As with so many copyright questions, the answer is “it depends.”
I stumbled into a discussion on Twitter last week that included some fairly cynical reactions to an artist named Chris Williams, who filed a copyright infringement claim against the Hy-Vee supermarket chain for making use of his graffiti mural in one of its TV commercials. The spot, which first aired during the last Super Bowl on February 3, prominently features a colorful, patchwork design that Williams painted on a wall in Des Moines, Iowa in October 2018. Williams alleges that he never would have licensed the image for such a purpose and has filed suit against the grocery chain for infringing reproduction, display, and distribution of his work, as well as violation of DMCA Section 1202 for Hy-Vee’s removal of the author’s signature as a mark of ownership.*
The Twitter discussion between Professor Brian Frye and Neil Turkewitz began with a general assertion, in which Frye seemed of the opinion that once a creative work is so public (e.g. a painting on an exterior wall or a statue in a city square), the author really must abandon all interest in controlling how that work is reproduced—especially through photography. Frye further opined that Williams’s desire to litigate the Hy-Vee commercial would be doctrinally identical if he were to try to prevent “tourists” from capturing graffiti art in their personal photographs.
Turkewitz’s responses broadly stressed the point that one cannot generalize about an author’s right to allow (or disallow) certain uses based solely on the fact that the work has been “published” on a city wall. “It’s essential to doctrinally distinguish between someone taking a selfie in front of publicly displayed art & posting it on their FB page & someone featuring a photo of such art as part of their advertising campaign,” he replied.
Professor Kevin Casini posed the question that I imagine many people instinctively ask: Does “publishing” a work by fixing it in a common space alter the boundaries by which the author may control the use of that work? Opinions will vary, and my own opinion is that, yes, the author does abandon certain types of control that may be retained in other types of publication, but by no means does he give up his copyrights altogether. Whether a protected work is street art, hanging in a gallery, or printed in thousands of book copies, potential infringement claims and defenses will, and should, remain case-by-case considerations.
Frye mentioned in his tweets that a TV commercial is an expressive work. This is true but not especially relevant. Countless uses of copyrighted works are expressive—although courts will make distinctions between an “expressive” and an “informational” use when weighing a fair use defense. Likewise, all works that are vulnerable to infringement (unless it is physically-stolen unpublished material) are, in one way or another, “in the public.” This is in fact an underlying purpose of copyright: to encourage authors to make their works public by securing their rights to retain certain forms of control over the works they disseminate. If making a work public vitiates these rights, then copyright is meaningless. This principle is not extinguished just because a work is apparently made “more public” through display in a physical commons.
It is also important to remember that authors frequently exert control over the use of their works for reasons other than compensation—a theme that is especially common among street artists, who demonstrably make these works for a purpose other than money in the first place. While copyright critics tend to cynically assume that lawsuits are always about money, this is a chronic misconception about many artists that should at least dampen, if not disqualify, a lot of the copyright critical scholarship out there. For instance Williams’s rationale in the complaint is stated as follows …
“Despite offers, he has very rarely made his original art available as part of corporate advertising campaigns—partly for artistic reasons but also because doing so would diminish the value of his work. Indeed, nothing is more antithetical to a street artist’s credibility than association with something as banally commercial as a chain of grocery stores. People who recognized his Mural in the Campaign would have concluded that Williams ‘sold out,’ diminishing the value of his work and reputation.”
Some observers will take Williams’s views on commerciality at face value, others will respond cynically—especially on Twitter. Moreover, in this particular case, his claim that his “street cred” is harmed by “commercial banality” may be weakened by the fact that Hy-Vee’s TV spot, narrated and supported by Oprah Winfrey, promotes a program to ensure that school kids do not go hungry. In this context (i.e. a topic that is pretty “street” in itself), Hy-Vee may be able to reasonably argue that their depictions of the mural in segments of its commercial are intrinsic to portraying the street (i.e. neighborhood) they intentionally selected for this particular narrative.
For the most part, we must mute sideline mumbling about “good v. bad” intentions in such cases and look at the manner in which a work is used by an alleged infringer. In Hy-Vee’s case, the Williams painting is featured so prominently in at least two scenes of the commercial that any filmmaker watching it would conclude that it is the primary element of art direction in those scenes. The young girl protagonist walks past the mural, which fills the entire frame. Consequently, the expressive qualities of these shots are almost entirely conveyed by Williams’s painting.
This use is sufficient for an infringement claim but, in the broader context, may not ultimately support Williams’s allegation of harm, especially given his emphasis on reputational harm. After all, he imposed his personality onto a neighborhood, which Hy-Vee then reasonably selected as a location in order to promote its own contribution to the same community.
On the other hand, it is important to remember that the use of notable artwork for endorsement may be a form of coerced speech. In the legal analysis, we cannot be distracted by the message being conveyed with the use, no matter how virtuous it may be. We must only be consistent in allowing any author of a work to endorse or oppose anything he or she chooses in cases where the use of a work may be understood as endorsement.
Looking at The Mercedes-Benz Case
In a related story, Mercedes-Benz filed a lawsuit in March against four graffiti artists who sought to remove the automaker’s advertising photos from Instagram. The promo photos depict Mercedes vehicles traveling near murals painted by these artists in the City of Detroit.
In these examples, the murals are prominently visible; and one can reasonably assume that the Mercedes creative team chose compositions in which the graffiti art lends aesthetic value to the overall compositions. But at the same time, the murals do not do quite so much of the visual “heavy lifting” as the Williams painting does in the Hy-Vee scenes. This provides Mercedes grounds to argue that their reproductions are “incidental,” which would favor a finding of fair use.
When creative works like art painted on walls become part of the landscape of a neighborhood, when they cannot be “unseen,” this factor tends to broaden the umbrella of fair use for incidental photographic capture—even for commercial purposes. In the Mercedes photos, for instance, the cars remain the most prominent visual elements in the frames, while the murals generally play supporting roles as part of the cityscape background.
I cannot say conclusively that Mercedes has a fair use claim here, but want to highlight the differences between the amount of creative expression being contributed by the street art in these two uses in order to emphasize the point that one cannot appeal to a universal doctrine that must apply to all graffiti art. Further, if the Mercedes case proceeds, it is conceivable that some, but not all, of the images will be held to be fair uses.
Beyond considering these two commercial uses, I maintain that Professor Frye is overreaching to suggest that if Williams were to prevail in his suit against Hy-Vee, this implies that he might just as easily prohibit tourists et al from capturing his street art in their personal photographs. Not only is it hard to imagine a graffiti artist wanting to prevent that kind of personal use photography, the fair use doctrine, the right to capture public scenes for personal use, the concept of “incidental” capture, and non-commercial considerations all shield the general public user in ways that impose limits on the author’s right to prohibit that are not the same as the commercial user. The doctrines are not the same and the details matter quite a lot.
*Although there is no longer a requirement to place a notice of copyright on a work, removal of an existing mark for online distribution with the intent to facilitate infringement may be a violation; and Williams is presumably claiming that by framing out his signature in online displays of the commercial, Hy-Vee violates this statute.