Street Photography and New York Law Concerning Right to Privacy: When Is a Photograph of a Person “Art” Protected by the First Amendment?
This is Volume 3, Issue No. 2 of Spencer’s Art Law Journal. This Fall issue contains excerpts from a recently published book, and two essays which will become available by posting on Artnet starting November 2012.
This issue opens with an excerpt from Michael Findlay’s new book, The Value of Art: Money, Power, Beauty. How the art world values art is important because the concept of “value” is at issue in art disputes, often to calculate the measure of damages for lost, stolen or damaged artwork. How value is assessed is also essential when deciding on the information disclosures and representations in art transactions.
The first essay (Stemming the Tide … ) discusses a development in federal law that eliminates the option of using the federal Lanham Act to sue experts over statements regarding authorship or authenticity of works of art. While this legal issue was most recently decided in federal court in New York in Gilbert v. Indiana, in a lawsuit against the artist Robert Indiana, this decision also benefits experts providing expert opinions about art. Eliminating Lanham Act claims is a particularly important development, and heartening to those who care about preserving the role of scholarship in the art world, because Lanham Act claims expose defendants to liability for up to three times the amount of actual damages plus the plaintiff’s attorneys’ fees. Such claims were therefore disproportionately likely to place extreme pressure on experts when a disgruntled owner challenges an opinion.
The second essay (Street Photography …) provides an introduction to the individual right of privacy and right of publicity, which is recognized in New York’s Civil Rights Law. These rights often come into conflict with those of artists, particularly photographers, when they depict individuals who then object to this use of their likeness. These disputes are particularly interesting because under New York law, there is a defense that the work at issue is “art,” which by its nature requires courts to decide, as a matter of law, what is “art.” By focusing on a recent lawsuit against street photographer Philip-Lorca diCorcia and diCorcia’s assertion of the “art” defense, the essay discusses the various ways that courts have attempted this definitional task.
Three times a year, issues of the Journal continue to address legal issues of practical significance for institutions, collectors, scholars, dealers and the general art-minded public.
For inquiries or comments, please contact the editor, Ronald D. Spencer, at Carter Ledyard & Milburn LLP, 2 Wall Street, New York, N.Y. 10005, by telephone at (212) 238-8737, or at [email protected]
STEMMING THE TIDE OF FEDERAL LITIGATION AGAINST ART EXPERTS AND AUTHENTICATION BOARDS FOR OPINIONS ABOUT THE AUTHENTICITY OF ART
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This essay examines recent court decisions precluding lawsuits under the federal Lanham Act about whether or not a named artist created a work of visual art. — RDS
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JUDITH WALLACE is a member of the Art Law Group at Carter Ledyard & Milburn LLP. She represents collectors, foundations, artists and scholars in matters of art ownership, authenticity, authorship, consignment and sales, foundation governance and other art-related matters.
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There has recently been much attention devoted to the potential liability of art experts who are asked for opinions about the authenticity of artwork, and the resulting impact on the market if experts refuse to express their views openly. Experts have been sued for expressing negative opinions that make artwork unmarketable, for expressing positive opinions that are relied on by purchasers but later called into question, for omitting a work from a catalogue raisonné, and even for declining to express an opinion or finding that it cannot determine whether a work is authentic or not. In addition, a number of artist-established foundations have closed down their authentication boards, citing fear of litigation.
The Lanham Act Is Limited
The claims against experts have been variedâ€”product disparagement, negligence, negligent misrepresentation, breach of contract, fraud, and more recently under the federal Lanham Act.
However, there may be one less weapon for disappointed owners who would sue those experts, based on the recent application of the U.S. Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp.1 to disputes relating to authorship of art by a federal court in New York.
Earlier this year, in the case of Gilbert v. Indiana, Judge Katherine B. Forrest of the U.S. District Court for the Southern District of New York found that the federal Lanham Act should not be regarded as authorizing a federal cause of action for a statement of whether a work of visual art is or is not by a named artist.2 This is significant because the federal Lanham Act allows the prevailing party to recover up to three times its actual damages and its attorneys’ fees, and therefore posed a particularly intimidating threat when asserted by angry owners of art. In the U.S. system, parties can usually recover only their actual damages but typically cannot recoverattorneys’ fees. In addition, lawsuits asserting violations of federal law are sometimes viewed by the public and the media as more substantial, more legitimate and more worrisome than lawsuits asserting common-law claims filed in state court.
Gilbert v. Indiana involved a statement by the artist Robert Indiana about his own work, in a dispute with someone who claimed a contractual right to pass off his own art as Indiana’s. The significance of the decision in Gilbert v. Indianaâ€”and the U.S. Supreme Court case that it appliesâ€”is important for scholars concerned about expressing opinions about art.
The federal Lanham Act is the primary federal trademark statute, and authorizes claims based on misrepresentations about the “origin” of goods. The term “origin” had been previously read broadly, as had similar provisions concerning misrepresentations about the nature, characteristics, or qualities of an artwork, and there have been a number of cases in which art experts have been sued under the Lanham Act for statements about the authenticity of art. This was problematic because it allowed owners of physical artwork to use U.S. intellectual property laws to sue, even though they did not own any copyright in the art at issue.3
However, in 2003, the U.S. Supreme Court held that “origin” does not mean “authorship,” and seems to eliminate such claims. In Dastar, the Supreme Court held that the Lanham Act provision applicable to claims made outside the context of commercial advertising4 applies only to claims relating to the producer or physical source of goods and not to claims concerning authorship.
Dastar concerned a television series that adapted, without attribution, portions of an original television series for which the copyright had expired. The series was based on a book by Dwight D. Eisenhower. The plaintiff owned the television rights to General Eisenhower’s book, as well as the exclusive right to distribute the television series on video and to sublicense others to do so.5 The Supreme Court held:
[A]s used in the Lanham Act, the phrase “origin of goods” is in our view incapable of connoting the person or entity that originated the ideas or communications that “goods” embody or contain. Such an extension would not only stretch the text, but it would be out of accord with the history and purpose of the Lanham Act and inconsistent with precedent.6
The court rejected the argument that “origin” denotes something like authorship for “communicative” products in which the purchaser would be primarily interested in “the creator of the content that the physical item conveys,” because construing the Lanham Act in that way would “cause the Lanham Act to conflict with the law of copyright, which addresses that subject specifically.”7 The Lanham Act “does not have boundless application as a remedy for unfair trade practices.”8
Dastar’s Limitation of Lanham Act to Be Read Broadly
Other cases decided since Dastar confirm that the Supreme Court’s decision should be read broadly to state a basic principle that the Lanham Act does not apply to claims regarding authorship of a creative work, and is not limited to the narrow factual circumstances of the Dastar decision, which involved a work that was in the public domain.9 In 2004, in Zyla v. Wadsworth, the First Circuit Court of Appeals affirmed the dismissal of a claim that a publisher falsely credited another author, confirming that under Dastar, “[c]laims of false authorship … should be pursued under the copyright law instead.”10 In a 2006 case involving the misrepresentation of purported author J.T. Leroy as an actual person,11 and again in a 2010 dispute between Gary Friedrich and Marvel regarding the “Ghost Rider” characters, courts in the Southern District of New York held that even though Dastar analyzed meaning of the word “origin,” which occurs in subsection (A) of the Lanham Act, which concerned statements outside of advertising, Dastar also applies to section (B), which concerns commercial advertising, and bars any Lanham Act claim concerning authorship.12
Finally, the decision in Gilbert v. Indiana confirms that Dastar should result in dismissal of a Lanham Act lawsuit regarding the accuracy of a statement about the creator of works of visual art. Because Gilbert v. Indiana involved an artist who disclaimed authorship and was sued for it, the decision confirms that Dastar does more than eliminate lawsuits that attempt to do an end run around the limitations of copyright law by raising a claim under the Lanham Act. Dastar forecloses any claim under the Lanham Act regarding the authorship of art.
It is important to anyone who cares about accuracy in art historical scholarship, and the security of art market transactions, to ensure that expertsâ€”including both scholars and artist-established foundationsâ€”are not inhibited from expressing opinions about authorship of art. While historical practice may have been different, present-day scholars, to avoid the appearance of impropriety, generally accept at most a modest fee for reviewing artwork (some accept no fee at all), and their fees are not typically based on either the value of the artwork as they value it or a percentage of the ultimate sale price.
Legal Defenses Available for Expert Expressions of Opinion
Experts also have the benefit of legal defenses. Under the New York state constitution, there is a qualified privilege for statements made where one has a legal or moral duty to speak, or in a communication from one person to another upon a subject in which both have an interest.13 For example, an artist and the author of the artist’s catalogue raisonné would have a shared interest in having the catalogue raisonné accurately describe the artist’s work. Moreover, even when a statement about a work of art is regarded as a contractual warranty, New York state and federal courts have applied a forgiving standard set forth in a federal district court opinion, Dawson v. Malina,14 which found that the standard for evaluating a breach of warranty is whether there was a reasonable basis in fact for an attribution of a work of art at the time the warranty was made, not whether the attribution can be proven to be true or false based on information that came to light after the sale.
Nevertheless, despite some strong legal defenses, experts have little interest in litigating these issues at their own expense, and sellers, auction houses and dealers that benefit financially from art sales have thus far been unwilling to make it a general practice to fully indemnify experts they consult against any claims. Therefore, although experts may care passionately about the accuracy of the record regarding an artist, and their reputations as experts on particular artists, they are reluctant to opine openly and on the record if they stand to gain little and risk litigation from deep-pocketed owners seeking damages or a humiliating retraction of the expert’s opinion. Another unfortunate side-effect of the fear of litigation is the potential that some experts will speak only off the record or in coded comments to the effect that they “like” or “don’t like” a pictureâ€”a situation that is rife with potential for ambiguity and misunderstanding. Thus, while there is still a long way to go toward resolving these issues, the elimination of Lanham Act claims is a step in the right direction toward protecting independent scholarship’s role in the art world.
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1 539 U.S. 23 (2003).
2 See Gilbert v. Indiana, No. 09-CV-6352, 2012 WL 688811 (S.D.N.Y. March 2, 2012). The author, with Gary D. Sesser and Ronald D. Spencer of Carter Ledyard & Milburn LLP, was counsel for defendant Robert Indiana.
3 Under U.S. law, the copyright in a work of art does not belong to the owner of the physical artwork unless copyright has been explicitly transferred by the holder of the copyright in a signed writing. See 17 U.S.C. Â§ 204.
4 Section 43(a)(1)(A). This provision governs statements made outside the context of commercial advertising.
5 See Dastar, 539 U.S. at 26.
6 Dastar, 539 U.S. at 32.
7 Dastar, 539 U.S. at 33.
8 Dastar, 539 U.S. at 29 (quoting Alfred Dunhill, Ltd. v. Interstate Cigar Co., 499 F.2d 232, 237 (2d Cir. 1974)).
9 See Atrium Group de Ediciones y Publicaciones, S.L., v. Harry N. Abrams, Inc., 565 F. Supp.2d 505, 512 (S.D.N.Y. 2008) (Dastar not limited to claims concerning works in the public domain) (collecting authorities from other courts and circuits).
10 Zyla v. Wadsworth, 360 F.3d 243, 252 (1st Cir. 2004).
11 Antidote International Films, Inc. v. Bloomsbury Publishing, PLC, 467 F. Supp.2d 394, 400 (S.D.N.Y. 2006).
12 Gary Friedrich Enterprises LLC v. Marvel Enterprises, Inc., 713 F. Supp.2d 215, 234, n. 32 (S.D.N.Y. 2010)
13 See, e.g., Chandok v. Kleissig, 632 F.3d 803 (2d Cir. 2011). A living artist also has the right of attribution and right of integrity under the federal Visual Artists Rights Act, 17 U.S.C. 106A, which allow the artist to prevent the use of his or her name with a work the artist did not create or that is a distortion or modification of the artist’s work that is prejudicial to the artist’s reputation.
14 Dawson v. G. Malina, Inc., 463 F. Supp. 461 (S.D.N.Y. 1978).
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