Mercedes Benz v. Street Artists: Scope of Copyright Protection for Street Art

Francesca Masella is a J.D. candidate, 2021 at NYU School of Law.

The unauthorized adornment of streets, often referred
to as graffiti, started becoming positively recognized as street art in the 1970s. It
has since become increasingly accepted and embraced. Many artists, including
Basquiat, can trace their careers as renowned artists
back to their time producing street art. The value of street art is in part
that it has redefined what the general public defines as art. These artists have
taken what normally is confined to museums and galleries, and have brought it
outside, changing how the public consumes it. 
New York City has been flooded with street art. Everyone who has walked
the North-West corner of Bowery and Houston has witnessed a few people admiring
and photographing the ever-changing street art mural that adorns the corner.  Clearly people
are valuing and appreciating these artists and their works, just as they might
a Picasso at the MoMA.

While public
appreciation of street art and museum art might be the same, do these works
enjoy the same intellectual property protection? Should Picasso receive more stringent
copyright protection than Banksy for his works, just because they might be hung
up inside a building as opposed to being physically painted on its outside
walls? This is the issue that has been raised in a recent set of
lawsuits brought by Mercedes Benz against James Lewis, Daniel Bombardier, Jeff
Soto, and Maxx Gramajo, street artists who have their work displayed in
Detroit, Michigan. 

In January
2018, Mercedes unveiled its
new G 500 truck. The company obtained
a permit from the Detroit
Film Office to photograph the vehicle at various areas throughout the city for promotional
materials. That month, Mercedes posted
photos of the new car on its
Instagram page. Some of these photos consisted of the car driving by murals
painted by the artists for the Murals in the Market festival in Detroit.

The posts were brought to the attention of the artists,
who allegedly
threatened to sue Mercedes
for copyright infringement if it did not pay them for use of their works. In
response, the car company sued the artists and sought declaratory judgment that
their depiction of artists’ murals in the posts were valid as a matter of law. In one
cause of action, the company
claimed an exemption for their photos under the Architectural Works Copyright
Protection Act (AWCPA).

The
AWCPA was passed in 1990 as
part of a series of amendments to copyright law to explicitly add architectural
works to the list of works entitled to copyright protection. The scope of
protection for these works is defined in 17 U.S.C. § 120. Subsection (a) explicitly excludes the right “to
prevent the making…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.” The House Report explained that this exemption was included
in part to protect the millions of tourists who visit the U.S. and take home
with them photos of the country’s architecture. Moreover, these photos do not
interfere with the owner’s economic exploitation of their architectural works. Mercedes
argued that the murals in questions are “part of an
architectural work” within the meaning of the statute, and are therefore exempt
from protection, ultimately making its Instagram posts totally legal.

The
artists filed a motion to dismiss arguing in part that § 120(a) should not prevent
infringement of any pictorial, geographic, or structural (PGS) work just
because it might appear on the outside of the architectural work. If Mercedes’
view prevailed, the artists urged that street art would be unprotected by
copyright. The artists relied
on Leicester v. Warner Bros.,232
F.3d 1212 (9th Cir. 2000) to support their argument that buildings were at one
time considered useful articles and were therefore unprotected by copyright,
but that this never prevented protection of the two-dimensional works depicted
on them. The artists pointed to Star Athletica L.L.C. v. Varsity Brands,
Inc., 137 S. Ct. 1002 (2017) for the argument that if a PGS work (their
murals) can be identified separately from the useful article on which it is
depicted (the buildings) it can still be protected. Further support for this
argument, they said, could be found in the House
Report, which directly acknowledged a situation in
which a PGS is embodied in the architectural work, and clarified that if the
owners of the PGS and the architecture were different, each could recover for
infringement.

Ruling on the motion to dismiss, the court found
reliance on Leicester to be misplaced because the court there sided with
the exact argument that Mercedes is making here: that the depiction of the PGS
in the depiction of the building was allowed under the new statute. Its
reasoning was that the term “architectural work” included “the arrangement and
composition of spaces and elements in the design of the building” as per its
definition in the statute. The PGS in question constituted one of those design
elements. The court also found reliance on Star Athletica to be
misplaced as the case did not deal with the right to photograph useful articles
that included PGS design elements.  Ultimately
the court denied the motion to dismiss and maintained that
Mercedes had a plausible claim of exemption under the AWCPA. 

As this case moves forward, it has the potential to better define copyright protections
for street art.  Should the murals be
seen as design elements of the architectural work, just as the court in Leicester
held, and be excluded from copyright protection in photographs of the
architectural works? Or should the murals be seen as independent PGS works that
lie separate from the architectural work, such that photographers of the
architecture must receive permission from the street artist owners of the murals
to use the photos? Holding one way over the other might penalize and
disincentivize people like Banksy and Basquiat, who have made names for
themselves from their street art, and artists like Lewis, Bombardier,
Soto, and Gramajo who are trying to do the same.