Intellectual Property Law


“Black Lives Matter” Murals: Intellectual Property vs. Real Property Rights

By Caleb Green and Andrea Arndt

Facts & Background

In response to the death of George Floyd1 and a public outcry for social justice reform, on June 5, 2020, a team of eight artists joined a group of community volunteers to create a street mural with letters fifty feet in length spelling out “BLACK LIVES MATTER” across two city blocks leading to the White House. Washington D.C. Mayor Muriel Bowser commissioned the street mural as a symbolic affirmation of the Black Lives Matter movement and those “who are demanding that we have a more just criminal justice system.”2 Since then, artists and volunteers in other cities have joined the movement and created street art throughout the United States, including Brooklyn, San Francisco, Austin, Cincinnati, and Charlotte. For example, in downtown Raleigh, North Carolina, inspired artists and protesters painted “END RACISM NOW” in large lettering on a public street.3 Protesters throughout the United States are planning to install several similar murals in public streets in various other U.S. cities in an effort to amplify the response to ongoing social injustices in our country. This street art not only conveys a powerful message, but also, the consensual application of these artistic works to physical buildings and public streets illuminates an interesting legal inquiry regarding the crossover of intellectual property law and real property. The land- mark case of Castillo v. G & M Realty L.P.,4 provides guidance to attorneys regarding how courts balance the intellectual property interests of artists against the property rights of municipalities and property owners.

Temporary Outdoor Murals May Be Protected under VARA Temporary artworks, such as street art made from chalk or any other erosive materials, may be protected by VARA. In Castillo, Wolkoff argued that the artists’ artworks were temporary as a defense to VARA claims for destruction of works of recognized stature.17 The court rejected Wolkoff ’s position and emphasized that the temporary lifespan of the street art was not a bar against VARA claims, holding that “[a]lthough a work’s short lifespan means that there will be fewer opportunities for the work to be viewed and evaluated, the temporary nature of the art is not a bar to recognized stature.”18 Property Owners Should Take Caution Before Destroying or Altering Street Art Additionally, attorneys should advise their property owner clients of their options to mitigate VARA liability. The Castillo court noted that Wolkoff could have explored two statutory exceptions under VARA by either: (1) entering into a written agreement with the artists prior to installation of their creative works, or (2) providing a 90-day notice and giving the artists an opportunity to preserve their artistic works before destruction of the artworks or property.19 Accordingly, attorneys should advise property owners and municipalities to employ one of these options prior to removing, altering, or destroying protected artworks from the property or streets. In summary, Castillo extends intellectual property rights to street artists and their works affixed to the property of others. Artists of street murals may have intellectual property claims against individuals or organizations that deface or destroy their works. Likewise, this case is instructive for attorneys and property owners regarding how to remove unwanted works from their property while avoiding the pitfalls of VARA.

Street Murals May be Protectable under VARA As noted above, in the Castillo case, the Court of Appeals for the Second Circuit affirmed that the artists’ street art adorning Wolkoff’s building constituted art of “recognized stature”—a basic requirement for invoking VARA protection against destruction. The Second Circuit provided a clear definition of works of “recognized stature” as works of “high quality” that have been acknowledged as such by the relevant community.13 The court went on to acknowledge that evidence from art historians, art critics, curators, and other experts supporting the quality of a work could demonstrate street art as a recognized stature warranting moral-rights protections under VARA.14 In fact, widespread sharing of artwork on social media and the internet—like the Black Lives Matter and other social justice-inspired street murals—can evidence high quality stature of artwork warranting moral-rights protections.15 However, despite the growing recognition of Black Lives Matter-inspired street art, including murals, illegally placed artwork will likely be subject to the wishes of the property owner. Even when an artwork achieves VARA protection, courts may still deny relief when the artwork has been installed without authorization from the property owner.16 Accordingly, artworks, which are affixed to property, without the property owner’s permission (e.g., vandalism), may be subject to destruction, removal, or transfer.

Key Takeaways

Although the U.S. Copyright Act contains the operative sections of VARA, registration with the U.S. Copyright Office is not required for an artist to bring claims for violation of VARA. Typically, an artist would need to file a copyright application and obtain a registered copyright to assert his/her rights in an action for infringement. Unlike most copyright assertions, an artist can bring claims for violating his/her rights under VARA without having a registered copyright for his/her protected works. However, the statutory coverage of VARA is restricted to specific categories of fine art (i.e., prints, drawings, sculptures, paintings, and still photographs existing in a single copy or in a limited edition of 200 or less copies) that, for the right of prevention of destruction, have achieved “recognized stature.” Notably, VARA does not define the term “recognized stature” and therefore, U.S. courts determine whether an artwork has achieved “recognized stature.” Courts have deemed “recognized stature” to mean meritorious work by art experts, other members of the artistic community, or some other cross-section of society.8 VARA rights extend to works of art, subject to copyright protection, that may be destroyed or altered by property owners—a lesson Wolkoff learned the hard way. VARA is an amendment to U.S. Copyright Act that was adopted in 19909 and provides protection for a limited set of moral rights for artists. Specifically, under VARA, the United States recognizes: (1) the right of integrity and (2) the right of attribution.10 An artist’s right of integrity includes the right to prevent the modification, mutilation, or distortion of the artist’s work, and in some cases, to prevent its destruction.11 Rights of attribution generally include an artist’s right to be recognized as the author of his/her work, to publish anonymously and pseudonymously, to prevent attribution of his/her name to works he/she did not create, and to prevent his/her work from being attributed to other artists.12

What is VARA?

In 2002, Gerald Wolkoff, the owner of several New York warehouses, enlisted Jonathan Cohen, a renowned artist, to turn Wolkoff ’s warehouses into an exhibition space for other artists. Under Cohen’s leadership, this exhibition space—known as 5Pointsz—evolved into an epicenter for street art in New York. In fact, 5Pointsz has attracted thousands of visitors and received extensive media coverage, including creating vast buzz on social media. In 2013, Cohen learned that Wolkoff sought to demolish 5Pointz and build luxury apartments in its place. Wolkoff deployed a group of workers to whitewash and destroy forty-nine of the plaintiffs’ existing artworks. Cohen and his entourage of artists, whose artworks were ultimately destroyed, successfully sued Wolkoff under a provision of the Visual Artists Rights Act of 1990 (VARA)5 and were awarded $6.75 million in statutory damages.6 On February 20, 2020, the U.S. Court of Appeals for the Second Circuit affirmed the judgment.7

Ethical Considerations for Attorneys

Castillo v. G&M Realty L.P., is a unique case that illustrates the novel intersection of real property and intellectual property law and demonstrates how landlord-tenant disputes can evolve into more complex issues. Namely, Castillo involved the intersection of warehouse property owner’s desire to remove the visual artworks of tenant-artists from the property. The Castillo case is not the only recent case law where this unique crossover exists. Another noteworthy case, Narkiewicz-Laine v. Doyle,20 involves the overlap with commercial landlord-tenant law and VARA. On July 19, 2019, the United States Court of Appeals for the Seventh Circuit affirmed an award of $300,000 to a tenant whose landlord destroyed the tenant’s abandoned artwork.21 In this case, Narkiewics-Laine, an artist, leased storage space starting in 2004 from members of the Doyle family (hereinafter, “Doyle”). The lease lasted about six years until Mr. Narkiewics-Laine failed to make several payments for the storage space and the property’s utilities. Doyle thereafter cleared out the storage unit and discarded Mr. Narkiewics-Laine’s stored property. Mr. Narkiewics-Laine asserted that among the discarded items, Doyle destroyed 1,457 pieces of artwork that he created. In an effort to recover damages from his destroyed property, Narkiewics-Laine brought suit in Illinois federal district court asserting, among other claims, a violation of VARA. Similar to the landlord in Castillo, Doyle could have taken protective measures to avoid intellectual property liability when dealing with Narkiewics-Laine’s property.

Both Castillo and Doyle illustrate that landlord-tenant disputes may indeed have underlying intellectual property issues. Attorneys should be on notice that traditional landlord-tenant disputes may require the practice and understanding of both real property and intellectual property law, especially when the property involves works of art. Accordingly, attorneys should take time to evaluate whether or not they are adequately equipped and skilled to handle the intellectual property aspects of such matters and, if they need additional assistance, to take active steps to avoid violating their ethical obligations to their clients. In California, licensed attorneys are bound to the California Rules of Professional Conduct (the “CRPC”). Under the CRPC, attorneys must not “intentionally, recklessly, with gross negligence, or repeatedly fail to perform legal services with competence.”22 Specifically, the CRPC provides, in part, when “a lawyer does not have sufficient learning and skill when the legal services are undertaken, the lawyer nonetheless may provide competent representation by (i) associating with or, where appropriate, professionally consulting another lawyer whom the lawyer reasonably believes to be competent, (ii) acquiring sufficient learning and skill before performance is required, or (iii) referring the matter to another lawyer whom the lawyer reasonably believes to be competent.”23

Intellectual property law is a specialized practice, especially when it overlaps with other legal practices, such as real property law. While this article provides some precautionary steps that attorneys should consider in landlord-tenant disputes, it may be necessary for attorneys who are not skilled or experienced in handling intellectual property matters to take additional steps before or while engaging in the representation of property owners or tenants. Pursuant to the CRPC, attorneys should consider if they have the requisite skills and abilities to provide services that might include the practice of intellectual property law.24 When attorneys believes they are not adequately skilled to practice intellectual property law, those attorneys should consider any of the following steps: ► Spend time to acquire the requisite skills and knowledge of intellectual property law; ► Associate with an attorney they reasonably believe is competent in intellectual property matters or; ► Refer the matter to an attorney they reasonably believe is competent in intellectual property matters. Likewise, intellectual property attorneys who are not skilled or experienced in real property matters should take similar precautions when taking on landlord-tenant disputes to avoid ethical violations.

Conclusions and Recommendations

Attorneys may consider providing the following guidance and recommendations: ► Street art, including temporary street murals, may be protected under the Visual Artist Rights Act (VARA). ► Prior to installing or affixing artwork to property, artists should obtain proper permissions and authorizations from the property owners to secure protections under VARA. ► Property owners—including building owners and municipal governments—should work with and identify the artists and the local community members prior to installation and placement of street art, including murals and other artwork. ► It is advisable that property owners enter into written agreements with the individuals creating the street art prior to the installation of any creative works. ► Prior to removing, altering, or destroying existing street art, property owners should give the artist timely notice and provide the artist(s) reasonable time to preserve the artistic works. Attorneys may consider clauses in a written agreement that de- fines what constitutes “timely notice” and “reasonable time” for artists to preserve their artworks under VARA. ► Attorneys who are not adequately educated, skilled, or trained in intellectual property law should associate with or refer the matter to an intellectual property attorney, or acquire sufficient learning and skill in intellectual property law to competently represent their clients.

The views expressed in this article are personal to the authors and do not necessarily represent or reflect the views of the authors’ firm, the Executive Committee of the Intellectual Property Law Section, the California Lawyers Association, or any colleagues, organization, or client. Caleb L. Green is an Associate Attorney in the Dickinson Wright Las Vegas office. He primarily practices intellectual property law and assists clients with brand development and with identifying various protectable aspects of the clients’ products, services and concepts. Email is CGreen@ dickinson-wright.com. Andrea L. Arndt is a Member Partner at Dickinson Wright PLLC and has more than fifteen years of experience developing and managing domestic and international patent, trademark, and copyright portfolios for startup, midsized, and Fortune 500 companies. Email is AArndt@dickinsonwright.com.

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Endnotes: 1. On May 25, 2020, George Floyd, a 46-year-old black man, died in Minneapolis, Minnesota, during his arrest for allegedly using a counterfeit bill to purchase cigarettes at a convenience store. His death has sparked, throughout the United States and in various other countries, a series of protests against police brutality and racism. 2. D.C. Mayor Comments On ‘Black Lives Matter’ Road Banner And Funding The Police, NPR, https://www.npr. org/2020/06/09/873377522/d-c-mayor-comments-on-black- lives-matter-road-banner-and-funding-the-police (last visited on July, 5, 2020). 3. Id. 4. Castillo v. G&M Realty L.P., 950 F.3d 155 (2d Cir. 2020) cert. denied, U.S. , 2020 U.S. LEXIS 4495 (Oct. 5, 2020). 5. 17 U.S.C.S. § 106A. 6. Castillo, supra, note 4, 950 F.3d at 164. 7. Id. at 162. 8. Id. at 166. 9. Judicial Improvements Act of 1990, Publ. Law 101-650, 104 Stat. 5089, at §§ 601–610. 10. 17 U.S.C.S. § 106A. 11. 17 U.S.C.S. § 106A(a)(3). 12. 17 U.S.C.S. § 106A(a)(1) and (2). 13. Castillo v. G&M Realty L.P., 950 F.3d 155, 166 (2d Cir. 2020), cert. denied, U.S. , 2020 U.S. LEXIS 4495 (Oct. 5, 2020). 14. Id. 15. See Id. at 162. 16. English v. BFC&R East 11th St., LLC, 1997 WL 746444, 1997 U.S. Dist. LEXIS 19137 *11, (S.D.N.Y. 1997), aff’d without opinion, 1999 U.S. App. LEXIS 23697 (2d Cir. 1999). 17. Castillo, 950 F.3d at 168. 18. Id. 19. Id. at 169; see 17 U.S.C. § 113(d)(2). 20. Narkiewicz-Laine v. Doyle, 930 F.3d 897 (7th Cir. 2019), cert. denied, U.S. , 140 S. Ct. 849, 205 L. Ed. 2d 466 (2020). 21. Id. at 900. 22. See Cal. Rules of Professional Conduct 1.1(a). 23. Cal. Rules of Professional Conduct 1.1(c). 24. See Cal. Rules of Professional Conduct 1.1(b).