(Image via Getty)
The Mercedes-Benz company had a commercial in the early 1990s that stated “some things are too important not to share.” Fast forward to 2019, and it seems that all these years later Mercedes-Benz still feels that way, at least when it comes to pictures of their vehicles that incorporate buildings with artwork on them in the background. As you may or may not be aware, Mercedes-Benz is currently seeking declaratory judgment in a Michigan federal court that its use of murals on buildings in the background of photos depicting a Mercedes-Benz vehicle in advertisements does not infringe the copyrights of the artists. This case presents an interesting intersection of copyrightable artwork, architecture, and even copyright procedure, painting an interesting landscape that would make any urban street artist proud.
First, some background. In 2018, Mercedes-Benz posted a number of pictures on Instagram of its G-500 truck in Detroit, using buildings within the city in the background. These background buildings were not just any city buildings — three of the four murals are on buildings located in Detroit’s Eastern Market, more widely known for its critically and socially acclaimed Murals in the Market festival. This event brings in local and international muralists that event-goers can watch paint murals live, as well as participate in artist talks, lectures, cultural events, and concerts — an event that has added a significant number of murals to the area, to say the least. The artists whose murals were in the photographs — Daniel Bombardier (a.k.a “Enjoy Denial”), Maxx Gramajo, James “Dabls” Lewis, and Jeff Soto — send letters to Mercedes-Benz objecting to the use of their works in the photographs and claiming copyright infringement. In turn, Mercedes-Benz brought the above-referenced lawsuits.
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Oddly enough, this situation is not entirely new. In 2018, graffiti artist Adrian Faulkner (also known as Smash 137) brought suit in the Ninth Circuit against General Motors (another automobile titan of Motor City) for the unlicensed use of his mural in a Detroit parking garage as part of GM’s advertising in 2016 for its Cadillac XT5 (apparently dubbed “The Art of the Drive” — go figure). As the artist who was commissioned to paint the work on the side of the parking garage, Mr. Faulkner took objection to GM’s use without his permission (and claimed damage to his artistic reputation as a result). In an interesting move, GM moved for summary judgment, claiming that “[b]ecause [Falkner’s] mural is painted onto an architectural work it falls squarely within the ‘pictorial representation exemption’” set forth in Section 120 of the Copyright Act. This section was added as part of the Architectural Works Copyright Protection Act (AWCPA) of 1990, and 120(a) specifically states:
The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.
In essence, GM claimed that it was entitled to summary judgement because the mural was incorporated into the structure of the building, so the pictures in its advertising campaign depicting the murals within the parking garage simply do not constitute copyright infringement.
The judge in that case, United States District Court Judge Stephen Wilson, was unconvinced by this argument, denying the motion. Focusing on “conceptual separability” of the art from the underlying architectural work, the judge stressed that there was “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.” In fact, the judge found “undisputed evidence that [Mr. Faulkner] 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 parking garage was already constructed by the time the mural was painted on it. As a result, the judge held that the pictorial work was not “part of” an architectural work in that case (among other holdings not relevant here). The case eventually settled.
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Oddly, Mercedes-Benz is taking a similar tack — aside from asserting fair use, Mercedes-Benz highlights the AWCPA, claiming that the murals were created for a functional purpose (namely, in support of the festival’s mission of “increasing tourism, traffic, economic development, and safety in the Eastern Market” and “intended to be integrated into the Detroit cityscape to improve the visual appearance of the city and enhance the appeal of the Eastern Market to tourists”). As a result of this ostensibly functional purpose (as opposed to, say, its artistic and expressive purpose), Mercedes-Benz essentially states that the art is part of the building and, therefore, fits within the exception. Of course, the artists disagree, claiming that Section 120 only applies to the building itself, and that the artwork is separate copyrightable expression placed on the building rather than playing any functional role in it. The artists are also claiming that Mercedes-Benz cannot bring the actions against them because the artists do not have registered copyrights for the works, which is a prerequisite to certain copyright litigation as a result of the recent SCOTUS decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com.
From my perspective, Mercedes-Benz is fighting a valiant but uphill battle here — although this area of the law is anything but well settled, focusing on functionality is a difficult proposition because it is difficult to see where a mural itself can be a functional element of a building. We are not talking about the circular stairs of the Guggenheim Museum or the artistic interplay of fire escapes on the side of buildings in New York City — we are talking about murals painted on already existing buildings in most cases. That said, the artists’ claims that Mercedes-Benz is procedurally precluded from bringing a declaratory judgment action due to a lack of registered copyrights does not seem to fit too easily within the Fourth Estate registration requirement because that holding focuses on copyright owners bringing an action to enforce their rights (as opposed to the copyright owners being defendants in a declaratory judgement proceeding). In any event, something tells me that the claims will not be dismissed against any of the parties, and that the cases may eventually settle.
Ultimately, any company (or client) seeking to use photographs of buildings that depict graffiti or murals should be careful and mindful of this somewhat murky copyright area. You may want your company (or client) to play it safe and track down the artists for permission to use the work as part of a commercial use, rather than making these Section 120 arguments or rolling the dice on a fair use analysis. It’s one thing to use the pictures of building exteriors, but another thing altogether where separate artistic works are applied to them. When it comes to painted artistic works on buildings, well, it just seems that the writing is on the wall on that one.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at [email protected].