As Appeared in Law360, October 26, 2019
Stripped, the Mercedes-Benz USA LLC G500 runs $124,000 (manufacturer’s suggested retail price) and comes in 24 colors.
In the lead-up to the January 2018 North American International Auto Show, Mercedes planned an ironic, down-scale Instagram Inc. campaign featuring photos of its Jeep-like G500s barreling through Detroit’s boho Eastern Market district, past commercial buildings that would be nondescript were it not for vibrant murals painted on and permanently integrated into them.
In each case, the MBZ photo caption read, “This off-road legend is always ready for some urban exploration to mix things up.”
While Mercedes sought municipal permission to make beauty shots of its vehicle on city streets — and the attendant public inconvenience that entails — it did not seek the muralists’ permission to make and post images of their works on Instagram. Risky? Flaunting possible claims of copyright infringement? Mercedes thought not.
The muralists — James Lewis, Jeff Soto, Maxx Gramajo and Daniel Bombardier — thought otherwise. An attorney, writing on their behalf, characterized the Instagram images as infringing his clients’ copyrights and threatened to sue. Mercedes promptly took the images down — as a “courtesy,” it later contended. (Some can still be viewed online.)
Mercedes did not wait for the threatened lawsuit to materialize. Whether the muralists would have — or even could have — sued Mercedes for infringing their unregistered copyrights, the automaker filed a preemptive action, a claim for declaratory judgment, requesting the U.S. District Court for the Eastern District of Michigan to declare, among other things, that reproductions of art permanently affixed to buildings are immune from claims of infringement under a portion of the Architectural Works Copyright Protection Act of 1990.
Relying on the AWCPA, Mercedes maintained that it had not violated the muralists’ intellectual property rights. The muralists (suddenly defendants in a declaratory judgment action rather than plaintiffs) sought to dismiss the suit, insisting, among other things, that Mercedes had failed to state a justiciable claim. Their murals, they maintained, were paintings, protectible under other portions of the Copyright Act. Accordingly, Mercedes could not rely on the AWCPA for relief from prosecution for infringement. The court disagreed. On Sept. 11, Mercedes prevailed; the court denied the muralists’ motion to dismiss.
A dismissal is not a judgment on the merits of a claim. Mercedes could still proceed to trial, seeking a declaration of noninfringement. Whether it does remains to be seen.
Can a photographer, professional or amateur, stand on a public thoroughfare facing a mural or other work of art permanently affixed to a building or its site, photograph it and publish the photo without running afoul of the artist’s copyright?
If the answer is yes — and it is, yes — is the AWCPA antagonistic to the rest of copyright law? Does it dilute the artist’s rights, rendering customary copyrights nugatory, as the Detroit defendants contended? If muralists cannot prevent such unauthorized reproductions and displays, are their copyrights, irrespective of registration, of any value?
The AWCPA states in pertinent part:
The copyright in an architectural work that has been constructed [that is, an actual building, not merely an architectural plan or model] does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.
The Court’s Decision
“This section [of the AWCPA],” wrote the Michigan court in its opinion, “establishes an important right of the public to take pictures of buildings that are publicly visible, free from any claim of copyright infringement.”
The AWCPA was enacted in 1990. Ten years later, in Leicester v. Warner Bros. Entertainment Inc., it was tested and affirmed at trial. In that case Warner Bros. defended its display in situ in Batman Forever of a multipart, free-standing sculptural work commissioned and installed by a developer beside a downtown Los Angeles office tower. Following an exhaustive analysis, the appeals court found the sculptures to be integral to the building itself and thus immune from a claim of infringement under the AWCPA.
The muralists in the Mercedes matter claimed that such a finding in their case would eviscerate their copyrights altogether. The court disagreed, reminding the muralists that in Leicester, as here, only a reproduction in situ is immune from an infringement claim. The Mercedes court wrote of Leicester:
Thus, the Ninth Circuit recognized that the plaintiff might have an infringement claim where, for example, someone created a reproduction of his sculpture divorced from the context of the building in which it was embodied, i.e., on a poster, t-shirt or other print media. However, plaintiff did not have an infringement claim based on a photograph of the building that included the sculpture as a design element of the building. In sum, nothing in Leicester supports defendants’ argument that Mercedes does not have a claim under the AWCPA.
The court sustained the plausibility of Mercedes’s AWCPA claim that it had a “right to photograph publically [sic] visible buildings which contained defendants’ murals.”
So point, shoot, print and publish. If you can do so without trespassing, you may do so with impunity.
The defendants asserted other arguments, relying, for instance, on the U.S. Supreme Court’s recent decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC. That case established copyright registration (or a definitive refusal of registration by the U.S. Copyright Office) as a condition precedent to the filing of a lawsuit for infringement. Defendants argued that because they had not applied to register claims of copyright in their works, the controversy was not ripe for litigation.
The court rejected that argument. While registration is generally a prerequisite for a claim of infringement (preregistered and Berne works are exempted from this rule), the same cannot be said for a request for declaratory judgment of noninfringement where the plaintiff is not in a position to register the subject work for the purpose of instigating litigation. Accordingly, the court found Mercedes’s claim ripe.
The muralists did not persuade the court that the protection undeniably afforded to their works under the Copyright Act overcame the countervailing protection afforded to Mercedes’s display of their works afforded by the AWCPA.
Ironically, the AWCPA says nothing about murals or any other pictorial, graphic or sculptural works. By its plain language, the AWCPA exempts from copyright protection only “the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the [architectural] work, if the building in which the work is embodied is located in or ordinarily visible from a public place.”
Sweeping PGS works within the purview of the AWCPA relies entirely on the language in the Copyright Act defining an “architectural work.” Such works, according to the definitions section of the Act, “include[ ] the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.”
Here and in Leicester, the courts concluded that the murals at issue in the Mercedes case and the sculptures at issue in the Leicester case were so intimately integrated into the buildings on which they are found that they had become essentially “elements in the design,” protectable in their entireties, along with the structures, as architectural works. Hence, it was the buildings, as adorned by the artists, that were subject to the AWCPA, not the artists’ works per se.
The muralists might have argued — but there is no indication that they did — that the protection by the AWCPA claimed by Mercedes was time barred, as the exemption in Section 120(a) is applicable — as is the entire AWCPA — only to buildings constructed on or after Dec. 1, 1990, the date AWCPA was signed into law without retrospective effect. To the extent that the buildings to which the defendants’ murals were affixed predate the AWCPA, as it appears they might have been, they would have been excluded from the AWCPA’s exemption on which Mercedes and the court relied.
 Mercedes-Benz USA v. Lewis, 2019 U.S. Dist. LEXIS 154818, *6 (D.C.E.D. Mich., So. Div., 2019) (“Mercedes”).
 17 U.S.C. 120(a).
 Mercedes, *23.
 Ibid. at *14.
 17 U.S.C. 120(a).
 Mercedes, *13. See also Leicester v. Warner Bros. , 232 F.3d 1212, 1217 (“Congress did not afford architectural works full copyright protection; rather it exempted the making of pictorial representations of architectural works from copyright infringement”).
 Title VII of Pub.L. 101−650, Dec. 1, 1990, 104Stat.5133.
 232 F.3d 1212 (9th Cir., 2000).
 Ibid. at 1213.
 Ibid. at 1219.
 Mercedes, *14.
…Leicester, 1219, quoted in Mercedes, *15–16.
 Mercedes, *18.
 Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC , 139 S. Ct. 881, 886 (2019).
 Mercedes, *12.
 Protectable “[w]orks of authorship include the following categories … pictorial, graphic, and sculptural works,” 17 U.S.C. 102(a)(5); and “Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following … in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works … to display the copyrighted work publicly…,” 17 U.S.C. 106(5).
 17 U.S.C. 120(a).
 17 U.S.C. 101 at “architectural work.”
 See, for instance, a Wikipedia article entitled, “Eastern Mark, Detroit,” https://en.wikipedia.org/wiki/Eastern_Market_Detroit,” last visited October 17, 2019.