GRAFFITI ARTISTS INFRINGMENT CLAIMS TO PROCEED AGAINST “JUST CAVALLI” BRAND AND RETAILERS

A federal district court has ruled that claims brought by three graffiti artists’ claims for infringement of San Francisco mural images can proceed under federal copyright law, the Lanham Act, and California statutory and common law against the “Just Cavalli” manufacturer and retailers Zappos.com, Amazon.com, Staff USA, Inc. and Nordstrom, Inc. which sought dismissal of the complaint.

Background 

The plaintiffs, three well-known graffiti artists, Jason Williams, Victor Chapa, and Jeffrey Rubin created a mural in San Francisco, including the stylized signatures of “Revok” and “Steele” pseudonyms commonly associated with Williams and Rubin, respectively.  The signatures appeared on a background of “revolutions” imagery, which is commonly recognized as plaintiff Chapa’s signature style.  The artists collectively applied for federal copyright registration of the mural in June of 2014.

Thereafter, the artist discovered that a collection of “Just Cavalli” clothing contained   high resolution images of the mural, and left the “revolutions” imagery intact, and rearranged the “Steel” and “Revoke” images in a manner that rendered them indiscernible.  On some items in the collection, the name “Just Cavalli” was superimposed over images of the mural.

The artists sued the makers and retail distributors of the clothing, alleging copyright infringement, violation of the Digital Millennium Copyright Act (DMCA), unfair competition under the Lanham Act and California law, and common law negligence. Four of the retailer defendants, Zappos.com, Amazon.com, Staff USA, and Nordstrom, unsuccessfully moved to dismiss the DMCA, Lanham Act and California unfair competition claims.

Copyright (DMCA) Infringement Claims

Williams and Rubin alleged Robert Cavalli and related entities violated Section 1202 of the DMCA by removing and altering their “Revoke” and “Steel” signatures from images of the mural. Briefly,17 USC Section 1202(b) prohibits the intentional altering or removal of any copyright management information (CMI) with knowledge that doing so will “induce, enable, facilitate, or conceal” copyright infringement.

The court rejected defendants’ arguments: (a) that the signatures did not constitute CMI; (b) that the DMCA only addressed removal of CMI by technological processes; and (c) that CMI was limited to digital information.

Lanham Act Claims and State Law Claims

Chapa alleged that the defendants’ use of his “revolutions” imagery was a false designation of origin likely to cause consumer confusion in violation of Section 43(a) of the Lanham Act. The defendants argued that Chapa’s claim did not meet the standards for a “reverse passing off” — which occurs when  a party misrepresents someone else’s goods or services as its own.  However, the court found Chapa had properly alleged “passing off” — that the defendants sold their own products using his source-identifying imagery.  For the same reasons, the court denied dismissal of the state law unfair competition and common law claims.

Sirius Radio Liable to Turtles’ Copyright Holders for Infinging Broadcasts

A federal court has ruled that Flo & Eddie, Inc., a company owned by two of the founding members of the 60’s rock group the Turtles are entitled to summary judgment on their claims of copyright individually, but not as class representatives, in a lawsuit brought against Sirius XM for reproducing and performing The Turtles’ recordings without prior authorization from Flo & Eddie.

Background. Flo & Eddie filed a putative class action lawsuit against Sirius in the federal Southern District of New York accusing Sirius of engaging in common law copyright infringement by reproducing and performing sound recordings, without authorization, owned by Flo & Eddie.  Since the recordings we “fixed” in media prior to 1972, they were not eligible for federal statutory copyright protection; instead, Flo & Eddie alleged violations of common law copyright interests held by Flo & Eddie.

Rejection of Sirius Defenses. 

Sirius contested whether Flo & Eddie owned the rights to the songs at issue.  Mark Volman and Howard Kaplan, the owners of Flo & Eddie, testified that they transferred all rights in the master recordings to Flo & Eddie; Sirius could not controvert that evidence.  In finding for Flo & Eddie on the issue of ownership, the court also looked to circumstantial evidence showing that Flo & Eddie had exploited the master recordings as copyright holders, including licensing rights to be used in movies, TV shows and commercials, and to others to make and sell records.

The court also rejected Sirius’ claim that Flo & Eddie gave Sirius an implied license in the music by allowing it to play the recordings for years, without objection.  Sirius also claims that Volman and Kaplan had even appeared on several Sirius shows over the years.  Rejecting those arguments, the court found that Sirius had not met the elements of proving an implied license, including evidence they “handed over” the recordings to Sirius, or that they did so with the intent of letting Sirius distribute them.

Sirius also argued that the claims were barred by the governing statute of limitations, which requires all claims to be brought within three years of infringement.  The court concluded that this argument “missed the mark …”. Rather, because each act of infringement started the statue of limitations anew, Flo & Eddie were entitled to recover damages “going back three years.”

Thus, the court found in favor of Flo & Eddie on its motion for summary judgment and directed Flo & Eddie to decide if it wants to proceed individually or still pursue a class action.  If the company elects to proceed individually, the court will award summary judgment to Flo & Eddie on liability.  If the lawsuit remains a class action, the parties would proceed to discovery and Flo & Eddie would have to file a motion for class certification by April 3, 2015.