1.0 Law & Legal CLE Credit A/V Approval # Recording Date - November 1, 2018 Recording Availability November 16, 2018

Transcription

1 1.0 Law & Legal CLE Credit A/V Approval # Recording Date - November 1, 2018 Recording Availability November 16, 2018 Meeting Location Date Time Topic King County Bar Association 1200 Fifth Avenue - Suite 700 Seattle, WA Thursday, November 1, :00 PM to 1:15 PM Graffiti is Art, But Can Street Artists Sue to Protect It from Infringing Photographs? AGENDA 12:00 PM Introduction 12:10 PM Presentation: Graffiti is Art, But Can Street Artists Sue to Protect It from Infringing Photographs?, by Stefan Szpajda, Dorsey & Whitney LLP Is graffiti protectable under the Copyright Act? In principle, yes because it is a graphic art. But graffiti tends to appear on buildings that are visible from a public place, and photographs of such buildings are exempt from copyright infringement suits under the Architectural Works Copyright Protection Act. So what happens if someone photographs a building that features graffiti, and the graffiti ends up in a marketing campaign can the graffiti artist bring a claim for copyright infringement? (Falkner v. General Motors) 1:15 PM Adjourn SPEAKER BIOGRAPHY Stefan Szpajda, Dorsey & Whitney LLP - Stefan Szpajda is an attorney in Dorsey & Whitney LLP s Trial Group, focusing on intellectual property litigation. He has significant experience in counseling clients in disputes over license agreements, software development agreements, patents, and trade secrets. Stefan is also committed to pro bono work, and has represented pro bono clients through trial in federal court, administrative hearings, and on appeal before the Ninth Circuit.

2 HOW DO I EARN CREDIT FOR SELF-STUDY OR AUDIO/VISUAL (A/V) COURSES? For pre-recorded A/V (self-study) programs, although the sponsor should apply for accreditation, lawyers need to report the credits earned for taking the course. To add an approved course to your roster, follow the procedures below: Go to the "mywsba" website at Log in. Click on the "Access MCLE" link in the "MCLE Info" box on your home profile page. Click on "Add Activity." Search to find the approved course in our system. (See search suggestions on the screen.) Adding a Recorded Course Select Recorded Course from the Add New Activity screen. This will prompt you to search for the activity in case the activity has already been accredited in the MCLE system. You can search by Activity ID or by specific Activity Details. For the Activity Details search, you can use keywords for the title, sponsor name and date. After entering your search criteria and selecting Search at the bottom of the screen, a list of possible activities will be provided. You can select the correct one by clicking the Activity ID. This will take you to the specific activity. Entered the date(s) on which you began and ending viewing this recorded activity. Then claim the correct credits for which you attended this activity in the Credits Claimed fields and click the Submit button at the bottom of the page. You will receive a confirmation message at the top of your screen stating, The activity has been added to your roster.

3 Graffiti is Art, But Can Street Artists Sue to Protect It from Infringing Photographs? Stefan Szpajda 1

4 Does This Photograph Infringe? 2

5 Definitions 3

6 Architectural Work the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features. 17 U.S.C

7 Pictorial, Graphic, and Sculptural Works two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. 17 U.S.C

8 Scope of Rights in Architectural Works The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display 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. 17 U.S.C. 120(a) 6

9 Case Study: Falkner v. GM 7

10 Facts Falkner known in the art world as Smash137 is a graffiti artist. Although Falkner has exhibited in museums and galleries around the world, he is known for his outdoor paintings. One such painting is a large mural covering two perpendicular walls of a public parking garage in downtown Detroit, Michigan. 8

11 Facts Alex Bernstein, an independent photographer, photographed a Cadillac while the vehicle was parked at the same Detroit public parking garage in which Falkner s mural appears. Part of Falkner s mural is visible in the background of Bernstein s photograph. Bernstein submitted the photograph of the Cadillac featuring part of Falkner s mural to GM, which then used the photograph in an online marketing campaign. 9

12 Bernstein s Photo, Falkner s Mural 10

13 Facts Falkner brought two causes of action against GM: copyright infringement and a violation of the Digital Millennium Copyright Act for the falsification, removal, or alteration of copyright management information. GM then moved for summary judgment. I will focus on the copyright infringement cause of action. 11

14 Legal Background Falkner v. GM tests the boundaries of the Architectural Works Copyright Protection Act ( AWCPA ). Enacted in 1990, the AWCPA granted independent copyright protection to architectural works, applicable to buildings created after December 1, The AWCPA also created an exemption that allows anyone to photograph protected architectural works and any pictorial, graphic, or sculptural ( PSG ) elements incorporated into them without liability for copyright infringement. 12

15 Legal Background The AWCPA thus avoided turning tourists or photographers into unwitting copyright infringers when they take pictures that include protected architectural works that are publicly viewable. Falkner v. GM addresses whether that same exemption also had the effect of eliminating separate copyright protection for independent, creative contributions to larger architectural works (e.g., graffiti). 13

16 Legal Background At first blush, it may seem odd to treat graffiti which typically appears without input or consent from the building s architect as equivalent to a design element that was made in connection with the building itself. But whether that distinction is relevant under the AWCPA remains uncertain. 14

17 Legal Background Per GM, graffiti is no different from any other design element. In support of this view, GM primarily relies on Leicester v. Warner Bros., a Ninth Circuit opinion from 2000 that found photographs of a courtyard and adjacent towers were exempt from copyright infringement under the AWCPA. 15

18 Legal Background The Leicester majority held that the pictorial representation exemption was intended to be broadly construed to cover all elements of an architectural work so that publicly visible buildings could freely be photographed. 16

19 Legal Background Leicester, however, offers uncertain guidance: the panel split three ways into majority, concurring, and dissenting opinions. And Leicester fails to clearly answer whether the AWCPA eliminated or retained copyright protection for conceptually-separable PSG elements attached to architectural works. 17

20 Legal Background GM nonetheless relies on Leicester to argue that Falkner s copyright claim is barred, contending in its reply brief that allowing photographers to freely photograph buildings was an objective of the AWCPA. Joe Public should not be required to research the history of the building and hire architectural experts before he snaps a photograph. 18

21 Policy Background GM argues the exemption is intended to protect the public from unwittingly infringing copyrights while taking pictures of building that are viewable in public space. GM argues that it must be interpreted to allow photographs of embedded PSG elements regardless of whether or not they are separate from the architectural work. 19

22 Policy Background A competing policy question is whether graffiti or any other independent PSG element should retain copyright protection after it is made part of an architectural work. Falkner points out that pictorial works such as his mural have always been protectable under copyright law. He argues that the AWCPA was not intended to remove that protection where the artist did not collaborate with the architect, and where the mural plays no functional or architectural role. 20

23 Policy Background Falkner argues that if GM s view prevails, all graffiti that exists on a building that is, most graffiti will lose copyright protection from infringing photographs. Falkner s argument thus echoes Leicester s dissent, which noted that the AWCPA was not designed to eliminate copyright protection for independent, creative contributions to architectural work. 21

24 Legal Issues Whether or not the pictorial representation exemption bars Falkner s copyright claim against GM hinged on two questions: 1. Is a public parking garage an architectural work? 2. Did Leicester hold that the pictorial representation exemption applies to all PSG elements of an architectural work, including those that are conceptually separable? 22

25 Public Garage = Architectural Work? A threshold question for the court to decide is whether the parking garage in the photograph is an architectural work. If it is not, then the AWCPA does not apply and the statute s pictorial representation exemption would not bar Falkner s copyright infringement claim. 23

26 Public Garage = Architectural Work? Falkner insists that the garage is not an architectural work because it is a utilitarian structure that contains no protectable creative elements. Falkner cites statutory language, legislative history, and case law to argue that covered architectural works are limited to buildings, and the definition of buildings excludes non-habitable utilitarian structures such as bridges, walkways, tents, recreational vehicles, mobile homes, and boats. 24

27 Public Garage = Architectural Work? Thus, under Falkner s view, the pictorial representation exemption does not apply because the structure on which the mural is painted is not an architectural work. In support of this argument, Falkner relies on Gaylord v. United States, which affirmed a lower-court s finding that the Korean War memorial is not an architectural work, at least in part because it is not intended for occupancy. 25

28 Public Garage = Architectural Work? GM counters that the statute s definition of protected architectural works uses the word building, which is undefined. Turning to the legislative history, GM argues that the term building also covers structures that are used, but not inhabited, by human beings e.g., churches, gazebos, and garden pavilions. GM chose not to address Gaylord v. United States in its reply, and cites no authority to support its view that a parking garage is an architectural work. 26

29 Public Garage = Architectural Work? At least one court has considered this question before. In Moser Pilon Nelson Architects, LLC v. HNTB Corp., the court found a parking garage to be a building within the meaning of the AWCPA. The Moser Pilon court noted that it is surely a permanent and stationary structure as much designed for human occupancy as a gazebo or a garden pavilion. 27

30 Is Conceptual Separability Relevant? PSG elements incorporated into a building are subject to the same pictorial representation exemption as the underlying architectural work. But whether the exemption applies if the PSG element is conceptually separable from the architectural work remains unsettled. 28

31 Is Conceptual Separability Relevant? The doctrine of conceptual separability predates the AWCPA, and refers to copyright protections retained by PSG elements that were embedded in buildings which were themselves not protected under the copyright laws at the time. Both Falkner and GM rely on Leicester to reach opposing conclusions regarding the relevance of conceptual separability following enactment of the AWCPA. 29

32 Is Conceptual Separability Relevant? GM argues that Leicester decided that the conceptual separability doctrine does not apply to PSG elements embedded in architectural works. GM argues that although the Leicester majority found that the PSG element in that case was not conceptually separable from the architectural work in which it appeared, the concurring opinion went further: conceptual separability does not apply to the AWCPA s pictorial representation exemption. (Somewhat confusingly, GM argues that the majority agreed with the concurring opinion s view on this point.) 30

33 Is Conceptual Separability Relevant? In effect, GM argues that the majority and concurrence agreed that the AWCPA extinguished any independent copyright protection covering PSG elements embedded in buildings, regardless of whether or not the PSG element in question is conceptually separate from the building itself. 31

34 Is Conceptual Separability Relevant? Falkner disputes GM s interpretation of Leicester. Like the dissent in Leicester, Falkner contends that there s no indication that Congress intended the AWCPA to extinguish rights that existed before its enactment. Falkner thus argues that even if the parking garage is an architectural work, photographs of his mural are not covered by the pictorial representation exemption because the mural is conceptually separate from the parking garage. 32

35 Hearing The parties summary judgment briefing highlighted a key ambiguity at the center of the dispute: neither the AWCPA nor Leicester clearly resolve whether PSG elements can be freely photographed after they are incorporated into architectural works. Both Falkner and GM cite Leicester for competing propositions regarding the status of PSG elements like the graffiti at issue. The court s questions at oral argument were primarily directed to Leicester 33

36 Hearing The court stated that it s somewhat difficult to discern what the holding is from the case before openly grappling with whether or not it resulted in binding precedent. The court struggled with the same issue that emerged as unresolved in the parties briefing: did the doctrine of conceptual separability survive the 1990 enactment of the AWCPA and, if so, is it relevant here? 34

37 Hearing GM attempted to resolve the issue by arguing that regardless of Leicester s holding, conceptual separability is irrelevant because the graffiti in question cannot be separated from the building. Instead, GM focused on the AWCPA s intent, characterizing the statute s exemption allowing photographs of architectural works and any incorporated PSG elements as a rule of practicability. 35

38 Hearing GM hinged its position on what amounts to a policy argument, insisting that the person taking the picture shouldn t need a copyright expert standing next to them to decide whether they can do that. GM maintained that the AWCPA and Leicester require the court to grant GM s motion for summary judgment as a matter of law and policy, and implied that all photographs of buildings that depict PSG elements are exempt from copyright infringement suits because it would be impracticable to find otherwise. 36

39 Hearing But when pressed on the AWCPA s impact on pre- AWCPA copyright protections and Leicester s failure to clearly resolve whether conceptual separability survived the statute s enactment, GM softened its position. Instead of arguing that a bright-line rule exempts all photographs of architectural works without exception, GM proposed a novel interpretation. 37

40 Hearing GM argued that conceptual separability survives only to the point that if you can find a way to isolate the mural and take a picture of the mural, then Mr. Falkner can get his copyright, and he can be protected against people just selling copies of the mural by themselves. 38

41 Hearing The court appeared skeptical of this interpretation, noting its absence from Leicester: I mean, why didn t they just say what you said and call it a day? Undeterred, GM argued that two of them did, adding that it s not our position that conceptual separability is dead if graffiti can literally be separated from the architectural work. GM did not offer a framework for putting this proposal into practice, and its efforts to ground it in Leicester only served to underscore that decision s ambiguity. 39

42 Hearing Falkner agreed with GM that Leicester may be binding on the court. But, further advancing the view that Leicester may be too ambiguous on the question of conceptual separability to act as binding precedent, Falkner argued that Leicester s holding is the opposite of the one argued for by GM. 40

43 Decision Recall that whether or not the AWCPA s pictorial representation exemption bars Falkner s copyright claim against GM hinged on two questions: (1) whether the public parking garage is an architectural work; and (2) whether the AWCPA s pictorial representation exemption applies to all PSG elements of an architectural work, including those that are conceptually separable from the architectural work. 41

44 Decision On the first question, the court easily found that the garage is an architectural work, and thus subject to the AWCPA. The second question proved far more complicated. 42

45 Decision: Leicester v. Warner Brothers Both parties primarily relied on Leicester, but argued for opposite interpretations. Key question: did the doctrine of conceptual separability survive the 1990 enactment of the AWCPA and, if so, is it relevant here? Surprisingly, the court s treatment of Leicester meaningfully departed from the parties briefing and its own questioning during oral argument. 43

46 Decision: Leicester v. Warner Brothers Rather than resolve the ambiguities inherent in Leicester s split decision on conceptual separability, the court instead read Leicester to have articulated a separate, implicit threshold requirement to the AWCPA s pictorial representation exemption s applicability. The court asked: is the PSG element (e.g., the graffiti) part of the architectural work? 44

47 Decision: Leicester v. Warner Brothers The court reached this unexpected result by finding that [a]ll three judges on the Ninth Circuit panel unambiguously agreed that for the AWCPA s pictorial exemption to apply to a PSG element, the PSG element must be part of an architectural work. Further, per the court s reading of Leicester, unless it can be shown that as a matter of law the PSG element is part of the architectural work, the question of the exemption s applicability cannot be decided on summary judgment. 45

48 Decision: Leicester v. Warner Brothers The court s reasoning here is striking for a few reasons. 46

49 Decision: Leicester v. Warner Brothers First, neither party argued that whether Falkner s mural was part of the garage raised a distinct legal question under the AWCPA. GM appears to have assumed without expressly stating that to the extent it raised a legal question at all, whether the graffiti is part of the garage is folded into the conceptual separability analysis. And although Falkner argued that the mural was not an integral part of the garage, he treated the question of whether a PSG element embedded in a work is part of that work as largely interchangeable with whether it is conceptually separable from said work. 47

50 Decision: Leicester v. Warner Brothers Second, the Leicester panel did not expressly treat the part of analysis as distinct from conceptual separability, and the judges were not uniform in their treatment of the issue. Writing in dissent, Judge Fisher stated that a finding that the PSG element in question is part of an architectural work does not preclude a finding that it is conceptually separate. But as Judge Fisher noted, Judge Rymer s majority opinion did not address whether a PSG element could be both part of and conceptually separate from an architectural work. 48

51 Decision: Leicester v. Warner Brothers Similarly, despite acknowledging in passing that the PSG element must be part of an architectural work for the exemption to apply, Judge Tashima directed his concurrence to the view that the AWCPA extinguished the doctrine of conceptual separability. Thus, although all three Leicester judges arguably assumed that for the exemption to apply the PSG work must be part of an architectural work, this was not the question before the court, and any agreement among them on the issue must be inferred. 49

52 Decision: Part Of Factors Despite the Ninth Circuit s lack of express focus on the issue, the Falkner court found Leicester implicitly articulated a set of factors that courts must evaluate to determine whether a PSG element is part of an architectural work before it can apply the AWCPA s pictorial representation exemption. The court acknowledged that Leicester did not define a single, determinative test for what renders a PSG work part of an architectural work, but found that it described factors. 50

53 Decision: Part Of Factors The factors include whether the PSG work had a concept that integrated it into the underlying work, or whether the PSG work itself could be considered an architectural feature. Other factors include whether the PSG work is designed to appear as part of the building or when it serves a functional purpose that is related to the building. 51

54 Decision: Part Of Factors These factors are not clearly stated in Leicester, and are never described as factors in that decision. The Falkner court s decision to treat these factors as probative of whether or not a PSG element is part of an architectural work appears to be a novel interpretation of both the AWCPA and Leicester. 52

55 Decision: Part Of Factors In its summary judgment ruling, the court found that the mural itself is not an architectural feature. The court also found that because the mural was not designed to appear as part of the building or serve a functional purpose related to the building, it could not on the record before it be found to be part of the building. 53

56 Decision: Conceptual Separability? An important policy question raised by Falkner v. GM is whether Congress intended the AWCPA to allow photography of publicly viewable buildings irrespective of whether or not those buildings contain PSG elements that might otherwise be independently protectable by copyright. Recall that GM argued in its reply brief that Joe Public should not be required to research the history of the building and hire architectural experts before he snaps a photograph. 54

57 Decision: Conceptual Separability? GM made this argument in response to Falkner s interpretation of the conceptual separability doctrine I.e., GM argued that if Leicester is read to hold that PSG elements are not covered by the AWCPA s pictorial representation exemption if they are conceptual separable from the underlying architectural work, then this will create uncertainty for photographers because they will risk costly litigation each time they take photographs outdoors. 55

58 Decision: Conceptual Separability? To avoid this result, GM argued for a bright-line rule: Any and all photographs of publicly viewable buildings should be covered by the AWCPA s pictorial representation exemption, regardless of whether or not the PSG elements are conceptually separable from the underlying architectural work. 56

59 Decision: Conceptual Separability? Although the court did not reach the question of conceptual separability, the court s holding arguably exacerbated the policy concern identified by GM. By ruling that a set of amorphous factors determines whether a PSG element is part of an architectural work and treating this determination as a threshold question for whether or not the AWCPA s pictorial representation exemption can apply the court increased the likelihood that ambiguity and drawn-out litigation will result from Joe Public snapping photographs. 57

60 Decision: AWCPA Defense Viable? The court s decision is also somewhat ambiguous on a key question: whether GM s AWCPA defense is still viable in light of the court s ruling. 58

61 Decision: AWCPA Defense Viable? The court noted that it cannot conclude as a matter of law that the mural is part of the parking garage suggesting that whether the mural is part of the parking garage is a factual question that cannot yet be decided. But it ultimately held that Because the Court cannot conclude at this stage that Section 120(a) applies to the mural, as the mural is not part of an architectural work as a matter of law, it cannot reach the issue of whether Section 120(a) permits photographs of the mural.. 59

62 Decision: AWCPA Defense Viable? It is thus not entirely clear whether: (a) the court ruled that the pictorial representation exemption does not as a matter of law apply to the mural, and thus that Falkner s copyright infringement can proceed to the merits without further invocation of the AWCPA s pictorial representation exemption; or (b) the court merely observed that although it cannot find as a matter of law that the mural is part of the building, GM can nonetheless attempt to establish at trial that the mural is part of the garage. 60

63 Decision: AWCPA Defense Viable? Despite the ambiguity, the overall context of the court s decision suggests that the correct interpretation is (b), and that GM can still assert its AWCPA defense if it can show that the mural is part of the garage. 61

64 Decision: AWCPA Defense Viable? But this brings us to a second question: even assuming (b) is the correct interpretation, it is not clear what facts if any GM could cite to establish that the mural is part of the garage, as the court has construed the question. As described above, the court identified factors that can be relied on to show that a PSG element is part of an architectural work. 62

65 Decision: AWCPA Defense Viable? The court then proceeded to find that undisputed facts render Falkner s mural wholly unlike the PSG elements in Leicester. In light of the court s findings, it is not clear what if anything GM could do to show that the mural is part of the garage. Given the current record, GM s AWCPA defense appears to have only a modest chance of success. 63

66 Conclusion The court s denial of GM s motion for summary judgment as to Falkner s copyright infringement claim gives graffiti artists reason to be optimistic that they have the continued right to control images of their work, even when those works appear on publicly viewable buildings. At the same time, by holding that whether or not the AWCPA s pictorial representation exemption applies to graffiti is a factual matter, the court has made it more likely that disputes involving photographs of graffiti may be long, costly, and uncertain. 64