The origins of graffiti and street art speak to a lawless, anti-corporate attitude by the artists themselves. However, with the surge in popularity of the medium over the last decade — aided by behemoths like Banksy and KAWS – we’ve come to see a greater acceptance in mainstream culture. Of course, where there’s interest in a burgeoning subculture, so too are there major blue chip brands circling in an attempt to capitalize monetarily. While in some instances these are formal partnerships arranged by the artist and the brand, there are of course other examples of works created on the street being used without the artist’s permission.
In 2018, Swiss artist Smash 137 sued General Motors for copyright infringement, American artist REVOK was sued by H&M after sending the Swedish retailer a cease-and-desist letter, and artists KEPTIONE and DJ RAKUS sued Oakley for using their work in an ad campaign without their permission. Although these cases were all ultimately settled by their attorney, Jeff Gluck, they served as an ominous reminder that a major legal fight has been brewing between street artists and brands looking to capitalize off their legacies.
A forthcoming hearing in federal court in Detroit has the possibility to completely change how — and perhaps if — street art is even protected under federal law. The case in question involves artists Jeff Soto, James Lewis, Daniel Bombardier, and Max Gramajo, who have all been sued by Mercedes-Benz. Gluck, who also represents the artists in this litigation, explains that various murals created in the Eastern Market were used by the car company in a series of now-deleted January 2018 Instagram posts used to market the Mercedes G 500 with the tag, “This off-road legend is always ready for some urban exploration to mix things up.”
After sending the car manufacturer a cease-and-desist letter, Mercedes-Benz preemptively issued its own lawsuit in United States District Court. When reached for comment, Donna Boland, Manager of Corporate Communications for Mercedes-Benz USA explained that the car manufacturer couldn’t reach an amicable resolution based on what they classified as, “ongoing baseless threats” which were intended to solely disrupt Mercedes’ business, not protect artists’ rights.
Eastern Market was one of four Detroit-centric sites where Mercedes got permits to shoot still photographs and B-roll of action shots of its vehicle; the others including Belle Isle, the Motown Museum, and the Russell Industrial Center.
In the aftermath of Mercedes-Benz’s lawsuit, Detroit Mayor Mike Duggan said in a statement to Automotive News, “The city of Detroit’s standard b-roll permit approval speaks only to filming, not to usage. Letters issued to permit holders clearly state that the recipient must meet the necessary trademark and licensing regulations required for all usage by all private-party entities. We support the rights of our local and visiting artists in this regard.”
According to the lawsuit, Mercedes-Benz removed the images as a courtesy to the artists because, “MBUSA respects artists and the arts; it regularly partners with cultural institutions and supports art festivals to advance the arts.”
Daimler AG, the German multinational automotive corporation which owns Mercedes-Benz, does maintain a dedicated platform showcasing the artists and projects they’ve worked with/on. Their mission statement in part reads, “Our sustainable work with and on the collection demonstrates that Daimler AG commitment to art and culture is an integral part of how we see our company’s social and cultural profile.”
The timing of the lawsuit didn’t discourage Mercedes-Benz from continuing its connection to the arts. This summer it served as one of the title sponsors at the summer’s MURAL Festival in Montreal featuring artists like Joshua Vides who transformed a Montreal car wash and a Mercedes-Benz A-Class for an art installation entitled “Le Lave-Auto.”
Gluck and his clients have since interpreted this legal action as not only aggressive, but also a refusal on Mercedes-Benz’s part to acknowledge that the artists have any legal rights to their own works.
According to the lawsuit, Mercedes-Benz believes the Instagram posts didn’t infringe on the artist’s copyright, was done using Fair Use, and the murals themselves were exempt from protection under the Architectural Works Copyright Protection Act.
“It was not our intent to trade on artistic work,” Boland reiterated. “Instead, the setting of each photograph was a visually appealing backdrop as we showcased our new SUV on the streets of the Automotive Capital of the World. We believe this was a fair use.”
Furthermore, the lawsuit stated that the murals were not the centerpiece of the photographs because they made up no more than 25 percent of the photographic image, were viewed from the side, and slightly blurred. As a result, the image presented on the company’s Instagram, “Give the January 2018 post an entirely different aesthetic than the Defendants’ murals.”
If the federal judge in Detroit were to agree with Mercedes’ stance, the protection of seemingly all public works would be threatened. As a result, according to Gluck, brands would have carte-blanche, and perhaps discourage artists against producing any new artwork on the street out of fear that any brand could weaponize it in any manner they saw fit.
“It’s a groundbreaking case because if courts were to adopt Mercedes argument, arguably tens of thousands of important works of outdoor art, murals, et cetera…the artist’s rights in those murals would be destroyed overnight,” Gluck says.
To better understand the positions on both sides, it’s important to recognize what has already been firmly established as legal precedent. Until 1990, with rare exceptions, artists in the United States had virtually no power to protect their work from mutilation, misattribution, or destruction. With the 1990 passage of the Visual Artists Rights Act (VARA), protecting the moral rights of attribution and integrity, it certainly was a major step forward in protecting artist’s rights.
One of the first major judgements using VARA as precedent involved warehouse-turned-Queens, NY-public-art-gallery, 5Pointz, which was painted over by a real estate developer. The verdict in Cohen v. G&M Realty, announced on February 12, 2018 by Judge Frederic Block, stated that artists could be awarded damages if recognized works were destroyed — even if the art, or the building it was on — was owned by someone else.
“As recognized in my decision, ‘[a] copyright holder seeking to prove that a copier’s infringement was willful must show that the infringer `had knowledge that its conduct represented infringement or…recklessly disregarded the possibility,'” Judge Block ruled.
The $6.75 million settlement signaled that street art was protected under VARA. While seemingly an astounding victory for the artists, there was also the pervasive belief in the community that the ruling would discourage building owners from granting artists permission to work for fear that they would be unable to sell or demolish buildings bearing art in the future. Additionally, it is important to note that when passing VARA, congress noted fair use limitations on exclusive rights. For example, if the artwork is copyrighted, there are permissible fair use purposes for which the work may be reproduced, and which constitute a defense to infringement, including “criticism, comment, news reporting, teaching, scholarship, or research.”
In the pending Mercedes litigation, court documents specifically cite the passage of the Architectural Works Copyright Protection Act which protects architectural works created on or after December 1, 1990. According to the Act, “The authorship in an architectural work includes the overall form of the building — the exterior elevations of the building when viewed from the front, rear, and sides — as well as any arrangement and composition of walls or other permanent structures that divide the interior into separate rooms and spaces.”
This does not include individual standard features of the architectural works such as windows, doors, or other staple building components, standard configurations of spaces, purely functional features of an architectural work such as innovations in architectural engineering or construction techniques, or interior design such as the selection and placement of furniture, lighting, paint, or similar items. Thus, one cannot copyright an idea, only original expressions of that idea. Furthermore, certain elements of architectural design are so common that they are, by law, unprotected.
Whereas the defendant’s art work is protected by the United States Copyright Act which states very clearly that any original work of authorship fixed to a tangible medium of expression is entitled to copyright protection, Mercedes-Benz is challenging this copyright using an architectural exception that any two-dimensional artwork placed on a building structure should be considered exempt.
Gluck believes Mercedes-Benz’s interpretation of the architectural exception is being misinterpreted. He points to the 1995 litigation involving artist, Andrew Leicester, who claimed that Warner Bros. used his work without his permission when filming Batman Forever. For the film, an office building at 8th and Figueroa streets in Downtown LA served as the Second National Bank of Gotham City. The building itself has towers with distinct metalwork that were created by Leicester. In dismissing the case, U.S. District Court Judge Harry Hupp held that the sculptures on the facade of the building were architectural works, and under current copyright law could be freely photographed.
The crux of Gluck’s legal argument is that Leicester’s works were created in conjunction with the actual erecting of the building — thus eliminating copyright infringement. But in his client’s cases, if one removed or painted over their murals, it would not change the architecture of that structure whatsoever.
“It’s not part of the architecture,” Gluck says. “It is simply just a painting on the outside of the building, and if you change the color or change the design, it wouldn’t change the architecture at all.”
When General Motors and Swiss artist, Adrian Falkner, a Swiss graffiti artist better known as Smash 137, got into similar legal action involving a mural on a 10-story parking garage, GM employed a similar argument as Mercedes-Benz.
“If the parking structure is a ‘building,’ then that is the end of the analysis,” G.M.’s lawyers wrote. They added: “Joe Public should not be required to research the history of the building and hire architectural experts before he snaps a photograph.”
Judge Steven Wilson of the Central District of California rejected GM’s argument that its use of the mural fell within the pictorial representation exception as it was not part of the architectural design of the parking garage. Falkner’s work had been created after the garage was completed, which distinguished his case from Leicester’s copyright claim against Warner Bros. This idea of “integrated concept” or “designed to appear as part of the building” argument was clear cut for Judge Wilson. However, he did note that it remains an open question whether conceptual separability applies in the context of architectural works.
It remains to be seen how the litigation plays out in a Detroit courtroom. Even for those who may not consider themselves a fan of the arts, the ruling has the chance to be as important a decision pertaining to artists’ rights as ever seen before. If art work made in and for the public is not protected under law, the very nature of cityscapes could be changed overnight. In their statement to Highsnobiety, Mercedes-Benz declared that, “The murals were created as part of a public art festival and have been exhibited since that time without charge to the public.” In other words, the work was free game in their estimation. Jeff Gluck vehemently disagrees.
“Mercedes-Benz is not the public,” Gluck asserts. “This is a private corporation allegedly using murals without permission to sell their products. I don’t know how Mercedes can pretend otherwise and try to somehow equate themselves with tourists photographing murals for personal enjoyment. What a ridiculous statement.”
The recent judgement that awarded artist Ai Weiwei damages from Volkswagen for misuse of one of his installations in an advertisement has further established precedent. Depending on the verdict in Detroit, the world is either a canvas, or a blank slate.
Editor’s note: At the time of publishing, Joshua Vides and Montreal’s MURAL Festival could not be reached for comment.
Update: When reached for comment, Pierre Alain Benoit of the MURAL Festival stated, “We first heard about this in early April 2019 when the story broke out publicly. We of course had an immediate set of concerns because we were already engaged in a project of our own involving Mercedes Canada and American artist Joshua Vides and we did not want to suffer the type of issues that happened in Detroit, even though we were dealing with the Canadian branch of the company and thus, not the same entity (or people) involved in the Detroit issue.
That being said, after consulting with the Artist (Joshua Vides) and our own legal advisers, we made sure that our contract and agreements with the company were efficiently preventing abuse and eliminating any risk that the same kind of issues that happened in Detroit could arise in our project. Based on that analysis, we judged that the artistic project we were engaged in could still be done, for the benefit of the artist involved, the public here in Montreal and of course, the festival.
As of now, legal jurisprudence in Canada has stated that artistic work on architectural structures is subject to copyright protection and that the IP of these works are held by the artist that created them, unless they explicitly agree to relinquish these rights. We always act following these principles, and we do not hesitate to support the artists involved in legal conflict related to these type of issues.”
Judge Avern Cohn indicated inside Theodore Levin United States Courthouse in Detroit on Monday that he would like the case to proceed in Detroit, and he will consider realigning the parties so that the artists can become the plaintiffs and litigate their copyright infringement claims against Mercedes — instead of the other way around as it currently is.
Amongst the most notable statements made in court by Judge Cohn was the following:
“These mural have a uniqueness. They are works of art, and they are entitled to protection.”
He also questioned Mercedes-Benz’s lawyers about whether the agency that designed the driving path for the advertisement knew the murals would appear in the background.