Graffiti on buildings, in alleys, and on trains – sometimes signed, sometimes anonymous, and usually unwanted by the property owner. However, often these creations are both beautiful and edgy. A perfect match for marketing clothing whose image so desperately wants to align! Many brands attract customers based on advertising themselves as street-savvy and edgy. And, while many graffiti artists often do not seek attribution, for obvious legal reasons, that does not necessarily mean that their artwork is free to use by others.

In recent years, the issue of unauthorized use of graffiti in advertising has bubbled up frequently. In 2014, David Anasagasti, a well-known street artist in Miami, sued American Eagle for copyright infringement, alleging unauthorized use of his signature “droopy eyes” in their advertisements. American Eagle used the imagery on their website, as part of their social media presence, as well as in store displays globally. The case ended in a private settlement.

In the same year, the Italian brand Roberto Cavalli was sued by a group of graffiti artists from California for allegedly using their artwork on the Just Cavalli line of clothing.

The most recent case sparking off a fresh round of discussion on the topic involves H&M, who received a cease and desist letter from Jason “Revok” Williams, over the use of a mural he created in Brooklyn in their ads. In response, H&M filed a lawsuit asking the court to declare that Williams had no copyright to assert because his art was a criminal act. Possibly due to pressure from street artists’ and supporters’ calls for a boycott, H&M withdrew the lawsuit in March 2018.

Does Copyright Protect Graffiti?

United States Copyright law, as stated in 17 U.S.C. §102(a) states that copyright protection subsists “in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Copyright protection is derived from the US Constitution, specifically Article 1, Section 8, Clause 8, which states “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

Another recent case, 5pointz, turned on the Visual Artists Rights Act (VARA) protection granted to artists of authorized works. While street art, the murals at issue were there with the permission of the property owner. This case was a little different in that, the artists had permission to create their murals, with a verbal warning that it could be destroyed at any time. While that case found in favor of the artists, the decision may have had more to do with the “willful” destruction of the street art without sufficient warning to the artist.

VARA, enacted in 1990, recognized moral rights of artists to their visual works of arts. Codified in 17 U.S.C. § 106A, VARA grants authors of visual work additional rights regarding attribution of the visual art. Specifically, the moral rights of artists of VARA-protected works must be disclaimed, in writing, which did not occur in the 5pointz case.

What does this mean going forward?

Many of the defendants in recent copyright infringement cases involving graffiti have been slow to respond to why they did not simply ask for permission. Some, like H&M, may have been hoping to rely in the defense that unauthorized graffiti is un-copyrightable because it is not legal. Others may have been unable to contact the original artist, or assumed they would not take action to protect their intellectual property.

Additionally, property owners, such as those in the 5Pointz case, should not assume that they have the right to destroy or mutilate artwork without obtaining required permits, permission from the artists, or by obtaining a VARA waiver in advance.

Getting a federal court decision stating that graffiti is protected by copyright could have some interesting implications. It will certainly increase the likelihood that retail companies will due additional due diligence to clear the use of graffiti in advertising or, alternatively, not use unauthorized graffiti at all. Additionally, while H&M’s production agency did contact the New York City Parks and Recreation Department for permission, the inability to find an author may not be enough to protect against an infringement allegation in the future.

Likely, some types of commercial use will still be allowed – currently for architectural and visual works the exceptions of Fair Use and Incidental Use apply to accusations of infringement. For example, the recent Gayle v. Home Box Office, 17-CV-5867 (SDNY May 1, 2018) dismissed an alleged copyright infringement case concerning a shot of graffiti on a dumpster that appeared in the HBO series Vinyl. Interestingly, the court in Gayle did not directly address the question whether graffiti was generally protected by copyright. Instead, the court ruled that the graffiti in question was “never fully visible, let alone legible” and was, therefore, de minimus.

However, commercial users – such as retailers, film studios, etc. – will need to be careful to ensure that, if graffiti features prominently in the commercial use, permission is obtained. Otherwise a lawsuit could follow. And, while all of the lawsuits involving graffiti have settled to date, it may not be cheap to do so.

So, while existing graffiti may indeed provide a tempting edge for a new marketing campaign, or as the backdrop for a great commercial, companies will need to decide if it is worth the legal or public relations risk. If the original graffiti artist cannot be found, or is unwilling to allow their art to be used, it may end up being less expensive to start from scratch than to manage the fallout from an allegation of stolen artwork, damaged reputation, and a lawyer for the lawsuit that follows.