Art Case Update - February 2021
Image: Nick Cave designed in collaboration with Bob Faust, Truth Be Told, 2020. Courtesy of the artist and Jack Shainman Gallery, New York.
Guest Work Agency is your go-to source on art-related legal cases and legal reform in Australia, as well as select cases internationally.
In this story, we profile an Australian trade mark case which considered the branding of craft beer, the unanimous decision of a New York zoning board, which acknowledged that artist Nick Cave’s outdoor art installation is not an illegal sign, the US Supreme Court’s rejection of a Nazi-era restitution claim and more.
Australia
Full Federal Court cancels trade mark of Melbourne brewer Urban Alley
The Full Federal Court has upheld a decision to cancel the trade mark “urban ale” on the grounds that the word “urban” when used in relation to beer is a descriptive word that is incapable of distinguishing a product from other products. The decision is a sobering reminder that words that serve a purely descriptive function should not be afforded protection under the Trade Marks Act 1995 (Cth).
In this case, Urban Alley sued La Sirène – both Melbourne brewers – for infringement of its registered word trade mark “urban ale”. Urban Alley claimed that La Sirène’s use of the words “urban pale” on the label of its beer product, as well as advertising of that product on its website and social media accounts, infringed their trade mark. In February 2020 the primary judge, O’Bryan J, rejected Urban Alley’s claim and held that registration of the “urban ale” trade mark should be cancelled under s 88(1)(a) of the Trade Marks Act on a number of grounds. Importantly, O’Bryan J found that “urban ale” is not capable of distinguishing Urban Alley’s beer products from the products of others. This is a ground for rejecting registration of a trade mark under s 41(1) of the Trade Marks Act, on the basis that allowing words that serve a purely descriptive function to be registered as trade marks results in an appropriation of common words that everyone should be free to use for their ordinary meaning. The primary judge also found that La Sirène had not infringed the trade mark because they had not used “urban pale” as a trade mark on or in relation to its beer product.
In November 2020, the Full Federal Court upheld the decision of O’Bryan J to cancel the “urban ale” trade mark. Middleton, Yates and Lee JJ agreed with the primary judge’s reasoning that the word “urban”, when used in relation to beer, is a descriptive word which signifies craft beer made in an inner-city location, and is therefore not inherently adapted to distinguish products from others. The combination of words “urban ale” does not have significance in terms of the style or flavour of beer beyond what is ordinarily conveyed by the word “ale”, which is a generic descriptor of a type of beer. Furthermore, other traders would legitimately seek to use this description in relation to their own beer products.
The Full Court also held that there was no need to assess whether La Sirène’s use of “pale ale” infringed Urban Alley’s trade mark, as this would only fall for consideration if the “urban ale” trade mark was inherently adapted to distinguish the product from other products for the purposes of s 41(1) of the Trade Marks Act.
International
New York zoning board acknowledges that artist Nick Cave’s outdoor art installation is not an illegal sign
In 2020 Chicago-based artist Nick Cave, in collaboration with Bob Faust, installed a vast text-based artwork across the exterior of Jack Shainman Gallery’s Kinderhook outpost in upstate New York. With its bold lettering, Truth Be Told, 2020, was designed to further conversations around systemic racism and police brutality in the wake of the murder of George Floyd and the Black Lives Matter movement. According to the New York Times, Cave’s gallerist Jack Shainman had submitted a proposal for the artwork in August 2020 for the installation of the piece, but the town of Kinderhook did not approve, citing the artwork was a sign that was a potential fire hazard, covering some windows and doors on the building.
On the 25 January 2021 a public hearing (via Zoom) was held before the Kinderhook’s Zoning Appeals Board. The town had also received dozens of letters and emails in relation to the matter and a petition entitled “Solidarity Against Censorship” had received more than 3,300 signatures. A core legal issue in the matter was whether Truth Be Told was a sign, which could be regulated by local laws or whether, as an artwork and therefore an expression of free speech, it overrides local regulations under the US Constitution’s First Amendment. On the 4 February 2021 the Zoning Appeals Board voted unanimously in favour of Truth be Told qualifying as an artwork and expression of free speech, which should be protected under the First Amendment.
US District Court rules that the COVID-19 pandemic could be invoked to terminate an art consignment agreement
JN Contemporary, a company affiliated with the art-dealing Nahmad family, sued auction house Phillips in July 2019 for terminating a consignment contract to guarantee a Rudolf Stingel painting for $5 million because it had postponed the sale of the work due to the COVID-19 lockdown. JN Contemporary claimed that Phillips disingenuously used the lockdown to cancel the agreement because it believed the market for Rudolf Stingel had depreciated so much that it might lose money on the guarantee. US District Court Judge Denise Cote rejected this argument.
The contract contained a force majeure clause stating that “in the event that the auction is postponed for circumstances beyond our or your reasonable control”, Phillips could terminate the agreement immediately and would no longer be liable to pay the guaranteed sum. The Judge stated that ripple effects from the pandemic clearly qualify as “circumstances beyond our or your reasonable control”.
More International Cases of Interest
The UK Supreme Court has ruled that business interruption insurance policies should cover COVID-19 related financial setbacks, allowing arts organisations to progress previously rejected insurance claims. However, the judgment does not comment on how losses should be calculated. Read more here.
The US Supreme Court has ruled in favour of Germany in relation to a Nazi-era restitution claim made by the Jewish heirs of the Guelph collection, comprising medieval jewels and religious works. The suit was rejected on the basis that Germany was protected by the US Foreign Sovereign Immunity Act, which insulates foreign governments from lawsuits in US courts and that the merits of the claim were not addressed. Read more here and here.
Street Artist Futura has filed a claim of copyright infringement in the California Central District Court against the North Face clothing company. Futura alleges that the North Face has copied his signature stylised atom design in its 2019 line of waterproof outerwear called “FUTURELIGHT”. Read more here.
Six photographers have filed a copyright infringement claim against BuzzFeed for publishing their Instagram images of Black Lives Matter protests in the US without their consent. BuzzFeed failed to secure a license or compensate the photographers before embedding the photos in their article. BuzzFeed removed the images a week after the article was published. Read more here.
An Italian art dealer has been convicted of attempting to sell a forged Josef Albers painting, deemed to be a fake by the executive director of the Josef and Anni Albers Foundation because of the paint application and location of the signature. Read more here.
Following the finalisation of Brexit, the UK will abandon the EU’s regulations on the importation of cultural heritage items which aim to reduce illegal trafficking by requiring special import licenses proving that goods were legally exported from the origin country. The EU regulations also empower authorities to take any appropriate measure in confiscating cultural goods imported without proper documentation. UK art and antiquities dealers will still be subject to the regulations when selling in the EU, such as through consignments with EU dealers or at art fairs. Read more here.