IP Law Daily, COPYRIGHT—D. N.M.: Artist gave art collective an irrevocable license to display her work, (Sep 14, 2022)
By Matthew Hersh, J.D.
Because the artist created the installation for display at the collective and was compensated for her work, the license could not be revoked.
A visual artist who created a piece of artwork for permanent installation at a Santa Fe artists’ collective was not entitled to revoke the license she implicitly gave to that collective because she received compensation for her work, the federal district court in Albuquerque has held. The court, in granting the collective’s motion for summary judgment on the artist’s copyright infringement claim, also found that it made no difference that the artists’ collective had passed through the hands of various different entities over the years, as the artist’s plain intent was to grant a license to the collective—regardless of who may have been running it at the time (Oliver v. Meow Wolf, Inc., September 13, 2021, Khalsa, K.).
Lauren Adele Oliver created an artwork named “the Space Owl,” an original “owl-like alien … with horns and a face visor.” In 2015, she was asked to install her artwork at a permanent exhibition in Santa Fe, New Mexico, called the “House of Eternal Return.” The exhibition, which describes itself as “a mind-bending, explorable art experience for people of all ages,” is run by a Santa Fe-based artists’ collective named Meow Wolf. The Space Owl exhibit, as well as the overall exhibition, were given rave reviews, and both the installation as well as the resulting litigation received extensive coverage in the Santa Fe media.
Although the relationship between the artist and the collective began amicably, it is now anything but. The artist contends that in return for the display of her artwork, the collective offered her membership in the collective as well as the right to a share of its proceeds. But within a few years, she alleges, the collective stopped paying her royalties—and even more, she contends, started exploiting her work without compensation in its gift shop as well as in a documentary. Eventually, the collective told her that they would not pay her any further royalties and threatened to remove the artwork from the exhibition altogether unless she agreed to sell them the artwork for a “nominal” sum. Because the artwork was permanently installed within a broader installation, she claims, removal of the artwork would essentially require its destruction.
The artists’ collective, by contrast, tells a very different story. The collective agrees that it was required to pay a certain revenue share to the artist but that the share was to be capped at a certain dollar value, and never was to include a share in the collective itself. Moreover, the collective asserts, their agreement provided that the collective would own the physical installation to the art, while the artist would retain only the intellectual property rights. Finally, the collective contends, while it did offer at one point to purchase the intellectual property rights to the artwork, the amount it offered was hardly nominal.
In March 2020, the artist sued the collective for copyright infringement, violation of her rights under the Visual Artists Rights Act, contract breach, and several other state law claims. The lawsuit, which has been covered extensively by IP Law Daily (including here and here) resulted in several interesting preliminary rulings. Most notably, the court held last month that referral to the Copyright Register was warranted as to whether the Copyright Office would have allowed the artist’s work to be registered if it had known that a bench visible in the artist’s deposit copy was in fact designed by someone else. The referral remains pending.
The artists collective, meanwhile, moved for summary judgment on the copyright infringement claim on implied license grounds, leading to this opinion.
Implied license. The court found that the artist had implicitly granted a nonexclusive license to the collective—and because the artist had been compensated for that license, she had no grounds to revoke the license.
As to the existence of the implied license, the court began, the case presented “an undisputed, textbook example of an implied license.” Under Ninth Circuit caselaw, which is widely applied by district courts in the Tenth Circuit, the court found, a purported licensee must show that: (1) the licensee asked the licensor to create the work; (2) the licensor created the work and delivered it to the licensee; and (3) the licensor intended that the licensee copy and distribute the work. The artist had designed her Space Owl work on request of the art installation and had delivered it to the installation for its use. To be sure, the court noted, the work was intended for “display” by the installation rather than copying and distribution—but that made no meaningful difference under the applicable test.
Moreover, the court noted, the artist could not revoke her implied license because she had been compensated for her work. To be sure, the court noted, she disputed the amount of that compensation and believed she was entitled to more. But because the parties’ conduct created the implied license, the court found, any contractual obligation to pay for a work was “separate from the existence of the implied license.” Thus, “courts have declined to treat payment in full as a condition precedent to the granting of an implied license in the absence of plain, unambiguous language to that effect.” No such understanding was explicit here, the court found.
Finally, the court noted, it did not matter that the ownership of the collective had shifted over time. To be sure, the court noted, the collective had been run at different times by an unorganized partnership, then by a succession of different LLCs, and eventually by an incorporated entity. The artist argued that if she implicitly gave a license to any entity, it was not to the entity that was responsible today for displaying her work. But none of that mattered, the court found, as “the parties’ entire course of conduct shows that [the artist’s] objective intent was to grant an implied license to display [the installation] to the entity or entities operating [the collective],” whoever that may have been. The artist could not escape on this technicality, the court held.
The Case is No. 20-237 KK/SCY.
Attorneys: Cody Lejeune (Lejeune Law, PC) for Lauren Adele Oliver. Cole P. Wilson (Bardacke Allison LLP) for Meow Wolf, Inc.
Companies: Meow Wolf, Inc.
Cases: Copyright NewMexicoNews GCNNews