988 F.Supp.2d 212 (E.D.N.Y 2013), 13-CV-5612 (FB) (JMA), Cohen v. G&M Realty L.P.

• Docket Number: 13-CV-5612 (FB) (JMA)
• Citation: 109 U.S.P.Q.2d 1869,988 F.Supp.2d 212
• Date: 20 November 2013
• Parties: JONATHAN COHEN, SANDRA FABARA, STEPHEN EBERT, LUIS LAMBOY, ESTEBAN DEL VALLE, RODRIGO HENTER DE REZENDE, DANIELLE MASTRION, WILLIAM TRAMONTOZZI, JR., THOMAS LUCERO, AKIKO MIYAKAMI, CHRISTIAN CORTES, DUSTIN SPAGNOLA, ALICE MIZRACHI, CARLOS GAME, JAMES ROCCO, STEVEN LEW, and FRANCISCO FERNANDEZ, Plaintiffs, v. G& M REALTY L.P., 22-50 JACKSON AVENUE O
• Court: U.S. District Court — Eastern District of New York

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988 F.Supp.2d 212 (E.D.N.Y 2013)

109 U.S.P.Q.2d 1869

JONATHAN COHEN, SANDRA FABARA, STEPHEN EBERT, LUIS LAMBOY, ESTEBAN DEL VALLE, RODRIGO HENTER DE REZENDE, DANIELLE MASTRION, WILLIAM TRAMONTOZZI, JR., THOMAS LUCERO, AKIKO MIYAKAMI, CHRISTIAN CORTES, DUSTIN SPAGNOLA, ALICE MIZRACHI, CARLOS GAME, JAMES ROCCO, STEVEN LEW, and FRANCISCO FERNANDEZ, Plaintiffs,

v.

G& M REALTY L.P., 22-50 JACKSON AVENUE OWNERS, L.P., 22-52 JACKSON AVENUE, LLC, ACD CITIVIEW BUILDINGS, LLC, and GERALD WOLKOFF, Defendants

No. 13-CV-5612 (FB) (JMA)

United States District Court, E.D. New York

November 20, 2013

Page 213

For the Plaintiffs: JEANNINE LEIGH WIDMER CHANES, ESQ., Law Offices of Jeannine Chanes, New York, NY.

For the Defendants: DAVID EBERT, ESQ., MIOKO TAJIKA, ESQ., Ingram Yuzek Gainen Carroll & Bertolotti, LLP, New York, NY.

OPINION

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MEMORANDUM

FREDERIC BLOCK, Senior United States District Judge.

On November 12, 2013, the Court issued an order denying plaintiffs' application for a preliminary injunction and stated that a written opinion would soon follow.¹ This is that opinion.

By issuing its order, the Court decided that the plaintiffs were not entitled to a preliminary injunction under the Visual Artists Rights Act of 1990 (" VARA" ), 17 U.S.C. § 106A, to prevent the destruction of their paintings that adorned the exterior of the buildings owned by the defendants, which are scheduled for demolition.² The case has received wide media coverage because the buildings, located in Long Island City, had become the repository of the largest collection of exterior aerosol art (often also referred to as " graffiti art" ) in the United States, and had consequently become a significant tourist attraction--commonly known as 5 Pointz.

This marks the first occasion that a court has had to determine whether the work of an exterior aerosol artist--given its general ephemeral nature--is worthy of any protection under the law.

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Plaintiffs invoke that part of VARA which gives the " author of a work of visual art" the right to sue to prevent the destruction of his or her work if it is one of " recognized stature." ³ VARA recognizes that a work of visual art " may be incorporated in or made part of a building," and includes within its protective reach any such work that was created after its enactment on June 1, 1991, unless a written waiver was obtained from the artist. See 17 U.S.C. § 113(d)(1).

Whether a protected work is of " recognized stature," is " best viewed as a gate-keeping mechanism." Carter v. Helmsley-Spear, Inc., 861 F.Supp. 303, 315 (S.D.N.Y. 1994), rev'd and vacated in part and aff'd in part, by 71 F.3d. 77 (2d Cir. 1995). Accordingly, since plaintiffs' works post-dated VARA and no written waivers were obtained, the Court held a preliminary injunction hearing on November 6-8, and ordered the parties " to be prepared to address, inter alia, whether each plaintiff's work was of " recognized stature." ⁴

At the hearing, the Court heard testimony from three of the 17 plaintiffs, the defendant Gerald Wolkoff, who is the principal owner of the defendants' real estate development companies, and purported expert witnesses from each side. The Court also received as evidence a number of exhibits, including 24 photographs of the plaintiffs' paintings--which until two days ago were on the walls of 5Pointz--that they claim were works of " recognized stature." Several of the 24 works are reproduced in an appendix to this opinion. Before exploring the evidence in order to make the requisite relevant findings of fact under Fed.R.Civ.P. 65, it would be useful to first examine the principal aspects of VARA for an understanding of its purpose and reach in its grand design to protect the work of the visual artist.

I

The Second Circuit's decision in Carter is the appropriate starting point. In sum, the court explained that VARA amended existing copyright law to add protections for two " moral rights" of artists: the rights of attribution and integrity . Moral rights are distinct from general copyrights, and they rest upon the " belief that an artist in the process of creation injects his spirit into the work and that the artist's personality, as well as the integrity of the work, should therefore be protected

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and preserved." Carter, 71 F.3d at 81. As noted by the circuit court in Carter, the right of attribution:

generally consists of the right of an artist to be recognized by name as the author of his work or to publish anonymously or pseudonymously, the right to prevent the author's work from being attributed to someone else, and to prevent the use of the author's name on works created by others, including distorted editions of the author's original work.

Id. The right of integrity " allows the author to prevent any deforming or mutilating changes to his work, even after title in the work has been transferred." Id. And " [i]n some [international] jurisdictions the integrity right also protects artwork from destruction." Id. By enacting VARA, Congress made the latter a federal right. Thus, whether viewed as a subset of the right of integrity, see 17 U.S.C. § 106A(a)(3), or, as conceptualized by the circuit court in Carter, as a separate right, VARA protects against the destruction of works of visual art, but only if they are works of " recognized stature." 71 F.3d at 83 (" With numerous exceptions, VARA grants three rights: the right of attribution, the right of integrity and, in the case of works of visual art of 'recognized stature' the right to prevent destruction." ).

The Second Circuit in Carter noted that VARA carved out a number of exceptions. For example, it observed that a " work of visual art" is defined by the Act " in terms both positive (whet it is) and negative (what it is not)." Id. at 83-84. Thus, the definition includes " 'a painting, drawing, print, or sculpture, existing in a single copy' or in a limited edition of 200 copies or fewer,'" but excludes " 'any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audio-visual work.'" Id. at 84 (quoting 17 U.S.C. § 101). Therefore, as explained in Carter, " Congress meant to distinguish works of visual art from other media, such as audio-visual works and motion pictures, due to the different circumstances surrounding how works of each genre are created and disseminated." Id. Although " this concern led to a narrow definition of works of visual art," id., the Second Circuit adopted the language of the House Report that:

[t]he courts should use common sense and generally accepted standards of the artistic community in determining whether a particular work falls within the scope of the definition. Artists may work in a variety of media, and use any number of materials in creating their work. Therefore, whether a particular work falls within the definition should not depend on the medium or materials used.

Id. (quoting H.R. Rep. No. 514, at 11).

The circuit court also noted that for all covered works " the rights provided for endure for the life of the author or, in the case of a joint work, the life of the last surviving author," and, while they cannot be transferred, they " may be waived by a writing signed by the author." Id. at 83. Moreover, copyright registration is not required to bring a VARA infringement action, " or to secure statutory damages and attorney's fees." Id. In that regard, " [a]ll remedies available under copyright law, other than criminal remedies, are available." Id.

What the Second Circuit did not do in Carter was to address what constitutes a work of " recognized stature," since, unlike the district court, it found that the particular work--a very large " walk-through sculpture," installed in the lobby of a commercial building--was " a work made for hire," meaning " a work prepared by an employee within the scope of his or her

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employment." Id. at 85. As such, it was one of the proscribed exceptions to VARA, requiring reversal for that particular reason. The circuit court had no occasion, therefore, to determine whether the sculpture was of " recognized stature." By contrast, after having held that the work was not covered by the " work made for hire" exception, the district court did indeed conclude that the work was of " recognized stature." Its decision, therefore, marked the first time subsequent to the enactment of VARA that a court attempted to give some content and meaning to the phrase--which is not defined in the statute.

The lower court in Carter perceived " recognized stature" to implicitly require the plaintiff to make a two-tiered showing: " (1) that the visual art in question has 'stature,' i.e. is viewed as meritorious, and (2) that this stature is 'recognized' by art experts, other members of the artistic community, or by some cross-section of society." 861 F.Supp. at 325. In this latter regard, the court noted that an earlier version of VARA provided that a " court or other trier of facts may take into account the opinion of artists, art dealers, collectors of fine art, and other persons involved with the creation, appreciation, history, or marketing of works of recognized sources." Id. at 325 n.10 (citations omitted). Although it believed that this provision was eliminated from VARA prior to enactment to provide courts " greater discretion with regard to what sources may be considered in determining whether a given work of visual art is a work of recognized stature," it nonetheless thought that a court " can, and should, consider these sources." Id.

The district court concluded that the plaintiffs' experts had established that the sculpture in the lobby was a work of " recognized stature" principally because (1) one of the experts, an art critic and professor of art history, testified that " this was [a] coherent ongoing program," he wanted " everyone to go and see it," the...