Beware of Graffiti Copyright Infringement
by Intellectual Property Attorney Bill Honaker, the IP Guy
Graffiti artist Richard Wyrgatsch aka OG Slick is in the middle of a copyright infringement lawsuit. Top Trumps USA Inc. sued Slick on May 4, 2022 because he accused them of infringing his copyright. Top is asking the court to find that they didn’t do anything wrong when they used Slick’s graffiti on a Monopoly game.
Top is licensed by Hasbro, the owner of the Monopoly game, to make city editions. City editions replace the original squares with sites in the city. In the Worcester Massachusetts edition, they used a picture of Slick’s Pow! Wow! Mural for a square on the game board, as part of a collage in the center of the board and on the box cover. Slick wasn’t pleased and asked for compensation. Top refused and the lawsuit was started.
Slick’s mural is painted on the exterior of The Palladium concert venue. It depicts a play on the classic Smiley face and Mickey Mouse. The wall is painted yellow, with the eyes and smile painted in black by spray cans held by Mickey Mouse like hands and arms.
Tops claims that their use is fair use, which is a defense to copyright infringement. They also allege that their photo is not infringement because the mural is part of a building and photos of buildings are exempt from copyright infringement under the Architectural Works Copyright Protection Act.
Similar arguments were made in other lawsuits involving graffiti artists’ works and car advertisements. General Motors launched an ad campaign for Cadillac. The ad used a picture of a 2017 Cadillac taken on the top floor of a parking garage in Detroit.
Unfortunately for GM, there was graffiti on a wall next to the car. The graffiti was painted by Andrian Falkner, also known as SMASH 137 in 2014. The graffiti was protected by copyright. Falkner sued General Motors for infringement. GM argued that they didn’t do anything wrong since photos of buildings are permitted if they’re visible from a public place. Their argument is correct with respect to buildings, but the court found that the graffiti wasn’t part of the building, but a separate protected piece of art on the building. GM settled with the artist.
Mercedes Benz did the same thing in 2018. They photographed their G 500 in front of an Eastern Market building
in Detroit that had graffiti on the wall. They used the picture in social media advertising. The graffiti was painted by four artists, Daniel Bombardier, Maxx Gramajo, James Lewis, and Jeff Soto. They objected to the use of their art. Mercedes disagreed, and filed suit, asking a Federal Court to declare that they hadn’t done anything wrong. They used the same argument that had GM used. The court in Detroit ruled the same way as the California court. Mercedes Benz settled the lawsuit.
Copyright infringement can be costly. Damages can be the copyright owner’s actual damages, and any additional profits of the infringer, or statutory damages. Statutory damages are available if a work is timely registered. These damages range from $750 to $30,000 per infringement, up to $150,000 for willful infringement.
To avoid infringement, you must be aware of what’s in the background of your photos or videos. Copyright protects the expression of an idea in tangible form, such as paintings, sculptures, photos, music, etc. These can inadvertently appear in your work. Be aware and take appropriate action. You can avoid incorporating potentially infringing material in your work. You can also reach out to the copyright owner and ask for permission to use the work, which may require a license. The consequences of not acting can be costly.
About the Author:
Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.