IP Law Daily, COPYRIGHT—S.D.N.Y.: Litigants beware: keep up with your local news—or be time-barred from your claim, (Feb 26, 2025)

By Matthew Hersh, J.D.

An artist residing in Italy would have been aware of alleged infringement decades ago if he had simply paid attention to the headlines.

A sculptor who was residing in Italy when the allegedly infringing use of his works by a prominent artist caused a public scandal in that country should have discovered the infringement decades before he brought his lawsuit, the federal court in Manhattan has held. The ruling in the lawsuit, whose colorful cast of characters includes an Italian-American sculptor, a famous appropriation artist, and a porn star-turned-politician, may serve an important lesson for copyright litigants about staying abreast of local news coverage (Hayden v. Koons, No. 21-CV-10249 (S.D.N.Y. Feb. 25, 2025)).

The lawsuit involves a set of intrigues worthy of a steamy romance novel. Michael Hayden is an American artist who resided primarily in Italy from approximately 1980 to 2007. During that time period he created several sculptural works for Diva Futura, an Italian production company part owned by Hungarian-Italian erotic performer—and eventual Italian politician—Ilona Staller. One of those works, a Styrofoam sculpture depicting a giant serpent wrapped around a pedestal of boulders, was entitled Made in America.

Enter Jeff Koons, the widely known “appropriation artist” (and longtime target of copyright owners). He hired Staller in the late 1980s to be photographed in sexually explicit positions and eventually entered into a torrid—and decidedly high profile—romance with her (a photo of the couple accompanies this recent story on the release of her memoir). Koons borrowed the sculptor’s work for six different artworks that comprise part of his own Made in Heaven series. Among those are the Made in Heaven billboard (1989), Jeff and Ilona (Made in Heaven) (1990) and Jeff in the Position of Adam (1990).

The Italian-American sculptor sued Koons in 2021 for copyright infringement as well as violations of the Digital Millennium Copyright Act and the Visual Artists Rights Act. The court denied Koons’ motion to dismiss, leading to discovery and, eventually, this motion for summary judgment.

Statute of limitations. The court found that the copyright claims were barred by the statute of limitations. Under the discovery rule applicable in copyright cases, the court noted, a copyright infringement claim does not accrue “until the copyright holder discovers, or with due diligence should have discovered, the infringement.” The sculptor argued that he did not learn of Koons’ use of his work until 2019, within three years of filing his lawsuit. Koons argued, in response, that a reasonably diligent person in the sculptor’s position should have discovered the alleged infringement prior to 2019. The court agreed with Koons.

The sculptor should have discovered the alleged infringement, the court reasoned, because Staller—and the Koons work that featured her—were big news in the sculptor’s adopted home of Italy. Even by the sculptor’s account, the court noted, Staller—who is commonly known by her stage name Cicciolina—“is famous in Italy and she is a household name.” Moreover, the court noted, the sculptor was residing in Rome when the Koons works at issue premiered in Venice in 1990, causing a “media sensation and scandal” (and he was also in Italy, a few years later, when another public scandal erupted over the divorce and child custody battle being waged in an Italian court between Koons and Staller). “It would be a different matter altogether if plaintiff did not reside in Italy during a 20-year period between 1988 and 2019 and had no reason to follow Staller’s career,” the court noted. But given the sculptor’s “numerous transactions” with Staller and his many years in the country, the court reasoned, he should have discovered the alleged infringement well before 2019.

VARA claim. The court also dismissed the claim under the Visual Artists Rights Act. That law applies to works created after June 1991, but it also has an exception for pre-1991 works created for which title “has not, as of such effective date, been transferred from the author.” Here, the sculptor created the work in 1988 and passed to Staller’s company ownership of the physical copy over the work—but not the copyrights to that work—shortly thereafter. The sculptor claimed that he qualified for the exception has a result, but the court disagreed. The statute’s legislative history made clear, the court noted, that “‘title’ refers to title to the physical copy of the work of visual art at issue, and not to title to any intellectual property rights.” Thus, because he had passed physical possession of the work prior to 1991, the court reasoned, it could not qualify for VARA protection.

DMCA. The court also found that the claim under the Digital Millennium Copyright Act was time-barred. Under the DMCA, the court noted, a claim arises only if the defendant did so “with the intent to induce, enable, facilitate, or conceal an infringement.” But here, the court observed, the infringement claim was time-barred. Thus, the court reasoned, “[t]here was no actionable copyright infringement for defendants to ‘induce, enable, facilitate, or conceal.”

The Case is No. 21-CV-10249.

Judge: Reif, T.

Attorneys: Jordan Fletcher (Fletcher Law, PLLC) for Michael A. Hayden. Daniel J. Brooks (Scarola Zubatov Schaffzin PLLC) for Jeff Koons.

Cases: Copyright TechnologyInternet NewYorkNews