Art Case Update - August 2021
Image: Banksy, Flower Thrower, 2003.
Guest Work Agency is your go-to source on art-related legal cases and law reform in Australia, as well as select cases internationally.
In this story, our Director and Founder, Alana Kushnir and Paralegal Associate, Mia Schaumann, report on the Federal Court of Australia’s recent determination that an artificial intelligence system can be an inventor, the National Gallery of Australia’s repatriation efforts, an NFT copyright dispute plus more.
Australia
Federal Court finds that an artificial intelligence system can be an inventor
The Federal Court has determined that an artificial intelligence (AI) system can be an ‘inventor’ for the purposes of the Patents Act 1990 (Cth) (Patents Act). This determination is a global first for patent protection, and as such, could have significant legal ramifications on the future uses of machine learning in a world that is becoming increasingly reliant on AI outputs.
The case concerned the patent application by Dr Stephen Thaler for the Device for Autonomous Bootstrapping of Unified Sentience (DABUS). In simple terms, DABUS is a combination of artificial neural networks which ‘generates novel patterns of information’ ‘capable of adapting to new scenarios without additional human input.’ DABUS is ‘said to produce new ideas’ and ‘generate new concepts’ for the purpose of pharmaceutical research. In the patent application, Dr Thaler named DABUS as the inventor.
Dr Thaler’s application was initially rejected by the Deputy Commissioner of Patents (Commissioner) on the grounds of reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth) (Regulations) which requires that the name of the inventor of the invention be provided with the patent application. The Commissioner construed the term ‘inventor’ narrowly, relying on dictionary definitions to determine that an ‘inventor’ must be a human or legal person to satisfy the requirements of the Patent Act.
Dr Thaler sought judicial review of the decision in the Federal Court of Australia on the grounds of section 15(1) of the Patents Act. Section 15(1) of the Patents Act provides that:
(1)…a patent for an invention may only be granted to a person who:
(a) is the inventor of the patent; or
(b) would, on the ground of a patent for the invention, be entitled to have
the patent assigned to the person; or
(c) derives title to the invention from the inventory or a person mentioned
in paragraph (b)…
Dr Thaler argued that the Act and relevant Regulations, ‘do not preclude an artificial intelligence system being treated as an inventor.’ Whilst Dr Thaler is the owner of copyright to DABUS’s source code, he argued that the ‘invention was autonomously generated by artificial intelligence’ and therefore to call himself the inventor would be incorrect.
Justice Beach of the Federal Court overturned the finding of the Deputy Commissioner of Patents (Commissioner). He held that section 3.1A(2) of the Regulations requires ‘the applicant to be a legal person, however none of the regulations preclude an inventor from being a non-human artificial device or system’. Beach construed the word ‘inventor’ with respect to the Patents Act and Regulations broadly, encompassing a ‘person or thing that invents.’
In making his determination, Justice Beach gave weight to the ‘evolving nature of patentable inventions and their creators’. He acknowledged that reading ‘inventor’ through a narrow canon would inhibit advancements in all scientific fields. In his flexible application, Justice Beach ultimately provides for what he described as a ‘widening conception’ for the development of patent law allowing for the promotion of technological innovation consistent with the purpose of the Act.
While a non-human inventor is still unable to be an applicant of a patent, in recognising an AI system or device as an inventor, this ruling poses a significant development in Australian patent law. Read the full text judgment.
National Gallery of Australia repatriates 14 objects to India
The National Gallery of Australia (NGA) has deaccessioned 14 works of Asian art and antiques, 13 of which were purchased from disgraced art dealer Subhash Kapoor and one acquired from art dealer William Wolff. This act of repatriation has come as a response to the charging of Kapoor by Indian authorities for criminal possession of stolen property, grand larceny, conspiracy and scheme to defraud. Kapoor has been in jail in India since 2011 where he awaits trial.
In July 2021, the NGA announced that the works in question have been removed from the collection and the NGA maintains that it is planning on repatriating the 13 works, including six sculptures, six photographs and a painted scroll, back to India.
As part of this announcement, the director of the National Gallery Nick Mitzevitch also mentioned that it would be introducing a new process for assessing provenance. The NGA’s current Due Diligence and Provenance Policy outlines various procedures that inform the gallery’s decision-making when considering new art acquisitions. Aside from requiring the art acquisition to be complicit with both national and international law, section 5.1(d) explicitly states that the Gallery ‘does not support the illicit trade in works of art’ and section 5.2 provides further due-diligence procedures to ensure that a work’s provenance is correctly attributed. Mitzevitch has explained that the new processes to be introduced will be more stringent. He has indicated that, ‘if on the balance of probability, it is considered likely that an item was stolen, illegally excavated, exported in contravention of the law of a foreign country, or unethically acquired, the National Gallery will take steps to deaccession and repatriate.’
The Due Diligence and Provenance Policy is yet to be updated to reflect this new process. The next review of the NGA’s Due Diligence and Provenance Policy is expected to take place in June 2022 and is available to read here.
Banksy’s Australian trade marks have been contested
On 25 July 2019 street artist Banksy submitted trade mark applications with IP Australia for two of his infamous images ‘Love is in the Air’ and ‘Girl with Balloon’ in numerous classes of goods, including those covering handbags, textiles, sunglasses, posters, rugs and clothing. Banksy, whose identity remains hidden, is widely known for his politically provocative street art. The trade marks were lodged by Banksy’s office Pest Control Office Limited via the Perth based legal firm Bennett & Co. The trade mark applications were accepted by IP Australia on 29 April 2021, however, Intentions to Oppose were filed on 25 June 2021 by the UK based greeting card company Full Colour Black Limited. Full Colour Black have successfully contested similar trade mark applications in Europe (see our coverage under International cases below). The legal grounds for the opposition remain undisclosed. An interesting analysis of the possible opposition grounds by Australian law firm Clayton Utz is available to read here.
Howard Arkley painting forgery case against Gould Galleries has been withdrawn
Garry Stead’s claim against Gould Galleries has been withdrawn in relation to the sale of a painting entitled ‘Well Suited Brick Veneer’, allegedly by Australian artist Howard Arkley. In 2018 Gould Galleries, a Melbourne art dealer, was sued for alleged misleading or deceptive conduct under the now repealed s 52 of the Trade Practices Act 1974 (Cth). Read our previous coverage of the case here and here.
International
Banksy European Union trademark dispute
The European Union Intellectual Property Office’s Cancellation Division (Cancellation Division) has declared the trademark of street artist Banksy’s image Laugh Now (2002) invalid. The work for which protection has been sought depicts a monkey wearing an empty sandwich board and makes up one of the anonymous street artist’s most iconic works.
Street art and graffiti greeting card company, Full Colour Black Limited., filed an application of invalidity against the trademark lodged by Banksy’s representative Pest Control Office. Full Colour Black Limited alleged that the trademark application had been made in bad faith under Article 59(1)(b) of the European Trademark Regulation (EUTMR). They argued that Banksy ‘does not use any of the images for which registration has been sought,’ instead claiming that he is seeking to use trademark law as a means to circumvent the provisions of copyright law. For context, in order to enforce ones copyrights to a work, Banksy would be required to disclose his name as the copyright owner. Granted that anonymity is central to Banksy’s allure, disclosing his legal name would prejudice his ‘public persona.’
As the EUTMR does not provide a definition of ‘bad faith,’ the Cancellation Division has characterised it as ‘conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices.’ Pest Control Office Limited argued that registering ‘a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith’ however the Cancellation Division ultimately dismissed this claim on the grounds that this objective is contrary to the purpose of trade mark regulation. The purpose of a trade mark is to benefit consumers in identifying the ‘commercial origin of the goods or services,’ not to ‘prohibit others from registering or using signs.’ Thus, the legal grounds of bad faith are triggered when there has been ‘registration without any intention of using the contested EUTM [European Trade Mark].’
The Cancellation Division found that ‘the first evidence of sales appeared to have happened just before the date of filing the application for invalidity’ through Banksy’s newly opened store Gross Domestic Product in late 2019. Using evidence from various articles, the judge stated that ‘by their own words they admit [it] was not genuine trade mark use in order to create or maintain a share of the market by commercialising goods, but only to circumvent the law.’
This ruling highlights the difficulties in iconic imagery created by artists being registered as trade marks. The judge commented that ‘Banksy has chosen to remain anonymous and for the most part to paint graffiti on other people’s property without their permission rather than to paint it on canvases or his own property. He has also chosen to be very vocal regarding his disdain for intellectual property rights, although clearly his aversion for intellectual property rights does not annul any validly acquired rights.’
A declaration of invalidity was also made on the grounds of Article 59(1)(a) EUTMR in conjunction with Articles 7(1)(b) and 7(1)(c) EUTMR. However, as the application was successful on the grounds bad faith under Article 59(1)(b), the Cancellation Division did not examine these additional grounds. The full text version of the finding is available to read here.
Roc-A-Fella Records Inc. NFT copyright dispute
Jay-Z’s co-owned record label, Roc-A-Fella Records Inc. was granted a temporary restraining order halting the sale of the copyright in their album Reasonable Doubt being sold as a non-fungible token (NFT). The sale was initiated by Damon Dash, one of the three equal partners in Roc-A-Fella Records Inc.
SuperFarm, the platform where the NFT sale was meant to occur, advertised the NFT as a rare opportunity to ‘prove ownership of the album’s copyright, transferring the rights to all future revenue generated.’ The auction in which the NFT was meant to be sold was cancelled in response to the legal allegations. Reuters has reported that allegedly Dash contends that he was not intending to sell the copyrights, but rather his stake in Roc-A-Fella Records. Although Dash is a minority partner, this does not provide him with the legal right to sell a company asset. It is also questionable whether copyright can be sold as an NFT, an issue which has been discussed by Professor Tonya Evans in episode 59: Ping the Prof #2-Non-Fungible Tokens (NFTs), Copyright and Empowering Crypto Creatives of the podcast Tech Intersect, March 30 2021.
This is one of the first instances of an injunction/temporary restraining order being granted in relation to an NFT sale and illuminates the many potential legal issues that can arise in this relatively new domain. The United States Southern District Court of New York is scheduled to hear Dash’s argument as to why a permanent injunction should not be granted pursuant to Rule 65 of the Federal Rules of Civil Procedure. Read the initial complaint filed by Roc-A-Fella Records Inc. here.
Other International Cases of Interest
Street artist ‘Kaves’ files lawsuit against the New York City Police Department
New York street artist Michael McLeer, also known as ‘Kaves’ has filed a class action lawsuit with the Brooklyn Federal Court against the New York City Police Department (NYPD) for allegedly painting over one of his authorised works in a graffiti cleanup campaign. Kaves is arguing that the NYPD violated the Visual Artists Rights Act (VARA) ‘pertaining to a willful destruction of a work of visual art’ and his civil rights under 42 U.S.C. § 1983 ‘arising from deprivation of free speech rights and property interests without due process of law’. Read the filed complaint here.
David Bowie copyright dispute
The Berlin Federal Court dismissed English photographer Gavin Evans’ allegations against German artist Michael Moebius for alleged similarities between his photograph and Moebius’ 2017 painting of the David Bowie. Read more here.
Class action lawsuit against Intagram for copyright infringement
Photojournalists Alexis Hunlet and Matthew Schott Brauer filed a class action lawsuit with the District Court of California against Instagram, LLC. The plaintiffs allege that the social media company ‘encourage[es], induc[es], and facilitate[es] third parties to commit widespread copyright infringement…by using Instagram’s ‘embedding’ tool to display copyrighted works of Instagram users on third-party publisher websites…without appropriately compensating copyright holders.’ The claimants are seeking damages, disgorgement of profits derived from the illegal conduct, injunctive relief, and attorney’s fees. Read the filed complaint here.
The North Face logo dispute
Outdoor gear company, The North Face has filed a legal motion against the street artist Futura over the trademark rights to the atom logo for their new waterproof outerwear line. This has come after Futura alleged that The North Face had copied its stylised spinning atom as the basis for its logo. Read more here.
Angela Gulbenkian sentenced to prison for fraudulent art sales
Art dealer Angela Gulbenkian has been sentenced to three years and six months in prison on two charges of theft in London’s Southward Crown Court. Gulbenkian was charged with theft in connection to the fraudulent sales of a Yayoi Kusama pumpkin sculpture and an art investment that was never made, cumulatively valued at over $1.5 million. Gulbenkian faces similar charges for the fraudulent sale of an Andy Warhol print, the outcome for which is still pending. Read more here.
Settlement reached over Robert Indiana’s legal estate
The 2018 lawsuit between the estate of pop artist Robert Indiana, Star of Hope Foundation, and the foundation which holds the copyright to a number of Indiana’s works, Morgan Art Foundation, has been settled. The terms of the settlement are yet to be released. Read more here and here.
French government attempts to prevent the sale of a Leonardo Di Vinci Drawing
The French cultural ministry has attempted to prevent a collector from selling a small line drawing attributed to Leonardo da Vinci to a foreign buyer. The authorities have deemed the work a ‘national treasure’ and as such are trying to ensure that the work remains in France. Baratelli, the private collector who owns the work, is seeking legal recourse through Paris’ judicial system in attempt to obtain an export certificate. Read more here and here.