court finds that transferring title to mural also transferred (c); VARA and CMI claims against ad also fail

Williams v. Hy-Vee, Inc., --- F.Supp.3d ----, 2023 WL 3602813, No. 4:22-cv-00025-RGE-HCA (S.D. Iowa Mar. 15, 2023)

Williams, a professional artist, was commissioned to paint an abstract mural on the wall of a building located in Des Moines, Iowa.  The contract provided that the buyer would own the “Work” once it was paid for and that “Purchaser and/or building owner may not copyright, reproduce, or merchandise images of the Work without the Artist’s written consent in advance.” The agreement also stated: “The Purchaser will not permit any use of the Artist’s name or misuse of the Work which would reflect discredit on his/her reputation as an artist or which would violate the spirit of the Work.” In the completed mural, William’s initials (“CAW”) and his Instagram username (“@KingCaw”) were included in the lowermost opposing corners.

a picture of the Williams mural

Hy-Vee, a grocery chain, aired a commercial during Super Bowl LIII, which featured portions of the mural. A longer version of the commercial was also posted on Hy-Vee’s Facebook page.

The central portion of the mural is depicted in the commercial, but not the lower right- and left-hand corners of the mural. Williams registered his copyright and sued, alleging infringement, violation of VARA, and §1202 violations. Hy-Vee counterclaimed for declaratory judgment that Williams’s copyright registration certificate for the mural is invalid because Williams knowingly provided inaccurate information to the Register of Copyrights when he filed his copyright registration application.

Williams wasn’t entitled to a rebuttable presumption that he was the copyright owner because he only submitted a copy of his Public Catalog search results, not his certificate of registration. The court found that the only reasonable interpretation of the contract was that “Work” referred to both the physical mural and the copyright. If the agreement was terminated before payment, the contract provided “all rights of ownership in the concept, design, and Work itself” to Williams, but didn’t reserve those rights if it was completed and paid for. “This omission is telling.” Reading the other provisions “to silently reserve to Williams the same rights expressly reserved in the immediately preceding clause would frustrate this objective” by rendering the express  reservation of Williams’s ownership rights in the “concept” and “design” of the mural superfluous. The requirement that the owner couldn’t “copyright, reproduce, or merchandise images of the Work without the Artist’s written consent in advance” wasn’t the same thing as a reservation of copyright. This provision didn’t make the copyright unusable, just restricted some of the rights in a copyright. Williams’s other arguments relying on extrinsic evidence thus couldn’t be considered because the contract wasn’t ambiguous.

VARA: VARA immunizes from liability “any reproduction, depiction, portrayal, or other use of a work in, upon, or in any connection with any item” enumerated in the Copyright Act’s list of items excluded from its definition of a “work of visual art,” including any “motion picture or other audiovisual work.” Thus, VARA’s attribution right did not apply to the commercial.

§1202 CMI removal: Although CAW/the Instagram handle met the definition of CMI, Hy-Vee didn’t violate §1202 by filming only sections of the mural without that CMI. The depiction of the center portion of the mural in the commercial didn’t constitute a “transfer or moving” of Williams’s copyright management information, nor a “change” in the substance of this information. The court didn’t reach the speculative allegation that the CMI might have been cropped in post-production.

Worse for Williams, Hy-Vee made out a prima facia case that the registration was invalid because Williams claimed he owned “all of the rights” in the mural. The court was required to seek the Copyright’s Office at this point, so it didn’t fully resolve the invalidity issue. In response to Hy-Vee’s argument that he knew he didn’t own the rights, he submitted sworn affidavits from himself and the executive director of the organization that hired him to paint the mural, both attesting to their understanding that copyright in the mural was reserved to Williams. But “[g]iven the terms and context of the Agreement, Hy-Vee has ample factual support to allege Williams either knew or was willfully blind at least to the necessity of transferring the right to publicly display the mural to 6th Avenue Corridor.” At the very least, the court reasoned, he’d transferred the right to publicly display the mural, since by its nature it was publicly displayed.

This fact alone provides strong basis for Hy-Vee’s allegation Williams knew he did not own all rights in the mural. It is more than plausible 6th Avenue Corridor would have acquired the right to publicly display the mural—the only way possible to display the mural—along with physical ownership of the mural. Williams’s argument that 6th Avenue Corridor was merely granted a “limited, non-exclusive license” to publicly display the mural is unconvincing. Williams fails to explain how the right to publicly display a mural fixed on the exterior of a building could be non-exclusive. conclude Williams retained ownership of the right to publicly display the mural would create an absurd and inefficient division of ownership.

[FWIW, I think the contract interpretation is wrong but plausible, but this part is just wrong, and continues the conflation between the work and the copy. §109 limits the public display right when someone is publicly displaying a lawfully made work they’ve purchased (without further transmission elsewhere). So it’s perfectly reasonable for Williams to believe he retained the entire public display right, subject to §109 and other limitations provided for by law.]