Mercedes Countersue Graffiti Artists Over Dispute in Using Murals in Their Car Campaign

Mercedes Countersue Graffiti Artists Over Dispute in Using Murals in Their Car Campaign

In an interesting copyright dispute, Mercedes is asking a judge to rule in its favor after four artists sued the car giant for including their graffiti murals in Instagram posts of the latest Mercedes SUV.

According to The Detroit News, a lawsuit filed on March 29th names Daniel Bombardier, James “Dabls” Lewis, Jeff Soto, and Maxx Gramajo. Back in January of last year, the official US Instagram account of Mercedes posted a number of photos of their new model. Taken in Detroit’s Eastern Market, also pictured were various murals, featuring the works of the aforementioned artists.

From what we know, Mercedes followed the correct procedure in obtaining the required permits to conduct a commercial photoshoot in the area. The issue stems from not having requested permission from the artists themselves.

Bombarbier, Lewis, Soto, and Gramajo are now accusing Mercedes of copyright infringement. Interestingly, Mercedes removed the images in response, but the complainants are seeking financial compensation.

So says the lawsuit filed by Mercedes:

Nonetheless, Defendant’s attorney continued making threats against MBUSA [Mercedes-Benz USA], claiming that Defendant desires to ‘expose’ MBUSA, use formal discovery to learn information other people can use to sue MBUSA, and tell a jury that MBUSA made $80 million selling the G series truck in an effort to wipe out MBUSA’s revenue from sales of the G Series. MBUSA did not infringe Defendant’s alleged copyright and therefore refused to credit this aggressive shakedown effort.

Naturally, Mercedes is claiming fair use on the murals, stating they’re exempt from copyright protection under the Architectural WorksCopyright Protection Act as they’re “permanent.” They also attempt to rubbish the argument by stating the murals are blurred, pictured from an angle, not seen in their entirety, and are not the central focus.

Artist Bombardier said it is “totally unacceptable” for Mercedes to use his work as part of a campaign to advertise a car that costs $200,000 without compensating him financially.

It’s worth noting the Detroit officials that commissioned the murals are on side with the artists. They draw particular attention to previous Mercedes adverts, in which the company licensed the artists’ works.

Who’s in the right here?

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JetCity Ninja's picture

only if said aliens took photos and used them for profit.

If the artists win, we could end in a situation where it would be near impossible to photograph in a public space, if anything copyrightable is included in the photo. The next thing would be Mercedes-Benz suing commercial photographers that deliberately or accidentally include one of their cars in a picture (think beautiful model leaning on the bonnet (hood for the people on the other side of the pond)), as I am sure the specific expression of the car model would be copyrightable.

Kirk Darling's picture

Mr T--actually, yes, Mercedes would sue the pants (and I do mean underpants) off an advertiser that depicted deliberately (or "too incidentally") included a beautiful model leaning on the bonnet of a Mercedes. That will happen today. It's called "trading on their mark."

JetCity Ninja's picture

exactly. it's done all the time from the other direction. if you've ever wondered why logos are often blurred out on clothing, vehicles, etc on "reality TV" shows or even in monetized youtube videos where a consumer product that's being used as a primary focus but isn't being reviewed, or self-censorship of music and video clips to under X seconds (i think it's 5?). that's all due to preventing the corporate copyright or trademark holder from suing, and winning, all revenues related to it plus legal fees.

Alex Reiff's picture

I think we'd be hard pressed to find a single copyright lawyer in the comments section, much less one that knows the facts of the case. I don't know why we're even trying to ascertain who's in the right legally.

Ask and you shall receive! I've done some copyright work and in fact discussed this specific matter on the Facebooks a while back, but I'll give a summary here:

Copyright law allows architectural works to be photographed/filmed without the need of permission insofar as the work is "a part of" the building/structure. What that means generally is that it has to be practically necessary to the structural integrity of the building - think a decorative column or ornate sculptures formed into a wall/pillar - without the column/wall/pillar, the building will fall.

However, if something affixed to a building is not "a part of" the building as described above, it isn't exempted from the need of permission. Murals that are merely painted on the side of building, it can be argued, are not structurally integral to the buildings it's painted on.

So to recap - if something is removed from a building and the building would be in peril of falling, it's exempt from need permission to feature in commercial photography. If it's not integral to keeping the building up, it's not "a part of" the building, thus not exempt.

Commercial photography v. non-commercial: If you're wandering doing street photography and happen to or even intentionally capture a mural, you're at less risk of infringement since you're likely not making substantial money off the photo (fine art prints may fall under this). However, if you're advertising a product, then there's a sense of association/promotion of anything included in the advertisement, including artwork, and are in more risk of infringement. Think about fashion ads - they are careful not to include brands or even unique and easily identifiable patterns/styles of other companies. Why? Because other brands likely do not want to associated with each other unless agreed upon.

To answer specifically to the idea that Mercedes would be upset if you used their car in a photo with a model - they probably would sue, especially if it's an advertisement for something they definitely do not want to be associated with. Again, this is why when you watch non-automotive advertising that have cars in it, the logos are taken off the cars.

To answer another specific comment: yes, whoever owns the rights to the Calder and Picasso in Chicago got paid for their appearance in the Blues Brothers.

I do photography as well, including automotive and street stuff, and while I am somewhat understanding of photographers not agreeing with the artists here, some photographers' anger over this kind of confuses me. Artwork is supposed to displayed for others to enjoy, regardless of whether it's outside or inside a gallery. I see these artists doing a bold and generous thing by making their work so easily accessible for the public as opposed to hiding it in a gallery or museum. While they may not request payment to view it or even take personal photos of it, surely one can understand wanting some form of compensation if someone else is making money off of it.

A smaller concern that others have: I think it's absolutely reasonable to think Mercedes and the ad agency chose this area of the city specifically due to the great murals adorning the buildings. Some may say "well, they could have used any mural/building" - then they should have, but didn't, so we're here now.

I recommend looking up Faulkner v. GM, which is quite similar to this case. It has not been fully litigated yet, but GM lost on the issue of the mural being a part of the building in a summary judgment motion.

DEFINITELY don't take this as legal advice, but just an analysis by an art lover who happens to do law things as a job.

A California court denied GM’s defense that the mural was exempt from protection under the Architectural Works Copyright Protection Act. The matter between Faulkner v. GM settled.

Thanks for the conclusion!

The sticky point is the use of the murals for advertising, they were chosen to show how gritty the G wagon is...I know stop laughing but that was the purpose, It was not an incidental use.

JetCity Ninja's picture

sounds more like the city of detroit is failing to cough up royalties to the artists obtained via the city permitting process. the city commissioned these public works and thus the buck stops there.

if these were private works on private buildings or otherwise privately commissioned, it would be a different story.

the artists should be suing the city for their portion of the royalties obtained through the permitting process. of course, this depends on who actually owns the copyright on the works: the artists or the city?

at least that's how the custodial chain seems to ascend from where i sit with my feeble mind. any copyright lawyer is welcome to correct me where i'm wrong, however there's little to go on since this case hasn't even gone to discovery, so the documents related to the commissioning contract, copyright, royalty agreements or even MBUSA's permit filed with the city aren't yet public (though most are likely public record if you're willing to dig for it).

You're right - we'd have to see the contracts. I don't know too much about these types of licenses, but I do know in music recording contracts and other types of contracts that include copyrighted material, often times someone guarantees that they have the right to license rights to all copyrighted work involved. You'd be surprised, though.

City permitting fees don’t grant the “purchaser of the permits” with any copyrights, trademarks, and other IP. Those have to be cleared and negotiated separately between the purchasers and the rights holders.

Great to know - thanks!

Scott Spellman's picture

There has to be a reasonable standard where background artwork is "transformative" and therefore not requiring permission and "essential" where it would. For example-in image #1 does Mike's Coney get the same legal protection/income as the mural? In image #2- Do the other 4-6 logos and artwork get have the same merit to sue? Likewise- should GM sue every commercial use of the Detroit skyline that includes the Ren Cen?

Even as an artist-it is hard not to see this as greedy. There must be hundreds of other commercial and non-commercial uses of these murals as backgrounds in social media, and I don't think they sued before. Morally, I don't think that public artists should get blanket rights to their artwork in every situation.

Professionally- It is also sloppy by Mercedes/the production team to not get location releases including the art-at least for image #3 where the artwork is not background.

Short answer - yes, any trademarks and copyrighted works in an advertisement should be licensed for use, including Mike's Coney Island. Of course, it's the responsibility of the rights owner to decide whether to exercise their rights. Lawyers can be expensive, and the seemingly daunting challenge of taking on a big luxury automotive company on can be a deterrent. See my comment above about buildings like the Ren Cen (though the logos on top would not be covered by the exemption).

Social media is a crazy space - you have a lot of people who don't understand the complexities of copyright and trademark law, so yes, if you're looking at a lot of "influencer" posts through the lens of a IP lawyer, your head would explode. And to be clear, this is not a blanket right for every situation per se - this specific matter concerns commercial use, not personal use. Limits of personal use is likely not at risk in this case.

Professionally - totally sloppy, which is why I don't have much sympathy for Mercedes. I don't expect the artists to have a team of lawyers telling them what to do all the time, but Mercedes should. They screwed up, and even worse their attorneys had the guts to preemptively sue the artists rather than just paying a license fee, which would have been much cheaper.

Chris Maes's picture

Frankly, I had never heard of these artists before the campaign. So stupid this issue.

I disagree with the concept that no publicity is bad publicity. Artists would like to be acknowledged and compensated for their work. Mercedes did neither of these things until the artists raised it, so but for this litigation, you may not have ever heard their names anyway after seeing the ads. I believe that's the point - people should not be able to benefit from other's work without compensation and/or attribution.

T Scarb's picture

I think they lost their "artist" card after trying to sue when their public mural is caught in a commercial..

Can you elaborate? Is it "un-artist-like" to sue to protect their work?

If it's about the work being a public mural, then as an artist I would disagree that just because you place a work outside to provide an unobstructed view to the public you give up all rights to it, especially when it comes to others making money off of it. For example, I think it's entirely reasonable that people would take pictures of it, but I would find offensive if someone took a photo of it as the primary subject and began selling prints or merchandise of it without compensation. Legally, that would be making a copy or at least a derivative work, which would be a violation of copyright law without permission.

T Scarb's picture

... greedy artists I guess... its a public mural... and a crappy one at that.. get a grip... and maybe a real job.,

Kevin Gilmour's picture

I usually like to side with the 'little guy' when it comes to things like this as the big Corporations usually treat small-time creatives with disdain, but I have to side with Mercedes on this one.

The artists in question were paid to create their artwork by the City of Detroit, therefore they do not own their respective works... the City of Detroit does. Mercedes got all of the correct permits, etc from City of Detroit who own the artwork.

Can you provide support that the murals were paid for by Detroit and they own them? It's my understanding that they don't.

In my experience, permits cover things like where, when, how many people, parking spaces, road closures, special effects, but even in the DMV like FilmLa the backgrounds have not been a question. That's between the production company and the people who have an interest in the mural or background.

If this is like most of the similar things I've seen, a couple interns or new employees from the "social media" group took a G and were told to shoot and post some "local color" including the murals to how the urban grit.

Kevin Gilmour wrote, “Mercedes got all of the correct permits, etc from City of Detroit who own the artwork.”

Permits typically grant the permitees to film, photograph, or stage/host an event on city property. A permit will NOT grant the permit-holder to use any creative works protected by copyrights, trademarks nor peoples’ personas (their likeness), and other intellectual property rights for free—all those MUST be cleared, and if not the permit-holder is subject to multiple legal actions.

Kevin Gilmour wrote, “The artists in question were paid to create their artwork by the City of Detroit, therefore they do not own their respective works...”

Kevin, I would bet that your assumption will be wrong—that’s not how US copyright functions.

There’s a legal distinction between purchasing (buying) an artwork, photograph, song, etc. vs. owning its corresponding copyright. See 17 USC 202 (Ownership of copyright as distinct from ownership of material [artwork] object).

Unless the artist is a full-time employee of the city/company (the city/company would then own the artwork), or there’s a contract between the freelance/independent artist and buyer (that states that the buyer owns the artwork’s copyright—aka, a copyright transfer), or the artwork falls within one of the nine work-for-hire categories, the artist will retain the copyright to his/her works.

If I purchased a painting from a local artist, I will own the physical painting that I may display privately in my home; I may also sell it or give it away for free. However, I don’t get any rights to make copies or get the painting’s copyright, which remains solely and exclusively with the artist--that’s US copyright law.

Though the city of Detroit may have commissioned and paid for the mural to be drawn, the artists will own the copyrights to their works. That’s how I’ve understood the facts presented in this particular case.

Mike Schrengohst's picture

Mercedes should offer each artist a vehicle like that was used in the posts. And then be allowed to photograph each artist by their mural with their new Mercedes.

Drew Pluta's picture

Do any of you supporting the artists here understand that the logical conclusion to this will mean an effective ban on all public photography? If this is the way we do things all street photography will contain copyrighted works and will thus be required to get permission from all parties contained in a frame.

I'd like to see the assertion that as muralists they know that the works will be part of a public space and part of the free nature of our society. Just like we can all be photographed in public and have very few rights to restrict use of our human image. How is it we don't hold these situations in similar regard?

First, the law is currently how it is; street photography (assuming it's non-commercial) has always existed in line with the copyright protection of outside sculptures, murals, and other outside artworks. Personal photography - use that doesn't involve making money - is not affected by these laws or the outcome of this lawsuit. Shoot to your heart's content!

However, if you're looking to use other's copyrighted work in an advertisement or promotion of a product, you're likely running into the issue of needing permission to use that work. Same goes for music and other works, and I believe this makes sense. I disagree that simply because a work of art is outside and not protected from the elements makes it free of copyright protection. That would discourage artists from sharing their works publicly, and we'd be left with just looking at bland buildings and advertisements when outside.

One's privacy is protected the same way art works are in regard to commercial photography, ie. model releases. Again, for street photography, as long as you're not selling your photos commercially (ie. not as fine art), then you're running a risk of infringement of someone's rights.

So, as an example, the guys that lay asphalt on streets probably think they are artists for how they pour it and create smooth streets. I'm sure electrical workers think they put up light poles and wires in a way that is artistic. The guys that make sidewalks are artists. I could not do any of those things. Should all of those things seen in a photograph or commercial be considered art and request compensation? Anything in the public view, on a street should be considered free. If the lens on the camera was a Canon and the lens maker was an artist,,,,,,.

No, I would think that first of all if Edison could make that claim they would've long ago :)

Steven Russell wrote, “Do, as an example, the guys that lay asphalt on streets probably think they are artists for how they pour it and create smooth streets. I'm sure electrical workers think they put up light poles and wires in a way that is artistic.”

Steven, the simple distinction is that those city-type jobs do NOT produce creative works of authorship, as defined in the US copyright statute (like photos, paintings, songs, poems, mixed media works, etc.). Those city-jobs produce “functional” things, and functional (creative) works do NOT qualify for copyright (maybe a patent, if the work was new, useful, and non-obvious).

And all those city jobs are typically working for the city--the city would own their creative works, if any were produced during the scope of their employment.

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