Mercedes Drives Suits Against Artists Forward

Advertising Law

Four street artists can’t avoid a ride with Mercedes-Benz (“Mercedes”) in the auto manufacturer’s actions seeking a declaration that Mercedes’ posting of photographs on social media that depict the artists’ murals painted on public buildings did not violate their copyright.

In January 2018, Mercedes commissioned photographs of its new G 500 Series truck parked and driving through the streets of Detroit and obtained a permit from the city of Detroit to photograph various locations throughout the city, including where the street artists’ murals are located. The car company posted to its Instagram account six photographs from the G 500’s journey through Detroit, each of which depicted the artists’ murals in the background.

About a year after the photos were posted, the four artists—Daniel Bombardier, James “Dabls” Lewis, Jeff Soto and Maxx Gramajo—hired an attorney to send letters in which they “threatened to file a copyright infringement lawsuit against Mercedes based on Mercedes[’] depiction of the … mural,” according to Mercedes. Mercedes filed declaratory judgment actions against the four street artists, seeking a declaration that the pictures did not infringe their copyrights and were a fair use of the murals, when the infringement threats continued even after the car company removed the photographs from its Instagram account.

In a motion to dismiss the actions, the artists argued that the suit was not ripe for adjudication because they have not registered copyrights in the murals, that Mercedes failed to state a claim under the Architectural Works Copyright Protection Act (AWCPA) and that the court lacked personal jurisdiction over them.

But U.S. District Court Judge Avern Cohn disagreed, denying the motion to dismiss.

Mercedes was not required to wait until the artists registered their murals with the Copyright Office, because a case or controversy already existed between the parties, the court explained, making the dispute ripe for adjudication. The court was not convinced by the artists’ reliance on the Supreme Court’s recent decision in Fourth Estate Publishing Ben. Corp. v. Wall-Street.com, LLC, stating that Fourth Estate did not address an action seeking a declaration of noninfringement.

“Here, defendants threatened to sue for copyright infringement,” the court said. “The complaint alleges that defendants made adverse claims against Mercedes based on their claimed rights in the murals and threatened to sue Mercedes. Under the standard for declaratory relief, the complaint states a ripe claim.”

Turning to Mercedes’ AWCPA claim, the court explained that the statute provides “an important right of the public to take pictures of buildings that are publicly visible, free from any claim of copyright infringement.”

While the artists told the court that applying the statute would be “unjust” because it would allow anyone to distribute copies of an otherwise copyrightable work, the court rejected this argument, relying on case law from the U.S. Court of Appeals, Ninth Circuit.

A plaintiff may have an infringement claim where, for example, a defendant created a reproduction of a sculpture divorced from the context of the building in which it was embodied, the court said, but the statute protects parties from infringement claims based on a photograph of the building that included the sculpture as a design element of the building.

The defendants were similarly unable to persuade the court that it lacked personal jurisdiction over the artists.

By creating the murals at issue in Detroit and attempting to block Mercedes from using the photographs of the cityscape, the artists purposefully availed themselves of the privilege of acting within the state of Michigan, Judge Cohn wrote.

To read the memorandum and order in Mercedes Benz USA, LLC v. Lewis, click here.

Why it matters: The case presents an important question for advertisers and artists alike about the boundaries of copyright protection and fair use. It is worth noting that in a copyright infringement action against General Motors by a graffiti artist in 2018, a California court refused to hold as a matter of law that a mural created by the artist on the walls of a parking garage was part of an architectural work. That case settled out of court following the court’s denial of General Motors’ motion for summary judgment on the infringement claim. While there are factual and procedural differences between the two cases that contributed to the different outcomes, advertisers should use caution in using any photographs that contain murals and other pictorial, graphic and sculptural (PGS) works that are part of public buildings or other architectural works.