Art Case Update - November 2021
Image: Edgar Calel, The Echo of an Ancient Form of Knowledge, 2021.
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 design law changes in Australia, recent international NFT disputes, the release of a New Jersey judgement on the unscrupulous operations of an art dealer on public interest grounds and more.
Australia
Design law changes in Australia
The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) recently passed in Australia. The Bill has introduced several immediate changes to Designs Act 2003 (Cth) (Designs Act) as well as additional amendments that will come into operation in March 2022. These changes will provide greater flexibility for the registration and protection of designs in Australia.
Schedule 1 of the Bill introduces a 12-month grace period to file a design application, protecting applicants who unintentionally disclose their design prior to filing for protection. In a time where the exchange of images has become intrinsic to our digital landscape, for designers who share social media updates on their works-in-progress and new pieces, this change potentially has far reaching benefits. It effectively mitigates the risks involved in posting designs prior to having a registration for the design in place.
Schedule 2 introduces a prior use defence to ensure that, a person who has made, or taken definitive steps to make a product which embodies a design, is identical to, or substantially similar in overall impression to the design that became registered, or alternatively if they have imported a product for sale relatable to the design, they can continue to use it.
The Bill also changes the standard of proof from that of the “informed user” to ‘whether or not the familiar person is a user of the product to which the design relates’ for designs filed on or after 11 September 2021, effectively lowering the standard of proof. Other amendments include relief from infringement before registration, right of exclusive licensee to bring infringement proceedings and streamlining the formal requirements in line with the technological advancements.
Whilst it is still best practice to file design applications prior to the public disclosure of the design, the recent amendments to the Act simplifies aspects of the designs system and makes it easier for designers to seek relief. Access the Bill here and the explanatory memorandum here.
The Commonwealth government proposes a QR system to authenticate Indigenous works
The Federal Government has recently increased funding to the Indigenous arts sector including money to assist with the roll out of a QR system to certify the authenticity of artworks produced by First Nations people. The purpose of the verification mechanism is to mitigate the circulation of counterfeit works which claim to be produced by First Nations artists, providing a means by which consumers can obtain the provenance of a work.
The digital label system formed part of the 2018 Report on the impact of inauthentic art and craft in the style of First Nations peoples (the Report), an Australian Government response to the House of Representatives Standing Committee on Indigenous Affairs. Recommendation 4 of the Report included the implementation of digital labelling ‘on authentic Indigenous products to assist consumers to make informed, ethical purchases and to increase economic and cultural opportunities for Aboriginal and Torres Strait Islander artists and designers’ following the Federal Court judgment in ACCC v Birubi Art Pty Ltd 374 ALR 776 (ACCC v Birubi).
In ACCC v Birubi, Birubi Art Pty Ltd was found in breach of various sections of the Australian Consumer Law (ACL) including engaging in false or misleading representations that its products were hand painted by Australian Aboriginal persons. In light of that case, the Report noted that ‘any amendments to the ACL should focus on misleading behaviour, and that a certification scheme would encourage consumers and businesses to support suppliers of genuine [products].’
The Report proposed a digital labelling trial conducted by Desart, a body of Central Australian Aboriginal Arts and Crafts centres, with government funding of $150,000. The Committee Comments which formed part of the Report noted that if ‘such a labelling system were to prove successful among art centres in the first instance, this would likely go a long way to establishing such a system more widely.’ Since the Report was published in 2018, Desart has successfully trialed the QR code in five Indigenous art centres, providing users with information about the artists, their works and the art centre.
The Federal Government has recently increased funding to the Indigenous arts sector, resulting in more than $27 million going towards the sector each year for the next five years. Arts Minister Paul Fletcher said that this money would be used to roll out the QR codes initially proposed in the Report. Read more here.
International
Miramax sues Quentin Tarantino over pulp fiction NFTs
Film distribution company Miramax has recently filed a lawsuit with the Federal Court of Los Angeles against filmmaker Quentin Tarantino and his production company Visiona Romantica Inc., for their plans to mint ‘7 uncut Pulp Fiction Scenes as secret NFTs’ with each NFT consisting ‘of a single iconic scene, including personalized audio commentary from Quentin Tarantino’ as outlined on Tarantino’s NFT website.
Tarantino granted ‘all rights (including all copyrights and trademarks) in and to’ Pulp Fiction ‘including without limitation the right to distribute the film in all media’ to Miramax in 1993. Although Tarantino retained specific “Reserved Rights” Miramax has argued that these Reserved Rights ‘do not encompass any rights or media that were not known at the time of the Original Rights Agreement.’ Given the broad rights assigned to Miramax, they have alleged that Tarantino would be in breach of his contractual obligations, violating the copyright and trademark rights if he were to drop the NFTs as planned.
Tarantino is yet to file an official response to the Complaint, however his attorney Bryan Freedman has made a media statement arguing that the director would be acting within his Reserved Rights to release the NFTs, as it includes the right to ‘screenplay publication.’ Whether or not he has the legal capacity to mint the Pulp Fiction NFTs will ultimately be determined by the Federal Court of Los Angeles’ interpretation of the scope of Tarantino’s Reserved Rights. Though the NFT space is an unchartered landscape in terms of judicial precedent, this dispute illustrates the necessity to carefully ascertain your rights to the associated property prior to minting works as NFTs. Read more here.
New Jersey Royal Court releases judgement on public interest grounds
The New Jersey Royal Court has released the judgement of a civil lawsuit between the defendant, London-based renowned art dealer Andy Valmorbida, and plaintiff Christian Hore. Though the parties had reached a settlement outside of the court, the Deputy Bailiff and Jurats Christensen and Dulake found that it was in the ‘public interest for a person with Mr Valmorbida’s profile to have his dealings exposed’ given that the points of law addressed were ‘of substantial general interest, particularly in a jurisdiction such as this with a major financial services industry,’ dismissing the parties appeal for the judgement to remain confidential.
As there had been no prior New Jersey legal authority concerning the release of formal handing down of a judgement where the matter had been dealt with prior to the formal court proceedings, the Court relied on English case law, placing particular weight on Prudential Assurance Company v McBains Cooper [2000] 1 WLR 2000 (Prudential). In this case, the Court of Appeal allowed for the ‘discretion of the judge to decide whether to continue that process by handing down the judgment in open court or to abort it at the parties' request’ in determining whether the judgement should become a matter of public record.
Relying heavily on the judgement of Prudential, as well as other English case law, The New Jersey Royal Court made the judgement public, exposing Valmorbida’s dishonest representation in owning numerous artworks for the purpose of obtaining loans. In addition to making false representations, the plaintiff’s evidence included inflating the purchase prices of works and falsified invoices to represent that he owned owned paintings by Francis Bacon and Basquiat in order to secure loans with a cumulative value of 12.2 million dollars made by The Fine Art Group and Sotheby’s to Valmorbida.
Based on the litany of allegations and persuasive evidence indicating that Valmorbida lied under oath ‘the effect that each work of art was “100% legally and beneficially owned by me” for the purpose of obtaining monies when he knew the declaration was untrue, the Court was of a unanimous view that it was ‘very much in the public interest for a person with Mr Valmorbida’s profile to have his dealings exposed.’ Read more here.
Other International Cases of Interest
Poland amends its restitution laws
Poland’s president, Andrzej Duda, recently approved a bill to amend its restitution laws setting a new 30-year limit on any claims to property stolen by Nazi Germany. This new bill effectively prevents Holocaust survivors from recovering property, including art, seized during and after the Second World War. Read more here and here.
United States District Court allows law school to conceal a mural
The United States District Court has ruled in favour of the Vermont Law School, allowing the school to erect acoustic panels to permanently conceal Samuel Kerson’s mural portraying ‘animalistic depictions of enslaved African people.’ The artist sought to rely on the Visual Artists Rights Act (VARA), arguing that concealing the work would amount to ‘a modification or destruction of the artwork in violation of the artist's right of integrity.’ The court found that ‘VARA does not protect against the concealment or removal from display of artworks,’ dismissing Kerson’s order for a permanent injunction. Read more here and here.
Tunisian Pavilion accused infringed of copyright
The French-Tunisian street artist eL Seed has accused the Tunisian pavilion of copyright infringement for the stylised Arabic calligraphy design on display at Expo 2020 Dubai. The artist renowned for his large-scale calligraphic work has argued that the works that he provided in his initial proposal has been used without his approval. The concept creator at Dix Versions, the creative agency responsible for the façade has made a statement claiming, ‘we did not copy an entire wok by him, and so we did not need to ask his permission.’ eL Seed is currently perusing legal action against Dix Versions. Read more here.
Artwork constructed of porcelain toilets have been protected by the First Amendment
Artist Frederick “Hank” Robar’s porcelain garden made of repurposed toilets has been deemed a form of artistic expression which merits First Amendment protection in the recent New York Federal District Court ruling. Village of Potsdam Board of Trustees claimed that the work was “junk” for the purpose of the Junk Storage Law, therefore mandating its removal. The court determined that the work was a form of “protected speech,” entitling Robar to a preliminary injunction against the removal of the artwork. Read more here.
The Metropolitan Museum of Art is reviewing antiques as a matter of restitution
The Metropolitan Museum of Art is currently reviewing 45 highly significant artifacts hailing from the Khmer Empire that were allegedly stolen from Cambodia in the late 20th century. Phoeurgn Sackona, Cambodia’s minister of culture and fine arts made a statement requesting that ‘the Metropolitan Museum to act as a moral and just leader in the global museum community and to return our precious looted antiques to our people.’ Read more here and here.
The Tate has become the first art institution to obtain custodianship of an artwork
Purchased at Frieze London, the Frieze Tate Fund 2021 acquired custodianship and instillation for the work ‘The Echo of an Ancient Form of Knowledge (Ru k’ ox k’ob’el jun ojer etemab’el) (2021)’ by Mayan artist Edgar Calel. The artwork features a collection of large stones with various fruits and vegetables meticulously arranged on top as alters and is one of seven versions produced by the artist. As part of the 13-year custodianship deal, the museum has agreed to support the Kaqchikel people whose ritual practice is instrumental to the work. “I am so thankful to our ancestors for giving us the license and allowing us to spread their knowledge and wisdom in up to seven different places across the globe.” Calel told Artnet News. Read more here.
Injunction lifted on the display of KAWS exhibition in Singapore
A Singapore based non-for-profit The Ryan Foundation has accused Hong Kong based creative agency AllRightsReserved Limited (ARR) for a breach of confidence and intellectual property rights regarding a large inflatable figure currently on display in Singapore by the renowned artist KAWS. The Ryan Foundation claimed that it had commenced discussions with ARR in 2019 regarding bringing KAWS’ inflatable figures to Singapore in addition to commencing preliminary merchandise design ideas however as an agreement was not formed, the project was set aside. The injunction ordered by the Singaporean court temporarily suspending the sale and distribution of merchandise, promotional activities and the display of the work has since been lifted. Read more here.