The 1976 Copyright Act protects sculptures as copyrightable works. 17 USC §102(a)(5). The Copyright Act also authorizes the court to order the destruction or other reasonable disposition of all infringing copies. §503(b). What happens when the copyrighted work is a sculpture and multiple infringing copies have been made? Can the court order the removal of the infringing copies from their current locations?
Artist Donald Wakefield and a friend created a large granite sculpture called Untitled in 1992. They gave the sculpture to the friend’s son in Chicago, where the sculpture remains. Wakefield thought he saw the sculpture in Newport Beach, California in 2008. Wakefield realized the sculpture was a copy when he discovered six more infringing sculptures in 2010, all at properties owned by Olen Properties, Corp. Wakefield sued Olen Properties, Corp. and Igor Olenicoff for copyright infringement.
At the conclusion of the trial, the jury found that the defendants infringed Wakefield’s copyright in the sculpture. Wakefield filed a motion for a permanent injunction. Wakefield requested the court to enjoin defendants from continued infringement, to order the destruction or delivery of the infringing works to Wakefield and to order the removal of photographs of the infringing works from defendants’ websites.
An injunction should only issue where the intervention of a court of equity is essential in order effectually to protect property rights against injuries otherwise irremediable. A court may grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright. 17 U.S.C. § 502(a).
According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. Those factors require (1) that the plaintiff has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
(Opinion pdf page 14).
Inadequacy of Legal Remedy and Irreparable Harm
Here, Plaintiff’s legal remedies are inadequate to compensate for the continued display of his copyright against his will. The owner of a valid copyright interest holds the exclusive right to decide when the work is displayed and who may display it. 17 U.S.C. § 106. The right to exclude others from using the copyright holder’s property, is supported by the principle that a copyright, like a patent, is at once the equivalent given by the public for benefits bestowed by the genius and meditations and skill of individuals and the incentive to further efforts for the same important objects.
Further, copyright law does not promote forced transactions like what Defendants suggest. In the copyright realm, it has been said that an injunction should be granted if denial would amount to a forced license to use the creative works of another. In many instances, injunctive relief may be the best or only way to preserve the exclusivity of a copyright. As discussed, Defendants have infringed and continue to infringe Plaintiff’s copyright. Plaintiff has not been compensated for this infringement. Though Defendants contend Plaintiff’s failure to prove actual damages cuts against awarding a preliminary injunction, Defendants have not supported this argument with any authority.
(Opinion pdf page 15).
The district court also found that Wakefield was irreparably harmed by the continued display of infringing works by the defendants.
Here, Plaintiff creates unique, one-of-a-kind works of art, and Defendants continue to infringe by displaying the copies. As stated, Defendants have not compensated Plaintiff for this use. Considering the equitable nature of a permanent injunction, Plaintiff has made a sufficient showing of irreparable harm.
(Opinion pdf pages 15-16).
Balance of Hardships
The district court ruled that the balance of hardships weighed in Wakefield’s favor.
Defendants assert that they will have to spend considerable time, money, and effort in removing and replacing the sculptures if the injunction is granted. Defendants also argued that they would have to spend more money to replace the sculptures at the Brea properties to comply with the City of Brea’s Art in Public Places program. Plaintiffs assert that Defendants, curiously, were never even admitted to that program. Regardless, only two of the seven copies are in Brea, and it seems Defendants would likely need to replace those sculptures to comply with the program regardless of whether there is an injunction. That is because the program does not allow the display of non-original works. While Defendants will likely have to expend a noticeable effort removing and replacing the sculptures, the interest in preserving Plaintiff’s exclusive copyrights outweighs those efforts.
(Opinion pdf page 16).
The district court ruled that public interest is best served by removing infringing works from public places.
The district court concluded its analysis:
Doing equity, and relying in part on common sense, the Court finds that Defendants should not be given the de facto right to display the copyrighted work entirely against the copyright owner’s wishes. After applying the eBay factors, the Court finds that a permanent injunction should issue.
(Opinion pdf pages 16-17).
The district court issued a permanent injunction against the defendants, their officers, agents, servants, employees, and attorneys. The district court ordered defendants to remove all photographs of the infringing works from their websites within one month of receiving actual notice of the injunction and to deliver to Wakefield or destroy all existing infringing sculptures within eight months of receiving actual notice of the injunction.
This case is Wakefield v. Olenicoff, No. SACV 12-2077 AG (RNBx), U.S. District Court, Central District of California.