** LEGAL UPDATE **
Owners of copyrighted works have certain exclusive rights over those works. Those rights include the ability to prevent third parties from reproducing the protected work. A recent lawsuit reminds us that this protection holds true even if that infringing third party is the federal government of the United States.
In Davidson v. United States, No. 13-942C (Fed. Cl. June 29, 2018), a sculptor successfully sued the federal government, specifically the U.S. Postal Service, for infringing his sculpture of the Statue of Liberty in Las Vegas by utilizing it on a postage stamp without permission. Learn about the background of the case and what it means for copyright law.
Robert Davidson is a Nevada-based artist and sculptor. In 1996, he created a Statue of Liberty Sculpture for the New York New York Hotel & Casino in Las Vegas, owned by MGM Resorts, which displays a number of New York-related sculptures and images throughout its themed facilities. He was paid $385,000, a sum which included approximately $152,000 in costs for creating the sculpture.
Made from plastered mud, acrylic-based coating, and foam, Davidson's sculpture is roughly half as large as the original Statue of Liberty. In his lawsuit, he alleged that he intentionally altered many aspects of the iconic figure, "feminizing" the features of the face to make it appear more "stylish" and "modern."
In searching for an image for its Forever Stamp series, the Post Office had originally found the image of the statue through Getty Images. (Forever Stamps are sold at the price of first-class postage, but their value in use is always equal to the current price of one-ounce first-class postage). The Post Office claimed that it made a mistake in choosing the photo, believing that the image depicted the "real" Statute of Liberty in the harbor of New York City, which was completed in 1886.
In reality, the image on Getty was a photo of Davidson's sculpture taken by photographer Raimund Linke. At trial, a Post Office employee admitted that it would not have chosen the image had it realized that this was not the "real" Statue of Liberty.
Although the Post Office paid a licensing fee to Getty, Getty did not actually own rights for Davidson's work. The stamp was successful, selling over 4.9 billion copies to consumers between approximately December of 2010 and January of 2014. According to the Post Office, it generated over $2 billion in revenue. (The Post Office's webpage on this stamp series has since been updated to reflect the true source of the work).
Davidson sued the Postal Service in 2013 pursuant to 28 U.S.C. § 1498(b), which says that whenever a copyright is infringed by the United States, "the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages...."
The lawsuit was brought before the U.S. Court of Federal Claims, a specialized court based in Washington, DC that hears cases in which plaintiffs seek damages from the federal government. In a 37-page written decision by Judge Eric G. Bruggick, the court awarded damages to the plaintiff in the amount of $3,554,946.95 plus interest.
The court faced two primary legal issues: First was the question of whether or not Davidson's sculpture in Las Vegas was sufficiently original to merit copyright protection. Second was the question of whether the government's "infringement" qualified as fair use within the meaning of the Copyright Act.
As to the first issue, the Post Office argued that Davidson cannot have copyright protection over essentially a copy of the "real" Statue of Liberty, which is in the public domain. After all, the Copyright Act specifically protects "pictorial, graphic, and sculptural works" but those works must be "original" according to 17 U.S.C. § 102. Thus, the Post Office argued "that the statue is a replica and contains no truly original work, meaning that plaintiff's copyright is invalid and the government owes nothing for its use of an image of plaintiff's statue."
However, Davidson testified that his sculpture was intentionally unique and not meant as a direct copy. Indeed, he noted that he used a photograph of his mother-in-law for inspiration for the sculpture's face. He further testified that he was given "free rein to sculpt the statue so long as the theme of the New York City skyline was maintained." Davidson thought that the original Statue of Liberty was a bit "more masculine" and "wasn't as welcoming" as his interpretation.
Ultimately, the court rejected the Post Office's originality argument. "Defendant argues that such apparent differences are but the result of camera angle, lighting, shadowing, and weathering and should be ignored for the purposes of the originality inquiry. We disagree. To the court, the differences in the faces are meaningful and not trivial.... Mr. Davidson's statue, although invoking an existing world-famous statue, is an original, creative work, and as such is the subject of a valid copyright registration."
Second, the Post Office argued that even if its use was infringing on an original work, its use should qualify as "fair use" under the Copyright Act. Under 17 U.S.C. § 107, certain infringement may be excusable depending on four factors, including: (i) "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes"; (ii) "the nature of the copyrighted work"; (iii) "the amount and substantiality of the portion used in relation to the copyrighted work as a whole"; and (iv) "the effect of the use upon the potential market for or value of the copyrighted work."
The Post Office argued that all four factors weighed in its favor, particularly the final factor, since its use of the photograph would not have negatively affected Davidson's career or market as an industrial sculptor.
But the court disagreed, noting that the Post Office was "printing billions of copies and selling [infringing pictures] to the public as part of a business enterprise...." In other words, the market effects were substantial, and "[s]ome portion of that [profit] is owed to plaintiff as damages."
This case serves as a reminder that copyright protection applies to original works, even if the infringer is the federal government itself.
Effective Date: June 29, 2018