Art Law

• Publication year: 2022
• Author: Celin Carlo-Gonzalez

ART LAW

AUTHORS^*

Celin Carlo-Gonzalez

Judge Simon J. Frankel

Jenna Zhang

2022 was another year of significant art law developments for federal and state courts in California. In two copyright cases involving fair use defenses, the Ninth Circuit Court of Appeals focused heavily on the transformative element, or lack thereof, of the use of the copied works, suggesting that this factor continues to weigh heavily in courts' analyses. On the state law side, Governor Gavin Newsom signed into law A.B. 2799,¹ sometimes called the Decriminalizing Artistic Expression Act, which took effect on January 1, 2023. It is intended to deter prosecutors from introducing evidence of artistic expression into criminal proceedings. Regarding public art, the Superior Court of Santa Clara County dismissed a suit by six Palo Alto police officers that claimed the city's failure to remove a mural containing allegedly offensive imagery constituted employment discrimination, harassment, and retaliation. Finally, the United States Supreme Court clarified choice-of-law rules for foreign expropriation claims.

FAIR USE IN THE NINTH CIRCUIT

The fair use doctrine allows for the unlicensed use of a copyrighted work in certain circumstances to ensure that copyright law does not stifle freedom of expression.² Courts consider the following factors in determining whether a use is a "fair use": (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the portion of the work used in relation to the whole; and (4) the effect of the use on the potential value of the work.³ When analyzing the first factor, the focus is often whether the new work is "transformative," meaning that it adds something "new and important" to the original work.⁴ While no factor is dispositive, whether or not the use is considered transformative will often guide the analysis of the remaining factors.

Two recent Ninth Circuit fair use decisions focused on the transformative nature of the secondary use. In De Fontbrune v. Wofsy, the Ninth Circuit reversed a summary judgment decision holding that unauthorized reproduction of a photographic catalogue of Pablo Picasso's works was permissible as fair use and held that a French judgment imposing monetary damages for this unauthorized use was not contrary to public policy in the United States.⁵ Sicre de Fontbrune owned the rights to a photographic catalogue of Pablo Picasso's works and filed a copyright infringement case in France against Alan Wofsy, who reproduced some of the photographs without permission in a series of books on Picasso.⁶ In 2001, an appeals court in France ruled in de Fontbrune's favor and awarded de Fontbrune a type of relief known as an astreinte under which Wofsy would be liable for

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damages of 10,000 francs for each proven infraction of the prohibition on using the photographs at issue.⁷ To collect on the French judgment (totaling approximately 2 million euros), de Fontbrune filed suit in 2013 in Alameda County Superior Court seeking recognition of the astreinte. Wofsy removed the case to federal court.⁸

However, the California Recognition Act⁹ allows a court to decline to recognize a foreign-country money judgment if the judgment is repugnant to U.S. public policy.¹⁰ The district court found that Wofsy would have been entitled to a fair use defense to the copyright infringement claim on which the astreinte was based in the original French proceeding.¹¹ But French law does not recognize a fair use defense, so the district court found the French judgment repugnant to U.S. public policy, which promotes freedom of expression.¹² Thus, the district court held the astreinte unenforceable in California.

The Ninth Circuit disagreed, holding Wofsy's use of the photographs was not protected by the fair use doctrine. Wofsy's use of the photographs was commercial in nature and not "transformative," the appeals court found, as the purpose of the original photographs and Wofsy's use in his book was the same—to document the work of Picasso.¹³ Concluding there were "serious doubts" as to whether a fair use defense would have succeeded, the Ninth Circuit held the French judgment was not in direct conflict with American legal principles and granted partial summary judgment for de Fontbrune.¹⁴

In another Ninth Circuit case, McGucken v. Pub Ocean Limited, photographer Elliot McGucken sued Pub Ocean, a digital publisher, when it used his photographs of a temporary lake that had formed in Death Valley without his permission in an article about that lake.¹⁵ Pub Ocean argued that its use of McGucken's photographs constituted a fair use because it was "transformative," in that the article placed the photographs in the "wider context" supplied by the factual presentation in the article.¹⁶The Ninth Circuit rejected that argument, noting such a theory would dramatically expand what could be considered "transformative."¹⁷ This case warns that internet publishers should obtain consent to use photographers' works on their websites when they are using such photographs in whole, and to illustrate anything close to the original use of the works.

CALIFORNIA'S DECRIMINALIZING ARTISTIC EXPRESSION ACT

On September 30, 2022, Governor Gavin Newsom signed into law A.B. 2799, commonly referred to as the "Decriminalizing Artistic Expression Act.¹⁸ Citing the "substantial body of research" showing that introducing rap lyrics into evidence in criminal trials creates a "significant risk of unfair prejudice," the DAEA is intended to prevent the government from using evidence of artistic expression in criminal prosecutions.¹⁹ The law specifically creates a framework for courts to evaluate the admissibility of creative expression, defined as "the expression or application of creativity or imagination in the production or arrangement of forms, sounds, words, movements, or symbols, including, but not limited to, music, dance, performance art, visual art, poetry, literature, film, and other such objects or media."²⁰

First, the DAEA redefines the criteria for balancing the probative value of a creative expression against its risk of causing prejudice.²¹ Regarding the former, the law directs courts to consider the probative value of a creative expression for its literal truth to be "minimal" unless the expression is created near in time to the charged crime, bears a sufficient level of similarity to the charged crime, or includes factual detail not otherwise publicly available.²² Regarding the latter, the DAEA defines undue prejudice as including "the possibility that the trier of fact will . . . treat the expression as evidence of the defendant's propensity for violence or general criminal disposition as well as the possibility that the evidence will explicitly or implicitly inject racial bias into the proceedings."²³ Second, if proffered and relevant, courts must also consider testimony on the genre of creative expression as to the "social context, rules, conventions, and artistic techniques of the expression," "[e]xperimental or social science

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research demonstrating that the introduction of a particular type of expression explicitly or implicitly introduces racial bias into the proceedings," and any rebuttal evidence.²⁴ A recent decision from the Superior Court of Contra Costa County provides insight into how the DAEA might apply in the future. There, Judge Claire Meier...