copyright

TeamLab Wins Its Lawsuit Against a Chinese Company That Replicated One of the Collective’s Immersive Art Experiences


Setting an important precedent for the copyright of experiential art in China, the immersive art sensation teamLab has won a lawsuit against a company that imitated one of the group’s signature light shows and used its name to promote it.

The Chinese company Teamlab Borderless took the Japanese art collective’s indoor, interactive, participatory, and soundtrack-free work and staged it outside in a non-participatory, non-interactive way, accompanied by music.

The court recognized TeamLab’s copyright to the work, Forest of Resonating Lamps (2016), because it displayed “originality and aesthetic significance.” The court also said that the teamLab work was widely known as a work by the collective, and was “highly prominent in the art exhibition services sector and is further widely known to the relevant public including the Chinese public.”

In addition to the aesthetic similarities between the works, the defendants exhibited their version under a strikingly similar name: TeamLab Borderless Breathing Forest Light Exhibition, which was displayed on signage and on tickets for the exhibition. 

teamLab's work alongside the work by TEAMLAB BORDERLESS. Courtesy Pace Gallery

teamLab’s work alongside the work by TEAMLAB BORDERLESS. Courtesy Pace Gallery

The case could have wider ramifications in China, where in the past local companies have prevailed against foreign ones in copyright cases. In 2020, Muji’s Chinese name was copyrighted by another brand, and the shop MiniSo offers almost identical products with near-identical branding. Another Chinese brand copyrighted the name “iPad” and successfully sued the U.S. tech giant, costing it $60 million in 2012.

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Can I Sue a Fellow Photographer for Producing Pictures That Look Just Like Mine? + Other Artists’-Rights Questions, Answered


Have you ever wondered what your rights are as an artist? There’s no clear-cut textbook to consult—but we’re here to help. Katarina Feder, a vice president at Artists Rights Society, is answering questions of all sorts about what kind of control artists have—and don’t have—over their work. 

Do you have a query of your own? Email [email protected] and it may get answered in an upcoming article. 

 

I’m a decently successful photographer who has made her sorta-name through large-format photographs of skateboarders and their injuries. Imagine my surprise when I visited a high-end skate shop recently and discovered a photograph that was like one of mine but not taken by me. Someone’s stealing my schtick. Can I sue?

I watched skateboarding in the Tokyo Olympics and it seems like injuries are a big growth industry. Those guys fall a lot. 

All kidding aside, I’m sorry to tell you that you probably have little legal recourse here. In the U.S., copyright is only applicable for works “fixed in any tangible medium of expression,” which means that ideas, from highbrow concepts for dinner parties to the conceit for a series of paintings, cannot be copyrighted. You hold the copyright to your photographs from the moment you develop them, but the general idea behind them is—unfortunately, in this case—up for grabs. 

This issue recently came to light with a photograph that pop star Olivia Rodrigo staged to promote her “Sour Prom” concert, which was more than reminiscent of the cover for the 1994 Hole album Live Through This. In it, Rodrigo wears the same style crown and carries the same kind of flowers as the woman from the Hole album cover, and her makeup is applied in a similarly vertical style. Rodrigo later spun this as an homage, though she didn’t tag Courtney Love or the original photographer, Ellen von Unwerth, in her Instagram post of the photo. It smelled fishy, and not at all like teen spirit, but in the New York Times, von Unwerth acknowledged that there’s little more she can do than be annoyed about it. 

That said, lawsuits are not the only venue for retribution in matters such as these (for more on that, see the answer to our next question). When it comes to “who did it first” or “who did it better,” social media is a powerful force. Consider the backlash when Juergen Teller shot Rhianna for Vogue and many thought that he unfairly appropriated the style of Mickalene Thomas. The court of public opinion is quite vocal these days. You can always try to make your case there.

What Pornhub's "Classic Nudes" page looked like when it launched last month...

What Pornhub’s “Classic Nudes” page looked like when it launched last month…

I read the New York Post every morning, but even my hardened sensibilities were shocked by their reporting on Pornhub’s latest P.R. stunt: an app that takes you to the dirtiest nude paintings in any given museum and then animates them with pornographic actors. How is this legal on any level? 

When it comes to copyright, I may be a bit of a prude—but when works are in the public domain, I’m all for getting a little loose. Which is why I got such a kick out of Pornhub’s newest venture, the re-imagining of European masterpieces, pornography-style, in the hopes that tourists add them to their list of MILVs (Museums I’d Like to Visit). And the legality? Oh, it’s all legal (though that hasn’t kept Pornhub out of trouble—more on that in a bit).

Here’s why: As we’ve established, copyright only exists for the duration of the life of the creator plus an additional 70 years post-mortem. After that, the works are in the “public domain,” an image that conjures a grassy field on which anyone may graze their cattle. 

And graze Pornhub has, hiring actors from the My Sweet Apple adult entertainment troupe to advance the plot, as it were, on paintings like Courbet’s The Origin of the World (1866) which hangs at the Musée d’Orsay, along with other works from the collections at the Met, the National Gallery, and the Prado, among others. It was an odd thing to spend one’s advertising budget on, and seems designed to outrage art historians, but since the works in question have aged out of copyright protection, the museums have little grounds for a lawsuit. 

Still, that didn’t stop the Louvre from threatening, or the Uffizi from sending Pornhub a cease and desist letter. Seemingly spooked, the site wiped all of the art-inspired porn from its site, and many of the artworks that inspired it, leaving just a few lonely Impressionist paintings to stimulate what we can only guess is a very specific segment of its audience. 

Left to right: K.K. Downing, Glenn Tipton, Rob Halford and Ian Hill of Judas Priest perform on stage - Unleashed In The East album cover session taken in July 1979. (Photo by Fin Costello/Redferns)

Left to right: K.K. Downing, Glenn Tipton, Rob Halford and Ian Hill of Judas Priest perform on stage in July 1979. (Photo by Fin Costello/Redferns)

I was reading an interview with Stephen King, and he said that he had originally included the lyrics from the song “You Got Another Thing Coming” by the English heavy metal band Judas Priest as an epigram in his 2008 novel Duma Key. But, he said, “they [the band] came back and said that they wanted $50,000 plus royalties. And I said, ‘Fuck that shit! That’s not going to happen.’ So I made us a doggerel of my own.” Why would it cost that much money to print lyrics from a song? 

Knowing Stephen King’s reverence for classic rock and his massive success as a creator, it is kind of surprising that he chose not to pay the $50,000 (and that he was able to approximate the soaring lyrical heights of “You Got Another Thing Coming”!). 

When it comes to copyright for songs, the music industry really uses the whole buffalo. There are broadcast rights if you’d like to play the song on T.V., performance rights if you’d like to play the song at a political rally, and there are print rights if you want to reproduce lyrics or sheet music. These are useful when it comes to epigrams, merchandising, and printing lyrics on soda cans.

Breaking down rights this way can be useful when different people are responsible for writing the lyrics and music, the way Elton John and Bernie Taupin used to do it. (In this case, Judas Priest appears to have collectively dashed off the track to fill out their 1982 album Screaming for Vengeance, so they would all presumably share the $50,000 royalty.) 

As to why this particular license cost so much, I can only estimate that the bill was based on projected sales for King’s book. Print rights for lyrics usually break down to one cent per unit, and it wouldn’t be unexpected for King to sell five million copies. Though with the Delta variant surging, I would personally recommend The Stand—the title for which is, of course, based on a Bruce Springsteen lyric.

Photo: Lionel Bonaventure/ AFP via Getty Images.

Photo: Lionel Bonaventure/ AFP via Getty Images.

I’ve heard that Black TikTok creators are on strike. Does TikTok not own their content? Do these creators have a union? How does that work? 

It’s true that TikTok is one of the more confusing social media platforms. It’s more about lip synching and dancing than it is about political arguments with strangers, and if you want to show off an outfit, you have to jump in the air to change into it first. When in Rome!

The fact that dance is one of the major means of communication on TikTok means that its top creators have found a loophole to the perennial problem of social media, which is that the companies usually own all the content you post on their platforms. (To see this play out, consider the case of the Black photographers who recently sued Buzzfeed for embedding their Instagram BLM protest photos in a story.) 

Dance, however, is different. While TikTok owns the rights to the videos, they do not own the rights to the dances therein. This is new territory for copyright, since dance has only recently become lucrative enough to fight over thanks to social media and, of all things, Fortnite. 

When we last touched on this subject, the choreographer for the “Single Ladies” video, JaQuel Knight, had recently copyrighted the famous hand-flip dance. But even if other choreographers followed suit, many of them would lack the ability to enforce copyright over their dances. Enter: the TikTok strike.

Uniting under the hashtag #BlackTikTokStrike, Black creators refused to develop dances for newly released music because, they say, their hard work has too often been appropriated (especially by famous white TikTokers) without credit. A Washington Post article points to two dances created by Black TikTok users that were subsequently appropriated by the TikTok star Charli D’Amelio, a 17-year-old who is not only not Black, but also from Connecticut.

And while there’s no union or formal strike, observers suggest the effort is already having an impact. They note that the blackout is a major reason Megan Thee Stallion’s new song, “Thot Shit,” has failed to take flight on TikTok. 

With this in mind, I would encourage creators to start copyrighting their dances before they debut them. It’s a necessary first step before a lawsuit—plus, I like the idea of copyright lawyers across the country having to bone up on their Tootsie Slides.

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Can I Sue My Colleague for Stealing My Idea for a Party? + Other Artists’-Rights Questions, Answered


Have you ever wondered what your rights are as an artist? There’s no clear-cut textbook to consult—but we’re here to help. Katarina Feder, a vice president at Artists Rights Society, is answering questions of all sorts about what kind of control artists have—and don’t have—over their work. 

Do you have a query of your own? Email [email protected] and it may get answered in an upcoming article. 

 

Now that more people are vaccinated, I have been throwing dinner parties that revolve around discussing articles in The New Yorker. (It’s sort of like a book club, but with less commitment.) We kicked it off with the profile of Ari Emanuel, moved on to a surprisingly political conversation about Robinhood and, in our latest iteration, analyzed William Finnegan’s piece on horse racing. Now, I have heard that a colleague has started her own dinner series with the exact same premise, though I assume the articles under discussion are different. My partner and I have accepted that imitation is the sincerest form of flattery, but settle an argument for us: could I theoretically copyright the concept of these dinners and sue her? 

No. And since this came from a burner email, I have to ask: are you Whit Stillman? 

I love your concept, and it is unique to be sure—but one of the tenets of copyright is that the work be “fixed in a tangible medium of expression.” Your parties are likely many things, but they don’t occur in a tangible medium of expression the way words on a page or paintings on a canvas do. Concepts cannot be copyrighted, and that’s actually a good thing, because it stops people from coming up to artists like Damien Hirst and saying, “I had the exact same idea in 1995!” Best of luck with your rivalry all the same. 

 

I heard about the Pepe the Frog NFT selling for $1 million and was shocked to learn that it’s the first one officially by Pepe’s creator. Are all those other Pepe NFTs counterfeit? 

Oh, dear. It sounds like you don’t know very much about Pepe, and it’s a wild ride. So let’s start at the beginning, shall we?

Pepe the Frog was created by Matt Furie in 2005 for a stoner online comic strip called Boy’s Club. It had a whole cast of characters, but for whatever reason, Pepe really spoke to people on message boards, and his face became ubiquitous in memes without incident for a decade. Then, more or less arbitrarily, the alt-right adopted him as its mascot, and by September 2016, the Anti-Defamation League had officially named Pepe a symbol of hate. 

All of this was detailed in a pretty good documentary that shares its name with Pepe’s catchphrase, Feels Good Man. In it, Furie appears as a kind and frustrated cartoonist who never could have guessed what would come of his simple frog drawing, the copyright to which is his. 

The thing about copyright is that it assumes, as the material circumstances under which it operates, a society where people are doing business out in the open and with accountability. And even if you don’t know much about Pepe, you do probably know that the internet is not that kind of place. The culture of authorship in general is much weaker online (for more on this, see the Lizzo answer later in this column). I think most people would be surprised to learn that Pepe has a creator at all.

So, are all the other Pepe NFTs counterfeit? That presupposes that the purchasers care if their NFT was made by Pepe’s original artist, which most of them probably don’t. I think most people in the market for a Pepe consider him to be something of a fair-use folk icon.

This is obviously a different attitude than most art collectors have. For many of them, the artist’s name is the big draw. But I think we’re learning that, while there is overlap, art collectors and NFT purchasers are two very different groups of people. It’s exciting because the NFTs that are made by “real” artists can reach a new audience, but it’s also a little scary because these folks don’t always play by the rules of the art world. We’re all learning to adapt. 

Lizzo on the red carpet at the 63rd Annual Grammy Awards, at the Los Angeles Convention Center, in downtown Los Angeles, CA, Wednesday, Mar. 14, 2021. (Jay L. Clendenin / Los Angeles Times via Getty Images)

Lizzo on the red carpet at the 63rd Annual Grammy Awards, at the Los Angeles Convention Center on March 14, 2021. (Jay L. Clendenin / Los Angeles Times via Getty Images)

I work in A&R for the pop music industry so I’ve been following Lizzo’s copyright infringement case closely. I was hoping you could explain something to me: If neither Lizzo nor the songwriters suing her came up with the line “I just took a DNA test, turns out I’m 100 percent that bitch,” then how is there still a case over who should be credited on the song?  

It’s a little ironic that after “Truth Hurts” has been played enough times to take it platinum six times over, we still don’t have a clear picture as to who, in fact, “that bitch” is. 

If you’re just tuning in, this case has been going on since 2019 and involves a spat between Lizzo and songwriting brothers Justin and Jeremiah Raisen. During a writing session for a different Lizzo song, “Healthy,” the brothers Reisen found a viral tweet about a DNA test by the London-based Mina Lioness. The Raisens suggested using it in “Healthy,” but Lizzo, as her many fans know, decided instead to use it on “Truth Hurts,” on which the Raisens are not credited, but for which they now claim songwriting credit.

Lost in this is the fact that neither Lizzo nor the brothers actually wrote the line. It was Mina Lioness, who was finally added to the credits for the song in 2019, making her belatedly entitled to some of the royalties. But the Raisens are asking for even more than that: they want joint authorship credit. Quite the prize in music, authorship credit enables the writer to exercise the copyright fully, which means they can license the song without the consent of the other authors. (That’s why most professional songwriters, like the Raisens, tend to work out rights questions beforehand.) 

Judges seem skeptical that the Raisens’s suggestion could constitute full co-authorship, but it should be noted that a single Kanye West song can have nine co-writers, some of whom might contribute only a line or two. (You’ll find more information about song co-authorship in this article by the California Western School of Law.)

The case is complicated: Mina Lioness may have typed out that famous sentence on her phone, but she wasn’t in the room with Lizzo when she was working on her debut EP. Moreover, the question of whether or not individual tweets are protected by copyright is still an open one. In the meantime, it would seem that aspiring songwriters, like the rest of us, would do well to stay off Twitter.

Andy Warhol with his Cow wallpaper at Leo Castelli (1966). Photo by Fred W. McDarrah, courtesy of Steven Kasher Gallery.

Andy Warhol with his Cow wallpaper at Leo Castelli (1966). Photo by Fred W. McDarrah, courtesy of Steven Kasher Gallery.

I’m an artist who has been asked by a patron to do a room-size installation, filled with my sculptures, in some vacant space in the West Village. I’m excited at the prospect of trying something like this for the first time. I want to contract a friend in the printmaking world to do the wallpaper for it. Is there anything I should know about copyright when it comes to wallpaper? 

Pattern design is an underrated art. Many people probably don’t realize that their favorite fashion brands employ professionals whose sole job it is to design the little detailing that runs down their sleeve. The same is true for the companies that make wallpaper, and even if these designers have signed away their individual rights to the company, you wouldn’t want to step on those toes, either. 

Until recently, I would have suggested borrowing an obscure photograph as the basis for your wallpaper—the way Warhol did with his Cow Wallpaper—since the photographer (if they are still alive) would be unlikely to argue that your work has hurt the market for theirs in the same way a pattern designer might. But recently, we in the copyright community were handed the unique case of Judy Juracek vs. Resident Evil 4.

Juracek, a photographer, is suing the Japanese video-game company Capcom for borrowing from her 1996 book Surfaces: Visual Research for Artists, Architects,and Designers. Juracek alleges that Capcom used her photographs of Italian windows and bas reliefs to decorate the rooms the players explore in their video games. Some of the accusations are pretty damning, with one shattered pane apparently having been ripped off for a game’s logo. 

I have not played a video game since Mario Kart, but I see clear parallels to your installation. What are the rooms in video games if not little art installations in which you kill zombies? The implications of this case could be wide, as it develops. I urge you to tread lightly, and ask for permission before you hang your own real-world wallpaper.

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Why Andy Warhol’s ‘Prince Series,’ the Subject of a Long-Term Copyright Dispute, Should Be Considered Fair Use After All


Last month, the U.S. Court of Appeals for the Second Circuit declared that a notable group of Andy Warhol paintings—his famed “Prince Series”—infringed the copyright of the photographer whose image served as the basis for the body of work. 

The court’s controversial decision, grounded in a narrow understanding of copyright law’s “fair use” provision, may have granted judges more power in evaluating artistic expression than some might like. But less than two weeks later, the Supreme Court provided a more expansive understanding of fair use, this time in Google v. Oracle, a case involving the copying of computer software code. 

Technology and art are very different. Yet the Supreme Court’s recent decision suggests that the Second Circuit, which sits one rung down on the ladder of federal judicial authority, may have some further thinking to do about how copyright’s fair use doctrine applies when artists copy or reference existing images. 

 

The Lawsuit

In 1984, Vanity Fair paid Lynn Goldsmith $400 to license the photograph she had taken of Prince three years prior in order to use it as an “artist reference” for an illustration in the magazine. The artist Vanity Fair had hired, unbeknownst to Goldsmith, was Andy Warhol. 

Warhol cropped the photograph down to Prince’s face and used it as the raw material for 16 works, one of which, pictured below at right, ran alongside an article on the musician.  

 

Right: Lynn Goldsmith's original photograph of Prince; left: Andy Warhol's <i>Orange Prince</i>

Right: Lynn Goldsmith’s original photograph of Prince; left: Andy Warhol’s Orange Prince.

In 2016, Vanity Fair reprinted the same Warhol work as the cover for a special issue commemorating Prince’s death. This use was not covered by the original license, and Goldsmith made her displeasure known. The Andy Warhol Foundation responded by going on the offensive, seeking a declaratory judgment that the “Prince Series” did not infringe the Goldsmith photograph.

The foundation argued that Warhol’s use of the Goldsmith photo was fair use. (It has restated that view in an en banc petition filed last week asking the court to reconsider.) Viewed broadly, fair use is an exception to the usual copyright rules aimed at furthering the larger aim of copyright: to promote creativity in the arts. As the Supreme Court has explained, fair use permits one creator to use the work of another when forbidding that use “would stifle the very creativity which that law is designed to foster.”

(A canonical example of a fair use would be a parodic song which copies the melody of a famous song —such as 2Live Crew’s version of Roy Orbison’s “Pretty Woman,” upheld as fair use by the Supreme Court in 1994.) 

In the Warhol case, the trial court judge agreed with the Warhol Foundation, holding that the Prince series was fair use, in large part because it transformed the original Goldsmith work to give it a new meaning. While the Goldsmith photograph portrays Prince, in the court’s words, as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays Prince as an “iconic, larger-than-life figure.” Such “transformative” use, in the district court’s view, creates something new, and is therefore the kind of use that is more likely to be fair use.

On appeal, the Second Circuit disagreed. That court found that Warhol’s use of the Goldsmith photograph was not “transformative” and, based in large part on that conclusion, went on to hold that Warhol’s Prince portrait did not qualify as fair. 

 

A Question of Transformation

So what does this notion of “transformativeness” in copyright law actually mean? The core idea is that if a second work sufficiently changes the first, it becomes a new work worthy of protection. Though it is not the only element in evaluating fair use, the transformativeness concept has come to occupy a central place in legal analysis.

In fact, shortly after the Second Circuit’s decision in the Warhol case, the Supreme Court reaffirmed the importance of transformativeness when it held that Google’s unauthorized use in its Android operating system of 11,500 lines of code from Oracle’s Java SE program was transformative enough to qualify as fair use. 

Such use, the Supreme Court stated in Google v. Oracle, “adds something new and important,” typically by shifting the original work’s purpose, meaning, or message—and, as a consequence, stimulates creativity. Google had done just that, the court held, when it used code from Oracle’s Java (a programming language that had previously been used mostly to build desktop applications) to build a new operating system for mobile phones—something Oracle had tried to do, but with little success.

If Google’s use was transformative, why wasn’t Warhol’s? Was it fair to say that Google’s use of 11,500 lines of code to make a new operating system was transformative but Andy Warhol’s use of Goldsmith’s photo to make Orange Prince was not? 

Andy Warhol's Prince illustration based on the Lynn Goldsmith photograph as it appeared in Vanity Fair, here reproduced in court documents.

Andy Warhol’s Prince illustration based on the Lynn Goldsmith photograph as it appeared in Vanity Fair, here reproduced in court documents.

In a sense, the Supreme Court in Google v. Oracle had an easier job than the Second Circuit did in Goldsmith v. Warhol. Whether Google had used Oracle’s code to create something new was a question the Supreme Court could answer simply by comparing Google’s software’s functionality with that of Oracle’s: Android provides a new functionality (that is, it works well on a mobile phone), meaning Google put elements of Oracle’s code to a new purpose. 

By contrast, the appeals court in the Warhol case was facing questions not of functionality, but aesthetics. How is a court to determine whether Warhol’s use of the photograph changed its purpose, meaning, or message?

The Second Circuit argued that while it may have been Goldsmith’s intent to portray Prince as a vulnerable young artist, and Warhol’s “to strip Prince of that humanity and instead display him as a popular icon,” whether a work is transformative cannot depend merely on the artist’s intent.  

Rather, for Warhol’s work to be transformative, “it must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys ‘new meaning or message’ entirely separate from its source material.” In other words, the new meaning must not be linked to the source material itself but rather to something else the appropriating artist did with the work. It must flow from a new artistic vision—or so it must seem to the eye of a federal judge. 

As an example of work that meets that standard, the Second Circuit pointed to two previous art cases. The first involved Jeff Koons’s painting Niagara (below right), which incorporated a photograph from a fashion magazine (below left). In that case, the court believed that Koons’s work gave a new meaning to the underlying photograph.

Left, a magazine advertisement used in Jeff Koons's Niagra (2000). Courtesy of the Solomon R. Guggenheim Museum, New York.

Left, a magazine advertisement used in Jeff Koons’s Niagra (2000). Courtesy of the Solomon R. Guggenheim Museum, New York.

That same court, in a subsequent case involving the “Canal Zone” series by Richard Prince (example below right), which incorporated photographs of Rastafarians by Patrick Cariou (below left), held that most of the Prince works transformed the message of the Cariou works, turning Cariou’s classical portraits into something disjointed and frenetic.

Left, a Rastafarian by Patrick Cariou and right, an image from the “Canal Zone” series by Richard Prince.

Left, a Rastafarian by Patrick Cariou and right, an image from the “Canal Zone” series by Richard Prince.

What do the Koons and Prince works have in common? They’re both collages. They take bits and pieces from various works and arrange them into something new. Like Google’s use of some of the Oracle code, the underlying work becomes a building block in a larger creative edifice. 

On the other hand, Warhol’s Prince work is based on a single source photo. The Warhol court thought that this difference mattered, noting that artworks previously deemed transformative “draw from numerous sources, rather than works that simply alter or recast a single work with a new aesthetic.” By contrast, the court held, Warhol’s Prince works “retain… the essential elements of the Goldsmith Photograph without significantly adding to or altering those elements.”

 

Was It Wrong?

The Supreme Court’s decision in the Google case casts some doubt on the lower court’s conclusion. Viewed abstractly, what Warhol has done with Goldsmith’s photo isn’t too different from what Google did with Oracle’s 11,500 lines of code. The code that Google took sits in Android, unchanged, just as the Goldsmith photo recognizably appears in Warhol’s Prince works. Google built a program around Oracle’s code that provides new functionality. Warhol also built a work around Goldsmith’s photo that provides something new. And under the Google decision, adding something “new and different” is sufficient to render the second work transformative of the first. 

The real challenge in the Warhol case is articulating exactly what the “new and different” elements are. And this illustrates an age-old problem in copyright law that has never been solved, and that makes copyright risky for artists who, like Warhol, work through appropriation. 

In Bleistein v. Donaldson Lithographing Co., a classic copyright case from 1903, the Supreme Court considered whether circus posters, like the one shown below, were copyrightable.

An image from the Bleistein v. Donaldson Lithographing Co. case in 1903.

An image from the Bleistein v. Donaldson Lithographing Co. case in 1903.

The defendant contended that copyright should not protect mere advertisements. But the famed Justice Oliver Wendell Holmes disagreed:

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value—it would be bold to say that they have not an aesthetic and educational value—and the taste of any public is not to be treated with contempt.

Holmes’ argument is that copyright law should not engage in aesthetic discrimination. But isn’t that precisely what’s going on in the Warhol case? The court sees the Prince and Koons collages as transformative because they have the quality of cut-and-paste that makes the artist’s contribution hard to miss, even if the particular message that the appropriating artist is sending is difficult to distill. 

Koons helped his case by testifying to his intent to “comment on the ways in which some of our most basic appetites—for food, play, and sex—are mediated by popular images.” Richard Prince claimed that he “[doesn’t] have any interest in what [another artist’s] original intent is because … what I do is completely try to change it into something that’s completely different.”

Unlike Koons or Prince, Andy Warhol isn’t able to speak for himself. (Though given Warhol’s famously cryptic utterances, it is anyone’s guess if it would have helped.) And the power of Warhol’s transformative work in his “Prince Series” may be more difficult for judges to apprehend. 

On a technical level, the changes may seem modest: Warhol cropped Goldsmith’s photograph and removed some of the humanizing details. He then boldly outlined Prince’s face against various brightly colored backgrounds. But to our eyes, the Warhol work just communicates an entirely different feeling than the Goldsmith photograph. The Goldsmith photo is a portrait. The Warhol works are a sort of religious iconography: They place Prince in the American pantheon. 

It is unclear precisely how Warhol achieves this transformation; Warhol’s ineffability is entwined with his greatness. But it is clear—at least to us—that Warhol does in fact produce work that is both recognizably based on the Goldsmith photo and yet indisputably new.

The question is what courts can see in an artwork, and what they cannot. It’s easy for courts to see Google’s transformative work—it’s visible in the literally millions of lines of new code that Google wrote to create Android. It’s much more difficult to see, or to explain, exactly what Warhol’s transformative contribution was.  

In the end, the Second Circuit’s ruling may be less about Warhol and more about, as Justice Holmes warned, that judges have not yet learned the language that artists like Warhol are speaking. As the Google decision suggested, grafting new materials onto existing material seems inherently transformative. But it is really more additive. Truly transforming an existing work, as Warhol did, is more alchemical, more mysterious, and more likely to be ignored—or even, as in this case, condemned. 

 

Christopher Sprigman is the Murray and Kathleen Bring Professor of Law at New York University. Kal Raustiala is the Promise Institute Chair in Comparative and International Law at UCLA School of Law.

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How a Brazen Hack of That $69 Million Beeple Revealed the True Vulnerability of the NFT Market (and Other Insights)


Every Wednesday morning, Midnight Publishing Group News brings you The Gray Market. The column decodes important stories from the previous week—and offers unparalleled insight into the inner workings of the art industry in the process.

This week, clawing down another art-tech rabbit hole…

 

MINT CONDITION

In the opening days of April, an artist operating under the pseudonym Monsieur Personne (“Mr. Nobody”) tried to short-circuit the NFT hype machine by unleashing “sleepminting,” a process that complicates, if not corrodes, one of the value propositions underlying non-fungible tokens. His actions raise thorny questions about everything from coding, to copyright law, to consumer harm. Most importantly, though, they indicate that the market for crypto-collectibles may be scaling up faster than the technological foundation can support.

Debuted as part of an ongoing project titled NFTheft, sleepminting serves as a benevolent but alarming crypto-counterfeiting exercise. It aims to show that an artist can be made to unconsciously assert authorship on the Ethereum blockchain just as surely as a sleepwalking disorder can compel someone to waltz out of their bedroom while in a deep doze.

Remember, to “mint” an NFT means to register a particular user as its creator and initial owner. Theoretically, this becomes the first link in a verified, unbreakable chain of custody tethered to an NFT for the life of the underlying blockchain network. Thanks to this perfectly complete, perfectly secure, and eternally checkable data record, the argument goes, potential buyers can trust non-fungible tokens without necessarily having to trust their owners or sellers. These traits add a valuable layer of security that traditional artworks could never rival with their eternally dubious off-chain certificates of authenticity and provenance documents.

Personne may have found a way to dynamite this argument for much of the art NFT market. Sleepminting enables him to mint NFTs for, and to, the crypto wallets of other artists, then transfer ownership back to himself without their consent or knowing participation. Nevertheless, each of these transactions appears as legitimate on the blockchain record as if the unwitting artist had initiated them on their own, opening up the prospect of sophisticated fraud on a mass scale.

To prove his point, on April Fool’s Day, Personne sleepminted a supposed “second edition” of Beeple’s record-smashing Everydays: The First 5,000 Days, the digital work and accompanying token that sold for a vertigo-inducing $69.3 million via Christie’s less than a month earlier. (My emails to Beeple and his publicist about the situation went unanswered.)

In our ensuing email exchange, Personne claimed he then gifted the sleepminted Beeple (Token ID 40914, for the real crypto-heads) to a user with the suspiciously appropriate handle Arsène Lupin, an homage to the famous “gentleman thief” created by Maurice Leblanc and recently reincarnated in a hit Netflix show. (Personne denied he was Lupin to the blog Nifty News.) Lupin then turned around and offered the sleepminted Beeple for sale on Rarible and Opensea, two of the largest NFT marketplaces—both of which eventually deactivated the listings. (Neither Rarible nor Opensea replied to my emails seeking comment.)

Why publicize any of this, you ask? Personne essentially sees himself as a so-called white hat hacker, meaning an ethics-driven coder who exploits technological flaws strictly to demonstrate how they can be fixed. He is a staunch believer in the potential of NFTs and crypto. However, he believes major “security issues and vulnerabilities” in smart contracts have been glossed over to make way for the gold rush. He also claimed to have launched the NFTheft project only after the crypto-community largely ignored or derided his attempts to spark earnest conversation.

“The goal I want to achieve with this is to take the most expensive and historic NFT, and show that if it is not protected, how can we guarantee that any NFT is safe from intentional malice, fraud, forgeries, theft, etc.?” he wrote.

Although the sleepminting saga is hairier than a Haight-Ashbury commune, I think we can chop through the overgrowth using two questions with serious stakes for different participants in the NFT market. 

Screen grab of the NFTheft website showing details of the "sleepminted" token.

Screen grab of the NFTheft website showing details of the “sleepminted” token.

1. What does sleepminting tell us about the technological vulnerabilities of art-related NFTs?

 

Short Answer

The main smart contract driving the market might not be smart enough to secure the frenzied level of buying and selling we’ve seen in 2021.

 

Longer Answer

What’s clear is that Personne is exploiting a flaw in the standard ERC721 smart contract, which is used by the overwhelming majority of art-related NFTs transacting on the Ethereum blockchain. But it is not an easy-to-see flaw, and the effect is not being faked by Photoshop wizardry or some other non-crypto chicanery; the sleepminted Beeple really is minted in Beeple’s wallet, it really is transferred elsewhere afterward—and both of those transactions are memorialized forever on the blockchain. 

How, exactly, is Personne doing this at the level of code? He declined to elaborate, saying only that he would publicly reveal the details before initiating the next stage of the NFTheft project. Other crypto-fluent folks I talked to needed more time to investigate than my deadline would allow. But Personne revealed in one tweet that he had deployed a “custom-built” contract that did not have an unnamed ERC721 “security check in place,” allowing him to move the token from wallet to wallet without meeting the typical conditions (for instance, a buyer sending funds to meet a set sales price).

Good luck identifying the flaw, though. Kevin McCoy, the creator of the first NFT, tried running Personne’s sleepminting smart contract through a decompiler to get more insight into the source code. His highly technical, highly candid snap take on the results was that they were “fucking crazy” with “all kinds of shit going on,” but he could not decipher the actual function responsible for the mischief.

What McCoy could detect was that Personne’s customization was substantially larger and more expensive to deploy than a typical ERC721. The sleepminting contract consists of around 4,000 lines of code and cost 1.04 ETH, or about $2,500, in gas fees—roughly 12.5 times as much as it would usually cost to mint an average ERC721 token, if not more. (“Gas fees” are the term of art for the expenses charged to conduct a transaction on the Ethereum blockchain, with the price changing based on the network’s available computational resources.)

A courtroom sketch of Domenico De Sole on the witness stand with the fake Rothko painting he bought from Knoedler gallery. His case, which was separate from the one that jus settled, was the only one to go to trial. Photo: Elizabeth Williams, courtesy Illustrated Courtroom.

A courtroom sketch of Domenico De Sole on the witness stand with the fake Rothko painting he bought from Knoedler gallery. Photo: Elizabeth Williams, courtesy Illustrated Courtroom.

Why It Matters

Sleepminting is likely more sophisticated than the average NFT buyer’s understanding of the technology, making those buyers unlikely to question what appears to be blockchain-verified authorship.

This is especially important because we’re in a market frenzy for NFTs right now. Thorough vetting falls by the wayside whenever under-informed buyers flood into a largely unregulated space. Fraudsters have made millions in the past selling fake Jackson Pollocks on eBay, and the Knoedler forgery scandal proved that even knowledgeable collectors can be susceptible to high-level chicanery.  

I can’t rule out that a savvy crypto-collector might be able to detect a giveaway in either a sleepminting contract or its data trail. It’s also true that, even without Personne publicizing what he’d done, market players could use off-chain research to find out whether Beeple actually minted a second edition of Everydays—just as, say, Warhol collectors could consult the catalogue raisonné to make sure a particular Marilyn canvas is regarded as authentic.

Still, if bad actors began exploiting vulnerabilities in ERC721 contracts, it could theoretically plunge the NFT market into a forgery crisis on par with the antiquities market, where recent research showed that up to 80 percent of what is offered online is likely either looted or fake. 

Incidentally, Personne alleges that 80 percent of the NFTs on the market are “invalid and need to be redone” because of their vulnerability to sleepminting. That’s a difficult estimate to corroborate. But even if he’s overshooting by two or three times, the financial exposure would swell to millions of dollars in art-related NFTs alone. Isn’t that a prospect worth investigating?

A courtroom setup awaiting a witness. Photo: Friso Gentsch/dpa (Photo by Friso Gentsch/picture alliance via Getty Images)

A courtroom setup awaiting a witness. Photo: Friso Gentsch/dpa (Photo by Friso Gentsch/picture alliance via Getty Images)

2. Does sleepminting violate any U.S. laws? 

 

Short Answer

The legal exposures are murky and hard to act on, but they exist. In a way, that’s the point.

 

Longer Answer

At present, NFTs still occupy a legal gray zone. As of my writing, multiple cases pending in the U.S. could influence their ultimate classification. What’s unclear is how much immunity a sleepminter would have based on the lingering ambiguity.

Personne told me that, after being “thoroughly consulted and advised by personal lawyers and specialist law firms,” he is confident there are “little to no legal repercussions for sleepminting.” His argument is that ERC721 smart contracts only contain a link pointing to a JSON (Javascript Object Notation) file, which in turn points to a “publicly available and hosted digital asset file”—here, Beeple’s Everydays image. (Remember, the NFT is almost never the artwork itself.)

He likened the idea of suing him to the “absurd” prospect of Apple suing “every single pedestrian for viewing or photographing their billboard in Times Square.” 

But multiple prominent art attorneys I spoke to felt Personne is standing on shakier legal ground. “If the hacker is not trying to pass the sleepminted work off as authentic and charging money for it, then he is probably not in any danger of being charged with criminal fraud,” said Steven Schindler. “If he were to be misrepresenting the nature of the NFT, and selling the works under false pretenses, then he would certainly be open to charges of fraud.”

But fraud isn’t the only issue at play here. Let’s return to Personne’s contention that the token merely points to a publicly viewable digital file. Querying the blockchain seems to show that the original Everydays NFT and Personne’s sleepminted “second edition” have two different URIs—essentially, the alphanumeric code identifying the actual image file that the token grants ownership to. This implies he downloaded the original file and re-uploaded it to a different online location. 

Further, it looks like he did so without making any changes to the work that could be positioned as “transformative,” like, say, Richard Prince cropping out the Marlboro ad copy in his “Cowboys” photographs, or adding nonsensical comments to other people’s Instagram selfies in his “New Portraits” series. (Two copyright infringement cases on the latter are currently pending in the Southern District of New York.)

Richard Prince. Photo: Patrick McMullan

So even though the sleepminted token is not the artwork, it still needs to point to the artwork in order to mean anything. If Personne made this happen by reuploading an unaltered digital copy of Beeple’s Everydays, as the URI suggests, then that could very well still qualify as unauthorized reproduction of an artwork whose copyright Beeple still owns.

In short, it’s possible a court could find him liable to be “in violation of Beeple’s exclusive right to publicly display his work,” according to Megan Noh, co-chair of art law at Pryor Cashman.

Personne may also be running afoul of what’s known as the Lanham Act, specifically a clause known as “false designation of origin.” Remember, the entire point of sleepminting is that its unauthorized attribution to Beeple appears legitimate on the blockchain. These claims are reasserted in the details of the sleepminted token on the NFTheft website (“Creator: Beeple (b. 1981)”) as well as the listings on Rarible and Opensea. 

“The ‘statements’ on the website and/or created by the intentionally-manipulated metadata feel a lot like ‘false designations of origin,’ which could give rise to liability,” Noh said. “But there’s also an interesting question about whether an NFT can be considered a ‘good or service,’ which it would need to be for this area of the law to apply.”

Screen grab of the Rarible listing for the sleepminted token, showing the current owner as Arsene Lupin and the creator as Beeple.

Screen grab of the Rarible listing for the sleepminted token, showing the current owner as Arsene Lupin and the creator as Beeple.

Why It Matters

Personne’s copious public proclamations that the sleepminted NFT was not, in fact, authorized by Beeple may not protect him in a U.S. court—precisely because he engineered the blockchain to say otherwise. If a sleepminted token truly made it out “in the wild,” as Personne told me it did, then his exposure could only increase as the token moved through the secondary market to buyers who may be less aware of the NFTheft site, his social media presence, and any other links back to his white-hat rhetoric. 

That said, anyone who wanted to sue Personne would likely first have to untangle his identity, since it’s not easy to bring a pseudonymous party to court. Again, good luck.

Incidentally, this is one of the reasons it still seems unlikely to me that Lupin, the pseudonymous owner of the sleepminted NFT, is anyone other than the same person behind… uh, Personne. The best way to protect yourself from misunderstandings by subsequent owners is to ensure there are never actually any subsequent owners. 

Debating the legality of this particular episode misses the larger point, though. 

The NFTheft project aims to show that a gigantic proportion of the art NFT market is vulnerable to such malicious intent because of a structural flaw in the standard smart contract. If Personne were a bad actor, he could have sleepminted a much less famous NFT, kept quiet about his custom smart contract, and started selling directly to the most naive buyers he could find. That real people could be tricked into losing real money, and that anyone undertaking the ruse could plausibly be found liable for damages, reinforce why Personne’s gambit is worth our attention. 

We have already seen sophisticated hacks siphon tens, even hundreds, of millions of dollars out of cryptocurrency exchanges, decentralized financial entities, and blockchain-based “smart” organizations. Maybe it was only a matter of time before someone figured out a way to do the same to the part of the NFT marketplace that relies on ERC721 contracts. The question is whether the biggest and most influential players will take action before the black hats dig in.

[NFTheft]

 

That’s all for this week. ‘Til next time, remember what Upton Sinclar said: It is difficult to get someone to understand something when their salary depends on them not understanding it.

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