New Legal Rulings

Art Business News, August, 2000 by Joshua Kaufman

Canvas transfers and publicity take spotlight

This month marks the resolution of a set of landmark cases that could have an impact on the art world. The courts have handed down decisions on canvas transfers and opened a legal loophole regarding the rights of publicity and artwork.

For a number of years, artists and publishers have been saying unlicensed canvas transfers are copyright violations. The courts have generally been weighing in on their side. Several years ago, Robert Sher of the Bentley Publishing Group spearheaded a successful effort in which artists and publishers formed a coalition and sought to stop the unauthorized and unlicensed use of posters and artworks in the creation of canvas based products.

Recently, artist Elya Peker successfully sued Masters Collection to stop the company from creating canvas transfers of his work. Masters Collection purchased Peker's posters and created what it called a "work on canvas" by covering it with a layer of acrylic and employing individuals to apply oil paint and brush strokes to match the color and style of the original painting. Masters Collection then applied a thin layer of protective varnish, framed and sold the poster. The company maintained it was doing no more than selling framed posters. Since it had purchased the original posters, it had a right to do whatever it wished to with the posters without the permission of the copyright owner. The court rejected those arguments. It held that Masters Collection was selling a painting that used the poster as one ingredient. While the "first sale doctrine" of the poster might give Masters Collection the right to sell the poster in whatever fancy frame or setting it chose, it does not allow it to transform the poster into an "original painting." The court stated, "It is not a defense that Masters used a lawfully acquired object to achieve its unlawful goal of copying". An injunction barring Masters from continuing to make hand-painted canvas transfers of Peker's works was issued.

Right of Publicity and Artwork Loophole

In almost every state in the U.S., either by statute or common law, there are Rights of Publicity laws. Under these laws, it is not permissible for anyone to use the name or likeness of a celebrity in a commercial manner without their permission. A number of artists have argued in the past that they have a First Amendment right to include a well-known individual's likeness in their artworks. These arguments have had limited success. Most people in the field believed the use of a celebrity image would require that individual's permission.

However, the U.S. District Court for the Northern District of Ohio has recently ruled that the right of publicity is limited in certain circumstances by the First Amendment. The court went on to state that the right of publicity does not authorize the celebrity to prevent the use of his or her name or likeness in "expressive works" protected by the First Amendment.

The court looked at other cases, specifically ones dealing with the news media, in which it was found that "individuals' right to publicity need to be balanced with and limited by the public's right to know under the First Amendment." The courts found that the privilege from the right of publicity is not limited to the news media, so published artwork depicting a celebrity in a newsworthy situation is indeed legal.

The celebrity in question in this case was Tiger Woods, and the defendant argued that his prints should be protected by the First Amendment because they are artworks and did not constitute commercial speech, and that his prints and paintings, express the "majesty of a newsworthy moment."

The plaintiff countered by saying that the federal law on point characterizes posters as merchandise and should not be protected by the First Amendment. The court, however, disagreed. The court found the defendant's artistic prints seeking to convey a message are distinguished from posters which merely reproduce an existing photograph.

The court concluded by finding that paintings and drawings are protected by the First Amendment. This would also hold true for limited-edition prints and certain posters.

The court stated that "visual art is as wide-ranging in it's depiction of ideas, concepts and emotions as any book, treatise, pamphlet or other writing and is similarly entitled to full First Amendment Protection." Continuing, the court stated "paintings, photographs, prints and sculptures always communicate some idea or concept to those who view it and, as such, are entitled to full First Amendment protection."

A word of caution: the Court did specifically distinguish fine art from more commercial types of merchandise and would not have done the same if the artwork's message was delivered via T-shirt or other commercial type of product.