Case Review: Hayden v. Koons (2025)

The billboard Made in Heaven (1989) and the sculpture Jeff and Ilona (Made in Heaven) (1990) were originally made and first put on display in 1989 and 1990 respectively. ^{Jeff in the Position of Adam (1990) was sold to a private collector. Fast forward to March 2020, where counsel for set and prop designer Michael Hayden notified counsel for Koons of alleged copyright infringement and DMCA and VARA violations. Koons continued to display the works on his website. On December 2, 2021, Hayden brought copyright infringement, DMCA, and VARA claims against Koons. Koons moved to dismiss the complaint.}

The Court assumed the following facts to be true for the purposes of Koons’s motion to dismiss. ^{In the alternative, Koons also moved to limit damages under the statute of limitations to the three years before Hayden filed his complaint.}

In the late 1980s, Hayden was working in Italy as a visual artist and film/theatre set designer. ^{Around 1988, Hayden created one large sculpture of a serpent wrapped around a boulder on which Cicciolina, an adult film star, could perform sexual acts. Cicciolina and her manager owned Diva Futura, the company that bought Hayden’s sculptural work. The manager kept this work in his studio in Rome. Hayden did not assign copyrights to Cicciolina, her manager, or Diva Futura; he also did not intend anyone else to use the sculpture commercially.}

Around 1989, Koons traveled to Italy multiple times and used Cicciolina’s sets to be photographed with Cicciolina in sexually explicit positions. ^{These photos were then rendered into various media that form a part of the Made in Heaven series. In Made in Heaven (1989), Jeff and Ilona (Made in Heaven) (1990), and Jeff in the Position of Adam (1990), the serpent sculpture is visible as the platform on which Koons and Cicciolina embrace in sexual, recumbent poses.}

According to the complaint, filed in the United States District Court Southern District of New York on December 2, 2021, Hayden came across a photo of Made in Heaven (1989) in an Italian news article sometime in April of 2019. ^{He obtained copyright registration with the U.S. Copyright Office of the serpent sculpture in 2020.}

To determine if the complaint’s allegation of the validity of the copyright registration is plausible, the Court engaged with the question of whether Hayden’s serpent is a sculptural work or a useful article. ^{As the Court recognized, the Copyright Act does not protect useful articles, which “hav[e] an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Copyrightable subject matter, on the other hand, include “pictorial, graphic, and sculptural works.” A useful article could be copyrightable under the following conditions, however. As the Court quotes from the statute, the}

design of a useful article is considered a pictorial, graphical, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

As a work of “artistic craftsmanship,” the Court deemed the serpent-rock a sculptural work. ^{Even though the flat part of Hayden’s sculpture can be and was intended to be used as a platform, this functional quality and author’s intent were not dispositive nor controlling to render the work merely a useful article.}

Even if one were to accept that the flat portion of Hayden’s work “has an intrinsic utilitarian function,” the Court employed separability analysis to conclude that the serpentine element would still be copyrightable. ^{Separability analysis in this context comprises two parts: (1) identifying a sculptural element separate from the utilitarian characteristics of the useful article and (2) determining that this element can exist on its own, autonomous from the utilitarian characteristics of the article. Because the serpent is conceptually separable from the rock base and displays its own unique ornate detailing, the serpent would be eligible for copyright protection. The Court found that the complaint sufficiently pleaded copyright infringement.}

Though it would have been interesting to see the Court dive into fair use analysis, the Court determined that it could not weigh some of the fair use factors on a motion to dismiss. ^{The Court felt that it could not assess the scope of Hayden’s exclusive rights over the publication of the serpent-rock at this stage. Therefore, the “nature of the copyrighted work” factor could not be fully assessed just based on the face of the complaint. The Court also felt that it could not assess the market effects factor just by looking at the complaint. According to the Court, the complaint sufficiently alleged a market for Hayden’s work, and the pleadings did not necessarily have to negate the fair use defense because the defendant bears that burden.}

The complaint alleges that Koons is falsely claiming authorship over the three works in question. ^{The serpent-rock was created before VARA’s effective date, but VARA protection can still apply retroactively if “title has not passed as of the effective date.” Even though there was a sale or transfer of the serpent-work, the parties disagreed on the definition of “title” under VARA. The Court reserved its ruling on this issue until the summary judgment stage.}

While the case would proceed to discovery, the Court granted Koons’s motion to limit damages to the three-year period before Hayden filed suit.

After Discovery

As the case went forward, on September 15, 2022, Hayden moved for summary judgment. ^{On October 5, 2022, Koons (and Jeff Koons LLC) cross-moved for summary judgment. On June 12, 2024, Hayden requested permission to file a motion for reconsideration of damages.}

Cicciolina and Ricardo Schicchi – who managed, directed, and photographed much of Cicciolina’s performances – owned Diva Futura, an Italian production company that produced adult entertainment in various media. ^{The following facts are undisputed. Hayden created multiple sculptural works for Diva Futura, and Cicciolina’s live erotic shows featured these works. Schicchi paid cash for these sculptural works used in Cicciolina’s live erotic shows.}

Because Hayden had worked with Diva Futura before, he created the serpent-rock by himself at his Rome apartment with Cicciolina in mind. ^{He molded Styrofoam into the shapes and applied “glue, gauze, plaster, and paints of various colors.” He asked Schicchi if Diva Futura would be interested in the piece as a platform for Cicciolina’s live and film performances; it seems that Hayden created the sculpture with the intention that Cicciolina would use it as a platform. With no formal contract, Diva Futura bought the work (which would be used as a platform by Cicciolina) for $900. Hayden never saw the sculpture nor Cicciolina or Schicchi after the sale.}

Hayden applied for copyright registration of the serpent-rock on August 7, 2019. ^{The U.S. Copyright Office granted the application on January 10, 2020.}

In light of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, the Court ordered Hayden and Koons (and Jeff Koons LLC) to submit supplemental briefing on May 23, 2023. ^{This is presumably because the Court anticipated that Warhol could have an effect on fair use analysis, if the case came to that.}

Mama Mia! Constructive Discovery: Statute of Limitations

The Court cited the “discovery rule” that the Second Circuit has adopted: a copyright infringement claim starts to accrue when the copyright holder discovers or should have discovered the infringement. ^{The Court acknowledged that determining whether the copyright holder should have discovered the infringement is a “fact-intensive inquiry.”}

Koons (and Jeff Koons LLC) argued that Hayden should have become aware of the Made in Heaven works decades ago.

On the contrary, claiming that this statute of limitations affirmative defense fails, Hayden argued that he brought suit within three years of discovering the Koons works and his unawareness of the Made in Heaven series was not unreasonable. ^{The Court, however, disagreed, concluding that a “‘reasonably diligent’ person in plaintiff’s position should have discovered the alleged infringement prior to 2019.”}

Hayden’s long residency in Italy that overlapped with the premiere of Jeff and Ilona at the 1990 Venice Biennale; Cicciolina’s fame that Hayden himself described as rising to the level of a “household name”; his consumption of Italian news that would have likely featured Cicciolina’s participation at a prominent, international art exhibition; and Cicciolina’s membership in Italian parliament that would have proliferated media coverage were all reasons that the Court cited to conclude constructive discovery on the part of Hayden. ^{In other words, a reasonably diligent person in Hayden’s position, especially as someone who had created many sculptures for Cicciolina in the past, would have become aware of the Koons works in question. A reasonably diligent person would also investigate further if he happened to come across Cicciolina’s role in the Biennale; he would not stay passive or oblivious for thirty years.}

Hayden did concede that he consumed a news story in around 1994 that mentioned Cicciolina’s child custody battle with Koons. ^{The Court concluded that this story likely would have at least mentioned the Made in Heaven series or included some images of the works.}

Because Hayden should have become aware of the Made in Heaven works much earlier than 2019, the Court concluded that his copyright infringement claim is time-barred. Therefore, the DMCA claim was deemed moot as well as the request for reconsideration of the scope of damages.

VARA protection applies to eligible works created on or after June 1, 1991. ^{However, VARA protection can apply retroactively if “title to which has not, as of such effective date, been transferred from the author.”}

Hayden created the serpent-rock in 1988, around 3 years before the VARA effective date. ^{The question was therefore whether title had been transferred. Hayden defined “title” as copyrights. He argued that because he did not transfer any copyrights to Diva Futura, Cicciolina, or Schicchi, VARA protections apply even though he created the work before the VARA effective date. However, the Court disagreed with this interpretation. Looking to legislative history, the Court concluded that “title” would have to mean something other than copyrights, since Congress changed a previous draft of VARA that used “copyright” instead of “title.” Congress’s desire to avoid takings clause claims under the Fifth Amendment, as well as the persuasive authority of Patry on Copyright which defines “title” as “title to the physical copy of the work… and not to the title to any intellectual property rights,” the Court determined that VARA protections did not apply to the serpent-rock.}

The serpent-rock was sold to Diva Futura, and there was no formal contract that delineated provisions that reserved title of the physical object to Hayden. ^{Hayden also intended for the sculpture to be used by Cicciolina; he intended the title of the physical copy of the work to be transferred to Diva Futura. Hayden subsequently never saw the physical work again. With title transferred for a work created before June 1, 1991, the Court granted defendants’ cross-motion for summary judgment dismissing the VARA claim.}

Koons prevailed on summary judgment arguing that the statute of limitations for Hayden’s actions expired. The Court did not engage with fair use analysis. As Grossman LLP attorneys Kate Lucas and Jacquie Jakimowicz recognize, what is notable here is the Court’s application of constructive discovery. ^{Cicciolina’s fame and status as a “household name” shaped the Court’s “fact-intensive inquiry” as to whether Hayden should have discovered the Made in Heaven works much earlier than 2019.}

In cases where a plaintiff brings both a copyright infringement and VARA claim, to what extent will this discovery rule have implications on the “recognized stature” requirement of VARA? As a hypothetical, if the serpent-rock were made after the VARA effective date, and the facts were such that the focus of the claim was the right of integrity (rather than attribution), would it be easier to obtain VARA eligibility by virtue of Cicciolina’s fame, while maintaining the difficulty of showing that a reasonably diligent person would have discovered the work (by vice of Cicciolina’s fame)?

Additionally, what is the role of expert witnesses when it comes to the “fact-intensive inquiry” of discovery? What are artists who embrace a more solitary practice to do if they should have been more aware of other artists, movements, etc.?

And finally, notwithstanding New York jurisdiction, can Italian law hold any weight here? It seems like the right to attribution (Diritto alla Paternità dell’Opera) would be at issue. Considering that the European conception of artists’ moral rights tends to be stronger, evidenced by their “inalienable,” non-transferable, and non-waivable nature^{, would Italian courts perceive a stronger connection between Hayden and his work, thereby affecting the way we would assess the serpent sculpture’s degree of visual/physical prominence in Koons’s works?}

About the Author:

Emily Ko is a rising 2L at NYU School of Law. As a 1L, she was a first-year representative for NYU Law’s Art Law Society and the Fashion Committee of the Intellectual Property and Entertainment Law Society. Her research interests include copyright and fair use issues, authentication disputes, and art restitution.

Select Sources:

Facebook
Twitter
Pinterest
LinkedIn
Tumblr
Email