Francesca Masella is a J.D. candidate, 2021 at NYU School of Law.
The unauthorized adornment of streets, often referred to as graffiti, started becoming positively recognized as street art in the 1970s. It has since become increasingly accepted and embraced. Many artists, including Basquiat, can trace their careers as renowned artists back to their time producing street art. The value of street art is in part that it has redefined what the general public defines as art. These artists have taken what normally is confined to museums and galleries, and have brought it outside, changing how the public consumes it. New York City has been flooded with street art. Everyone who has walked the North-West corner of Bowery and Houston has witnessed a few people admiring and photographing the ever-changing street art mural that adorns the corner. Clearly people are valuing and appreciating these artists and their works, just as they might a Picasso at the MoMA.
While public appreciation of street art and museum art might be the same, do these works enjoy the same intellectual property protection? Should Picasso receive more stringent copyright protection than Banksy for his works, just because they might be hung up inside a building as opposed to being physically painted on its outside walls? This is the issue that has been raised in a recent set of lawsuits brought by Mercedes Benz against James Lewis, Daniel Bombardier, Jeff Soto, and Maxx Gramajo, street artists who have their work displayed in Detroit, Michigan.
In January 2018, Mercedes unveiled its new G 500 truck. The company obtained a permit from the Detroit Film Office to photograph the vehicle at various areas throughout the city for promotional materials. That month, Mercedes posted photos of the new car on its Instagram page. Some of these photos consisted of the car driving by murals painted by the artists for the Murals in the Market festival in Detroit.
The posts were brought to the attention of the artists, who allegedly threatened to sue Mercedes for copyright infringement if it did not pay them for use of their works. In response, the car company sued the artists and sought declaratory judgment that their depiction of artists’ murals in the posts were valid as a matter of law. In one cause of action, the company claimed an exemption for their photos under the Architectural Works Copyright Protection Act (AWCPA).
The AWCPA was passed in 1990 as part of a series of amendments to copyright law to explicitly add architectural works to the list of works entitled to copyright protection. The scope of protection for these works is defined in 17 U.S.C. § 120. Subsection (a) explicitly excludes the right “to prevent the making…of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.” The House Report explained that this exemption was included in part to protect the millions of tourists who visit the U.S. and take home with them photos of the country’s architecture. Moreover, these photos do not interfere with the owner’s economic exploitation of their architectural works. Mercedes argued that the murals in questions are “part of an architectural work” within the meaning of the statute, and are therefore exempt from protection, ultimately making its Instagram posts totally legal.
The artists filed a motion to dismiss arguing in part that § 120(a) should not prevent infringement of any pictorial, geographic, or structural (PGS) work just because it might appear on the outside of the architectural work. If Mercedes’ view prevailed, the artists urged that street art would be unprotected by copyright. The artists relied on Leicester v. Warner Bros.,232 F.3d 1212 (9th Cir. 2000) to support their argument that buildings were at one time considered useful articles and were therefore unprotected by copyright, but that this never prevented protection of the two-dimensional works depicted on them. The artists pointed to Star Athletica L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017) for the argument that if a PGS work (their murals) can be identified separately from the useful article on which it is depicted (the buildings) it can still be protected. Further support for this argument, they said, could be found in the House Report, which directly acknowledged a situation in which a PGS is embodied in the architectural work, and clarified that if the owners of the PGS and the architecture were different, each could recover for infringement.
Ruling on the motion to dismiss, the court found reliance on Leicester to be misplaced because the court there sided with the exact argument that Mercedes is making here: that the depiction of the PGS in the depiction of the building was allowed under the new statute. Its reasoning was that the term “architectural work” included “the arrangement and composition of spaces and elements in the design of the building” as per its definition in the statute. The PGS in question constituted one of those design elements. The court also found reliance on Star Athletica to be misplaced as the case did not deal with the right to photograph useful articles that included PGS design elements. Ultimately the court denied the motion to dismiss and maintained that Mercedes had a plausible claim of exemption under the AWCPA.
As this case moves forward, it has the potential to better define copyright protections for street art. Should the murals be seen as design elements of the architectural work, just as the court in Leicester held, and be excluded from copyright protection in photographs of the architectural works? Or should the murals be seen as independent PGS works that lie separate from the architectural work, such that photographers of the architecture must receive permission from the street artist owners of the murals to use the photos? Holding one way over the other might penalize and disincentivize people like Banksy and Basquiat, who have made names for themselves from their street art, and artists like Lewis, Bombardier, Soto, and Gramajo who are trying to do the same.