Hayden v Koons: US Court of Appeals says it was 30 years too late

In a copyright law dispute between Michael Hayden (claimant) and Jeff Koons (defendant), the US Court of Appeals for the Second Circuit held that the claimant’s copyright infringement claim failed because of the statute of limitations: a ‘reasonable copyright owner’ would have learned of the alleged infringement and brought it before the court much earlier than Hayden did.

Background

Hayden is an American artist who lived and worked primarily in Italy approximately between 1980 and 2007. In 1988, he created a sculpture for Ilona Staller, a famous Italian adult film star and politician, and sold it to her for use in her live erotic performances. However, there was no contract to document the sale, or agreement in relation to copyright ownership or third-party use of the sculpture. The said sculpture depicts a serpent wrapped around boulders.

Soon after, Koons, a globally recognised appropriation artist, hired Staller, with whom he later began a romantic relationship, to pose with him for a couple of pieces in his Made in Heaven series, namely Made in Heaven, Jeff and Ilona (Made in Heaven), and Jeff in the Position of Adam. In all these artworks, Koons and Staller appeared posing on the serpentine structure created by Hayden.

According to the claimant, he became aware of these unauthorised reproductions of his sculpture in 2019. A few months after this discovery, he registered his artwork with the US Copyright Office and filed a copyright infringement lawsuit in late 2021 against Jeff Koons.

The District Court concluded, inter alia, that Hayden’s claim was time-barred as ‘[a] “reasonably diligent” person in [the claimant’s] position should have discovered the alleged infringement prior to 2019’ and accordingly, dismissed Hayden’s case.

Court’s decision

In the appeal, Hayden essentially challenged the District Court’s dismissal of his copyright claim.

Under 17 US Code s. 507(b), copyright infringement claims must be brought before the courts within three years after the claim has accrued. The settled case law of the Second Circuit states that deciding when a claim accrues is to be determined under the ‘discovery rule’, which requires actual or constructive discovery of the relevant infringement. Put differently, the three-year period starts either when the copyright holder discovers, or, in the absence of an actual discovery, with due diligence ought to have discovered the alleged infringement.

The parties did not dispute that Hayden did not have actual knowledge of the alleged infringements. What was disputed is whether he, nevertheless, should have discovered them more than three years before he filed the lawsuit in 2021. However, Hayden suggested a ‘heightened standard’ for this discovery rule, different from the Court’s established case law. According to him, constructive knowledge of the alleged infringements can only be established if the circumstances ‘triggered a duty to inquire’ on the copyright owner. Moreover, he claimed that the copyright owner must have actual knowledge of the facts that would suggest the probability of the relevant infringements.

The above said, the Court emphasised that the determinant factor is the knowledge of the facts that constitute the relevant infringement, not facts that may suggest the probability of it. Likewise, whether the copyright owner undertook reasonable investigations, in compliance with the so-called ‘duty to inquire’ was soundly held to be irrelevant, as requiring so would bring further questions regarding whether a copyright owner’s duty to inquire starts as soon as they make their work available to the public.

Consequently, the Court refused to change its interpretation of the discovery rule and reinforced that, if the defendant sufficiently identified facts that would have allowed a reasonable copyright owner to discover the alleged infringement, the claimant would be treated as having discovered the said infringement.

Hayden lived in Italy for almost three decades, which overlapped with the 1990 Venice Biennale in which all three allegedly infringing works were exhibited, causing ‘a media sensation and scandal’. He was reported to have immersed himself in the local culture – more specifically, the local art scene – lived with an Italian citizen, and followed the local news. Hayden was also familiar with Koons – as he referred to Koons in his complaint as ‘one of the most famous young artists in the world’ – and, as demonstrated above, Staller. Against this backdrop, the Court readily concluded that a reasonable copyright owner should have discovered the alleged infringements more than three years prior to when Hayden actually filed the lawsuit.

That said, the Court was also conscious not to turn the discovery rule into a ‘celebrity privilege’, emphasising that its findings did not rely solely on Koons’s fame or the wide recognition of his works, but also on the other relevant factors listed above. It further clarified that the ‘reasonable copyright owner’ is not expected to dig into the news, keep an eye on pop culture, or delve into the Internet to find out whether anyone is using their copyright works in an unauthorised manner. However, they can also not ignore widespread media coverage, or ‘bury their heads in the sand’. As reiterated by the Court, the aim of the three-year limit is to set a fair balance between the interests of copyright owners and potential infringers by prohibiting the former from ‘resurrecting stale claims’ and ‘unfairly surprising’ defendants where copyright owners have slept on their rights for a long time.

Comment

This case demonstrates the significance of bringing copyright infringement claims – as well as any type of legal action that is subjected to a statute of limitations – in a timely manner.

A comparison of the claimant’s and the defendant’s works readily suggests a prima facie finding of infringement, as Hayden’s copyright work is reproduced, either directly or indirectly, in its entirety by all the three allegedly infringing works of Koons. However, as emphasised by the Court, unauthorised third parties cannot be expected to live with a constant threat of being sued by copyright holders. This is particularly significant in the context of appropriation art where artists heavily rely on the practice of copying earlier works in their new creations. It is therefore necessary to have some limitations on the extent to which copyright owners can enforce their rights. In other words, if they condone certain unauthorised uses of their works or do not check whether an infringement is taking place where a reasonable copyright owner would be expected to do so, then it is only reasonable for the law to treat them as if they approved the relevant unauthorised use and provide those unauthorised users a form of safe harbour.

Absent this basic principle, it may not have been an easy win – or a win at all – for Koons. He copied the entirety of the claimant’s work, and the very same Court did find him liable for copyright infringement in previous cases, such as Rogers v Koons. Despite this, this Kat believes that Koons might still benefit from the fair use defence under 17 USC s. 107.

To start with, it seems highly questionable that the allegedly infringing works could have an impact on the market for or value of the serpentine structure, which was apparently not created to constitute a stand-alone artwork, to be displayed at exhibitions, or to be sold to art collectors.

Furthermore, Koons could plausibly have argued that he did not merely copy Hayden’s work for the sake of copying it, but rather used it as a platform for Staller and himself to pose on – which was explained by Hayden to be the purpose of creating and selling the artwork to Staller in the first place. When this functional nature of the sculpture is considered, it becomes even more evident that Koons merely used the copyright work for its intended purpose.

Alternatively, drawing from the Court’s reasoning in Blanch v Koons, where the Court ruled in favour of Koons, the defendant might even demonstrate that his use of the sculpture was ‘transformative’: the meaning and purpose of a sculpture – which is in itself a copyrightable artwork – was changed into a background, subsidiary, functional object in the process of creating new artworks.

Consequently, as most of the fair use factors seem to weigh in favour of the defendant, the copyright infringement claim should still have been dismissed, even if Hayden had raised the said claim in time.




Image credit: Photos of Jeff Koons’s works were obtained from his website.