The Dresses of Ellsworth Kelly - Considering Legal Protection in Fashion

Méditerannée, 1952 - Ellsworth Kelly

While flipping through the pages of Vogue's latest U.S. issue, I came upon an article about two dresses designed by world-renowned painter Ellsworth Kelly.  The New York Times also features an informative piece on the the Kelly dresses.  As clothing, or as a artwork, I think they are fantastic, and it's also a great opportunity to blog about legal protection in fashion, a topic I just spoke on last week.  The new dress, designed by Kelly and created by Francisco Costa of Calvin Klein is basically a remake of a dress that Kelly originally designed in France in 1952.  Kelly's original dress was made using brightly colored cotton that he purchased in the South of France.  Kelly used some fabric for a five-panel painting in cloth.  He gave the remaining fabric to a friend, Anne Weber, asking her to make the dress to his specifications (although in the end he was very bothered that she left the bottom blue panel so long).  The dresses feature color blocks that evoke Kelly's paintings.

One dress, created in France, and another (presumably) created in the U.S., receive different intellectual property protection.  Clothing designs are allowed far greater intellectual property rights in Europe.  At this point there are two layers of protection, that offered by individual nations and that offered by the EU Directive on Legal Protections in Design.  In France, where the first dress was made, fashion designs are classified as "works of the mind" and enjoy copyright protection.

In the U.S., clothing design receives almost no protection under copyright law because clothing is considered largely inseparable from its utilitarian functions.  U.S. copyright law, loath to protect to utilitarian items therefore only protects things likes original designs on fabric, or possibly non-utilitarin features of costumes.  While some designers are able to bootstrap their way into some level of protection through trademark and trade dress, clothing is largely unprotected and copycats are free to infringe upon new designs.

Only ten of the new Kelly dresses were made.  One was donated to the Metropolitan Museum of Art's Costume Institute, another to the Philadelphia Museum of Art.  With dresses and other clothing items gracing the galleries of some of the nation's premier museums, one would think the U.S. might start seeing fashion a little differently, but the fight to obtain greater intellectual property protection in the United States has been going on for over 100 years.  For the last twenty years, congressional bills seeking to extend some level of limited copyright protection to clothing have regularly been introduced and consistently died in committee, so it does not appear that change is coming any time soon.

Some have remarked that the dresses are so reminiscent of Kelly's paintings, that they really constitute drawings or sculptures, not just ordinary clothing.  Although it might be impractical, I can't help but wonder if these musings could represent an alternative theory for copyright protection of the Kelly dresses in the United States.

Appropriating the copyright symbol: van Roeyen on Scholte

Via a recent Tweet this blogger found himself browsing through the frames of a PowerPoint presentation by his friend Gino van Roeyen (Banning), an engaging and enthusiastic Dutch IP lawyer with whom one's time is generally spent both productively and enjoyably.  By way of introduction to the lecture for which these frames were prepared, Gino explains:

"Although art is generally considered to be the territory of absolute freedom in which creativity should thrive optimal, it can also be the arena of virulent copyright battles. As copyright in a work of art protects against publication and reproduction of that work (including reproductions that cannot be regarded original themselves) without permission of the copyright owner, unauthorized occupation of such a work might be regarded as a declaration of war against the copyright owner. It might ask for forms of retaliation, varying from cease and desist letters to litigation in court. 

Of course, the art of retaliation may depend on the gravity of the infringement. Straightforward pirates (copycats) might risk severe measures of retaliation, like destruction of counterfeit works of art and penalties. But what to do with works of art that are not copies of the original, being in one way or another ‘linked’ to the original?  So called appropriation art cultivates what already exists into art.  This might also involve works of art which are protected by copyright, but also other tangible objects that can be the object of a copyright (like for example the design of a simple household issue like a towel). 

In this lecture this phenomenon will be examined and explained closely by means of several examples of copyright battles in the arts throughout the years. Since Rob Scholte -- who can be regarded as an acclaimed and famous supporter of ‘appropriation’ in art -- will be the keynote speaker at the conference, the lecture will also focus on his work, like for example his famous © work, in which Scholte appropriated the © sign, a sign which can be used freely to denote that copyright is claimed for a work. Paradoxically by inserting the © into his own work – or should we say by reconstructing the © into a work of art – Scholte created a work which is protected by copyright'".

Panel Discussion: Legal Protection in Fashion

For our readers in the Seattle area, I will be participating in a panel discussion on legal protection in fashion this Thursday, April 25.  The panel, comprised of attorneys and fashion designers, is presented by Washington Lawyers for the Arts.  More information and registration available here.

The "Russian Banksy" Pasha P183 dies aged 29 in Moscow

Pasha P183's work

According to reports, the prominent Russian street artist Pavel Pukhov, known with the tag of Pasha P183, was found dead under unknown circumstances last Monday in Moscow, aged 29.

Pasha P183 was often compared to the world famous Banksy, since as the British artist or Keith Haring started out painting graffiti in the dead of night and recalled being arrested numerous times by Moscow police.Many of his street works had political undertones and carried an implied reference to a recent wave of massive street protests in Moscow against president Vladimir Putin's role. He was known for leaving artistic installations and politically fueled murals across Moscow, including riot police painted on subway doors and a masked protester holding a flare that caught fire.

Pasha P183's work

One of his most well-known pieces was a pair of oversized spectacles drawn in the snow with a street lamp serving as the open stem, almost an Oldenburg-sized versions of everyday objects.

In a rare interview posted on adme.ru last year, he stated about his work: "I wanted that work to carry the most important message...that a person mustn't sell himself, I made a chocolate bar that can't be bought, using a giant panel of concrete."

Can a collector prevent an artist from making new art?

 William Eggleston's  digital print" Memphis (Tricycle)"

The U.S. District Court in the Southern District of New York recently dismissed collector Jonathan Sobel’s lawsuit against the photographer William Eggleston. 

The complaint, filed in April 2012 claimed that the photographer diluted the value of Sobel's collection by printing larger, digital versions of some of his best-known works and then selling them for record prices at Christie’s. 

The auction house sold in March 2012, 36 poster-size, digital prints of images that Eggleston had shot in the Mississippi Delta more than 30 years ago,  besides others based on iconic works, such as the famous work “Memphis (Tricycle).”

The sale was a huge success: the five-foot “Tricycle” came in on top, selling for a record $578,500 (Sobel owns a 17-inch version of that photograph, for with he paid $250,000.) 

The success of such sale of Eggleston's new digital works was a problem for Sobel, who owns 190 Eggleston works. The collector accused Eggleston of devaluing his vintage dye-transfer prints by selling new pigment prints of the same images, since the commercial value of art is based on scarcity, then it would become less valuable with new editions. 

But the judge disagreed. 

The Judge, Deborah A. Batts rejected Sobel's claim affirming that Eggleston was not in violation of the New York Arts and Cultural Affairs Law.

Article 15 of this NY law states that offering a limited edition constitutes an express warranty that no additional multiples of the same image have been produced. 

According to such provision, the judge affirmed that by offering a limited edition, an artist is required by the law to disclose the total number of multiples existing at the time of the sale.

In addition, Eggleston could have been held liable only if he had created new editions of the limited-edition works in Sobel’s collection using the same dye-transfer process he used for the originals.  But in this case, however, Eggleston was using a new digital process to produce what  the judge deemed a new body of work. 

This decision confirms that artists who works in multiples have the right to use the images they create and are entitled to continue to work with such images to produce new editions, as long as they disclose how many multiples of a photograph have been produced at the time they are offering a new edition. 

U.S. Court Holds First Sale Doctrine Does Not Apply to "Used" Digital Music

Internet startup Redigi founded its business model on the idea that digital music lawfully purchased through iTunes could then be lawfully resold online.  Essentially, Redigi set out to be the used record store of the digital age.  Redigi users sell their lawfully purchased songs by uploading them to Redigi's server, where other users then purchase these songs for less than the cost of buying the song "new" from iTunes.  When a user uploads a song for sale, Redigi's software runs on the user's computer to confirm that no copy of the uploaded song remains behind on the user's computer or personal devices.

Capitol Records, however, disagreed with the lawfulness of Redigi's business model and sued for copyright infringement in January 2012.   

On March 30, 2013 the U.S. District Court of the Southern District of New York ruled on the parties' cross motions for summary judgment and found that first sale doctrine--an affirmative defense to copyright infringement that allows for lawfully obtained copies of copyright protected items to be resold (think used book and record stores)--did not apply to the resale of "used" digital music.  The court's ruling necessarily hinges on the idea that the file is not transported from the original buyer's computer to the Redigi server, but instead that the song is "reproduced" onto Redigi's server.  The court thus found that each and every upload to Redigi's website constituted an unlawful reproduction of the song.  The fact that the original file on the user's computer was deleted was of no consequence because the court considered the file Redigi offers up for sale to be an unlawful copy.  Based upon this conclusion, the court found Redigi liable for infringement of Capitol's reproduction and distribution rights, holding Redigi liable for direct, contributory, and vicarious copyright infringement.  Basically, this means that Redigi was found liable not just for damages attributable to its own infringing activities, but that it was also accountable for facilitating the infringing activities of others.

In a case that, in the court's words, created a "fundamental clash over culture, policy, and copyright law," is there any hope left for Redigi?  As this ruling issued from the district court, appellate review before the Second Circuit Court of Appeals is available.  In addition, the court makes a footnote referencing Redigi's 2.0 version in which users' new iTunes purchases are never actually downloaded to their own devices and instead are directed straight to Redigi's servers.  This way a song is never "reproduced" between the user and the Redigi server.  Because the updated version of Redigi was launched well after the start of the case, the court declined to address whether this new model also constituted copyright infringement.  

Also noteworthy in this opinion are the court's frequent calls for Congress to update U.S. copyright law to better address the quandaries of the digital age, the court opining that it could not condone wholesale application of the first sale doctrine to the digital sphere when Congress has declined to do so. 

Zorro: The Clash of Trademark Law and the Public Domain

A new lawsuit filed this month in U.S. District Court explores the tension between trademark law and intellectual property which has otherwise fallen into the public domain.  Generally, new artistic works are subject to copyright protection of a limited duration, calculated by the author's life plus a term of years after the author's death.  Once the copyright expires, the work becomes part of the public domain, and it is free for others to use.

However, these issues are not necessarily so clean cut when another party finds a way to assert trademark rights in that material.  Trademarks protect brands, and serve to indicate the source of goods and services in commerce.  Because trademark rights can be potentially infinite, a party may attempt an end run around the public domain by asserting a monopoly over a famous name or character through trademark law--and such is the case with Zorro, alleges plaintiff playwrite Robert Cabell.

According to Cabell's complaint, he created a musical based on the fictional Zorro character that first appeared in Johnston McCulley's serial story, The Curse of Capistrano in 1919.  Under the U.S. Copyright Act in force at the time, the copyright in McCully's Zorro story expired in 1975, and the story became part of the public domain after that time.  Cabell's musical, first released as an audio CD in 1996 has since been made in to a stage production and is scheduled to be performed at a festival in Germany this summer.  However, Cabell alleges that the defendants named in the case fraudulently obtained multiple U.S. trademark registrations during the 1990's in the Zorro name, and are using those marks to interfere with his ability to perform the play by threatening lawsuits against those intending to the produce the play.  Cabell asserts that defendants tortuously interfered with his business relations, and he also seeks declaratory judgment of non-infringement and cancellation of all of defendants' Zorro trademarks.

Whether Cabell's claims have merit is yet to be determined, but it looks like Zorro's next duel will be in court.

Trying to make the MET pay

Ever been to the Metropolitan Museum of Art in New York City - better known as the MET? Did you pay to get in? Did you know you didn't have to? I have to admit the first time I went it was not clear that the entrance fee was not compulsory. It was only on a subsequent visit that I was asked what I wanted to pay that I realised that I had a choice. It turns out this is not uncommon. However, some appear to have had a more extreme reaction than myself.

Reuters reports that:

... a lawsuit filed on Tuesday against the museum complains that most museum-goers have no idea that the "recommended" $25 entrance fee is nothing more than a suggestion.

The plaintiffs include a member of the museum, along with two Czech tourists who purchased single-day admissions. They argue the museum employs misleading signs and other techniques to dupe its 6 million annual visitors into believing they must pay to gain access.

The museum's rent-free lease with the city mandates that it open its doors to the public for free on multiple days a week, although it is permitted to ask for a voluntary fee. But the lawsuit says the museum deliberately deceives its visitors into believing that the charge is mandatory.

Signs above the admissions desk that list the entrance fees feature the word "recommended" in small type below the word "admissions" in larger, bold type. The lawsuit also pointed out that visitors are funneled in lines to the admissions desks, where cashiers await to collect the fee.

"MMA has misled, and regularly misleads, members of the general public to believe, on all days of the week during times when the MMA is open, that they are required to pay the Admission Fees in order to enter Museum Exhibition Halls," the lawsuit claimed.

... [The] complaint asks for an injunction [requiring the museum to make its policy clearer to visitors] as well as unspecified damages for all museum visitors who, like the three named plaintiffs, paid to enter with a credit card.

This is the second lawsuit filed against the MET challenging its admission fee. Back in November 2012, two members of the MET (represented by the same counsel as this latest claim) brought a very similar claim for consumer fraud, and for charging unlawful admission fees in violation of New York State law.

A spokesperson for the MET says that the claims are unsustainable. It remains to be seen what the court thinks.

Source: Reuters, 5 March 2013, New York Post, 15 November 2012

Sir Joshua Reynolds' portrait of Omai is a 'wasting asset'

The Upper Tribunal has announced that Sir Joshua Reynolds' famous portrait of the South Sea Islander Omai, sold in 2001 for £9.4m, is a 'wasting asset' - and accordingly, that no capital gains tax is payable on the proceeds.

However did they work that one out?

Before its sale, the painting was on display in Castle Howard. The castle had been owned since 1950 by a company which ran a business exhibiting the castle and grounds to the public. But the painting itself was owned by Lord Howard and, at his death in 1984, passed to his estate. First Lord Howard, and later his executors, allowed the company to exhibit the painting on an informal basis, with no lease or licence for its use in place. 

Following the portrait's sale in 2001, the executors stated that no tax was payable on the sale proceeds. This, they argued, was because the painting fell into the definition of 'plant and machinery' (or more specifically, plant) for the purposes of section 44 of the Taxation of Capital Gains Act, which in turn meant that it was automatically deemed to be a 'wasting asset' under section 44 - and wasting assets are not subject to capital gains tax. 

This argument failed in the First Tier Tribunal (tax). The executors appealed in the Upper Tribunal. 

Surprising as it initially sounds, the higher tribunal agreed with the executors' reasoning. There is no statutory definition of 'plant', and so in determining whether the painting was plant the tribunal considered tests set down in case law. These tests required that to be plant, the painting must satisfy:

(1) the 'function test' - i.e. it must be used for the purposes of the trade carried on by the company; and

(2) the 'permanence test' - i.e. it must have a sufficiently permanent place in that trade (this test prevents trade stock falling into this definition).  

The Tribunal held that painting was used in the company's trade. It was one of the attractions of the castle and helped bring in visitors. And whilst not owned by or formally leased to the company, it had been displayed in the castle on an indefinite basis and had in fact been in situ from 1952 to 2001. This was deemed to satisfy the test of permanence. 

HMRC's main argument against the idea that the painting was plant was based on the fact that the painting was used in the company's trade, while the painting itself was owned not by the company but by the executors - so that the painting was not plant in the executors' hands, and capital gains tax was therefore payable. But the tribunal held that the painting, having satisfied the two tests, was plant; the legislation did not permit a finding that it could be plant in one party's hands and not in another's. 

In short, odd as the conclusion seems at first sight, Reynolds' Omai was indeed a wasting asset for capital gains tax purposes and the lucky executors had no capital gains to pay. Anyone selling a valuable artwork which has been used for business purposes (whilst not being stock) may be interested to learn of this wide definition of 'plant' and the unexpected results to which its application may lead. 

More legal protection for artists?

The director of the United States Copyright Office, Maria A. Pallante, has called for the U.S. Copyright Law to be updated.

In a statement to the Subcommittee on Courts, Intellectual Property and the Internet Committee on the Judicary, Pallante has submitted that the current law, the majority of which was enacted way back in 1976, is outdated and no longer provides effective protection to authors of copyright works.

Pallante says:

It is both possible and necessary to have a copyright law that combines safeguards for free expression, guarantees of due process, mechanisms for access, and respect for intellectual property.

To this end, I would like to state something that I hope is uncontroversial. The issues of authors are intertwined with the interests of the public. As the first beneficiaries of the copyright law, they are not a counterweight to the public interest but instead are at the very center of the equation. In the words of the Supreme Court, "[t]he immediate effect of our copyright law is to secure a fair return for an 'author's' creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good." Congress has a duty to keep authors in its mind's eye, including songwriters, book authors, filmmakers, photographers, and visual artists. A law that does not provide for authors would be illogical — hardly a copyright law at all.

Pallante also points out that Congress will not need to start from scratch, as it has already laid the groundwork for many of the core issues, with reports in progress on a number of topics including resale royalties for visual artists.

Pallante's statement will no doubt raise a lot of debate in both the IP community as well as the art community. It is unlikely, however, that we will see any immediate effects.

Pallante's full statement can be found here.

Commentary from the Copyright Alliance here.