This post is the fourth in a series on Copyright and Photography. Read the first post here, the second post here, the third post here, the fifth post here and the sixth post here.

What is Russian Doll Copyright Infringement?

Russian doll copyright infringement is a term applied to a situation where one copyrighted work is nestled within another copyrighted work, in the same manner that Russian dolls nestle into one another. In photography, this type of infringement occurs most frequently when a photograph incorporates the depiction of another artist’s copyrighted work. Understanding the circumstances where this is most likely to happen can avoid costly and time consuming infringement disputes. Conversely, copyright owners should be aware of how to proceed if they have had their own works infringed in this manner.

For example, in 2020, photographer Carlos Vila took a photograph of model Irina Shayk, in which she wore a pair of pants featuring a cartoon image created for Deadly Doll, a Los Angeles clothing company. When Deadly Doll posted Vila’s photograph on Instagram, Vila sued for copyright infringement.

We have previously discussed scenarios where celebrities have been faced with lawsuits for posting on social media photographs of themselves taken by paparazzi. But here the issue involves something more complicated: so-called “Russian doll” copyright infringement. Deadly Doll countersued, arguing that Vila was actually the infringer because his photograph includes its copyrighted work — the cartoon image appearing on Shayk’s pants. Both works, Vila’s photograph and Deadly Doll’s graphic, have copyright registrations. A final outcome in this matter is pending.

So, what are other scenarios in which there is a copyrighted work inside another copyrighted work?

Where does this type of infringement usually appear?

The U.S. Postal Service (USPS) has run into trouble with Russian doll copyright infringement twice. In 2013, when releasing a stamp honoring Korean War veterans, the USPS paid a license fee for a copyrighted photograph of the Korean War Veterans Memorial in Washington, D.C. However, the sculptor, Frank Gaylord, sued the USPS because it had not sought his permission to depict the memorial in the photograph. Ultimately the USPS paid him $685,000. In 2020, the USPS ran into a similar problem after issuing a stamp depicting the Statue of Liberty. Although the copyright on the Statue of Liberty in New York has expired, the photograph the USPS licensed for the stamp was actually the Statue of Liberty replica in Las Vegas. The sculptor sued, eventually winning $3.5 million in damages. Both of these costly and embarrassing mistakes by the USPS involved properly licensed photographs but sculptors whose copyrighted art appeared in the photographs.

Another common scenario where Russian doll infringement may occur is with murals and graffiti art. In 2018, Mercedes Benz ran an advertisement with photographs of one of their cars in front of several murals in Detroit. The artists who created the murals objected to the inclusion in the campaign, and Mercedes eventually settled before the case could proceed on the merits. Similarly, one of General Motor’s ad campaigns involved a photograph of a Cadillac in a parking garage, and the photograph included a copyrighted mural by Adrian Falkner. The court found that although photographs of buildings are typically permitted if the building is publicly visible, in this case the mural was a separately protected piece of art. Again, General Motors settled the dispute.

One ongoing case pits OG SLICK, an influential graffiti artist, against Rhode Island game-maker Top Trumps USA for the use of his mural in a Worcester, Massachusetts version of Monopoly. Top Trumps acquired a license from Hasbro to make these official “city versions” of Monopoly, which include “landmarks and places of public interest.” Hasbro is not a party to the litigation. If this case does go to trial, it could have very interesting implications for both Russian doll copyright cases and when fair use is an appropriate defense.

What should artists look out for?

Avoiding Russian doll infringement requires an awareness of what may incidentally appear in photos and videos. On the flip side, if you’re an artist whose work is included in someone else’s work without your permission, you may have recourse to either have the work taken down or receive financial compensation, including statutory damages for works that have been registered with the Copyright Office. This is a complicated area of law that Lutzker & Lutzker closely monitors on behalf of creative artists.