U.S. District Judge Stephen V. Wilson of the Central District of California recently issued an order granting-in-part and denying-in-part a motion for summary judgment made by Detroit, MI-based automaker General Motors in a copyright case brought by a Swedish artist who painted a street mural GM used in its marketing materials. Although Judge Wilson granted summary judgment in favor of GM on the plaintiff’s Digital Millennium Copyright Act (DMCA) and punitive damages claims, the artist’s claim for copyright infringement have been allowed to proceed to trial.
The case stems back to a complaint filed this January in Central California by Adrian Falkner, a Swiss who was invited by a Detroit art gallery to paint a mural on a private parking garage as part of a project coordinated by the art gallery back in 2014. In November 2016, GM launched a media campaign titled The Art of the Drive as part of an effort to drive sales for its Cadillac brand of vehicles, especially the Cadillac XT5. Still photography used by the GM campaign included the Falkner mural and the artist alleged that the mural was the centerpiece of the campaign because it was the only creative element dressing the car and the campaign’s tagline was designed to draw a connection to the XT5 and the mural artwork depicted next to it in the campaign materials.
This June, GM filed a motion for summary judgment to dismiss all claims against it in the case. GM argued that Falkner’s copyright claim failed as a matter of law because the artist’s mural was incorporated into a building; citing to the Ninth Circuit’s 2000 decision in Leicester v. Warner Bros., GM argued that reproducing photographs of a building including any artistic works that are part of the building is not copyright infringement pursuant to 17 U.S.C. § 120(a). Plaintiff’s DMCA claim failed as a matter of law, GM argued, because the mural spanned two walls and the photographer did not intentionally remove Falkner’s artist signature, “SMASH 137,” from the mural because the photographer wasn’t aware that the signature was on the wall not appearing in the photograph. GM also moved that the court deny Falkner’s request for punitive damages as such damages are not available under the Copyright Act.
Judge Wilson’s order on summary judgment acknowledged that this case presents a complex issue in asking the court to decide if Section 120(a) limits the copyright protection of a pictorial, graphic and sculptural (PGS) work, which is itself protected under 17 U.S.C. § 102(a)(5), when that PGS work is physically connected to an architectural work. In interpreting Leicester, Judge Wilson noted that the doctrine of conceptual separability, in which original artistic works that are not functional or utilitarian to the architecture were independently protected under Section 102(a)(5), requires that the PGS work in question must be an independent architectural work or part of an architectural work for the Section 120(a) limitation to copyright to apply.
While the parking garage itself is an architectural work, Judge Wilson stated that “[t]here is… no indication that the mural was designed to appear as part of the building or to serve a functional purpose that was related to the building. Instead, there is undisputed evidence that Plaintiff was afforded complete creative freedom with respect to the mural, and that the design of the mural was inspired by Plaintiff’s prior work.” The facts of this case were therefore entirely distinguishable from those in Leicester and the court couldn’t reach the issue of whether the mural was part of the architectural work in order for the Section 120(a) limitation to apply.
Judge Wilson did find in favor of GM on the DMCA claim, noting that the undisputed record before the court wouldn’t lead a reasonable jury to find that copyright management information was removed or altered. Although the photographer framed the photograph in a way that excluded such information, such exclusion wasn’t considered to be either removal or alteration for purposes of the DMCA claim. Judge Wilson also granted summary judgment to GM on punitive damages, finding that numerous Ninth Circuit cases have found that such damages are not available for copyright infringement and that the one case cited by the plaintiff in support of punitive damages was an outlier
J. Michael Keyes, intellectual property attorney and partner at Dorsey & Whitney, offered the following quotes on the news of Judge Wilson’s order on summary judgment:
“Although the court found the parking garage to be an ‘architectural work,’ the court held there are triable issues of fact that simply can’t be painted over at this time. It will be up for the jury to decide whether the mural is part of the architectural work (in which case there is no infringement), or whether the mural stands on its own (in which case there would be infringement). First, the takeaways at this stage are this: Graffiti artists and other muralists will likely be buoyed by–and interested in–the court’s decision. It opens the door for them to bring copyright claims for works of art painted on certain architectural works….potentially. Second, the exact scope of protection for these types of artistic works painted on buildings is still uncertain. Assuming the case doesn’t settle, the jury will decide the issue here. It may or may not side with artist as to whether the artistic work is “separable” from the architectural work upon which it is painted. This is a copyright issue that the Ninth Circuit will have to sketch out for us in more detail before too long.”