The IP world has been all abuzz about the dispute between Arturo Di Modica, creator of Wall Street’s “Charging Bull” statue, and his archrival, the “Fearless Girl” statue that has been facing the Bull since March 7, 2017. No lawsuit has been filed, but Di Modica’s attorney, Norman Siegel, stated that “There are issues of copyright and trademark that needed to be — and still need to be — addressed.”
Di Modica owns a U.S. trademark registration for an image of the Bull used in connection with “Clothing, namely, T-shirts and ties.” He also, presumably, owns the copyright in the sculpture. Does any of this give him the right to prevent another sculpture from being installed nearby?
The trademark claims can be fairly easily dispensed with. Di Modica’s existing trademark registration relates to clothing. It’s possible that he enjoys common law trademark rights in the sculpture as a design mark in relation to other goods and services – such as for sculptural works. In any event, there is no likelihood of confusion issue here. Likelihood of confusion is the basis of a claim of trademark infringement. Nobody would be likely to be confused as to the source of the Fearless Girl sculpture, even given the understanding that Fearless Girl is intended to be a comment on Charging Bull. Nowhere is it written that you can’t comment about another party’s trademark, whether via a work or visual art or otherwise.
Likewise, any claim of trademark dilution seems unlikely. Trademark dilution is a claim by the owner of a famous trademark that the use of the mark by the defendant would diminish the goodwill embodied in the trademark – even if the defendant is not using the mark in connection with similar goods or services. But, again, for trademark rights exist, they must be related to specific goods and services that the owner is providing, and it’s unclear what those goods or services might be in this case.
Moving on to copyright, these claims also seem weak. Kristen Visbal, the sculptor of Fearless Girl, did not copy any part of Charging Bull. Fearless Girl stands on its (her?) own. The only common element between the works is the medium, bronze, which is, of course, a typical medium for sculptures of this type. Fearless Girl is also not a derivative work of Charging Bull; it’s not a sequel or replica as we understand it, nor does it make use of unique, original characters, elements, or themes from the original work. If Fearless Girl had been placed anywhere else in the world, there would be no question of any relation between it and Charging Bull, and certainly no sense that there had been a copyright infringement.
Finally, we come to Di Modica’s “moral rights,” which are embodied in the U.S. in the Visual Artists Rights Act of 1990 (VARA), 17 U.S.C. § 106A. This issue was addressed by Eleonora Rosati in a recent post on the IPKat blog. Rosati first points out that Charging Bull would only qualify for VARA protection if it meets the narrow definition of “works of visual arts” in the U.S. Copyright Act. Even if it did qualify,
…the right of integrity envisaged therein is only actionable in relation to a “distortion, mutilation, or other modification of the work which would be prejudicial” to the honour or reputation of the author. Arguably Fearless Girl and its positioning have not resulted in any derogatory action on or treatment of Charging Bull.
The VARA also excludes claims relating to the public presentation, including placement, of a work. So any claim related to moral rights under the VARA seems, at best, an uphill climb.
Visbal goes on to speculate whether Di Modica may have a claim of moral rights under Italian law, given that Di Modica is an Italian citizen and both the U.S. and Italy are signatories to the Berne Convention. This, too, seems like a stretch.
In conclusion, it seems like Di Modica has the right to complain about Fearless Girl, but there’s not much he can actually do about the sculpture itself. Maybe he should spend his time sculpting an even more fearsome bull.
Image by Rachel Kipnel. This work is licensed under the Creative Commons Attribution-ShareAlike 4.0 License.
