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Without my Permission: photographing public sculptures

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Sculptures enliven public spaces and often become popular destinations and enduring points of reference for locals and tourists alike.  Think of the Statue of Liberty, Michelangelo’s David or the J.F. Archibald Memorial Fountain in Hyde Park, Sydney.  Many thousands of people have posed for photographs in front of these artistic creations.  The recent settlement achieved for a U.S. sculptor for unauthorised use of a photo of his public sculpture engages the debate about the radical differences between Australian and U.S. laws on copyright for sculptures.  In Australia, the Copyright Act 1968 (Cth) (Copyright Act) specifically allows the taking, and use of, photos of public sculptures without the sculptor’s permission.  In the U.S., it’s copyright infringement. Arts Law is lobbying for change to the law in Australia, recognising that monetizing images of iconic public artworks is potentially an important source of income for the artist.

 

Australian law on Sculptures in public

The exception to copyright infringement under Section 65 of the Copyright Act allows anyone to make drawings, take photographs or film a sculpture that is on permanent public display, without infringing copyright in the sculpture.  A work is on permanent public display where it is in premises open to the public or permanently in a public place.  Permitted reproductions extend to the adaptation of the work into digital form for both commercial and non-commercial reproductions.  However the exception does not extend to other artistic works, such as paintings, murals or mosaics that may be permanently on public display.  In these circumstances, permission of the copyright owner is required to avoid infringement.

As a consequence, where sculptures are on permanent public display in Australia, commercial uses are allowed without the permission or remuneration of the sculptor.  That is, a sculptor has no legal grounds to demand payment for any visual reproduction of the sculpture as his or her copyright does not extend to the general control of reproduction rights if the sculpture is publicly situated.  The rationale behind the section 65 exception appears to be the difficulty in controlling or preventing the copying of public artworks such as in stopping tourists from taking photographs of sculptures.  The logic is flawed when one considers that the rule is not applied to public murals or even graffiti.

 

Fair dealing versus fair use

Setting aside Section 65 for a moment, there have always been exceptions to copyright infringement in both Australia and the U.S., although the scope of the exceptions are radically different.

In Australia, the Copyright Act 1968 (Cth) (Copyright Act) provides that creators have exclusive rights to reproduce, publish and communicate the creative work to the public.  The Australian ‘fair dealing’ exceptions to copyright infringement contained in ss40-43(2) and ss103A-103C of the Copyright Act allow for the use of copyright material without permission for the purposes of research or study, criticism or review, parody or satire, reporting the news and incidental use in film and television broadcasts.[1]  In determining whether a ‘dealing’ with copyrightmaterial is fair, the purpose and character, the nature of the work, the possibility of obtaining the work commercially, and the effect of the dealing on the value of the work are factors which must be acknowledged.[2]

The U.S. ‘fair use’ doctrine contained in Section 107 of the U.S. Copyright Act is much broader, providing that a “fair dealing”, “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright”[3](emphasis added). When evaluating whether a use is fair, U.S. courts are required to consider four mandatory but non-exclusive “fair use factors”: the purpose and character of the use (including whether the use was transformative) and whether the use is of a commercial nature or for non-profit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.  Interestingly, it has been suggested that the purpose of the U.S. Copyright Act ‘is not to reward authors, but to achieve progress in the arts and sciences’[4] which is “furthered by the creation of transformative works”[5].

While a cursory glance at the U.S. and Australian provisions dealing with permitted exceptions to copyrightinfringement shows similar exceptions and considerations, the devil is truly in the details.  The U.S. listed uses are not exhaustive and in practice the doctrine provides less certainty in relation to when the exception can be relied upon.  What actually ‘constitutes’ a fair use of copyright works without permission is arguably a much broader definition relying on the court’s interpretation of the fair use factors.[6]

However, because of Section 65 of the Copyright Act, when it comes to sculptures on permanent public display, the Australian law is far more permissive.  There is no argument of fairness at all – reproducing images of public sculptures is simply allowed.    

(For more information see Arts LawCopyrightinformation sheet and the Australian Copyright Council'Fair dealing' information sheet).

 

The commercial use of a photographic reproduction of a sculpture

Frank C. Gaylord II was a passionate sculptor from an early age.  Born in 1925 in West Virginia, Gaylord began carving African predators from bars of soap and dreamt of directing his passion for drawing and art into a career.[7]  Gaylord was drafted at the age of 18 to serve during WWII, but maintained his passion by sketching his fellow soldiers.[8]  Upon discharge, Gaylord picked up his artistic aspirations and proceeded to study at the Temple University's Tyler School of Fine Art.[9]  After graduating in 1950, Gaylord moved to Barre Vermont to continue honing his skills under mentor and noted Vermont sculptor Bruno Sarzanini.[10]

In 1986, the U.S. Congress enacted legislation for the construction of a memorial for the National Korean War Veterans Memorial in Washington D.C. to honour Korean War Veterans.[11] The American Battle Monuments Commission proceeded to sponsor a Memorial design competition.[12]  The winning design originated from a team from Pennsylvania State University and although they eventually withdrew, their proposal of a field of 19 (reduced from 38) larger-than-life soldiers was influential on the final Memorial design.[13]

The eventual winning design team, Cooper-Lecky Architects, P.C., was commissioned to create, construct and install the Memorial.  Subsequently, they ran a competition to source a sculptor, to complete the Memorial.[14] A nationally recognized sculptor by this stage, Gaylord won the competition.

In 1990, Gaylord became the main sculptor on the Memorial project titled “The Column” and utilised many previous sketches of fellow soldiers he had drawn during his service.[15]  Manufactured in stainless steel, the eventual placement of the sculptures was meant to give the appearance of soldiers emerging from the woods onto the fields of Korea.[16] From 1990-1995, Gaylord applied for and was granted five copyright registrations which listed him as the sole author of the sculptures.  These registrations included the soldiers as clay models as well as the final stainless steel castings.[17]

The Memorial was dedicated in 1995.  In 1996, amateur photographer and veteran John W. Alli took numerous photographs of the Memorial as a gift for his father, a Korean War veteran himself.[18]  When Alli decided to sell prints of his photos he tried to locate the copyright owner of the sculpture to seek permission.  His enquiries led him not to Gaylord, but to Mr Lecky of Cooper-Lecky who held himself out as the sole owner of the copyright.  As the claimed copyright owner of the underlying work, Lecky proposed to grant a copyright licence to Alli which required Alli to pay a 10% royalty to Mr Lecky on each sale.[19]  Notice of this arrangement was not given to Gaylord.[20]

In 2003, the U.S. Postal Service issued a commemorative stamp, using Alli’s photograph, to commemorate the 50th Anniversary of the armistice of the Korean War.[21]  Alli was paid a licensing fee of $1500 for the use of the photo on the stamp.[22]  The Postal Service produced over 86 million stamps from 2003 – 2005, and sales from the stamp and related retail goods were estimated to be over US$30.2 million.[23]  Gaylord was never approached for his permission in relation to either the stamp or retail goods depicting the sculptures.

In 2006, Gaylord sued the U.S. Government alleging copyright infringement and claiming a 10% royalty.[24]  In the Court of Federal Claims, the Government first claimed that the use of the stamp was “fair use” and therefore exempted from copyright liability.[25]  Secondly, it argued that it had an unlimited licence in the sculptural work as a joint author and thirdly, that the work was an architectural piece[26]and therefore photographs of it fell within another exception to copyright infringement under U.S. law.[27]  The Court of Federal Claims found that the work was not an architectural work[28]and Gaylord was the sole copyright owner in The Column.  The Court considered all four fair use factors, and placed great weight on the purpose and use of the photograph on the stamp as a ‘transformative use’ which gave the original work “a new and different character and expression”[29]and therefore constituted a ‘fair use’.[30]

On appeal, the decision was overturned by the U.S. Court of Appeals for the Federal Circuit which disagreed with the focus of the Court of Federal Claims upon the nature of the photo and the conclusions that the use of the photo on the stamp was ‘transformative’.  The Court found that the use of the photograph of the sculpture on a postage stamp did not serve any new purpose beyond that of the original sculpture, (which was to honour Korean War veterans), did not give a different character to the piece (even through muting colours), was a commercial use and was not used for commentary or criticism.[31]  In light of these findings, the Courts determined that the use of ‘The Column’ on the stamp did not constitute ‘fair use’[32]and furthermore “allowing the government to commercially exploit a creative and expressive work did (will) not advance the purposes of copyright”.[33]

On remand for damages, the Court of Federal Claims denied awarded Gaylord a lost licence fee of $5,000 as a lump sum royalty, for the copyright infringement based on the highest past licence payment paid by the U.S. Postal Service.[34]  Gaylord appealed the decision on the basis that the correct measure of damages was not what the U.S. Postal Service paid others in the past but the terms on which he would usually have granted a copyright licence.  He submitted that his fee was normally a percentage of the retail price which based on 10% of the U.S. Postal Service’s sales of approx. US$30 million would be several million dollars.[35]  The U.S. Court of Appeals for the Federal Circuitupheld his appeal in part finding that it was relevant to consider the fair market value of such a licence to both the copyright owner or licensor and the copyright licensee when calculating damages.[36]  The case has been remanded to the lower court to assess damages.

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Conclusion

This case highlights the radical difference in treatment of sculptors in Australia and the U.S.  It’s difficult to argue that as a matter of fairness Gaylord shouldn’t have been entitled to share in the benefits of the commercial exploitation of his work.  However, in Australia, Section 65 means that Gaylord would have had no such entitlement.  In stark contrast, had his work involved a column of soldiers rendered on a wall as a mural, an Australian court would have made finding similar to the U.S. court.  Gaylord’s case provides an interesting contribution to the debate in the U.S. as to what constitutes ‘fair use’ for sculptors in relation to commercial exploitation of sculptures permanently on display.  In addition, it highlights the inequity in the Australian system, and supports the argument in favour of amending section 65 to further acknowledge sculptor’s rights by specifically excluding reproductions of public artwork made or used for commercial purposes.  Arts Law strongly believes that sculptors in Australia should not be treated differently to other visual artists.  As such, Arts Law will continue to advocate for these changes to protect the rights of the artist to benefit financially from their work by preventing unauthorised commercial exploitation of their work.  

 

 


[1] ss40-43(2) and ss103A-103C of the Copyright Act.

[2]ss40-43(2) and ss103A-103C of the Copyright Act.

[3]Section 107 of the US Copyright Law. 17 U.S.C. § 107.

[4]Gaylord v. United States,85 (Fed. Cl. 59, 69, Dec. 16 2008).

[5]  Gaylord v. United States,No. 2009-5044 (Fed. Cir.3d, Feb. 25, 2010); http://www.leagle.com/xmlResult.aspx?xmldoc=In%20FCO%2020100225206.xml

[6]Australian Copyright Council'Fair use what you need to know’ information sheet.

[8]Shearer, Connie. “Making of a Monument: West Virginian Designs Memorial for Sometimes Forgotten Korean War.” Charleston Gazette. July 16, 1995.

[15]Kilian, Michael. “'Forgotten War' Remembered.” Chicago Tribune. July 27, 1995.

[19]There was no question under U.S. law that Alli was entitled to his own copyright protection in his photograph as a derivative work. In the U.S. a derivative work is an expressive creation that includes major, copyright-protected elements of an original, previously created first work (the underlying work).In 2006, “Mr. Gaylord sued Mr. Alli for copyright infringement for sales of the photograph, and in a settlement agreement Mr. Gaylord agreed to pay Mr. Alli 10% of any recovery from his suit against the government in exchange for 10% of Mr. Alli’s future sales of his photograph and 25% of any compensation Mr. Alli received by licensing the photograph”. Gaylord v. United States, No. 2011-5097(Fed. Cir.3d, May. 14, 2012); http://cyber.law.harvard.edu/people/tfisher/IP/2010_Gaylord.pdf

[23]http://cyber.law.harvard.edu/people/tfisher/IP/2010_Gaylord.pdf;

Gaylord v. United States, No. 2011-5097 (Fed. Cir.3d, May. 14, 2012).

[24]Gaylord v. United States, No. 2011-5097 (Fed. Cir.3d, May. 14, 2012).

[26]“The Architectural Works Copyright Protection Act (“AWCPA”), Pub. L. No. 101-650, 104 Stat. 5133 (1990), extended copyright protection to architectural works. A limitation on such copyright protection was codified in 17 U.S.C. § 120, which states that copyright protection in an architectural work “does not include the right to prevent the making, distributing, or public display 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.” Gaylord v. U.S., 85 Fed. Cl. 59, 69 (2008) Therefore, pictorial representations of architectural works are allowed.

[29]Above n 4.

[31]Above n 5.

[32] Above n 5.

[33]Above n 5.

[35] Above n 24.

[36] Above n 24.

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