Art Case Update - March 2022
Seth Birchall, River Composition I and II, 2019, oil on canvas, 152.5 x 244cm (Diptych). Image supplied by the artist.
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 proceedings against ‘rogue dealer’ Tristian Koenig, the Australian Government’s recent acquisition of the copyright in the Aboriginal Flag, a fashion-meets-art NFT dispute and more.
Australia
Multiple proceedings against ‘Rogue Dealer’ Tristian Koenig on foot
A series of investigative reports by Chip Le Grand, Chief Reporter at The Age around the practices of ‘Rogue Dealer’ Tristian Koenig, which were published in the mainstream Australian newspapers The Age/Sydney Morning Herald in late 2021. The initial report identified numerous artworks which Koenig had not returned to artists, but who had originally consigned the works to his gallery. These include River Composition I and II, 2019 by Seth Birchall (pictured), which was originally consigned to Koenig in February 2020 and which the artist has been unable to locate since. Since the reports were published, many buyers of these ‘missing’ works have come forward. Guest Work Agency has been advising on several artists in relation to this matter.
Multiple proceedings against Koenig are now on foot in Victoria. These include a goods and services claim in the Victorian Civil and Administrative Tribunal brought by artist Harry McAlpine, for which orders are expected to be issued shortly. Multiple claims have been filed in the Melbourne Magistrates Court. These include a breach of contract for non-payment claim by a collector (scheduled to be heard on 28 March 2022), and a breach of contract for non-payment claim filed by American art dealer, Stefan Simchowitz (a hearing date is yet to be determined).
The Australian government has acquired copyright in the Aboriginal Flag
The Aboriginal flag is an emblem of unity and national identity for the First Nations people of Australia. The flag was originally designed by artist and Luritja man Harold Joseph Thomas for a land rights rally in Victoria Square/Tarntanyangga, Adelaide in 1971, on what was then known as National Aborigines Day. It became the official flag of the Aboriginal Tent Embassy, a permanent protest site on the grounds of Parliament House in Canberra, in 1972.
The red of the bottom half of the flag represents the land, the top half in black is a symbol of the Aboriginal people and the yellow circle represents the sun. According to Thomas, “The Aboriginal flag design is a deeply personal piece of artwork. When I created the flag, I created it as a symbol of unity and pride.”
Since 1995 the Aboriginal flag has been recognised as a ‘flag of Australia’ under section 5 of the Flags Act (Cth) 1953, which vests the Governor-General with the power to appoint flags of national significance. In the 1997 judgement of Thomas v Brown (1997) 37 IPR 207, the Federal Court declared the Aboriginal Flag an artistic work and attributed the copyright subsisting in the flag to Thomas as the author of the work. This legal recognition of authorship provided Thomas with various exclusive rights including the ability to reproduce the flag in material form and the ability to grant permission to others to exploit the copy-rights in the work.
This ability to grant permission to others to exploit the copy-rights in the work has been the subject of significant controversy in recent years. Thomas granted the non-indigenous-owned company WAM Clothing (WAM) with the exclusive worldwide licence to reproduce the flag on its garments. In exercising their licence, WAM sent cease and desist letters which effectively barred indigenous organisations from using the flag. WAM is part owned by Ben Wooster, who was also the director of Birubi Art Pty Ltd, now dissolved, which in 2019 was ordered by the Federal Court to pay $2.3 million in damages for engaging in misleading and deceptive conduct by selling products as authentic Aboriginal art that had been manufactured overseas.
On 3 September 2020, the Senate agreed to the establishment of the Select Committee on the Aboriginal flag, to inquire into the copyright and licensing arrangements relating to the flag, and to consider options to enable the design to be freely used by the Australian community. On 13 October 2020 the Committee published their report, recommending against the compulsory acquisition of the copyright for the Aboriginal flag under Section 51(xxxi) of the Commonwealth of Australia Constitution Act (the Constitution). Instead, the Committee recommended that the Federal government enter into negotiations with Thomas to acquire the copyright and the existing licences to the flag. They also endorsed creating an independent Aboriginal body to manage the custodianship of the flag.
On the 25 of January 2022 in a media release titled ‘Free Use of Aboriginal Flag Secured for All Australians,’ the Australian Government announced that after negotiations with Thomas, copyright to the Aboriginal Flag had been transferred to the Commonwealth. The release noted that ‘all Australians can now put the Aboriginal Flag on apparel such as sports jerseys and shirts, it can be painted on sports grounds, included on websites, in paintings and other artworks, used digitally and in any other medium without having to ask for permission or pay a fee.’ The media release also noted that as per the agreement with Thomas, Carroll and Richardson Flagworld would remain the exclusive licenced manufacturer of the flag for commercial production. However, this does not restrict individuals from making their own flags for personal use.
Though copyright has been assigned to the Commonwealth, as the ‘author’ of the flag Thomas retains his moral rights over his work under Part IX of the Copyright Act (Cth) 1968 (the ‘Act’). Unlike copy-rights, under the Act moral rights are personal and inalienable, and as such cannot be licensed or assigned. Thomas retains the exclusive rights to:
be properly attributed as the author of the work (sections 193 of the Act)
not have the work falsely attributed to a third party as the author of the work (section 195AC of the Act)
prevent derogatory treatment of the work which is detrimental to Thomas’ honour and reputation per sections 195AI – 195AL of the Act.
The press release states that ‘the Aboriginal Flag will now be managed in a similar manner to the Australian National Flag, where its use is free, but must be presented in a respectful and dignified way.’ Read more here and here.
Federal check on ancient Pilbara rock art
The Federal government of Australia is contemplating introducing more rigorous protections for World Heritage-nominated Aboriginal rock art on the Burrup Peninsula in Western Australia, in light of plans to construct a fertiliser plant in the area.
Although approval has been granted to remove three heritage listed sites under section 18 of the Aboriginal Heritage Act 1972 (Cth), the traditional custodians of the land have requested that the approval be reassed due to concerns that emissions could harm the sacred art. The area is home to over one million rock art and petroglyph sites. Read more here.
Tasmanian Museum and Art Gallery is returning petroglyphs to the Tasmanian Aboriginal community
The Tasmanian Museum and Art Gallery (TMAG) is returning the ancient Preminghana petroglyphs to the Tasmanian Aboriginal people after they were removed by the museum in 1962. This act of repatriation forms part of the ongoing effort by the Aboriginal Land Council of Tasmania in conjunction with the TMAG and the Royal Society of Tasmania to apologise to the Tasmanian Aboriginal people for practices they have acknowledged as being morally wrong. Read more here and here.
Fearless Girl on appeal in the Full Federal Court
In a 2021 judgement, the Federal Court of Australia dismissed a lawsuit filed by State Street Global Advisors (SSGA) against Maurice Blackburn for copyright and trademark infringement claims pertaining to the Fearless Girl statue. SSGA, the investment management company responsible for commissioning the original statue currently residing opposite the New York Stock Exchange, has appealed the decision, alleging that Maurice Blackburn leveraged off the ‘goodwill’ of the original statue when they erected a replica in Federation Square in Melbourne.
The appeal hearing took place on 21 February 2022 and a judgment is yet to be released. Read our past coverage of the dispute here.
International
Hermès has filed an action against Maison Rothschild for the unauthorised use of the BIRKIN mark
Hermès, the luxury fashion house responsible for producing the iconic BIRKIN bag has brought an action against Mason Rothschild in the district court of Southern New York. Hermès has alleged that digital creator Mason Rothschild appropriated the coveted handbag by making use of the brands BIRKIN trademark for ‘creating, marketing, selling, and facilitating the exchange of’ his collection of non-fungible tokens (‘NFTs’) titled METABIRKINS.
Hermès alleges that Mason Rothschild is in violation of 15 U.S.C. §1114(1), by infringing on its federally registered BIRKIN trademark. In the letter of complaint filed with the court, Hermès notes that as a result of extensive advertising and sales efforts, the BIRKIN bag has established itself as a household name known by the general public ‘both in name and by its distinctive design.’ Hermès alleges that as a result, any product bearing the BIRKIN mark is immediately affiliated with the Hermès brand. As such it has been argued that the sale, distribution and advertising of METABIRKINS NFTs by Rothschild creates a false and misleading impression that it has been authorised by Hermès to use the BIRKIN mark. On similar grounds, Hermès has alleged that Mason Rothschild is in contravention of 15 U.S.C. § 1125(a) for using the BIRKIN mark in a commercial context, leveraging off the brands presence.
Based on the longstanding heritage and global recognition of Hermès’ association with the BIRKIN mark, the brand has alleged that the collection of METABIRKINS NFTs contravenes 15 U.S.C. §1125(c) for ‘dilution by tarnishment’ of the BIRKIN mark. The luxury house alleges that the unauthorised use of the BIRKIN mark dilutes its distinctive reputation for high quality, conduct which intentionally injures the brands reputation and goodwill.
Hermès has also argued that Mason Rothschild has infringed on their domain under the Anti-Cybersquatting Consumer Protection Act 15 U.S.C. § 1125(d) through the defendant’s registration and use of the infringing domain. They have argued that the infringing domain name is confusingly similar to their own and has been used with the primary intent of capitalizing on BIRKIN Mark to obtain profits.
In the letter of complaint, the alleged suggestion that there is a connection with or sponsorship by Hermès in association with METABIRKINS has given rise to a litany of other claims under New York common law pertaining to the use of the BIRKIN mark. The applicant is calling for a jury trial on all claims seeking an award of damages and a permanent injunction pursuant to the various allegations. Mason Rothschild is yet to formally submit a response. Read more here and here.
Italian contemporary art gallery has been exposed to a cyber hacking scam
Contemporary art gallery T293 based in Rome has been the subject of a cyber hack referred to as the “middle-man scheme.” The scammer, using a near identical email address to that of T293 approached a number of the gallery’s contacts with fraudulent offers to works. A German collector wired $33,000 to an Italian bank account to acquire two works by artist Anna Park. The defrauded collector’s money has subsequently been returned. Read more here.
The status of the original Fearless Girl statue in New York is yet to be determined
The Landmarks Preservation Commission, the body responsible for protecting New York’s culturally significant sites, unanimously voted in favour of renewing the permit for the iconic “Fearless Girl” statue which currently resides in front of the New York Stock Exchange. Though the commission voted to retain the work in its current position for another three years, it is up to the Public Design Commission who maintain the city’s public art collection to determine the necessity of the artwork itself. Read more here and here.
Court rules in favour of TeamLab in an imitation dispute
TeamLab, an experimental art collective, recently won a lawsuit against the Chinese company Teamlab Borderless for copying one of its immersive interactive works titled ‘Forest of Resonating Lamps (2016).’ Though Teamlab Borderless’ iteration titled ‘TeamLab Borderless Breathing Forest Light Exhibition’ was not interactive and included the element of sound, the court’s ruling focused on the strong resemblance to TeamLab’s aesthetic sensibilities and similarities in the collective’s names. Read more here.
Artist brings an action against Jeff Koons for appropriation
Canadian artist Michael Hayden has sued Jeff Koons in New York’s Southern District Court, claiming that the artist appropriated his work depicting a serpent and a rock slab originally created as a prop for Koon’s former wife, Ilona Staller. Hayden has alleged that Koons committed ‘blatant, unlawful and worldwide infringement’ in three artworks of his works in his 1989 ‘Made in Heaven’ series. Hayden is seeking monetary damages as well as requesting the sales and reproduction of the works be held. The case is yet to go before the court. In a separate matter, the Milan Court of Appeal has ruled in favour of a collector who sought to get a work authenticated by Koons allegedly produced by the artist in the late 1980’s. Koons has appealed the ruling and the matter will now come before the Supreme Court of Cassation. Read more here and here.
Robert Indiana’s publisher has been accused of forgery
The Morgan Art Foundation, the non-for profit organisation which holds the copyright to a number of Robert Indiana’s works, has filed a brief against publisher Michael McKenzie in New York’s Southern District Court for allegedly forging Indiana’s artwork’s. The next hearing is to take place in March. Read more here and here.
The ‘Colston Four’ have been acquitted of criminal damage for toppling a statue during a Black Lives Matter protest
Four defendants have been acquitted of criminal damage under the Criminal Damage Act 1971 by the Bristol Crown Court for toppling the statue of slave trader Edward Colston in 2020 during the Black Lives Matter protest. The defendants, referred to as the ‘Colston Four,’ raised the ‘lawful excuse’ defence and freedom for expression under articles 10 and 11 of the European Convention of Human Rights during the proceedings. Though there have been discussions about the Attorney General bringing matter before the UK Court of Appeal on a point of law. Read more here and here.
Freeholdings Inc have brought an action against Kevin McCoy and Sotheby’s for the sale of an OG NFT
Canadian company Freeholdings Inc have filed a claim against artist Kevin McCoy and Sotheby’s in the United States District Court for the Southern District of New York, for the allegedly deceptive sale of an NFT work. ‘Quantum’, minted in 2014 and widely regarded as the first NFT work, was sold via Sotheby’s ‘Natively Digital’ auction for $1.47 million in 2021.
Freeholdings Inc are claiming that as McCoy failed to renew his ownership to the work on NameCoin, the blockchain software that the work was minted on, that the work was subsequently registered by Freeholdings and therefore they are the legal owners to the NFT. Freeholdings is also suing Nameless Corporation, responsible for the condition report provided to Sotheby’s alleging the report was false and misleading. Read more here and here.