Art Case Update - December 2022
Donald Judd sculptures at the Museum of Modern Art in 2020.
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 report on the Australian Government’s National Indigenous Action Plan, the latest updates on Banksy’s European trade mark dispute and the Singapore High Court’s recognition of an NFT as property, plus more.
Australia
The Australian Government has released a National Indigenous Visual Arts Action Plan
The Australian Government recently released The National Indigenous Visual Arts Action Plan (Action Plan/Plan) which aims to prioritise the visual arts industry of Aboriginal and Torres Strait Islander peoples over the next five years. The Action Plan proposes to support Indigenous artists, organisations and businesses in their ability to ‘document and tell stories, maintain and share culture, promote the understanding of history and connection to Country, and drive economic opportunity.’ To substantiate the plan, government has committed to provide ongoing funding of $5 million per year which is to be invested in the initiatives set out by the Australian Government in consultation with artists, art centres, Indigenous visual arts service organisations, commercial galleries, auction houses and state and territory governments.
The Action Plan is a response to the House of Representatives Standing Committee on Indigenous Affairs’ 2018 Report on the Impact of Inauthentic Art and Craft in the style of First Nations Peoples (the Report) which detailed the widespread circulation of counterfeit works which claim to be produced by First Nations artists. As the artwork of Aboriginal and Torres Strait Islander peoples is intimately connected with cultural identity, history, connection to Country and stories, the Report noted that the proliferation of inauthentic works has a particularly corrosive effect on the integrity of indigenous communities.
The Action Plan outlines a number of deliverables to more adequately protect the concerns raised in the Report. Action 8 of the Plan proposes the introduction of a wider application of Indigenous product authentication and labelling, including Certification Trade Marks (CTMs) which will be instituted in consultation with various facets of the indigenous community. CTMs, regulated by the Australian Competition & Consumer Commission (ACCC), uniquely identify a good or service, assuring that they meet certain standards such as geographic origin or manufacturing method. This would allow consumers to correctly identify authentic products whilst recognising the cultural value of Indigenous visual arts.
Further to this, the Plan seeks to expand the implementation of the existing Indigenous Art Code (the Code) which provides a standard for ethical conduct of dealers of Indigenous visual arts. Instituted by the Aboriginal and Torres Strait Islander Arts sector and wider community, the Code promotes ‘fair and ethical trade in Aboriginal and Torres Strait Islander visual artwork; transparency in the process of promoting and selling authentic artwork; [and] efficiency and fairness in how disputes are dealt with.’ Perhaps most notably, the Australian Government ‘will undertake a scoping study to identify possible models of stand-alone legislation to protect Indigenous Knowledge,’ which would provide a clear basis for legal recourse in cases of cultural imitation.
The Attorney General has called for a review of the Australian copyright regime
The Australian Government has commenced undertaking a review of the Australian copyright regime to establish more proportionate and effective enforcement mechanisms and ensure that the Australian copyright framework adequately addresses contemporary demands. This is a response to the recent Copyright Enforcement Review Issues Paper which was published in early December. As a next step, the government is calling on ‘members of the public to understand current and emerging copyright enforcement priorities and challenges.’
The government is currently seeking a range of perspectives from the public. Submissions from the public will be accepted up until 7 March 2023. Read the issues paper here.
If you are an individual or an organisation based in Australia and currently dealing with copyright infringement and enforcement issues within you practice and would like assistance with preparing a submission, please get in touch with us at info@guestworkagency.art.
International
The European Intellectual Property Office reversed its decision on Banksy’s trade mark
In the most recent iteration of the Banksy trade mark dispute in Europe, the Fifth Board of Appeal (Board) reversed the European Union Intellectual Property Office’s (EUIPO) 2021 decision which invalidated registered trade mark No. 017981629, Banksy’s Laugh Now, which depicts a monkey wearing a sign around his neck.
In the initial proceeding, greeting card company Full Colour Black Limited (Full Colour Black) filed an application of invalidity against the trade mark lodged by Banksy’s representative, Pest Control Office. Full Colour Black alleged that the trade mark had been filed ‘in bad faith’ pursuant to Article 59(1)(b) of the European Trade Mark Regulation (EUTMR). They contended that Banksy sought to use trade mark law as a means of circumventing 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. Given that anonymity is central to Banksy’s allure, disclosing his legal name would prejudice his persona. Though the EUTMR Cancellation Division ruled in favor of the greeting card company finding the trade mark invalid on grounds of bad faith, the Board of Appeal reversed this outcome.
For bad faith to be made out under Article 59(1) EUTMR, the onus is on the Cancellation applicant to prove that the application was made ‘without any intention to use the trade mark in relation to the goods and services covered by the registration.’ Further, there is a presumption of good faith until the contrary is proven. In the initial proceeding, Full Colour Black argued bad faith on a number of grounds, notably that the sign has been publicly used by virtue of it being a work of graffiti. Additionally, they argued that Banksy permitted the free public dissemination of the sign via his website. On these arguments, the Board noted that the ‘use by third parties has been expressly limited to non-commercial use’ and though some entities used the sign in a commercial context, this does not demonstrate that Banksy authorized its use in this manner. Further, once an artwork is registered, the holder of the trade mark may withdraw consent at a later stage.
As trade mark law is an ‘indicator of commercial origin’ which allows a sign or work to be distinguished from other goods or services, the authorisation of its non-commercial use does not warrant a finding of bad faith. On this, the Board clarified that irrespective of the public availability of the sign, it ‘cannot be inferred that [Pest Control Office] never had the intention to use the contested mark at the relevant date.’
In regards to the issue of anonymity, Full Colour Black argued that Banksy was using trade mark law to circumvent his inability to enforce copyright, as to do so would necessitate revealing his identity which is paramount to his artistic persona. On this point, the Board stated that ‘even if [this] opinion would be true, does not at all show that he was not willing to use the contested mark when it was filed.’ They went on to say that as ‘copyright law and trademark law protect different aspects [they] may therefore be accumulated with respect the same work or sign.’
The Board ultimately found that Full Colour Black had not clearly ‘justified or explained’ the ground of invalidity on the basis of bad faith, reversing the EUIPO’s original decision. This ruling is significant in that it shows that it is possible for the applicant to retain anonymity while having protection under European trade mark law. Read more here.
US courts determine the legalities of reproducing tattoo works
The jury of the Southern District Court of Illinois has ruled in favour of tattoo artist Catherine Alexander in a landmark copyright dispute. The artist filed a claim against Take-Two Interactive Software Inc. (Take-Two) and World Wrestling Entertainment Inc. (WWE) for the unauthorised reproduction of five tattoo works on WWE wrestler Randy Orton whose image was rendered as a video game avatar.
Alexander alleged that the defendants infringed on her copyright pursuant to 17 U.S.C. §501, claiming that she had not granted permission to ‘copy, duplicate, or otherwise reproduce’ any of her copyright protected designs. As the works were already granted legal protection, the onus rested on Take-Two and WWE to make out the available defences.
Take-Two and WWE attempted to rely on the fair-use defence which allows copyright protected works to be reproduced for limited purposes under 17 U.S.C. §107. The defendants argued that their use of the work was ‘transformative,’ depicting Orton in a realistic manner, which was distinct from Alexander’s tattoos which were originally created to embody the personal expression of the wrestler. At trial, this argument was rejected.
The defendants also attempted to rely on the de minimis defence, arguing that the infringement was insignificant. However, Judge Yandle dismissed this, stating that ‘as a matter of law, the de minimis defense is not viable in this case and Defendants cannot assert the defense at trial,’ as the defence only operates in cases where insignificant components of works are copied, not where works are copied in their entirety.
Though ultimately no damages were awarded, this case sets a US precedent for the protection of tattoo imagery in the rapidly expanding digital sphere. Read more here.
Parties present oral arguments in front of the US Supreme Court in the Andy Warhol copyright dispute
The protracted legal dispute concerning Andy Warhol’s infamous Prince work has recently come before the US Supreme Court. By way of background, in 1984 Goldsmith licensed her photo of Prince to Vanity Fair magazine as a reference image. Unbeknown to Goldsmith at the time, the image was used by Andy Warhol to create an illustration for Vanity Fair’s November 1984 issue. Goldsmith has subsequently contested the use of her image, claiming that it infringed on her copyright. The Warhol Foundation has sought to overturn the United States Court of Appeals 2nd Circuit judgement which ruled in favor of Goldsmith.
The landmark copyright case ultimately centers around the interpretation of the ‘fair use’ defence which allows works protected by copyright to be used for limited artistic purposes. Recently the Supreme Court heard oral arguments put forward by the parties, which will assist the court in reaching its final decision in June 2023. Read our past coverage here and more on the case here.
The Singapore High Court has recognised NFTs as property
In a case heard earlier this year, the High Court of Singapore granted an injunction to bar the potential future sale of a Bored Ape Yacht Club NFT (No. 2162) (BAYC NFT) which was used as collateral in a loan agreement between Janesh Rajkumar and the lender who goes by the pseudonym ‘chefpierre.eth.’ Contrary to the terms of the agreement, chefpierre.eth listed the NFT for sale on NFT marketplace Opensea when the loan was unable to be repaid. Rajkumar alleged that he had an ‘equitable proprietary claim’ over the Bored Ape NFT, and that the defendant was liable to him in the tort of conversion, breach of contract, and unjust enrichment.
Recently, the Singapore High Court released the determination where Justice Lee Seiu Kin considered whether ‘the Bored Ape NFT, or NFTs in general, are capable of giving rise to proprietary rights which could be protected by an injunction.’ While Justice Lee Seiu Kin agreed that ‘the balance of convenience lay in favour of granting the injunction,’ she noted that ‘what is truly unique, and irreplaceable here is the string of code that represents the Bored Ape NFT on the blockchain’ and not the picture of the Bored Ape NFT itself as it ‘exists as an image file which can be copied many times over.’ As the identity of the defendant remains unknown, the Judge allowed for substituted service of the statement of claim and any orders out of jurisdiction, delivered via the defendant’s Twitter and Discord Accounts, and on the messaging function of the Defendant’s cryptocurrency wallet address. You can read the full judgement here.
An AI assisted comic book has obtained copyright
New York based AI artist and researcher, Kris Kashtanova, recently obtained copyright registration from the US Copyright office for her AI generated graphic novel Zarya of the Dawn. As a self-proclaimed ‘part-time prompt engineer,’ Kris Kashtaova utilised the AI program Midjourney which allows users to input text prompts to generate imagery. As Kashtavova’s application stated that the work was ‘AI assisted,’ as opposed to AI generated, whether this determination holds influence for works produced by AI remains unclear. Read more here and here.
The Judd Foundation has filed claims against two galleries responsible for damaging an infamous work
The Judd Foundation, the body responsible for preserving Donald Judd’s legacy, has filed two lawsuits in the Manhattan Supreme Court against Kukje Gallery and Tina Kim Gallery, claiming that the galleries left fingerprints on the surface of a work which the galleries had held on consignment. The Foundation has alleged that the galleries have caused “permanent” and “irreversible” damage to the 1991 Untitled aluminium and Plexiglass box which featured as part of the Menziken series of boxes. Though they have received USD $680,000 of the works total USD $850,000 value from the insurer, the Judd Foundation is seeking the remaining amount on the basis that the work cannot be sold. Read more here and here.
Italian Gallery has brought legal proceedings against Jean Paul Gaultier
The Uffizi Gallery has brought a legal action against luxury fashion house, Jean Paul Gaultier, for their reproduction of Botticcelli’s masterpiece ‘Birth of Venus’ on a number of garments from their Le Musée capsule collection. As the original work by Botticelli is no longer protected by copyright law, the gallery relied on Italy’s Cultural Heritage Code which requires authorisation for the use of images that fall within the ambit of ‘cultural assets’ under the Code. Since initiating legal proceedings, the pieces featuring the work have been removed from Gaultier’s online store. Read more here.
Legal proceedings brought against Yuga Labs for alleged misrepresentation
Yuga Labs, the company responsible for developing the Bored Ape Yacht Club NFT collection, is facing a class action lawsuit filed by two NFT collectors in the Federal Central District Court of California. The claimants allege that Yuga Labs engaged in unfair and deceptive conduct when the company paid celebrities to endorse their NFTs and failed to disclose that that they were being renumerated, artificially inflating the prices of the NFTs. Read more here.