TheArtLawReviewEdition1-1

Application of Copyright to Art

that removal of a copyright owner’s attribution credit in a gutter credit is a DMCA violation. This provides another remedy for artists and, particularly, photographers, to protect their moral right of attribution.

VIII STREET ART

In the past couple of years, street artists have started suing companies that use their art for commercial marketing purposes. A high-profile case was filed in California in 2018 by a graffiti muralist (Smash 137) against General Motors for using his mural in an unauthorised photo as part of an advertisement. The mural had been painted on the outdoor level of a parking garage. The case arises under another unique portion of the Act called the Architectural Works Copyright Protection Act of 1990 (AWCPA), which provides that anyone can reproduce an image of a building that is habitable by humans and viewable from public places.44 The court refused to dismiss the case, finding there was a ‘lack of a relevant connection between the mural and the parking garage’.45 The case then settled.

A similar case was filed in Detroit by four street artists against Mercedes Benz, which posted images of its vehicles on social media with buildings visible in the background that included murals painted by the artists. After the artists demanded that Mercedes cease using the images, Mercedes filed suit to declare that its conduct was protected by AWCPA. The artists moved to dismiss the case but, contrary to the GM case, this court found that Mercedes had a plausible claim and allowed the case to proceed.46

A claim filed in New York by a street artist against H&M for using his street art in an advertisement was quickly resolved when H&M agreed to cease using the advert and issued an apologetic press release.47 Several other similar claims have been filed by prominent street artists in recent years, but until appellate courts start ruling on these issues, street art will remain a burgeoning area of copyright law impacting artists.

4417 U.S.C. §102(8); 37 C.F.R § 202.11.

45Falkner v. General Motors LLC, 393 F. Supp. 3d 927 (C.D. Cal. 2018).

46Mercedes Benz, USA, LLC v. Lewis, 2019 WL 4302769 (E.D. Mich. 11 September 2019).

47H&M v. Jason ‘Revok’ Williams, No. 1:18-cv-01490 (E.D.N.Y., filed 9 March 2018).

46

© 2021 Law Business Research Ltd

Chapter 6

MORAL RIGHTS OF THE ARTIST: A US PERSPECTIVE

Irina Tarsis1

Morality and all the incidents of morality are essential; as justice to the citizens, and personal liberty.2

On 5 October 2020, the United States Supreme Court declined to review a landmark decision from the Second Circuit awarding US$6.75 million, maximum statutory damages, to street artists whose artworks were mutilated and destroyed at an abandoned industrial complex in Long Island, New York, better known as 5Pointz or the Graffiti Mecca.3 The dispute over 5Pointz was first heard by the Eastern District of New York on a temporary restraining order (TRO) application, when almost two dozen street artists tried to protect their legal graffiti site from demolition. After the TRO was lifted, frustrated by the 5Pointz artists’ failed attempt to enjoin demolition of their Graffiti Mecca and his property, the real estate owner, Gerald Wolkoff, hired a painting crew to whitewash the buildings, destroying dozens of installations and murals, and triggering allegations of violating artists’ moral rights to the integrity of their works. On appeal, the Second Circuit agreed that art at 5Pointz gained recognised stature and the actions of the real estate developer were in violation of the Visual Artists Rights Act (VARA).4 In the US, moral rights of artists are usually narrowly enforced, especially in the context of disputes concerning real estates. While the question of legal fees may still be open, the holding that whitewashing ephemeral aerosol art on the walls of a derelict factory slated for demolition constitutes a violation of federal law is now res judicata.

The 5Pointz outcome, a staggering award for the wilful destruction of 45 artworks in violation of moral rights, is a rare win for the members of the creative community.5 It certainly serves as a cautionary tale to other real property owners to think carefully before allowing artists to create on their walls without clearly defined parameters of engagement. Similarly, museum administrators, art collectors and conservators who engage with artists in

1Irina Tarsis is the founder and managing director of the Center for Art Law.

2Ralph Waldo Emerson, The Collected Works of Ralph Waldo Emerson: Society and Solitude, Vol. VII (Cambridge, MA: The Belknap Press of Harvard University Press, 2008), 17.

3Castillo v. G&M Realty L.P., 950 F.3d 155 (2d Cir. 2020), as amended (21 February 2020), aff’g 988 F. Supp. 2d 212 (E.D.N.Y. 2013), cert. denied (5 October 2020).

4Visual Artists Rights Act of 1990, Pub. L. No. 101-650, 104 Stat. 5089, 5128 (1990). 17 U.S.C. § 106A.

5Eileen Kinsella, ‘A Stunning Legal Decision Just Upheld a $6.75 Million Victory for the Street Artists Whose Works Were Destroyed at the 5Pointz Graffiti Mecca’, ArtNet News (20 February 2020), available at https://news.artnet.com/art-world/5pointz-ruling-upheld-1782396; Sara Cascone, ‘It “Makes No Sense”: 5Pointz Developer Vows to Appeal Landmark Ruling That Favored Graffiti Artists’, ArtNet News (21 February 2018), available at https://news.artnet.com/art-world/5pointz-developer-appeal-1228928.

47

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

arm’s-length dealings for exhibitions, commissions or collecting purposes need to recognise the possible conflicts of interest and the legal mechanisms that exist to protect artists and their creations.

I DEFINING AND CODIFYING MORAL RIGHTS

Moral rights, or droit moral (having originated in France), describe rights of creators in their artistic work that are not necessarily pecuniary, yet still integral to and arise from the idea that an artist’s very being is included in the work that he or she creates. Recognition and evolution of visual artists’ rights in the United States have been slow to develop, and the scope of moral rights enacted in the United States is limited.

Typically, moral rights are neither alienable or waivable; they last for the duration of an artist’s lifetime and can survive for the benefit and discretion of an artist’s estate even after the original work is finished or changes ownership through the stream of public commerce.6 The basic moral rights are as follows:

aright of attribution or authorship entitles the artist to:

•be recognised by name for his or her work or permit the work to be published anonymously;

•prevent a wrong person being named as the author of his or her work;

•prevent having his or her name be associated with a work he or she did not create;

•decline having his or her name be associated with a work that has been modified or distorted in such a way as having the authorship remain with the work is prejudicial to the artist; and

•remove his or her name from the work in cases of mutilation or the artist’s belief that the work is no longer true to its original creation;

bright of integrity prevents tampering or modifying the artwork without the artist’s consent even after ownership in the artwork transfers;

cright of disclosure concerns the artist’s reputation and provides that the artist has discretion to decide when and how his or her work can be made public; and

dresale royalty rights, a semi-economic right assuring that an artist may continue to benefit financially from commercial appreciation of his or her work in the secondary market by receiving a percentage of the sale proceeds.

6See Ralph E Lerner and Judith Bresler, Art Law: The Guide for Collectors, Investors,Dealers & Artists

(4th Edition, 2012), Chapter 12: Moral Rights, 1071–1165.

48

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

These rights are enumerated in the Berne Convention for the Protection of Literary and Artistic Works (the Convention), as Article 6 bis7 and Article 14 ter.8 While the US is a signatory to the Convention,9 according to the US Berne Convention Implementation Act of 1988, the Convention’s acts and protocols are not self-executing under the US Constitution, and must be implemented through US legislation.

In 1990, parts of Article 6 bis were implemented in the US when Congress amended the Copyright Law and enacted VARA. VARA recognises some of the moral rights, namely the right of attribution,10 the right of integrity11 and, in the case of works of visual art of ‘recognized stature’,12 the right to prevent destruction.13

7‘1. To claim authorship; to object to certain modifications and other derogatory actions; 2. After the author’s death; 3. Means of redress: (1) Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation. (2) The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorized by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained. (3) The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of the country where protection is claimed.’ The Berne Convention, Article 6 bis

(Paris Act 1971), 828 U.N.T.S. 221.

8‘(1) The author, or after his death the persons or institutions authorized by national legislation, shall, with respect to original works of art and original manuscripts of writers and composers, enjoy the inalienable right to an interest in any sale of the work subsequent to the first transfer by the author of the work.

(2) The protection provided by the preceding paragraph may be claimed in a country of the Union only

if legislation in the country to which the author belongs so permits, and to the extent permitted by the country where this protection is claimed. (3) The procedure for collection and the amounts shall be matters for determination by national legislation.’ The Berne Convention, Article 14 ter (Paris Act 1971), 828 U.N.T.S. 221.

9‘International Copyright relations of the United States: Circular 38A’, p. 2, available at https://copyright. gov/circs/circ38a.pdf; also see 31 October 1988. H.R. 4262 (100th Congress), Public Law No: 100-568 (1988).

10Joncou v. Sotheby’s and Nolan, 988 F Supp 2d 212 (E.D.N.Y. 2013) (the artist asked an auction house not to sell a work attributed to her because the artwork Cowboys Milking, a silkscreen print, was damaged and selling it in this condition would prejudice ‘her honor and reputation’).

11Mass. MOCA Found., Inc. v. Büchel, 593 F3d 38 (1st Cir. 2010) (VARA claim succeeded because the artist did not authorise the museum to use his name in connection to an unfinished and contested installation).

12Christopher J Robinson, ‘The “Recognized Stature” Standard in the Visual Artists Rights Act’, 68 Fordham L. Rev. 1935 (2000).

13Rights of Certain Authors to Attribution and Integrity: ‘(a)Rights of Attribution and Integrity. [S]ubject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art . . . (1) shall have the right . . . (A) to claim authorship of that work, and (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create; (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and (3) subject to the limitations set forth in section 113(d), shall have the right . . . (A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his

or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and (B)to prevent any destruction of a work of recognized stature, and any

intentional or grossly negligent destruction of that work is a violation of that right.’ 17 U.S.C. § 106A(a).

49

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

Limitations of VARA

VARA differs from Article 6 bis of the Convention by offering a limited coverage that expires on the year of the artist’s death.14 Additionally, while artists’ rights cannot be transferred under VARA, they may be waived through a written form signed by the author.15 Further, VARA does not offer economic benefits suggested under Article 14 ter of the Convention concerning resale royalty right for fine artists when their works are sold in the secondary market.16 Under VARA, moral rights protection, if any, only applies to ‘works of visual art’, such as ‘a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author’.17 Books, photographs and other copyrightable content are not included in the working definition of ‘a work of visual art’.18

II VARA AS APPLIED THROUGH CASE LAW

The following selection of notable cases surveys the treatment of artists’ rights in the US legal system and demonstrates courts’ hesitance to find in favour of artists whose works were under threat. Too frequently courts ruled that VARA did not protects site-specific works,19

Other moral rights that are not codified by VARA include inalienability of moral rights, rights surviving and vesting with artists’ heirs, resale royalty right and right of divulgation (if, when and how to make an artist’s work available to the public and under what name). Some cases that postdate VARA may have turned out differently had the US Congress included additional moral rights. See, for example, Herstand & Co. v. Gallery, 211 A.D.2d 77, 626 N.Y.S.2d 74 (App. Div. 1995) (noting possible personal animus expressed by the artist when disavowing his works); see TriStar Pictures v. Director’s Guild of America, 160 F.3d 537 (9th Cir. 1998) (affirming the arbitration finding that either the name of the director has to be removed or a film with severe edits has to appear with a disclaimer that the film was butchered).

14VARA does not allow the moral rights to last as long as other copyrights last. They expire with the death of the artist. Thus the right to (dis)claim ownership is not vested in the heirs or other copyright holders.

1517 U.S.C. 106A(e).

16To learn more about the debate of introducing resale rights in the United States, see US Copyright Office, Office of the Register of Copyrights Report, ‘Resale Royalties: An Updated Analysis’ (December 2013), available at www.copyright.gov/docs/resaleroyalty/usco-resaleroyalty.pdf; also see Sam Francis Foundation v. Christie’s, Inc., 784 F.3d 1320 (9th Cir. 2015), aff’ing Estate of Graham v. Sotheby’s Inc., 860 F. Supp. 2d 1117 (C.D. Cal. 2012). Also see, Tiernan Morgan and Lauren Purje, ‘An Illustrated Guide to Artist Resale

Royalties’, Hyperallergic (24 October 2014) https://hyperallergic.com/153681/an-illustrated-guide-to-artist- resale-royalties-aka-droit-de-suite/.

1717 U.S.C. § 101.

18See, for example, Purohit v. Legend Pictures, LLC, 448 F. Supp. 3d 382 (D. Del. 2020) (holding a book sold from an edition of more than 500 copies was not eligible for moral rights protection under § 106A).

19Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir. 2006) (the VARA claim failed because the works were deemed site-specific and thus not protected).

50

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

thus favouring the interest of real estate owners,20 municipal administrations21 and other commercial interests.22 Inherent throughout the sequence is the tension between the rights VARA creates and the ‘conventional notions of property rights’.23

i Ushering in VARA with Serra v. US General Services Administration

In 1986, renowned US sculptor Richard Serra sought legal protection to prevent his artwork, Tilted Arc (1981), a large public sculpture that was owned by the US General Services Administration (GSA), from removal and relocation from the Federal Plaza in Manhattan, New York.24 Serra created the sculpture on commission and sold it to GSA. Subsequently, GSA received hundreds of complaints from members of the general public, who claimed that the sculpture was an eyesore, hindered pedestrian traffic and was susceptible to vandalism.25

In 1988, just two years before VARA was enacted, the Second Circuit ruled against Serra’s arguments for preservation of his site-specific art on the basis that he ‘relinquished his own speech rights in the sculpture when he voluntarily sold it to GSA; if he wished to retain some degree of control as to the duration and location of the display of his work, he had the opportunity to bargain for such rights in making the contract for sale of his work’.26 In deciding against the artist, the court concluded that the artist was seeking a new rule from the judiciary, something reserved for Congress to regulate. The court opined:

We recognize that Courts considering . . . challenges by artists to governmental decisions to remove purchased works of art must proceed with some caution, lest a removal ostensibly based on unsuitable physical characteristics of the work or an unfavorable assessment of its aesthetic appeal camouflage an impermissible condemnation of political viewpoint . . . Government can be a significant patron of the arts. Its incentive to fulfill that role must not be dampened by unwarranted restrictions on its freedom to decide what to do with art it has purchased.27

20Carter v. Helmsley-Spear, Inc., 71 F.3d 77 (2d Cir. 1995) (the VARA claim failed because the works were found to have been made for hire).

21Kelley v. Chicago Park Dist., 635 F.3d 290 (7th Cir. 2011) (the VARA claim failed because the artist’s garden could not qualify for moral rights protection under VARA since the garden was neither ‘authored’ nor ‘fixed’ in senses required for basic copyright).

22See, for example, Tobin v. The Rector, Church-Wardens, and Vestrymen of Trinity Church, 17-cv-02622 (S.D.N.Y. Nov. 2017) (affirmed 13 September 2018); Cheffins v. Stewart, 825 F3d 588 (9th Cir 2016) (the VARA claim failed because the court found that the underlying object (a used school bus transformed into a mobile replica of a sixteenth-century Spanish galleon) was utilitarian in nature, an applied art,

and thus not protected under the Copyright Act); Kleinman v. City of San Marcos (2010, CA5 Tex.) 597 F3d 323, cert. den. (2010, US) (holding that the VARA claims failed because the objects thought to be protected did not qualify as ‘works of art’ but rather as ‘promotional’ material outside of VARA protection).

23Morton J Horwitz, The Transformation of American Law, Cambridge, Mass: Harvard University Press (1977).

24Serra v. U.S. General Services Admin., 847 F.2d 1045 (2d Cir. 1988).

25id., at 1048.

26id., at 1047.

27id., at 1051.

51

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

Arriving in the wake of the Serra decision and in response to advocacy efforts for extending artists’ rights, Congress created the very rule Serra would have needed to keep Tilted Arc in place: it added VARA as an amendment to the Copyright Act.28

ii Surveying VARA application in Carter v. Helmsley-Spear, Inc

The first important case to test how VARA could protect artists was brought by three professional sculptors: John Carter, John Swing and John Veronis (collectively, ‘Jx3’),29 who, as plaintiffs, claimed that defendants (and later, appellees and cross appellants) tried to assert their rights of integrity against a real estate owner and managing agent (the ‘defendants’) of a commercial building in Queens, New York. Here, the artwork in question was commissioned by the former tenants of the building but it was not sold and all agreed that Jx3 retained copyright in their works. However, when the defendants resumed control of the premises, they forbade the artists from creating further artwork on the premises and informed Jx3 of plans to remove all existing art from the building. At trial, Jx3 obtained a permanent injunction preventing the defendants from removing, modifying or destroying a work of visual art from the building. However, the decision was reversed on appeal.

Despite quoting US poet Ralph Waldo Emerson’s praise of indigenous arts in its 1995 opinion (‘a country is not truly civilized where the arts, such as they have, are all imported, having no indigenous life’), the court sided with the defendants and allowed for Jx3’s ‘indigenous art’ to be removed. This was either because VARA was ‘relatively new’30 or because it ‘did not mandate the preservation of art at all costs and without due regards for the rights of others’,31 but the Carter court concluded that the piece commissioned from Jx3 was ‘made for hire’ and thus exempt from protections offered under VARA.32

iiiTraining ground for VARA in Massachusetts Museum of Contemporary Art Foundation v. Büchel

The bitter dispute between Christoph Büchel, a Swiss visual artist, and the Massachusetts Museum of Contemporary Art (Mass MoCA or the Museum)33 offered a new test and an expanded application of VARA.34 Characterised by the Boston Globe as ‘the ultimate how-not-

28See Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir. 2006) (containing arguments by a sculptor for protection of site-specific art); Kelley v. Chicago Park District, No. 04-C-07715, 2008 WL 4449886, at *1 (N.D. Ill. 29 September 2008) (concerning non-traditional works of art that should be granted moral rights protection from destruction or removal).

2971 F.3d 77 (2d Cir. 1995), reversing and vacating the grant of injunctive relief in Carter v. Helmsely-Spear, Inc., 861 F. Supp. 303 (S.D.N.Y. 1994).

30id., at 84.

31id., at 80.

32It is instructive to note that the court in Carter was aware that ‘the issue of federal protection of moral rights was a prominent hurdle in the debate of whether the United States should join the Berne Convention . . . [because its] protection of moral rights posed a significant difficulty to U.S. adherence’ and cognisant of the fact that ‘artists fared better in state legislatures than they generally had in Courts’. id., at 81 and 82.

33593 F.3d 38 (1st Cir. 2010).

34K E Gover, ‘Christoph Büchel v. Mass MoCA: a tilted arc for the twenty-first century’, Journal of Aesthetic Education 46, No. 1 (2012), 46–58.

52

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

to guide in the complicated world of installation art’,35 it concerned an immense installation, with the working title Training Ground for Democracy, which would display a cinema, a jail, voting booths, a shooting range and other true-to-scale references to visual markers of democracy in everyday life.36 The project was not memorialised in writing and, following budgetary and creative disputes, abandoned.37 Mass MoCA’s continued use of the artist’s name in association with the modified work and the treatment and display of the unfinished installation were categorised as infringing on Büchel’s moral rights; two court rulings followed.

The lower court sided with the museum and found that as a matter of law, Büchel’s moral rights in an unfinished work and his exclusive rights to display it were not violated. On appeal, the First Circuit found that even though the artist did not complete the work, an unfinished installation nevertheless classified as a ‘work of art’ and the author had the right to integrity in his work.38 Hence, the Museum potentially infringed on the artist’s rights.

In this decision, the court also addressed damages available to artists whose works were destroyed or whose reputations may have been injured as a result of a VARA violation. The Büchel court ultimately determined that a financial remedy did not arise automatically from the right to prevent offensive conduct. The artists would need to obtain adequate relief for the harms of false attribution by resorting to the damages contemplated under the Copyright Act and other traditional claims.39 Büchel’s moral rights arguments regarding distortion of his work were rejected because ‘[a] separate moral right of disclosure (also known as the right of divulgation) . . . is not covered under VARA’.40 However, the exclusive right to publicly display his copyright-protected work under Section 106 of the Copyright Act survived. The case was remanded and then settled.41

iv Observing the Noland effect

Marc Jancou Fine Art Ltd v. Sotheby’s, Inc

Moral rights codified by VARA could serve as a weapon (whether intentionally or not) to jeopardise the economic value of art by a living artist who decides to disavow authorship in his or her work. Artist Cady Noland, for example, on multiple occasions withdrew her authorship from the art she made. In 2013, the First Circuit affirmed a holding that an auction house (which had accepted a work on consignment from the defendant-collector) could lawfully withdraw an aluminium print attributed to Noland, Cowboys Milking (1990), with a high estimated value of US$300,000 from its auction after the artist disclaimed authorship in the work and demanded the lot be withdrawn. Noland believed the conservation work done to Cowboys Milking constituted detrimental changes that prejudiced her honour and reputation

35Massachusetts Museum, Contemp. Art Foun. v. Büchel, 593 F.3d 38, 41 (1st Cir. 2010), citing Geoff Edgers, ‘Dismantled’, Boston Globe (21 October 2007), http://archive.boston.com/ae/theater_arts/ articles/2007/10/21/dismantled/.

36Mass MoCA, ‘Press Release: Training Ground for Democracy’ (7 December 2010) (summarising the Museum’s position and acknowledging that the parties settled), https://massmoca.org/event/training- ground-democracy/.

37K E Gover, ‘Artistic Freedom and Moral Rights in Contemporary Art: The Mass MoCA Controversy,’

Journal of Aesthetics and Art Criticism 69, No. 4 (2011), 355–365.

38593 F.3d 38, 57.

39id., at 56.

40593 F.3d 38, 62; citing Cyrill P Rigamonti, ‘Deconstructing moral rights,’ Harv. Int’l LJ 47 (2006), 353, 405.

41593 F.3d 38, 65.

53

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

as an artist; she sought to assert ‘her right to prevent the use of her name as its author’.42 Sotheby’s consignment agreement with the defendant-collector allowed the auction house to unilaterally withdraw lots from sale, and, when faced with possible VARA claims, Sotheby’s exercised its discretion to withdraw the lot.

The collector appealed the court’s summary judgment ruling in favour of co-defendants Sotheby’s and the artist. On appeal, the court affirmed the lower court’s holding, explaining:

[i]n light of Noland’s assertion and a report showing that the work had been damaged and restoration had been performed on it, Sotheby’s did not breach the contract or its fiduciary duty to the plaintiff by withdrawing the work from auction.43

Noland v. Janssen

Ten years later, Noland commenced a moral rights case against a collector and his art dealers, trying to distance herself from yet another refurbished artwork.44 The case concerned a wooden sculpture, Log Cabin Façade (1990), which one of the defendants, a German art collector, purchased directly from the artist. In 1995, the collector received the artist’s permission to weatherproof the sculpture, to display it outdoors. The sculpture, having been displayed outdoors on the bare ground, began to rot in some areas and the collector replaced the deteriorated portions in 2010.

In June 2020, district judge Paul Oetken ruled that, even after Noland filed a third amended complaint, her allegations that conservation work on Log Cabin Façade violated her moral rights were unconvincing. Noland conceded that her express authorisation to stain the sculpture created a derivative work that fell under the umbrella of VARA. The court found that artist’s permission shifted copyright from the artist to the collector, thus empowering the collector to create the derivative that later underwent conservation.

As Judge Oetken explained, Noland’s mere displeasure with the collector’s conservation efforts did not afford her protection under VARA:

Noland does not contest that the sculpture did not initially qualify for protection under VARA. Rather, she argues that she authored a derivative work when she permitted Schürmann to stain the sculpture sometime after the effective date of the statute, and that derivative work is entitled to VARA protection. (Dkt. No. 96 at 16-20.) Even if the Court were to make many of the leaps required by Noland’s line of reasoning – that the staining created a copyrightable derivative work, that the derivative work qualifies for protection under VARA, and that the marketing of the refurbished stained work violated those rights – Noland still would not prevail on her claim. That is because the author of the derivative work – and therefore the holder of any VARA rights vis-à-vis the staining – would be Schürmann, not Noland.45

v Missing resale royalty in Estate of Graham v. Sotheby’s Inc

Unlike dozens of other nations, the US does not recognise the right of visual artists to receive a royalty when their original, tangible work of arts are resold. The dissimilar nature of copyright-protected materials (published books, music and visual arts) has created a disparity

42Marc Jancou Fine Art Ltd., v. Sotheby’s, Inc., 2012 N.Y. Slip Op 33163 (Sup. Ct. 2012).

43Marc Jancou Fine Art Ltd. v. Sotheby’s, Inc., 107 A.D.3d 637, 967 N.Y.S.2d 649 (App. Div. 2013).

44No. 17-CV-5452 (JPO) (S.D.N.Y. 1 June 2020).

45Noland v. Janssen, No. 17-CV-5452 (JPO) (S.D.N.Y. June 1, 2020).

54

© 2021 Law Business Research Ltd

Moral Rights of the Artist: a US Perspective

in the benefits afforded to authors of literary and audio works and visual artists. Whereas writers and musicians are able to capitalise on the volume of copies of their works sold, visual artists typically depend on the sale of the unique work of art at the primary market stage. A copy, or a derivative work, from the original work of art is valued significantly below the value of the original, which can only be legally sold once. Listed as Article 14 bis in the Berne Convention, a version of the model clause concerning resale rights has been incorporated into the legislation of over 70 countries worldwide, thus allowing their visual artists to collect a percentage from each subsequent sale of their works.

Despite multiple efforts to promulgate a national resale royalty right in the United States, the US Congress stopped short of including resale rights in the VARA amendment. The history of efforts to codify a federal resale royalty scheme in the United States is well-documented.46 The lack of a federal resale royalty scheme effectively excludes US artists and their estates from participating in the financial appreciation of the artist’s creative work that has been alienated through sales.47

Only one of the US states, California, has successfully passed a law allowing visual artists to partake in the economic appreciation of their works. However, in 2012, the Ninth Circuit found that the California Resale Royalties Act (CRRA)48 was unconstitutional, as it violated the dormant Commerce Clause of the US Constitution,49 conflicted with and thus violated the first sale doctrine of the Copyright Law50 and, where any protections survived for California-based transactions, the entire law was pre-empted by Section 301(a) of the later adapted 1976 Copyright Act.51

The underlying consolidated case, Estate of Graham v. Sotheby’s,52 was initiated by artists and estates who brought a class action complaint against the leading auctioneers (including eBay, Christie’s and Sotheby’s) for failure to comply with CRRA, with regard to their own rights and the rights of similarly situated artists, including New York-based artist Chuck Close (born 1940), LA-based artist Laddie John Dill (born 1943), the California-based

46See, generally, US Copyright Office, ‘Droit de Suite: The Artist’s Resale Royalty’ (December 1992) (the 1992 Copyright Report); Office of the Register of Copyrights, ‘Report on Resale Royalties: An Updated Analysis’ (December 2013), available at www.copyright.gov/docs/resaleroyalty/usco-resaleroyalty.pdf; see also Responses to Copyright Office’s Notice of Inquiry re Resale Royalty Right, Docket No. 201210, 77 Fed. Reg. 58175 (19 September 2012), containing comments in support and in opposition

of passing a federal resale royalty right, such as the comments of the Center for Art Law, available at www.copyright.gov/docs/resaleroyalty/comments/77fr58175/Center_for_Art_Law.pdf; and comments of Sotheby’s, Inc and Christie’s Inc, available at www.copyright.gov/docs/resaleroyalty/comments/77fr58175/ Sothebys_Inc._and_Christies_Inc_Simon_J_Frankel.pdf.

47Artists may collect licensing fees for the right to reproduce their works but may not receive commission from the sale proceeds of the pieces. See US Copyright Office 1992 and 2012 reports.

48Cal. Civ. Code § 986.

49Estate of Graham v. Sotheby’s Inc., 860 F. Supp. 2d 1117 (C.D. Cal. 2012).

5017 U.S.C. §109(a). Estate of Graham v. Sotheby’s, Inc., 178 F. Supp. 3d 974 (C.D. Cal. 2016). (finding that the Copyright Law ‘prohibits copyright holders from exercising downstream distribution control of their products’).

51Estate of Graham v. Sotheby’s, Inc., 894 F.3d 1061 (2018) (holding the California Resale Royalties Act (CRRA) to be ‘short lived’ whereby artists could ‘only state claims for the period between the CRRA’s effective date of January 1, 1977, and the 1976 Act’s effective date of January 1, 1978’).

52860 F. Supp. 2d 1117 (C.D. Cal. 2012); Estate of Robert Graham v. Sotheby’s Inc., C.D. Cal.

No. 2:11-cv-08604-JHN-FFM, complaint filed 18 October 2011; Sam Francis Foundation v. Christie’s Inc., C.D. Cal. No. 2:11-cv-08605-SVW-PJW, complaint filed 18 October 2011.

55

© 2021 Law Business Research Ltd