District court denies motion to dismiss copyright, DMCA and VARA claims brought by creator of sculpture that was reproduced by Jeff Koons in other artistic works, rejecting argument that sculpture was useful article not subject to copyright protection and holding that Koons’ fair use defense was not capable of determination on pleadings.

Plaintiff Michael Hayden is an artist who worked in Italy in the 1980s designing sets and props for films and live performances featuring the famous Italian adult film star and parliamentarian Ilona Stoller, known professionally as “Cicciolina.” Around 1988, plaintiff created a large sculptural work depicting a giant serpent wrapped around a rock that was to be used as a bed-like structure on which Cicciolina could perform sexually explicit scenes. Cicciolina’s company, Diva Futura, agreed to purchase the sculpture, but plaintiff retained the copyright in and to it.

In 1989, the contemporary artist Jeff Koons traveled to Italy to be photographed with Cicciolina as a means of enhancing his visibility and recognition by associating himself with her in a controversial manner. The photographs, which depicted Koons and Cicciolina in sexually explicit positions atop plaintiff’s sculpture, were subsequently used by Koons in a series of later works dubbed the Made in Heaven series. These works included a lithograph that was commissioned by the Whitney and displayed as a billboard in downtown Manhattan, a wood sculpture featuring a three-dimensional replica of Koons and Cicciolina on plaintiff’s sculpture, and an oil on canvas entitled “Jeff in the Position of Adam.” The series caused a stir upon its release and helped launch Koons into the upper echelons of the art world. The Made in Heaven works have been featured in museums and exhibits around the world, and Koons has allegedly earned substantial sums of money from them. Koons never credited plaintiff as the artist of the original sculpture, never sought plaintiff’s permission to use it, and never paid plaintiff a license fee. The Made in Heaven works are likewise displayed on Koons’ website and identify Koons as the author and copyright owner of the entirety of the works.

In 2019, Hayden discovered one of the three Made in Heaven works in an Italian news article. He subsequently obtained a copyright registration for his sculpture and sued Koons in New York federal court for copyright infringement, publication of false copyright management information under the Digital Millennium Copyright Act (DMCA), and violation of the right of attribution under the Visual Artists Rights Act (VARA). Koons moved to dismiss the complaint on the pleadings, which the district court denied.

Koons first argued that plaintiff’s work was not copyrightable as a “useful article” with strictly utilitarian function, since Cicciolina used it as a platform during her performances. As the court noted, the Copyright Act establishes a special rule for copyrighting a sculptural work incorporated into a “useful article,” defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” The Act does not protect useful articles as such; rather, the design of the article is considered a pictorial, graphical, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. The district court rejected Koons’ argument, holding that the sculpture, taken as a whole, consisted of a work of artistic craftsmanship lacking any readily ascertainable intrinsic utilitarian function. Although Koons pointed to the fact that plaintiff intended the work to be used a platform, the court held that plaintiff’s subjective intent was not dispositive.

Alternatively, the court held that even assuming the work was a useful article, the serpentine features and intricate designs were clearly discernable and could be identified independent from the rock base atop which they sat such that they were capable of existing as a separately copyrightable work that plaintiff sufficiently alleged had been infringed.

Koons also sought dismissal on the grounds that his series of works was protected by fair use. The court rejected this argument as well, concluding that the second and fourth fair use factors were not capable of a determination at the motion to dismiss stage. As the court noted, an element of the second fair use factor—the nature of the copyrighted work—is whether the work is published or unpublished. As the court observed, plaintiff agreed that the work could be used commercially by Cicciolina and was intended to be used in public performances, but also claimed that he retained the right to control the public display of the work under Italian law. Accordingly, the court held that discovery was necessary to determine the extent to which plaintiff retained creative control over first publication of the sculpture.

With regard to the fourth factor—the effect of Koons’ works on the market for the original sculpture—the court stated that discovery was necessary to determine whether the markets for the sculpture and Koons’ works meaningfully overlap.

Addressing the VARA claim, the court reserved decision pending additional briefing on summary judgment regarding the statute’s retroactive application. VARA protects works created prior to the statute’s effective date only if “title has not passed as of the effective date.” There is no dispute, the court observed, that plaintiff’s sculpture was created prior to VARA’s effective date (December 1, 1990), but the parties disagreed about the meaning of “title” under the statute. Koons argued that title to the sculpture passed upon plaintiff’s sale of the sculpture to Diva Futura, whereas plaintiff interpreted the term “title” to mean copyright and argued that he retained all copyrights to the work when he sold it to Diva Futura.

Although the court declined to dismiss the complaint, it did grant Koons’ motion for a ruling limiting damages to the three-year period prior to the commencement of the lawsuit.