Early Victory for Graffiti Artists in San Francisco Street Art Misappropriation Case

by Nancy Wolff,  DMLA Counsel Williams, Chapa, and Rubin v. Cavalli, Staff International, Nordstrom, Amazon, Zappos (Central Dist. Of CA, 2014)Roberto Cavalli S.p.A., a high-fashion apparel brand company, along with several online retailers, is in heated litigation in a California federal court with graffiti artists over the Just Cavalli collection, featuring clothing and accessories embellished with graffiti art copied from a mural in San Francisco’s Mission district. The collection was sold in Just Cavalli stores and through online retailers.Street artists known as “Revok”, “Reyes” and “Steel”, created the mural and complained that the fabric in this collection consisted of their stylized art pseudonyms on a background of Reyes’ signature swirls. In their complaint, the artists assert that Cavalli not only violated their exclusive rights under copyright by misappropriating selections of the Mural, but additionally violated Section 1202(b) of the Copyright Act that provides separate damages for intentionally removing or altering copyright management information (“CMI”) by removing and altering their stylized signatures in the creation of the Cavalli fabric design. Cavalli also embellished the fabric design with his brand name to appear as if it were a part of the original artwork, and rearranged some aspects of the mural. The artists further allege that this conduct violates § 43 of the Lanham Act, and CA state unfair competition laws that provide damages for causing consumer confusion as to the origin of goods.Cavalli and the online retailers moved to dismiss all claims against them, except for direct copyright infringement claim based on copying the elements of the mural. Cavalli argued that the Section 1202(b) claim for intentionally altering CMI should not apply to physical signatures in a mural and that CMI should only apply to digital information, relying on legislative history; as this section is part of the Digital Millennium Copyright Act. The court rejected this narrow reading of CMI and cited other decisions rejecting the proposition that this section was limited to removal of information by technological measures.With respect to the federal and state unfair competition claims, Cavalli argued that the Supreme Court decision in Dastar prevented any claim that artwork constitutes “reverse passing off” , or where a producer misrepresents someone else’s goods as its own. The court, however, found that Cavalli’s use of the artwork constitutes “passing off”, which involves misrepresenting one’s own goods to appear as if they were made by another producer.  In this case, Cavalli was selling its designs giving the impression it was made by the artists. The court also dismissed the designer’s claim that the same facts could not give rise to both copyright and Lanham Act-unfair competition claims. The end result was that the court sided with the artists on all claims, under copyright and the Lanham Act could proceed towards trial.Takeaway: This preliminary victory is significant in the midst of the shifting trend of fashion designers towards street art aesthetics and the consequent increase in graffiti-related litigation filed in the past year. Unsurprisingly, the majority of the litigation involves similar copyright infringement claims in an effort to protect the artist’s intellectual property. While street artists were once thought of as outsiders, giving away their art by using urban buildings as their canvas, well-known graffiti artists have been selling their work and licensing artworks to the fashion industry. Copyright protection is not limited to traditional forms of “art” (i.e. books, canvas paintings), and provided the work is an original work of authorship “fixed” in a tangible medium of expression and is a category of protected work under Section 102 (which includes the pictorial, graphic and sculptural works), contemporary art is protected. Conversely, there is no “vandalism defense” to a copyright claim. Moreover, street art is increasingly considered a well-respected art form, as evidenced by the reaction of New York residents to Banksy, an influential graffiti artist.Photographers in looking for contemporary urban backdrops for images, should be careful in selecting buildings decorated with graffiti to pose subjects, and should avoid making the graffiti the central focus of any image intended for commercial stock use. Just like a painting in a living room or art gallery, graffiti art may require additional permission from the user, depending on the context.