The Art of Protecting Design

We are lucky to have another guest post from the wonderful Molly Torsen Stech: Knowing that other attorneys gracefully bridge the different bodies of intellectual property law more often than I, I recently found a post on the 1709 Blog very interesting; it considered the various ways in which interior design might be protected by intellectual property laws. In particular, it considered copyright, design rights, and trademark rights; and it generated some interesting comments.

Of course, “interior design” can comprise a wide array of meanings. Is it the totality of the look and feel of a single room in a home or is it a hotel’s overarching color scheme and atmosphere, complete with floral arrangements, wallpaper, and furniture style and placement that comprise interior design? Given that Serbia has recently amended its design law, Israel is considering a new design law, the European Commission may publish the results of an evaluation of the legal and economic aspects of its design protection in early 2016, and given the fascinating designs on view at the ongoing Expo in one of my favorite cities, some esoteric musings on the nexus of IP laws are perhaps warranted.

In struggling to understand the term “interior design,” it is also useful to spend some time parsing the term “industrial design” (and even just “design”), in an effort to understand how to differentiate design from art; and art from commercial identification, and so on. Needless to say, none of this is straightforward. As McKenna and Strandburg note, “[p]roduct design lies at the intersection of the patent, copyright, and trademark regimes. Useful articles often have both utilitarian and aesthetic aspects, and at times their features serve as source identifiers in the marketplace.” The United States handles these amorphous questions under copyright law, design patent law, and/or sometimes trademark (trade dress) law.

Unlike the European Union, and other intellectual property regimes, it does not have a sui generis design law under which to protect designs specifically, although the United States did recently implement the procedure-oriented and WIPO-administered Hague Agreement Concerning the International Registration of Industrial Designs. Given the nearly undefinable nature of “design,” and the often patentable or copyrightable objects to which design is affixed or in which it is embedded, it is of course arguable whether a domestic sui generis design law is helpful. The United States Patent and Trademark Office, in its definition of “design,” through the lens of design patents, notes:

Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.

But to obtain a design patent, the subject matter must be an article of manufacture (a tangible, man-made object); and it must be original, novel, non-obvious, and ornamental; the characteristics of these adjectives have developed through case law. U.S. copyright law does not protect design (with the improbable exception of a vessel hull design) embodied in a useful article (including clothing, furniture, and household appliances) unless the thing is expressed separately from that useful article. Fabric design, for example, can be copyrighted if it is creative enough, but a dress design made of that fabric cannot be copyrighted because U.S. copyright law perceives the dress as a useful article. 

Copyright does not protect the mechanical or utilitarian aspects of. . .works of craftsmanship. Copyright may, however, protect any pictorial, graphic, or sculptural authorship that can be identified separately from the utilitarian aspects of an object. Thus a useful article can have both copyrightable and uncopyrightable features. For example, a carving on the back of a chair or a floral relief design on silver flatware can be protected by copyright, but the design of the chair or the flatware itself cannot, even though it may be aesthetically pleasing.

The Alessi Fior d'Olio

What, then, does a company do with something like Alessi’s Fior d’Olio, designed by Marta Sansoni, for example? What is its protection strategy in the United States versus other jurisdictions, keeping in mind that forms of protection are generally not mutually exclusive?

The Fior d’Olio is essentially an olive oil receptacle, pourer and cap. The cap “fits into the neck of the bottle, allowing you to pour only as much as you need on your food, while controlling the oxidation process that begins as soon as the bottle is opened.” While its description sounds much more functional than it does aesthetic, the Fior d’Olio’s appearance is quite charming and elegant and its lever looks like an olive leaf. Is the leaf conceptually separable from the receptacle so as to achieve eligibility for copyright protection? Perhaps, theoretically, but the leaf piece in itself may not actually cross the threshold to adequate creativity for copyright purposes. Trade dress protection is likely unavailable since a consumer is not likely to immediately recognize the receptacle as an Alessi product (in comparison, consider the shape of a bottle of Dom Perignon champagne, which is recognizable as such.)

This musing is not so timely as it is summertime food for thought. Lawyerly creativity may reach its zenith in creating a strategy for protecting these gems of manufacture that overlap IP regimes, both within a single jurisdiction, and worldwide.

Auction Houses already moving against ART Act

Since the American Royalties Too Act was introduced in the US Senate at the end of last month, it appears that Sotheby's and Christie's have already stepped up their lobbying efforts in Washington DC, with Sotheby’s sending lawyers to visit some lawmakers in the Capitol. Indeed, the New York Times notes that "Sotheby’s and Christie’s have spent about $1 million in the last couple of years to hire well-known legal and lobbying talent in Washington..."

In light of the failure of the earlier version of the bill (the Equity for Visual Artists Act), supporters of the ART Act have a tough fight ahead to get it through. However, Sotheby's and Christie's clearly do not want to take any chances.

The auction houses' arguments against a resale royalty are essentially the same as those that have been trotted out in other countries around the world against equivalent laws: that the royalty would damage the art market with little benefit to the majority of artists. However, while there may be artists who support the claim that they see little benefit from the right, there has still not been conclusive evidence to show that an artist's resale right has an negative effect on an art market.

It is still early days. Will it be best arguments or most money thrown at the issue that wins?

Source: The New York Times, 23 March 2014

American Royalties Too Act

A quick note further to our story last week.

For those that are interested in reading the full text of the ART Act, which was introduced in the US Senate last week, it is now available here.

An Artist's Resale Right in the US?

A new bill was introduced in the United States this week which aims to grant a resale right to artists in the US.

The bill, called the American Royalties Too Act [giving it the oh so clever abbreviation of ART Act], was introduced by US Senators Edward J. Markey (Mass.) and Tammy Baldwin (Wisc.) and Congressman Jerrold Nadler (NY).

A press release from Senator Markey explains the bill as follows:

"Under current copyright law, visual artists – painters, sculptors, and photographers – are denied the ability to fully benefit from the success of their work over time. Unlike recording artists or publishers who, if successful, sell thousands of copies of their work and recoup a royalty from each purchase, artists sell their work only once. If they are successful, the price of their work increases but they recoup nothing if their original work is resold at a much higher price. The benefits derived from the appreciation in the price of a visual artists’ work typically accrues to collectors, auction houses, and galleries, not to the artist. In addition, United States artists are at a disadvantage in the global art market where more than 70 other countries have provided resale royalty rights for visual artists. The American Royalties, Too (ART) Act of 2014 remedies this inequity by providing a modest resale royalty right for visual artists. 

The ART Act would: 

· Provide a competitive resale royalty of five percent of the sales price (up to $35,000) for any work of visual art sold at auction for $5,000 or more. 

· The resale royalty [would apply] to any auction where the entity conducting the auction has sold at least $1 million of visual art during the previous year. 

· Royalties [would be] collected by visual artists’ copyright collecting societies who [would be required to] distribute the royalties to the artists or their heirs at least four times per year. 

· Allow US artists to collect resale royalties when their works [were] sold at auction in the EU and more than 70 other countries."

The bill comes a little more than two months after the release by the US Copyright Office of its Report on Resale Royalties which concluded (among other things) that:

• The current US copyright system leaves many visual artists at a practical disadvantage in relation to other kinds of authors. 

• To alleviate the effects of this financial disparity, Congress should consider ways to rectify the problem and to further incentivize and support the development and creation of visual art.

• The Copyright Office supports the consideration of a resale royalty right as one option to address the historic imbalance in the treatment of visual artists.

• There was no evidence that adoption of a resale royalty right would cause substantial harm to the US art market.

The bill is a revised version of the Equity for Visual Artists Act which was introduced by Nadler back in 2011 but stalled in Congress. Many might wonder what is different less than three years later. Well, now there is the US Copyright Office's Report (incidentally requested by Nadler in 2012), which, given its conclusions above, might provide the support needed to get the ART Act over the line.

Extremely Rare Bronze Apollo Statue Found in Gaza and Seized by Hamas

An extremely rare bronze sculpture of Apollo has been seized in Gaza. According to a report by the Guardian, the sculpture was found by a local fisherman about 100 yards off shore last August. The fisherman was unaware of the value of the piece and brought it home on a donkey cart. Eventually, after other family members took control, the piece turned up on eBay with an asking price of $500,000 and requiring that the buyer pick the piece up in Gaza.  However, $500,000 is considered far below the actual estimated value of the piece, which some are calling priceless. The eBay listing was quickly removed when the piece was seized by police from the Islamist group, Hamas, pending an investigation.

The Apollo statue is estimated to be over 2000 years old and is considered highly unique because it is a bronze cast, which is an unusual materials choice for a statue of that time.  Archeologists have yet to examine the piece, having only seen photos like the one above.  The statue will not make any further public appearances until the investigation is resolved.

Some debate whether the piece was actually found in the sea due to its clean condition and speculate that the piece was found on land.  This theory continues that the finder did not disclose the location in an attempt to circumvent ownership issues.  Either way there is speculation that the piece likely signals the existence of a far more extensive treasure trove, such as a buried temple.

Located on land, or at sea, this find presents legal issues that may be difficult to resolve, especially in such a historic and tumultuous region.  Domestic and international laws regarding objects of cultural heritage and other objects of value found at sea, including the International Convention on the Protection of Underwater Cultural Heritage, not to mention other bi-lateral or multilateral treaties may apply.  Interestingly, Palestine is not a signatory to the U.N. Convention on the Law of Sea, a treaty which may also have provided guidance, particularly Article 303, on the handling of this potentially priceless artifact.  That is, assuming the piece was actually found at sea.

Hopefully this rare and wonderful statue, which has so quickly vanished again from the world's view, will be displayed and made accessible for study in future.

Judge Orders Return of Stolen Renoir Painting

In 1937, Saidie May, widow of an art collector, loaned "Paysage Bord du Seine," a painting by Pierre-Auguste Renoir to the Baltimore Museum of Art (BMA).  The BMA exhibited the piece twice, and during the 1951 show "From Ingres to Gauguin," the painting was stolen from a BMA gallery.  The BMA filed a police report and investigation ensued, but the painting was never found.  The painting's owner, Saidie May, died and bequeathed the painting, along with the rest of her art collection, to the BMA that same year.

Around 2009 the painting was purchased at a West Virginia flea market by Marcia Fuqua, in a box of miscellaneous items, for $7.  Fuqua maintains she was unaware that the piece was a genuine Renoir although there was a Renoir nameplate on the frame and materials on the back indicating as much. However, after learning the piece might be valuable, she brought it to a local auction house for valuation in 2012.  The painting's estimated worth was $75,000-$100,000 USD.  Despite the uncertain provenance the piece was scheduled to be auctioned, and just days before the auction the BMA located internal documents showing that the piece had been stolen from it. The FBI then seized the painting and held possession of it until the rightful owner was determined.

In 2013, the U.S. District Court for the Eastern District of Virginia was asked via an action filed by the U.S. federal government (as the FBI was still holding the painting) to resolve who among Fuqua, the BMA, the insurer that had paid on the original loss of the painting, and the heirs of Saidie May and her husband, rightfully owned the painting.  Having narrowed it down to just Fuqua and the BMA, the court ruled in favor of the BMA earlier this month.

After resolving issues related to the choice of which states' laws applied to the case, the court held that Fuqua could not have acquired good title even if she was a good faith purchaser, as a good faith purchaser cannot acquire title to stolen goods under Virginia law.  Accordingly, the court ordered that Paysage Bord du Seine be returned to the BMA.

The BMA's clear records of the painting's theft were instrumental in showing that the piece was not merely misplaced or that it had some other fate that would have allowed title to pass to subsequent possessors. These records make this case distinguishable from similar detinue actions where stolen items were located but the institutions had not reported the loss due to embarrassment, creating a much steeper evidentiary burden for seeking return of the work.

Another Big Win for Photographers: Jury Awards Maximum Damages in AFP v. Morel

Following on the heels of my entry regarding Leonard v. Stemtech, another American photographer has received another major jury award for copyright infringement.  Earlier this year I wrote about AFP v. Morel, a case in which Getty and Associated French Presse (AFP) were found to have used photographer Daniel Morel's photographs of the aftermath of the Haiti earthquakes without permission.  Morel originally shared the photos on Twitter, where another photographer found them and attempted to pass them off as his own.  Eventually the photos ended up in the hands of Getty and AFP, and the agencies used and licensed the images without Morel's permission.  One of AFP's more creative defenses in this case was that Morel's sharing of the images on Twitter had resulted in a broad license allowing AFP to use the images based on Twitter's terms of service.  The court rejected that argument at the summary judgment phase.

Although Morel already prevailed on summary judgment as to direct copyright infringement, because he sought elevated statutory damages for willful infringement, a jury was left to resolve the intent of Getty and AFP in using Morel's images.

On November 22, 2013, the jury's verdict was announced.  Holding that the infringement was willful, the jury awarded Morel the maximum in statutory damages allowed for the eight infringed images, $150,000 per image, for a total damages award of $1.2 million.

Extensive coverage of the trial is available on EPUK.

Art Attacks

Until very recently few had ever heard of Yellowism, an art movement that gained some notoriety in October 2012, when self-proclaimed Yellowist Vladimir Umanets wrote on one of Mark Rothko's paintings at the Tate Modern.  Umanets signed his name on Rothko's "Black on Maroon" and also wrote the phrase “A potential piece of yellowism."  It is difficult to discern exactly what Yellowism is, though there is a website for the movement as well as a YouTube channel.  Blouin ArtInfo gives a critical, but thoughtful analysis of Yellowism here.  

Marcin Lodyga, Umanets' partner in Yellowism wrote that Rothko's painting at the Tate, signed by Umanets was still a work of art.  He felt it would not be Yellowism, only potential Yellowism, until the work was placed in "yellowistic chamber," at which point it would express only the color yellow and cease to be a work of art.  Umanets told the BBC, "Art allows us to take what someone's done and put a new message on it."  

Rhetoric aside, appropriation within the art world is not new.  Marcel Duchamp signed a urinal and transformed an industrial design into a work of art.  Artists like Andy Warhol and Jasper Johns incorporated images (trademarks included) from modern culture into their works as if casting a mirror out onto modern society.  However, at some point in the 1970s and continuing until today art began appropriating itself, in the form of physical "attacks" on existing works displayed in galleries and museums. 

These "attacks" present some very unique legal questions.  When someone writes on a Rothko painting or dumps a bottle of ink into Damien Hirst's pickled sheep or draws a clown face on a Goya print, does this act of destruction create a new work of art and with it new copyrights in another author?  

Copyright protects original works of authorship, giving the author exclusive rights and the ability to prevent unauthorized copies or otherwise derivative works. As for art attacks, it would seem that the question comes down to whether the new work would be seen as an unauthorized derivative, or whether the work was transformative enough, and accordingly leaning in favor of fair use.  Still, transformative use is an incredibly difficult question, and often it leaves much to the eye of the beholder.  

One must also consider the moral rights attached to certain works.  In most civil law jurisdictions and some common law jurisdictions, moral rights attach to works of art during an artist's lifetime.  Among other issues, moral rights protect the integrity of the work, barring alteration, distortion, or mutilation of the work even after it leaves the artist's possession or ownership, and even if the artist has assigned the copyrights to another.  While moral rights may not present an issue in the case of long-since deceased artists, they could certainly play an important role in attacks on the works of living artists.

Further, it seems that in most cases those who "attack" works of art are not the legal owners of the physical work of art, thus their acts constitute crimes as well as civil torts.  Even if a new copyright existed, it would likely be rendered worthless as proceeds from the copyright would be viewed as proceeds of a crime.  (In case anyone is still wondering, Umanets was arrested for what he did to Rothko's painting.)  

While art attacks might serve as an end run into the limelight for new artists, the social and legal consequences are considerable.  

More Meme, More Problems

Earlier this year when elderly parishioner Cecilia Gimenez "restored" the Ecce Homo fresco at her church near Borja, Spain, she never could have predicted the internet sensation it would become. By now our readers are likely familiar with the Ecce Homo, lately more commonly known as "The Monkey Boy of Borja." Gimenez's restoration attempt unwittingly succeeded in making a deteriorating fresco of Jesus look like a monkey. Some might consider her action vandalism (whether Gimenez had permission to paint on the fresco and the scope of that permission are not entirely clear). Still others, including some of our readers, have pointed out that her finished work differs so markedly from the original as to likely endow her with copyrights in the piece.

Images of the restoration inspired a thriving internet meme, spreading from news articles, to blogs, social media, and humor websites. It didn't take long before people, seemingly inspired by the absurdity of it all, to make pilgrimages to see the the Monkey Boy painting in person. Visitors to the church increased exponentially, and the church now charges admission. As The World reports, Borja recently experienced a flood of tourism, and the financial benefits of Gimenez's work flow well beyond the church to neighboring businesses. Enter merchandising--the Monkey Boy internet sensation has of course inspired consumer goods of all kinds, including Halloween costumes and Christmas ornaments. It is unclear whether this merchandise was created with permission, especially because Gimenez and the church now dispute ownership of the work, creating further questions about who could give consent to reproduce the image. Gimenez is reported to have hired attorneys to help assert her rights in the work (and the profits therefrom), yet the church argues that it owns the piece and profits therefrom because it is on the church's wall. Another question looms, and that is whether any royalties to Gimenez would be considered profits from a crime.

Surely, the situation with Ecce Homo presents many legal and ethical questions. Still, I have to stop and appreciate the fact that what started as an internet meme has brought people out from behind their computer screens to go see a work of art in person, however unusual that work might be.