Federal Circuit Says Korean War Memorial Stamp Violated Sculptor's Copyright

By Dave Rein

Sometimes a 37¢ stamp does buy quite a bit.  One lucky sculptor, Frank Gaylord, may find that such a stamp could give him some extra spending money in the neighborhood of six or seven figures.

The Court of Appeals for the Federal Circuit recently reversed the lower court and ruled that the U.S. Postal Service violated Mr. Gaylord's copyright when it issued a stamp based upon a photograph of a sculpture called "The Column".  The Column is composed of 19 statutes representing a platoon of soldiers such as the one on the left and is part of the Korean War  Memorial.  

Years after the memorial was opened, the Postal Service decided to use a photograph of the Column that John Alli shot early in the morning after a snowstorm.  It paid Mr. Alli $1,500 to use the photograph.  

To show how difficult it can sometimes be to determine who owns a copyright, Mr. Alli believed he had authority to commercially exploit his photograph because he entered into a license agreement with an entity that said that it held the copyright in The Column.  Only later did Mr. Alli learn that Mr. Gaylord actually held the copyright.

While it may have been difficult for Mr. Alli to determine who owned the copyright in The Column, the government was certainly aware of Mr. Gaylord as it worked with him on certain aspects of The Column (the degree of which was disputed).  Surprisingly, it never required Mr. Gaylord to either share his copyrights or provide it with a license to use The Column. 

Mr. Gaylord sued the Postal Service claiming that he was owed a 10% royalty on the sales of $17 million worth of postage stamps plus other merchandise that featured images of the stamp.  

The parties agreed that Mr. Alli was entitled to his own copyright protection in his photograph as a derivative work. Although the parties stipulated that the photograph was a derivative work, as I noted elsewhere, this is still an open question.

There were multiple issues before the Federal Circuit, but the main one was whether or not the  stamp's depiction of The Column was fair use under 17 U.S.C. § 107.  It was not only the crux of the parties' argument, but also one of the first times that the Federal Circuit weighed in on fair use.

Typically, fair use is "for purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research", but it also applies more generally to uses that fall within the four statutory factors.  The Federal Circuit agreed that the stamp did not effect the potential market or value of The Column, but it found that the other three factors weighed against the government.

The parties' argument about the first factor, i.e. the purpose and character of the infringing use, centered on whether or not the stamp was "transformative" of the original sculpture.  Mr. Gaylord argued that the stamp could not be transformative because the stamp and The Column both have the same purpose of honoring the veterans of the Korean War.  The court agreed and rejected the government's argument that the addition of snow and muted colors enhanced the sculpture's surreal character because they do not change the  "character, meaning or message" expressed in the sculpture.   As the court said:  "Nature's decision to snow cannot deprive Mr. Gaylord of an otherwise valid right to exclude."  

The Court of Appeals also seemed troubled that the stamp did not comment upon the original work nor was it part of a biography.   It will be interesting to see whether this case will be interpreted as narrowing the test for what constitutes a transformative use. 

Because the stamp was not a transformative use and was for a commercial purpose, the court held the first factor weighed against fair use. The second (the nature of the copyrighted work) and third (the amount and substantiality of the portion used) factors also weighed against fair use according to the Federal Circuit.  At least one commentator believes that the Federal Circuit's decision was right.  

Regardless of whether it is right or not, this case illustrates the importance of licensing.  The government decided it did not need a formal agreement that allowed it to use the sculpture.  I applaud public entities for making sure that they treat artists fairly, but they also need to make sure that they think through the repercussions of not obtaining some protection in the form of joint ownership in the copyrights or a perpetual license to use the copyrighted works upon terms that are fair for everyone.  

Can Contract Law Tame Public Art Controversies?

By Dave Rein

The story of a thirty-two foot tall blue demon with glowing red eyes that that killed its famous creator and greets those arriving at the Denver airport was picked up nationally by the Wall Street Journal, the New York Times and other newspapers.  "Demon" is a bit strong as it was the long-awaited installation of Luis Jiménez's blue mustang commissioned by the Denver International Airport.  But, it has all the ingredients of an attention-getting story:  fame, money, death and even a protest using Facebook.

With some calling for the removal of the blue mustang from the airport, the DIA has been in an uncomfortable spotlight.  But, the DIA has one thing going for it.

Kudos should go out to whomever inserted a provision in the contract between the DIA and the artist that the statue remain in place for five years.  A short detour before I explain why . . . .

Is there any other legal reason why the statute would have to stay in its current location?  Some have suggested that the Visual Artists Rights Act (VARA) which provides artists with limited moral rights in addition to the usual copyright protection would prevent the DIA from removing the enormous mustang. That day may come, but as it stands now, I agree with the Patry Copyright Blog that nothing in the VARA would prevent the DIA from moving the blue mustang -- even if the artist believes that a different location alters the vision he or she had for the art.

An early decision interpreting the VARA (English v. BFC&R East 11th St. LLC) held that moving a sculpture does not, by itself, constitute "destruction, distortion or mutilation."  Although the courts have prevented some entities from moving a sculpture when it would destroy the work itself (i.e. Carter v. Helmsley-Spear), the DIA can rope and move the wild mustang without damaging it.

So why are kudos deserved?  Absent the contractual language, the DIA would have to take a side in the dispute -- understandably, politicians are not eager to take a position over public art that may alienate potential voters.  Likewise, the artist may welcome the attention.  After all, the whole idea of the art may have been to engage us in a conversation.  But, even someone like Jimenez (assuming he was still alive) who has works at the Smithsonian and in several cities -- including my own Kansas City, may not have the clout or financial wherewithal to wage a public relations campaign.  

A contract clause that keeps the art in place at a specific location for 5 years or even 1 year protects both the artist and the public entity that commissions the art from what usually amounts to a vocal minority of the public.  Such a clause effectively creates a "cooling off" period during which the public entity can state that its "hands are tied" because the contract requires the statute to remain in place. The artist can rest assured that for some period of time, his or her art will not be relegated to an obscure location or warehouse.  At the end of the cooling-off period, more reasoned decisions can be made.

Not every contract between an artist and a public entity should include such a clause, but it should be used more frequently than it currently is used.   After all, the blue mustang is hardly the first or last public art project to stir debate or passions.  Just last week, the Artist's Magazine Blog noted the "Money for a Bunny" controversy stemming from Sacramento's commission of a large red rabbit for its airport.  To round out our primary colors, I predict that an airport in the eastern United States will announce the commission of a green elephant -- you heard it here first!   

Sure contracts can be broken, but don't dismiss them as toothless wonders.  One only needs to look to see how the United States government was powerless to stop from giving $165 million or so in bonuses to those in the very unit of AIG that is the poster child for the world-wide economic debacle.

There is nothing wrong with controversy and it may be welcome.  But adding the contract clause should help both the artist and the public entity ride safely through the storm.