— Jessica Gutierrez Alm, Attorney
Earlier this month, the United States Postal Service (USPS) was ordered to pay $3.5 million in damages to a sculptor for copyright infringement.
Seeking a unique redesign for its “Forever” stamps, the USPS searched stock photos for images of the Statue of Liberty. They found a particularly striking photo on Getty Images and paid $1,500 for a license. Between 2010 and 2014, the USPS produced and sold 4.9 billion Forever stamps featuring the Statue of Liberty photo obtained through Getty Images. There was only one problem—this was not the Statue of Liberty. Instead, the photo was of the Lady Liberty replica statue displayed in front of the New York-New York Hotel & Casino in Las Vegas. The differences may be subtle, but on a side-by-side comparison, the distinction becomes clear.
On close inspection, you can even see the small plaque affixed to the crown of the Las Vegas statue. “This one’s for you, mom”–the sculptor’s dedication to his mother-in-law.
The USPS discovered the mix-up in 2011 after only a few months of production. They stated that they still would have selected the image had they known it depicted the Las Vegas statue, and continued producing the stamps. Robert Davidson is the sculptor of the Las Vegas replica statue. Recognizing that the USPS was profiting from his original work of art, Davidson sued the USPS for copyright infringement.
After a two-week bench trial, the court found in favor of Davidson. The $3.5 million damages amount was calculated as a 5% royalty on the USPS’s profits on the stamp.
How can someone claim copyright on a replica of a famous statue?
The short answer is: it’s not an exact replica. As the court in this case explained, “a work of art need not be wholly original to be copyrightable.” Rather “it need only be a new and original expression of some previous work or idea.” The standard for obtaining any copyright protection is relatively low. To demonstrate that Davidson’s statue is eligible for copyright protection, he need only show a “modicum of creativity.” In a 1991 case, the Supreme Court described the level of creativity required as “extremely low” and stated that “even a slight amount will suffice.” Feist Publ’ns, Inc. v. Rural Tel Serv. Co., 499 U.S. 340, 345 (1991). In addition, to obtain protection for his sculpture, Davidson needed to show some nontrivial variation from the New York statue that distinguishes it in some meaningful way.
The court found that Davidson met this burden. The court seemed particularly persuaded by Davidson’s testimony that he sought to give his sculpture a more “feminine” and “fresh” face, as compared with the “harsher” and “more masculine” look of the original. Questions about the application of societal beauty standards to the Statue of Liberty aside, the court determined that the softened jaw line, rounded face, and modified eyes and lips were sufficient for copyright protection in the derivative work.
Since the USPS obtained rights to the image through Getty Images and paid a licensing fee, how was this an infringement?
This was my first question when I learned the USPS paid a licensing fee for the photo. However, it turns out the photo itself was an infringing work. According to Davidson’s complaint, the photographer took the photo and posted it for sale on Getty Images without Davidson’s permission. Thus although USPS paid a licensing fee to the photographer, the license was still based on use of an infringing, unauthorized work. Continued sale and distribution of the photograph, whether by the photographer or USPS, constituted additional infringement.
Isn’t this protected fair use?
The USPS raised the issue of fair use as a defense to the infringement. Fair use does not have a clear-cut definition. In determining whether an otherwise infringing use constitutes fair use, courts look to four factors: (1) The purpose and character of the use; (2) The nature of the copyrighted work; (3) The amount of the copyrighted work that was used; and (4) The effect of the use on the author’s market. The USPS’s argument for fair use relied in part on its low profit margin on the stamps and a lack of any harm to Davidson’s ability to capitalize on the sculpture. The court sided with Davidson. As the court explained, although the profit margin for individual stamps was low, the USPS collected over $70 million in pure profit from the stamps. The court also noted that the USPS never offered a public attribution or apology to Davidson.
Shouldn’t the sculptor have sued the photographer instead of the USPS?
It seems Davidson had options here. Both the photographer and the USPS unlawfully used Davidson’s work. The photographer produced and sold a derivative work (the photo) based on the original copyrighted work (the sculpture). The USPS then reproduced and sold the same infringing photo. Both the photographer and USPS used, and profited from, Davidson’s underlying original work. It is likely that Davidson also could have sued Getty Images for displaying and licensing the infringing work. It seems Davidson probably made the strategic decision to sue the U.S. government, rather than the photographer or Getty, as the potential for damages was considerably higher.