A warning to filmmakers: If graffiti is visible in background scenery, think long and hard about getting a license from the graffiti artist. Failure to do so is risky.
The latest lesson comes this week from a California federal judge who is allowing Adrian Falkner to move forward in his copyright lawsuit against General Motors over an advertisement that incorporated his work.
Falkner, a Swiss graffiti artist known as Smash 137, was commissioned in 2014 by a Detroit art gallery to create an outdoor mural. His work ended up on the outdoor elevator shed of a 10-story parking garage. Two years later, a professional car photographer captured the mural when touring the neighborhood and filming a borrowed Cadillac in front of the mural. The photo was sent to G.M.’s ad agency, which posted it to the automaker’s website.
G.M. now appears to be headed to trial after failing to convince the judge on summary judgment that the mural was inseparable from the parking garage. That matters because while copyright law protects architectural works, copyright law permits pictorial representations of architectural works.
Although graffiti has become trendy enough to be appropriated by all sorts of artists, it would be a mistake to think these kinds of legal issues are only popping up now. Graffiti artists are certainly becoming more litigious, and judges are dealing with all sort of novel situations, yet there’s certainly precedent in most cases.
In fact, in his decision, U.S. District Court Judge Stephen Wilson spends a good amount of space discussing a case from the late 1990s involving an artist who designed a courtyard space for a bunch of towers in downtown Los Angeles that ended up being depicted in Batman Forever. The artist registered his creation as a sculptural work and sued Warner Bros. over the film. He got to trial despite Warner Bros. contending that it had obtained written permission to use the premises of the towers where the courtyard space was located. At trial, Warner Bros. argued that what was depicted in the movie represented a unitary architectural work.
Ultimately, the film studio won both at trial and on appeal, but the Batman Forever case did raise something that engendered great discussion. That would be “conceptual separability,” which essentially tests whether authorship can be identified or imagined apart from the utilitarian aspects of the surrounding object.
Summing up the 9th Circuit decision in that case, Wilson says the pictorial work must be “part of” an architectural work in order for the relevant copyright exemption to apply. A factor to consider is whether the pictorial work — in this latest instance, the Smash 137 mural — is an “integrated concept” or “designed to appear as part of the building.”
Then again, Wilson adds that it remains an open question whether conceptual separability applies in the context of architectural works.
After examining the legal context, the judge runs through the application to the current case over the G.M. advertisement.
First, he says it is clear that parking garages can be deemed an architectural work. Next, he considers the relationship between the mural and the parking garage.
G.M., he writes, ” is not arguing that the mural is itself an architectural feature. There is also no indication that the mural was designed to appear as part of the building or to serve a functional purpose that was related to the building. Instead, there is undisputed evidence that Plaintiff was afforded complete creative freedom with respect to the mural, and that the design of the mural was inspired by Plaintiff’s prior work. Plaintiff was not instructed that the mural should play a functional role with respect to the parking garage or that the design of the mural should match design elements of the garage. Indeed, the architecture of the parking garage and accompanying building were already complete before Plaintiff started painting.”
Thus, the judge finds this present case to be potentially distinguishing from the adjudication of that lawsuit over Batman Forever. He says the facts in the record tend to establish “the lack of a relevant connection between the mural and the parking garage” and as such, he “cannot hold as a matter of law that the mural is part of an architectural work” and can’t grant the automaker’s motion that it is permitted to photograph the mural.
G.M does beat a separate claim premised on how Smash 137’s tag wasn’t included in the photograph even though his signature is on the mural. The Digital Millennium Copyright Act doesn’t permit copyright management information to be intentionally removed or altered.
“The Court cannot find, and Plaintiff has not pointed to, any case standing for the proposition that failure to include copyright management information—merely by the framing of the scene, rather than by any editing or cropping— constitutes removal or alteration,” writes Wilson.
The judge also grants G.M. a win on the argument that copyright precludes an award of punitive damages. As such, if the case does get to trial and Falkner prevails, he’d only recover statutory damages (up to $150,000 for willful infringement) or actual damages.
Here’s the full ruling: