Commercial Misappropriation: Where Do Street Artists Draw The Line?

April 14, 2020

By Sara Osinski.

There was once a time where the presence of graffiti was perceived as contributing to increased crime rates and decreased property values.^[1] Since the 1970’s, graffiti culture and society’s perceptions of graffiti have changed drastically. Society’s tolerance for graffiti and the new wave of street art gradually evolved into praise, which attracted visitors and commerce to locations where elaborate murals or “pieces” fill the streets.^[2] Although “graffiti” and “street art” are often used interchangeably by the lay people, recent scholarship has distinguished these two terms. Ronald Kramer, an expert in cultural criminology^[3], defines graffiti as tags (quick word-based words), throw-ups (bubble letter works), and pieces (more elaborate and time-consuming works).^[4] Graffiti is generally produced with spray paint or markers and ink, while street art is created with broader “tools of production,” which include spray paint, markers, stencils, wheat paste, stickers, sculptures, and more.^[5] For the purposes of this article, “graffiti” will refer to pieces created without a property owner’s permission, and “street art” will refer to authorized pieces.

In the recent landmark case, Castillo v. G&M Realty, the United States Court of Appeals for the Second Circuit recognized street art as “a major category of contemporary art.”^[6] In Castillo, the court ordered the property owner to pay $6.75 million in damages after whitewashing and destroying 45 authorized street artworks that acquired “recognized stature.”^[7] In response to this case and the growing street art phenomenon, more property owners are commissioning artists to paint elaborate pieces on their buildings, while others are rushing to remove graffiti before it acquires recognized stature.^[8] Fashion houses are looking to street art for inspiration, while music videos and films are increasingly featuring street art as backdrops.

Many graffiti writers and street artists today do not perceive the newly found interest and resulting commodification of their artwork as a problem, especially when they are compensated and properly acknowledged for their creative output.^[9] However, artists are increasingly “drawing the line” when major corporations appropriate their graffiti or street art for commercial gain without the artist’s consent.

According to the Webster’s Dictionary “to appropriate” is “to take or make use of without authority or right.”^[10] In visual arts, “appropriation” means to “properly adopt, borrow, recycle or sample aspects (or the entire form) of human-made visual culture.”^[11] Pablo Picasso, Robert Rauschenberg, Andy Warhol, and Shepard Fairey are among the many artists who have acquired fame through appropriating other artists’ works.^[12]Although lawsuits have ensued from art appropriation under U.S. copyright law, many of these claims have been dismissed because defendants were successful in proving that appropriation was “fair use” because they produced a “new expression, meaning or message” with the appropriated art.^[13] One of the leading cases in the fair use analysis of art appropriation was brought against artist Richard Prince.^[14]

Unlike artists, corporations rarely appropriate graffiti and street art in an attempt to create a “new expression, meaning, or message.” Corporations instead are using graffiti and street art into their products and advertisements in order to give their company or products an “edge.”^[15] In response, agitated graffiti writers and street artists are leaving the streets and entering the courtroom to file claims against corporations who have misappropriated their art. These claims have subsequently accelerated tensions between artists, property owners, and corporations. Commercial misappropriation of graffiti and street art has raised numerous questions regarding how artists, property owners, and commercial appropriators can protect themselves from potential litigation.

Copyright Protection (Copyright Act 1976)

Under the Copyright Act of 1976, copyright protection exists in “original works of authorship fixed in any tangible medium of expression.^[16] Because the Copyright Act does not explicitly list “graffiti and street art” as one of the “works of authorship,” this ambiguity must be addressed. Relevant “works of authorship” under the Copyright Act that are most closely related to graffiti and street art include: (1) pictorial, graphic, and sculptural works (“PGS”)^[17] and (2) architectural works.^[18] Before diving head-first into the PGS vs. architectural works debate, legal protection of the reproduction of “legal street art” and “illegal graffiti art” should first be understood.

Protection Against the Reproduction of Street Art

Whether authorized street art can be protected from commercial appropriation has yet to be answered by courts, however some legal guidelines have been established.^[19] One of these guidelines is the court’s identification of commercial appropriation of street art that is de minimis, meaning that use was “of minimal and inconsequential effect” too minor to merit court intervention.^[20] For instance in Gayle v. HBO, artist Itoffer Gayle sued a major network corporation for copyright infringement after HBO displayed his street art (painted on a dumpster) in the TV series “Vinyl” without his permission.^[21] HBO countered that their use of Gayle’s artwork was de minimis because the artwork was presented in the background in passing for only 2-3 seconds and played no role in the plot of the TV show.^[22] The court agreed with HBO that the use was de minimis, and therefore created precedent for what use is too minor to prevail on a copyright claim.^[23] Although the corporation prevailed, Gayle v. HBO leaves open the question of what constitutes as more than de minimis in the context of graffiti and street art.

Question of Illegal Graffiti

Courts have yet to answer whether graffiti can be denied copyright protection.^[24] These questions were almost answered in 2018 in H&M v. Williams, after major clothing company H&M sued graffiti artist Jason Williams (a.k.a “Revok”) for threatening litigation.^[25] Revok sought compensation from H&M after the latter used Revok’s graffiti art (painted on city-owned playground walls) as a backdrop for the company’s website and social media advertising.^[26] In H&M’s complaint against Revok, H&M argued that because Revok created the artwork illegally through trespass and vandalism, such artwork is not protected by copyright under the fair use “unclean hands doctrine” defense.^[27]

H&M’s lawsuit triggered boycotts from other artists and graffiti-lovers over social media worldwide.^[28] Only days after filing the complaint, H&M voluntarily dismissed its complaint and settled with Revok outside of court, leaving the question unresolved.^[29] Interestingly to note, this was not the first time Revok attempted to protect his graffiti. In 2014, Revok sued and settled with Italian fashion designer Roberto Cavalli for copyright infringement after Cavalli used Revok’s artwork on his clothing designs.^[30]

Argument of Architectural Work Exception

Under the Architectural Work Copyright Protection Act of 1990 (the “AWCPA”), copyright in an architectural work “does not include the right to prevent the making, distributing, or public display of […] the work if the building in which the work is embodied is located in or ordinarily visible from a public place.”^[31]

The Architectural Work Exception was notably used in Leicester v. Warner Bros. In this case, artist Andrew Leicester sued Warner Bros. for copyright infringement after Leicester’s sculpture briefly appeared in the movie Batman Forever (1995).^[32] Warner Bros. argued that Leicester’s sculpture should be exempted from copyright protection because it was “part of an architectural work.”^[33] The 9th Circuit court agreed, saying that the sculpture was “designed to appear as part of the building” and “served a functional purpose.”^[34]

The “part of” an architectural work defense was narrowed in Falkner v. GM in 2018, when artist Adrian Falkner (a.k.a. “Smash 137”) sued major car manufacturer General Motors (“GM”) for copyright infringement.^[35] For advertising purposes, GM posted on its corporate social media photographs of a Cadillac in front of Smash 137’s authorized street art, without the artist’s prior consent.^[36] The major issue in this case was whether street art painted on a garage door constituted “part of” an architectural work. Unlike Leicester, the artwork on the garage door did not serve a functional purpose and was painted after the building was built.^[37] The court held that due to the lack of relevant connection between the artwork and the garage, it cannot be concluded that the artwork was “part of” the architectural work.^[38] Instead of proceeding further into trial to determine damages, the parties settled outside of court.

A similar case, Mercedes Benz, USA v. Lewis, is currently pending before the Southern Division of the Eastern District Court of Michigan.^[39] Mercedes posted six photographs on Instagram which depict in whole or in part murals painted on public buildings in Detroit, Michigan by Canadian artists James Lewis, Jeff Soto, Maxx Gramajo, and Daniel Bombardier.^[40] Through counsel, these artists sent letters to Mercedes threatening litigation for copyright infringement.^[41] In response to these letters, Mercedes filed a complaint seeking declaratory relief, arguing that the artists’ murals are “part of architectural works” and therefore exempted from copyright protection.^[42] The artists moved to dismiss the case, and the court denied the artists’ motions because Mercedes alleged a “plausible claim.”^[43] Presently, this case is still pending and both parties are submitting more evidence into discovery before another scheduling another conference between the two parties.^[44]

Moral Rights Protection (VARA 1990)

In addition to copyright protection, an artist’s “moral rights” of a visual work of art are protected under the Visual Artists Rights Act of 1990 (“VARA”).^[45] One relevant moral right that graffiti and street artists have claimed against commercial misappropriation is the right to “prevent the use… of the work which would be prejudicial to his or her honor or reputation.”^[46]

Currently, two pending cases involving the commercial appropriation of street art have the potential to establish precedent for VARA protection of graffiti and street artists’ “work and reputation.”^[47] In Williams v. Hy-Vee, national grocery store chain Hy-Vee appropriated Chris Williams’ street art in its marketing campaign without the artist’s authorization.^[48] Hy-Vee’s marketing campaign included a commercial which shows the street art “multiple times, close up and in detail, in nearly its entirety, for a substantial period of time.”^[49] The commercial was initially aired during the 2019 Super Bowl and continued to air on the television for several months after.^[50] Hy-Vee also posted this commercial on its social media and YouTube channel.^[51]

In response to Hy-Vee’s marketing campaign, Williams sued Hy-Vee for copyright infringement and violating his moral rights under VARA. Interestingly, the complaint underlines that Williams’ reputation as an artist has been damaged because Williams has “carefully avoided any association with corporate culture or mass market consumerism.”^[52] Under this pending case, the court will have the opportunity to determine whether or not this claim constitutes as de minimis and whether commercial misappropriation of street art can tarnish an artist’s reputation.

Another currently pending commercial misappropriation of street art case is Rivera v. Walmart.^[53] Artist Julian Rivera filed a lawsuit against major corporation Walmart and celebrity talk host Ellen DeGeneres claiming copyright infringement.^[54] Without Rivera’s consent, Walmart and DeGeneres released a clothing line called EV1 which featured a “love” symbol on its products that is substantially similar to Rivera’s street art identification tag and design.^[55] Walmart’s EVI Collection and advertisement campaign generated over one million dollars in profit.^[56] Rivera additionally claimed trademark infringement because he uses his “love” design as a source identifier for his own product line that he sold before the EV1 Collection was released.^[57]

Similar to Williams v. Hy-Vee, Rivera, who is represented by the same attorney as Williams, is also claiming that Walmart’s exploitation of his artwork is particularly damaging Rivera’s reputation as an artist because he has “carefully avoided any association with corporate culture and mass consumerism.”^[58] This case, if it proceeds, will also give courts an opportunity to extend its de minimis analysis in regards to commercial appropriation of street art, and potentially determine whether graffiti tags can be protected by trademark.

Contractual Protection

Problems Arising from Settled or Dismissed Lawsuits

As more graffiti and street artists sue corporations for commercially misappropriating their works, many corporations are responding to such litigation with settlements outside of court.^[59] While some corporations acquire the artist’s consent before using their graffiti and/or street art, other corporations continue to misappropriate graffiti and street art. One possible theory for commercial misappropriation of graffiti and street art is that it is more time efficient. Some graffiti and street artists are hard to find, especially if they do not sign their artwork or use a “tag name.” Corporations seeking to acquire the artists’ consent to use their graffiti or street art may need to do some research in order to acquire the artist’s identity or contact, which may involve asking the property owner, neighbors, or police department about the artist behind the artwork or doing research on social media, graffiti and street art groups, or looking for similar artworks with a discernible tag.^[60]

Another theory as to why corporations misappropriate graffiti and street art is that it might be more cost efficient. Settlement in court for a set price may be less costly for the corporation than an agreement with an artist, who can negotiate a higher licensing fee upfront regardless of commercial success. Additionally, corporations who enter into agreements with artists may agree to providing royalties, which may accumulate to be more than the settlement price. Some corporations may also misappropriate graffiti and street art because they know litigation is expensive, and some artists may not have the financial means to even bring the lawsuit forward.

Recommended Practices

Despite the lack of legal precedent, artists, property owners, and corporations can choose to minimize the risks and potential costs of litigation when handling graffiti and street art in the future.

• Artists

Artists are recommended to register copyright for their graffiti or street art with the United States Copyright and Patent Office (“USPTO”). While copyright registration is not necessary to show that a copyright exists, artists can only bring claims for copyright infringement before U.S. courts if their artwork has received copyright registration.^[61] Therefore, artists who discover that their art is being misappropriated cannot bring a claim before court until their artwork is registered with the Copyright Office, and this registration takes time and money to process.^[62] Therefore, although copyright registration is not free nor guaranteed, registration upon completion of the artwork is good practice.

Next, artists should be aware that if they enter into an agreement with a property owner to create street art on the building’s wall, from which the work cannot be removed without damage, the property owner has the default right to destroy or remove the artwork under VARA.^[63] However, if the work has attained recognized stature, then the owner must either (1) make a failed good faith attempt to notify the artist of the owner’s intention to remove the work; or (2) provide a written notice to the artist granting them 90 days to remove the work themselves.^[64]

• Property Owners

Property owners should heed Castillo v. G&M as a warning to abide by the law before removing a piece of street art they previously authorized. In fact, the court in Castillo v. G&M took the property owner as a textbook example of what owners should not do to authorized street art. In order to avoid complications under VARA, property owners may enter into written agreements with artists, where the artist expressly agrees to waive their rights, including moral rights, over the artwork on the building. Such “VARA waivers” must be in writing, signed by the artist, and must specifically identify the work and the uses of that work.^[65]

• Corporations

As graffiti writers and street artists are increasingly turning to litigation to protect their intellectual property rights, corporations should be more careful when using graffiti and street art for commercial gain.^[66] In order to minimize litigation, a corporation planning to use graffiti and street art in their advertising or products should acquire prior consent from the artist. Prior consent is especially recommended because some graffiti and street art may be registered under the USPTO and will require a license for use.^[67] Because graffiti and street artists likely did not sign the artwork with their real names, the corporation should do some research to determine the real identity of the artist, either by asking the property owner (if applicable), contacting business owners or residents in the neighborhood, contacting local graffiti artists groups, collectives, or associations through social media, asking known graffiti artists, or reaching out to the local police department.^[68] Although acquiring consent may be time consuming, this step is vital in completing in order to avoid potential future litigation from the aggrieved artist.

If the corporation has no success in identifying the graffiti or street artist, then this corporation can proceed in two ways. One, the corporation should only use a small portion of the artwork so that it is not prominently displayed on the advertisement or product. If this corporation is subsequently sued by the artist, then a corporation may argue de minimis use as a “fair use” defense (which may or may not succeed).^[69] A second appropriate course of action is to select alternative graffiti or street art that the company has permission to use. If a corporation decides to misappropriate graffiti or street art, then they may not only face future litigation from the artist, but also reputational damage, as H&M experienced in 2018.^[70]

Conclusion

From humble and even criminal beginnings, graffiti and street art has emerged as a staple imagery of contemporary urban landscape. As graffiti and street art have become more “mainstream,” artists are increasingly discovering that their artwork is being appropriated into social media posts, music videos, films, fashion, and advertising. While artists perceive some appropriation as appreciation, graffiti and street artists are increasingly drawing the line when major corporations misappropriate their artwork for commercial gain. Because the incorporation of graffiti and street art claims into the legal canvas is relatively recent, numerous ambiguities and questions unanswered today will hopefully be answered by the courts and set concrete precedent in the near future.

Acknowledgements: The Author would like to thank Abby Placik for starting the preliminary research for this article.

---

Endnotes:

1. Jeanna Bryner, Graffiti Triggers Crime and Littering, Live Science, Nov. 20, 2008, Here. ↑
2. Richard Chused, Moral Rights: The Anti-Rebellion Graffiti Heritage of 5Pointz, Colum. J.L. & Arts 583, 584 (2018). ↑
3. Enrico Bonadio, Contributors, The Cambridge Handbook of Copyright in Street Act and Graffiti i, xi (2019). ↑
4. Ronald Kramer and Enrico Bonadio, Graffiti and Street Art: Creative Practices Amid “Corporatization” and “Corporate Appropriation”, The Cambridge Handbook of Copyright in Street Art and Graffiti 1, 28 (2019). ↑
5. Id. ↑
6. Castillo v. G&M Realty L.P., Nos. 18-498-cv(L), 18-538-cv (CON), 2020 U.S. App. LEXIS 5228 (2d Cir. Feb. 20, 2020). For more information, read Louise Carron’s article here/. ↑
7. Id. ↑
8. Richard Chused, Moral Rights: The Anti-Rebellion Graffiti Heritage of 5Pointz, Colum. J.L. & Arts 583, 534 (2018). ↑
9. Ronald Kramer and Enrico Bonadio, Graffiti and Street Art: Creative Practices Amid “Corporatization” and “Corporate Appropriation”, The Cambridge Handbook of Copyright in Street Art and Graffiti 1, 34 (2019). ↑
10. Appropriate, Webster’s Third New International Dictionary (3rd ed. 2019). ↑
11. Appropriation Defined, Mark Penner-Howell Artwork, 2013, here. ↑
12. Id. ↑
13. Guy R. Cohen, Sarah L. Edelman, and Jacklyn M. Siegel, American Graffiti, Intellectual Property Magazine, Sept. 2019, here. ↑
14. Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013). ↑
15. Heitor Alvelos and Enrico Bonadio, A Set of Premises for the Scrutiny and Interpretation of Graffiti and Street Art, The Cambridge Handbook of Copyright in Street Art and Graffiti 1, 24 (2019). ↑
16. 17 U.S.C. § 102(a). ↑
17. 17 U.S.C. § 102(a)(5). ↑
18. 17 U.S.C. § 102(a)(8). ↑
19. Enrico Bonadio, Street Art, Graffiti, and Copyright: A US Perspective, The Cambridge Handbook of Copyright in Street Art and Graffiti at 118 (2019). ↑
20. De minimis, The Wolters Kluwer Bouvier Law Dictionary (Desk ed. 2012). ↑
21. Gayle v. HBO, 2018 U.S. Dist. LEXIS 73254 1, 1 (S.D.N.Y. 2018). ↑
22. Gayle at *6. ↑
23. Gayle at *11. ↑
24. Paula Westenberger and Enrico Bonadio, Protection of Illegal Street and Graffiti Artworks, The Cambridge Handbook of Copyright in Street Art and Graffiti 55, 59 (2019). ↑
25. Complaint for Declaratory Judgment at ¶2, H&M v. Williams, No. 1:18-cv-01490 (E.D.N.Y. Mar. 9, 2018). ↑
26. Id. ↑
27. H&M at ¶25. ↑
28. Jenna Amatulli, People Are Boycotting H&M Over Alleged Infringement Of An Artist’s Graffiti, The Huffington Post, Mar. 15, 2018, here. ↑
29. Id. ↑
30. Jason Williams et al. v. Roberto Cavalli, S.p.A. et al., Docket No. 2:14- cv- 06659 (C.D. Cal. Aug 25, 2014). ↑
31. 17 U.S.C. §120(a)(8). ↑
32. Leicester v. Warner Bros., 232 F.3d 1212 1, 1 (9th Cir 2000). ↑
33. Leicester at *2. ↑
34. Leicester at *19. ↑
35. Falkner v. GM, 2:18-cv-00549-WVW-JPR, 2018 US Dist. LEXIS 225991 927, 928 (C.D. Cal 17 Sept 2018). ↑
36. Id. ↑
37. Falkner at *937. ↑
38. Falkner at *938. ↑
39. Mercedes Benz, USA, LLC v. Lewis, 2019 U.S. Dist. LEXIS 154818 1, 1 (E.D. Mich. Sept. 11, 2019). ↑
40. Mercedes at *3. ↑
41. Mercedes at *6. ↑
42. Id. ↑
43. Mercedes at *18. ↑
44. Id. ↑
45. 17 U.S.C. § 106A. ↑
46. 17 U.S.C. § 106A(a)(2). ↑
47. Complaint For Copyright Infringement and Demand For Jury Trial at ¶4, Williams v. Hy-Vee, Inc., No. 2:19-cv-06671-AS (C.D. Cal. Aug. 1, 2019). ↑
48. Williams at ¶3. ↑
49. Williams. at ¶13. ↑
50. Id. ↑
51. Williams at ¶16. ↑
52. Williams at ¶4. ↑
53. Complaint For Copyright Infringement and Demand For Jury Trial at ¶, Rivera v. Walmart, Inc., No. 2:19-cv-06550 (C.D. Cal. July 29, 2019). ↑
54. Rivera at ¶2. ↑
55. Id. ↑
56. Rivera at ¶4. ↑
57. Rivera at ¶7. ↑
58. Rivera at ¶6. ↑
59. Enrico Bonadio, Street Art, Graffiti and Copyright: USA, The Cambridge Handbook of Copyright in Street Art and Graffiti 105, 106-107 (2019). ↑
60. Mark Peroff and Darren Saunders, Preventing A Graffiti Copyright Infringement Lawsuit, IP Watchdog, Sept. 5, 2018, here. ↑
61. 17 U.S.C. §411(a). ↑
62. Fourth Estate Public Benefit Corp. v. Wall-Street.com, 586 U.S. ___ (2019). ↑
63. VARA §113(d)(2). Castillo v. G&M Realty L.P., Nos. 18-498-cv(L), 18-538-cv (CON), 2020 U.S. App. LEXIS 5228 (2d Cir. Feb. 20, 2020). ↑
64. Id. ↑
65. 17 U.S.C. §106A(e)(1). ↑
66. Guy R. Cohen, Sarah L. Edelman, and Jacklyn M. Siegel, American Graffiti, Intellectual Property Magazine, Sept. 2019, here. ↑
67. Id. ↑
68. Mark Peroff and Darren Saunders, Preventing A Graffiti Copyright Infringement Lawsuit, IP Watchdog, Sept. 5, 2018, here. ↑
69. Id. ↑
70. Id. ↑

Suggested Readings:

• Enrico Bonadio, Contributors, The Cambridge Handbook of Copyright in Street Act and Graffiti (2019).
• Richard Chused, Moral Rights: The Anti-Rebellion Graffiti Heritage of 5Pointz, 41 COLUM. J. L. & ARTS 583 (2018).
• Louise Carron, Street Art: Is Copyright for “Losers©™”? A Comparative Perspective on the French and American Legal Approach to Street Art, 30 N.Y. ST. B. ASS’N ENT., ARTS & SPORTS J. at 31 (2019).

About the Author: Sara Osinski is a Spring 2020 Intern at the Center for Art Law. She is in the Class of 2021 at New York Law School and received her undergraduate degree in politics and law from Bryant University. She can be reached at sara.osinski@law.nyls.edu.