water Lilies”
In June 2022, Louis Vuitton had shot cam- paign stills and video to promote the Capucines’ pastel shades with the same ac- tress at the Musée de l'Orangerie in Paris. The video description on Youtube specifically stated the ad campaign was set against
Claude Monet's “Water Lilies” paintings to convey an “intuitive blend of elegance, femininity and savoir-faire”. It referred to Monet’s artworks as the “perfect canvas” for reinterpretation of the iconic bag’s color tones. In this case, the maison would likely to have obtained a filming permit with the museum.
In France, the economic rights of copyright last for the author’s life plus 70 years following his death. Despite the expiration of copyright, many museums and heritage sites in France prohibit professional photography and filming on their premises without express authorization, even if their collection is in the public domain. For example, the Louvre Museum authorizes the photography and video of the works for private use, but prohibits professional photography or filming without prior authorization from the President of the institution. The Administrative Court of Paris ruled the ban on professional photography and filming at the Louvre Museum was perfectly legal. The same conditions apply to the Musée de l'Orangerie hosting the "Water Lilies".
In addition, after the expiration of economic rights, the work enters the public domain and may therefore be used freely in respect of the author’s moral rights. In fact, moral rights are perpetual, inalienable, and imprescriptible. They include: 1) the right of paternity, meaning the right to be identified as the author of the work; and 2) the right of integrity, involving the right to ensure the form and spirit of the works are respected.
Given Monet has been dead for over 70 years,the “Water Lilies” is in the public domain. Hence, anyone can portray the artworks in ad campaigns without infringing any copyright, even if the purpose is to boost sales revenue. However, it should be noted the author’s moral rights continue to be held by the author’s heirs and successors. Moral rights require the artwork to be used in a respectful way. It is clear Louis Vuitton must have made a specific request to the Musée de l'Orangerie before shooting these images.
If the “Water Lilies” were indeed protected by copyright, the campaign video would have exceeded the de minimis standard and constituted an actionable copying. Out of a total duration of 15 seconds, besides the first 4 seconds taken outdoors, substantial portions of the artwork are visible and identifiable in the rest of the video. Where the Capucines is closed up, the shot lasts for 2 seconds and the artwork takes up 25-50% of the screen. There are 2 close ups of the bag in total. 2 shots show only the artwork, one at 0:06 and another at 0:10. The other shots show the actress walking in front of the artwork, ranging from head shots to panorama. Even though the artwork is shown behind the actress in these segments, the artist’s impressionist style and use of pastel colors are immediately recognizable. In other words, the “Water Lilies” appears in total for 11 seconds, more than the actress or the bag itself. Even if no one shot of the art- work lasts for more than 3 seconds, like Ringgold, the repetitive effect of the brief segments with smaller portions “reinforces the visual effect of the observable seg- ment”.The copying was substantially similar and a fair use defense similar to the Joan Mitchell’s campaign above would not survive.
As for the 3 campaign stills, even though the artworks are used as the photo background, they are all clearly focused and uniquely identifiable down to the individually specific composition of “Water Lilies”. It can be argued the choices of the actress’ outfit (black and white) and the creamy tone of the bag compose a relatively plain tone, which would allow the colorful artworks pop up from the background. In the still with “Reflet Verts”, the artwork takes up 80% of the photo frame. The actress holding the bag stands in the right foreground and not in the center, not obscuring the lotus leaves at the top of the painting which set it apart from the other compositions. The other 2 stills portray the sitting actress and the Capucines prominently in the center front. Despite the artworks take up only the upper half background, the most identifiable parts of “Soleil Couchant” with the yellow and pink colors and “Les Deux Saules” with the pinky hues around the lotus flowers at the top are so observably clear that the amounts copied are “substantially similar” and not de minimis. Were the “Water Lilies” copyrighted, the maison would not stand a copyright challenge.
Fondation Louis Vuitton’s Collection of Gerhard Richter’s Artworks
In November 2021, the Capucines campaign starring the same actress used Gerhard Richter’s 2 artworks in its video and photoshoot. Richter’s artworks were acquired by Fondation Louis Vuitton as part of its collection.The YouTube video description states: the artworks “Gudrun" © and “Möhre” © Ger- hard Richter 2021. The copyrights of the artworks belong to the artist.
Under the US first sale doctrine,an artwork owner who knowingly purchases a copy of a copyrighted work from the copyright holder receives the right to display that particular copy, notwithstanding the copyright owner’s exclusive rights. This is in contrast to the French law requiring nonetheless the purchaser of an artwork to obtain the artist’s consent and pay a license fee in the context of a public exhibition of the work.
As the purchaser of the artworks, according to the US law, Fondation Louis Vuitton freely enjoys the right to publicly display them in an exhibition; but under the French regime, the Fondation needs to pay a licensing fee to Richter if the right of public exhibition has not been expressly assigned by the artist at the time of sale. Both systems would require the maison to seek the artist’s authorization and licensing agreement as the right of repro- duction is implicated when the artworks are portrayed in the background of campaign video and photos.
The campaign video has a total duration of 40 seconds. Segments showing portions of “Möhre” take up around 25-40% of the screen size and accumulate to 9 seconds, with 2 shots each lasting for 2 seconds. The shots showing “Möhre” in the background in the beginning and at the end of the video are fleeting as the actress swirls in and out of the exhibition space. In no shot is “Möhre” clearly focused and the portions shown can be argued as unidentifiable to a particular artist’s style.
In contrast, “Gudrun" is observably identifiable by an “average lay person”. The entire work is firstly shown up front with a zooming in lens with no obstruction for 2 seconds from 0:10 to 0:12. There are 2 subsequent shots of “Gudrun", in which the artwork takes up around half the screen but no shot lasts longer than 2 seconds. One is from 0:19 to 0:20, when the actress sits on the bench appreciating the entire artwork. Another is at 0:28, when a stranger sits beside her on the same bench, and the bottom part of the artwork takes up nearly the entire screen, obstructed by the actress’ back.
Even though “Möhre” is shown more repetitively and the accumulated screen time is longer than “Gudrun", it may be harder for the artist to claim the former exceeded the de minimis standard than the latter. Since “Gudrun" is shown less than 3 seconds, the artist would unlikely to argue the quantitative threshold of “substantial similarity” has been crossed to make the maison’s copying actionable.
As for the campaign stills, both photos showing “Möhre” and “Gudrun" in the background are actionable because the amounts copied are more than trivial. Even shot from a diagonal angle, the combination of vivid colors with dotted patterns across is signature of the artist and is clearly observable by an “average lay person”. While “Möhre” fills up the en- tire photo background, “Gudrun" takes up about 60% of the photo frame but nearly the entire artwork is visible. Both paintings are obstructed only by the actress carrying the bag in the center front, yet they are identifiable. The maison would likely lose in a copyright claim brought by the artist.
The Sacred Right
In all 3 Capucines campaigns using artworks in the background of the photos and videos, the main argument the maison would rely on is the fact their customers made the purchases because of the originality of the bag design, the high quality of the materials, and the prestige of the fashion brand, rather than the fact the campaigns portrayed the Capucines alongside the artworks. The profits from the sales of the Capucines were unlikely to have derived from the artworks in the campaign background and it would be hard to prove so.
Once the de minimis standard has been crossed, the fair use factors would be examined. These 3 campaigns would not succeed in asserting the fair use defense, because the first and second factors would swing in the artists’ favors as analyzed above in the Joan Mitchell’s campaign. Since the quantitative threshold of “substantial similarity” has been exceeded, the third factor would be logically unfavorable to the maison. Its use in ad campaigns would also very likely to exert a substantially adverse impact on the artists’ potential markets of licensing their artworks for background use.
The solution would also be similar under the French law, in view of the factors explained above. The reproduction of the works could not be considered as accessory or benefit from one of the copyright exceptions, such as short quotation or parody. While the US judges should not wear the hats of art critics the French rulings show the judges often find themselves assessing the artistic approach and quality of the artists’ works in determining the applicability of a parody exception or in search of creative freedom.
Under both the US and French laws, the right of reproduction is sacred and consent must be sought from the copyright owner. The right of display is equally sacred in France, whereas it is overshadowed by the US first sale doctrine. Both regimes give a leeway to the “accessory” use of copyrighted works in the “background”, insofar the de minimis threshold is respected. The fallback of a copyright infringement is the factor- balancing fair use test or a strict copyright exception. To play on the safe side, without authorization in the US, a substantially full screen or background display should not exceed 3 seconds. The rule of thumb in using any copyrighted artwork in framing an ad campaign is to obtain an authorization or a license from the legitimate copyright owner.
