Art Case Update - September 2022
Image: Trade mark number 2025772 lodged by Pest Control office Limited
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 Paralegals, Mia Schaumann and Jess Olford report on Banksy’s ongoing trade mark challenges in Australia, the latest updates on proceedings brought against Australian art dealer Tristian Koenig, and the UK High Court’s novel approach to granting an order of service – by NFT.
Australia
Banksy’s trade mark battle continues in Australia
Street artist Banksy’s long running battle for trade mark registration in Australia continues. The UK-based street art greeting card company, Full Colour Black Limited (Full Colour Black), recently lodging trade mark oppositions with IP Australia against the trade mark applications ‘MAN,ARM OUTSTRETCHED,HOLDS FLOWERS’ and ‘GIRL,ARM OUTSTRETCHED WITH BALLOON.’ Banksy’s legal entity, Pest Control Limited (Pest Control), submitted the applications for the two marks back in 2019. These applications were initially met by Intentions to Oppose which were filed by Full Colour Black in May 2021.
Represented by Melbourne Based Law firm By George Legal, Full Colour Black has requested a hearing, the date of which is yet to be scheduled by IP Australia. Full Colour Black have successfully contested similar trade mark applications in Europe for the works ‘money sign’ and ‘flower bomber,’ identified by their trademark numbers 017981629 and 012575155 respectively. By George Legal have said they’re going to be relying on similar legal grounds for this opposition.
Notorious for his politically provocative works, Banksy’s hidden identity is the locus of the legal contention. Amongst other grounds, the greeting card company is arguing that Pest Control, the applicant responsible for lodging the trade mark, is not the true owner of the trade marks. The trade mark agreement between Banksy and Pest Control is allegedly signed by a pseudonym, and on this basis Full Black Limited has claimed that IP Australia cannot be reasonably satisfied by the agreement that the real Banksy has authorised the applications to be filed. You can read our past coverage here and more on the case here.
Multiple proceedings on foot against art dealer Tristian Koenig
Multiple proceedings are currently on foot in the Melbourne Magistrates Court against the disgraced art dealer, Tristian Koenig. After failing to attend a recent summons hearing, the Victorian Police have issued a warrant out for his arrest. Koenig’s next hearing is scheduled in the Melbourne Magistrates Court on 13 September 2022.
In a separate action against the dealer, the Victorian Civil and Administrative Tribunal has ordered Koenig to pay the money owed to Melbourne based artist, Harry Mcalpine. Read more here and here.
Recent High Court judgement leaves the status of patent law unresolved
The High Court recently dismissed an appeal from the Full Federal Court concerning the patentability of computer implemented inventions (CIIs). The appellant, a company responsible for manufacturing electronic gaming machines (EGMs), lodged patent applications for a number of additional gaming features. The question before the Court was whether the CIIs could be ‘described as an advance in computer technology.’ Though ultimately dismissed, the High Court’s 3-3 split highlights the level of uncertainty around the patentability of CIIs. Read more here and here.
International
Maurizio Cattelan, Daniel Druet and “Exclusive” Authorship
We previously reported on French sculptor Daniel Druet’s proceedings against Italian artist Maurizio Cattelan’s gallery, Galerie Emmanuel Perrotin and the Monnai de Paris. Druet alleged that he should be recognised as the “exclusive author” of nine works in which he created moulds and prototypes for, despite being paid for his work when they were made. The 3rd Chamber of Paris Judicial Court has now dismissed Druet’s claim, with three judges ruling it “inadmissible” and ordering payment of 10,000 euros to Galerie Emmanuel Perrotin and the Monnaie de Paris.
The claim was held to be inadmissible as the claim involved two galleries who respectively represented the artist and exhibited his works, rather than a claim against Cattelan himself. Because of this, there has been commentary by Druet’s lawyers that the central question of the case – the authorship of the work– was not addressed. However, the Court held that as Druet did not limit his wish to be named “exclusive” author of only the wax moulds, this would mean falsely denying that Cattelan had any hand in making the works, from conception to execution.
Expanding on this reasoning, the judges held that Cattelan had complete and final control over the installation and the final look of each work. They also noted that Druet had received precise instructions regarding the look and size of the works. Because of this, Druet “was in no position – nor did he seek to do so – to take the slightest part in the choices relating to the scenic setting of the said effigies… or the content of the possible message to be conveyed through this staging.” The fact that Druet had received these instructions was uncontested by the parties, and was a main factor in why Druet could not be named the “exclusive” author of the works.
In further news on Maurizio Cattelan, The United States District Court for the Southern District of Florida has denied Cattelan’s motion to dismiss a copyright claim brought by American artist Joe Morford, regarding the similarities between his work Banana Orange and Cattelan’s work Comedian.
Both works depict a banana duct-taped to a wall. In Morford’s work the banana is synthetic and is displayed on a green panel as part of a vertical triptych, whereas in Cattelan’s work the banana is real and displayed on its own. The District Judge held that the similarity of position and use of duct tape to affix the banana to the wall met the requirements of originality, and that the works were substantially similar enough to allow the claim to proceed. Read more here and here.
Ninth Circuit Reverses Opinion on Picasso Copyright Case That Said French Law Was Not Enforceable in U.S. Under ‘Fair Use’
The U.S. Ninth Circuit Court of Appeals has reversed the District Court’s ruling that an American art editor, Alan Wofsy did not violate French law in using photos by Christian Zervos of Pablo Picasso’s works in publications without permission under the U.S. doctrine of fair use.
This long-running case has its origins in 1932, when Zervos, a photographer, created a catalogue raisonné of over 16,000 images of Picasso’s paintings. The catalogue was published by Cahiers d’Art and is known as the Zervos Catalogue. The copyright to all intellectual property of Cahiers d’Art was bought by a French citizen, Yves Sicre de Fontbrune in 1979. In 1991 Wofsy received permission from Picasso’s estate to publish a new catalogue raisonné, The Picasso Project which contained reproductions of photographs that were published in the original Zervos Catalogue. In 1996, two copies of The Picasso Project were seized by French police at the behest of de Fontbrune, who then sued Wofsy for copyright infringement.
In 1998 a French trial court ruled that the reproductions of the images contained in the Zervos Catalogue were not eligible for copyright protection as they were being used for documentary purposes. However, this decision was overturned by the Paris Court of Appeal in 2001, when it was found that publishing the photographic reproductions did infringe on Sicre de Fontbrune’s rights. Wofsy was prohibited from reproducing any more works and was subject to “astreinte”, which allows for damages to be claimed for any further infraction. In 2012 de Fontbrune filed a claim with the enforcement division of the French trial court, which found that Wofsy had violated the 2001 appeal ruling by reproducing copyright images in the Zervos catalogue, and ordered him to pay 2 million euros.
In 2013, the case was brought before the Superior Court of Alameda County by de Fontbrune in the hopes of utilising California’s Uniform Foreign-Country Money Judgment Recognition Act Cal. Civ. Proc. Code §§ 1713-1725, (Recognition Act). However, a defence under this Act allows an American court not to recognise a foreign judgment if “the judgement or the cause of action or claim for relief on which the judgment is based is repugnant to the public policy of this state or of the United States.” (Cal. Civ. Proc. Code § 1716(c)(3)). After being moved to the federal court, and having found that the “astreinte” was not a fine or penalty and therefore able to be recognised under the statue, the U.S. District Court held that the French decision was “repugnant” to U.S. law; the U.S. doctrine of fair use applied even though the work was commercial in nature, and the ruling went against the principle of freedom of speech.
In 2022 on appeal to the Ninth Circuit, the judges reversed the U.S. District Court finding that the 2001 French appeal judgment was “repugnant” to US law, holding that public policy is violated only in circumstances that would be dangerous to public morals, or undermine security of individual rights or the administration of law. The Court also held that the U.S. doctrine of fair use, even if applied, would not have assisted Wofsy, as the photographs were commercial in nature and exact copies of the originals taken by Zervos. Read more here.
The High Court of England and Wales is stepping up to meet contemporary legal challenges as it grants an order of service by NFT
In a global first, the High Court of England and Wales has granted an order of service by non-fungible token (NFT). Though novel in its approach, Justice Trower found this to be an appropriate means of service in light of the particularities of the case. This outcome demonstrates that UK courts are open to evolving their procedures using new technology.
In this case the claimant, Mr Fabrizio D’Aloia, alleged that he was induced to transfer cryptocurrency from his Coinbase and Crypto.com wallets to the trading website ‘www.tda-finan.com.’ According to D’Aloia, the website falsely represented that it was connected with the legitimate US-regulated brokerage, TD Ameritrade. Evidence provided by D’Aloia to the Court indicated that the website, which was registered in Hong Kong, misused the well-known TD Ameritrade logo to “con” investors out of funds. An intelligence investigator engaged by the claimant was able to ascertain that D’Aloia’s funds, valued at 2.175 million dollars in USDT and USDC crypto currency, was transferred to a number of private addresses and exchanges.
The claims brought by D’Aloia against the first defendant, those behind the Hong Kong registered website, included fraudulent misrepresentation, deceit, unlawful means conspiracy and unjust enrichment. Justice Trower ultimately held that the claim is to be governed by English law by virtue of the fact that England is where the misrepresentations were made, where the asset was located at the time of misappropriation and where the claimant is domiciled. Justice Trower noted that as this is only a without notice application, meaning that an application can be made without notice to the respondent. This is contrary to the usual assumption that an order cannot not be made against a party, without that party having an opportunity to be heard. Though this is the case, Trower went on to clarify it ‘remains open to any one of the defendants to argue that the court does not have the jurisdiction which is sought to be exercised.’
Another point of contention which was addressed by Justice Trower, was whether there was any way for the Court to justify granting permission to serve out of the jurisdiction pursuant to Practice Direction 6B (the Directions). Rachel Muldoon, who appeared on behalf of D’Aloia, relied on a claim in tort law, on the grounds that ‘damage has been or will be sustained, resulting from an act committed, or likely to be committed with the jurisdiction, or damage was sustained or will be sustained within the jurisdiction.’ The judge accepted gateway 9 as applying to the case at hand, noting that other gateways may also be applicable.
Regarding the second to seventh defendants who are claimed to be the controllers, or the operators of the crypto exchanges, Justice Trower held that the principal gateway available against them is ‘as constructive trustees or as trustees of a resulting trust, where the claim arises out of…acts committed or events occurring within the jurisdiction, or relates to assets within the jurisdiction.’ A constructive trust claim, which gives rise to proprietary rights, was held to be available given that it was possible to trace the misappropriated crypto assets. Though ultimately not satisfied that damages would be an adequate remedy, in the judgement Justice Trower clarified that ‘all that is being sought is freezing relief in respect of crypto assets held in wallets.’
Regarding the application for service on the first defendant, the judge allowed for service by both email and NFT. In his judgement, Trower approved of the court’s use of the NFT, explaining it to be ‘a form of airdrop into the tda-finan wallets’ which will have the effect of ‘embed[ding] the service in the blockchain.’
The law is often criticised for lagging behind the societal appetite of the times. This case demonstrates the willingness of UK courts to step up to contemporary legal challenges faced in the digital space. Read more here.
Bill proposes to tighten federal regulation around crypto assets
Senators Kirsten Gillibrand and Cynthia Lummis recently proposed S. 4356 - the Responsible Financial Innovation Act (RFIA), which aims to establish regulatory parameters for digital assets in the US. The Bill covers a detailed scope of digital assets and blockchain technology, addressing the taxation of digital assets and decentralised autonomous organisations, consumer protection standards, stable coin regulation, as well as a number of other financially pertinent areas. Though Congress is yet to initiate hearings, the proposed Bill is the first attempt to establish federal regulation around crypto products in the U.S. Read the Bill here.
UK report addresses how intellectual property law will address new technologies
The UK’s Intellectual Property Office (UKIPO) has released a consultation outcome setting out the ways in which the UK’s intellectual property system will deal with the emergence of new technologies. Titled “Artificial Intelligence and Intellectual Property: copyright and patents: Government response to consultation,” the report outlines three specific focus areas: copyright protection for computer-generated works without a human author, licensing or exceptions to copyright infringement for text and data mining (TDM) which is often significant in AI use and development) and patent protection for AI-devised inventions. The report proposes to introduce a new copyright infringement exception which allows TDM for any purpose. Read the consultation outcome here.
Germany and Nigeria Plan to Sign an Agreement on the Return of Benin Bronzes From Berlin
On 1 July 2022 the German foreign minister, Annalena Berbock, and culture minister, Claudia Roth, together with their Nigerian counterparts Zubairu Dara and Lai Mohammed signed a restitution agreement, which turned over 1100 artefacts into Nigerian property with immediate effect. Two Benin bronzes were physically handed over to the delegation, with the rest of the works to be individually negotiated and either returned to Nigeria or remain in German museums and galleries under loan.
Germany’s initial repatriation announcement in 2021 also prompted other museum institutions to scrutinise their own collections through the lens of colonialism. This has resulted in the Smithsonian Institution and the Glasgow Museum also returning Benin bronzes to Nigeria. Read more here and here.