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Mercedes Fight with Muralists Tests Building Copyright Bounds

April 23, 2019, 4:35 PM

A legal fight between Mercedes Benz USA LLC and a quartet of artists may help decide whether works on building exteriors deserve copyright protection.

The automaker is seeking judgments in three lawsuits that Instagram photos of its G 500 luxury truck in front of colorful murals painted on Detroit buildings don’t infringe four graffiti artists’ rights. The carmaker has cited a 1990 federal law that extended copyright protection to architectural designs but exempted photos and paintings of the outside of buildings visible from public spaces.

The conflict tests the question of whether works that might otherwise be eligible for copyright protection fall outside the scope of the law if they’re publicly visible on the outside of buildings to which they’re attached.

The architectural exemption provision isn’t clearly defined, intellectual property attorney Sergio Muñoz Sarmiento, who specializes in artists issues, said.

“There is a gray area,” Sarmiento said. “What isn’t clear is whether that exemption covers anything permanently attached to the building.”

Copyright attorney Thomas Maddrey, who has represented commercial photographers and artists, agreed the law is unclear. “I could see different circuits having different opinions,” he said.

Zero-to-Lawsuit

Mercedes posted six pictures showing its G 500 truck on Detroit’s streets in January 2018. Three showed colorful murals by Jeff Soto and Maxx Gramajo; Daniel Bombardier; and James Lewis in the background, occupying at least a similar share of the images as the vehicle. Attorney Jeff Gluck, representing the four muralists named in the suits, contacted the company about the unlicensed use of the murals in March 2019.

Mercedes said it immediately removed the posts as a “courtesy,” but that Gluck continued an “aggressive shakedown effort.” Gluck requested information on other art in the ads, threatened to “expose” the company, said “the artists are not particularly interested in settling” out of court, and cited $80 million in G Series revenues as a “benchmark for damages,” Mercedes alleged in the lawsuits and a statement.

“These threats were not about protecting artists’ rights or ensuring just compensation: they were about disrupting Mercedes-Benz’s business and obtaining a cash windfall,” the company said in a statement.

Gluck called the allegations of a shakedown “nonsensical,” noting Mercedes sued less than a month after initial contact. He characterized the information requests as informal discovery, saying the artists didn’t want to settle without ensuring others in similar positions weren’t left out. The artists are arguing, in a planned motion to dismiss, that Mercedes has used other murals in promotional materials, and that “it’s unclear what criteria MBZ uses to determine when to compensate an artist for their work.”

The artists also said in their dismissal motion that Mercedes couldn’t claim an “imminent threat” of litigation as required for a declaratory judgment suit. The artists can’t sue since their murals haven’t yet been registered at the Copyright Office, they said.

Architectural Attachments

Mercedes argues that the murals were among hundreds painted as part of a broader festival called Murals in the Market to create an integrated, aesthetically pleasing cityscape. That functionality and the organizers’ guidelines mean the murals all fall under the 1990 law’s architectural works photography exemption, it said.

Columbia University intellectual property law professor Philippa Loengard, who focuses on visual arts and entertainment, said that argument doesn’t square with the law’s definition of an architectural work.

“To me it’s very clear the drafters meant ‘edifice,’ or plans or drawings of the edifice. Not ‘anything attached to the edifice,’ or ‘painted onto the edifice,’” she said. “I don’t think anyone would argue that a mural is an architectural element.”

In one of the few examples of courts weighing a similar question, a California federal judge denied General Motors Co. summary judgment against muralist Adrian Falkner. His 2018 suit, also filed by Gluck and still pending, targeted GM’s picture of a Cadillac in front of his mural on a Detroit parking garage roof.

That ruling cited the Ninth Circuit’s 1998 decision in Leicester v. Warner Brothers as the only precedent on art attached to an architectural work. The appeals court found that streetwall towers shown in the movie “Batman Forever” fell under the architectural works exemption. But the judge in Falkner’s case said that unlike Falkner’s mural, the streetwall towers were built in tandem with the building and shared design elements. He also noted each of three judges on the Ninth Circuit panel suggested a different application of the law.

The artists, in their planned motion to dismiss, said the 1990 changes only expanded protection to architectural works and that architectural elements must possess creativity and originality to fall under copyright law—requirements that Mercedes’ complaints ignored.

Gluck called Mercedes’ contention “a dangerous argument” motivated by a desire to let the company commercially exploit all street art.

“If companies could go outside and pick and choose artwork to sell their product without asking, it would discourage creating outdoor art, and we stand to lose an important and beautiful part of their culture,” he said.

Sarmiento agreed others would exploit street art if Mercedes won, and said companies’ apparent desire to use such works strengthens the artists’ case that their work has commercial value warranting protection. But he said one could argue that a mural is permanently absorbed in the architectural structure. Sarmiento said the artists’ position incentivizes property owners who want to exploit their property to use murals as a partial shield, essentially thwarting the intent of the architectural works exemption.

Street Art Fight

Mercedes is also arguing that its use of the murals were fair uses of copyrighted material, but copyright attorneys are skeptical.

Corporate brands’ use of street art has fallen in the cross-hairs of copyright litigation in recent years. American Eagle Outfitters Inc. quickly settled with artist David Anasagasti over widespread ads featuring models in front of his Miami mural. Other settled cases involved graffiti featured in the background of a promotional video, and copied onto purses or a Katy Perry red carpet dress.

“There have been many cases by graffiti artists, and they’ve generally prevailed,” Helene M. Freeman of Phillips Nizer LLP said. “I don’t think fair use is a claim that can be articulated here. Mercedes used the art for what it was.”

Mercedes disagrees. In its complaint, it cited motion-simulating blurring, angle, cropping and perspective it used as artistic choices that create a different aesthetic and effect than the mural itself.

Copyright attorneys, including Loengrad, Sarmiento, and Maddrey, considered the slight blurring or obstructions insufficient to swing a fair use analysis. Maddrey called the photos “pretty egregious” and said big companies know their photographers should secure rights before shooting.

But regardless of how courts apply the established—if subjective and often contentious—fair use test, a ruling on whether artistic works on the outside of buildings could have more far-reaching ramifications.

“It seems like something Congress or the Supreme Court would have to address,” Maddrey said.

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com