North Coast Brewing has big win in lawsuit by deceased artist’s wife over use of painting used on Brother Thelonious label.

In what can only be a stark reminder to every brewery, distillery, and winery producing labels with art or contents generated by third-parties to get a written license for the work or to obtain ownership and have an acknowledgement of that ownership signed by the artist, it looks like North Coast Brewing has finally prevailed in a dispute with the widow of the artist, Eduardo Smissen, who created the painting that is featured on the label for Brother Thelonious.

In the lawsuit, the plaintiff claimed that the North Coast had asked Smissen if he’d be interested in designing a bottle label featuring Monk back in 2005 and after a brief exchange of correspondence, Smissen created the artwork and “Eduardo’s beer label was being affixed by North Coast Brewing to bottles of Brother Thelonious Abbey Ale” by the end of 2005.

You can read the complaint filed in the case here. Also, we’ve gotten the motion to dismiss, the response, and the reply. The order entered by the Judge dismissing the lawsuit (with limited right to replead) can be read here.

The order dismissing the matter made a lot of sense and in addressing some of the more important claims that industry members are likely to see in similar situations where the terms aren’t agreed to in advance and where a signed assignment or ownership might not be obtained, the Court had this to say in making short work of them:

With regard to the plaintiff’s claims that the license of the artwork for use on North Coast’s bottles was an exclusive, limited and revocable license, the Court found that the complaint failed to establish that the license was exclusive as it wasn’t in writing as required by the Copyright Act.

The Court further held that the “modest” price paid for the final artwork wasn’t indicative of an intent to limit the license:

The scope of an implied license is determined by the licensor’s objective intent at the time of the creation and delivery of the copyrighted work. Asset Marketing, 542 F.3d at 756. Like the licensor in Asset Marketing, Eduardo delivered his painting without expressing any intent to limit North Coast Brewing’s use. The Complaint lacks any facts about Eduardo’s opinion of the price. That Signorelli feels the price was modest does not reveal anything about Eduardo’s objective intent at the time of the creation and delivery of his painting or support Signorelli’s assertion of a limited license.

The Court also found that a subsequent contract for different designs wasn’t indicative that the original design was limited.

The Court held the license was irrevocable because the artist was paid:

The Complaint clearly alleges that North Coast Brewing paid Eduardo for his painting. This payment firmly establishes that the implied license is irrevocable. Asset Marketing, 542 F.3d at 757 (“because [licensee] paid consideration, this license is irrevocable”).

The Court went on to hold that a California statute for copyright did not apply because the statute protected intangible copyrights and the work at issue was a tangible painting.

The other claims were dismissed because they were not sufficiently plead.

In sum, the lesson learned is that getting these things worked out ahead of time with proper licensing arrangements or other contracts is the best bet to avoid later litigation over the use of another’s artwork. All the more poignant here as this isn’t the first tiff that North Coast has been embroiled in recently over this beer which trades on an association with Thelonious Monk. There’s already an ongoing dispute between North Coast Brewing and the representatives of the estate of Thelonious Monk over the use of Monk’s likeness on materials that aren’t the beer label. That complaint survived a motion to dismiss back in late January and the parties are still in litigation over the matter. You can read the operative complaint in that case here.

Ashley Brandt

Hi there! I’m happy you’re here. My name is Ashley Brandt and I’m an attorney in Chicago representing clients in the Food and Beverage, Advertising, Media, and Real Estate industries. A while back I kept getting calls and questions from industry professionals and attorneys looking for advice and information on a fun and unique area of law that I’m lucky enough to practice in. These calls represented a serious lack of, and need for, some answers, news, and information on the legal aspects of marketing and media. I've got this deep seeded belief that information should be readily available and that the greatest benefit from the information age is open access to knowledge... so ... this blog seemed like the best way to accomplish that. I enjoy being an attorney and it’s given me some amazing opportunities, wonderful experiences, and an appreciation and love for this work. I live in Chicago and work at an exceptional law firm, Goldstein & McClintock, with some truly brilliant people. Feel free to contact me at any time with any issues, comments, concerns… frankly, after reading this far, I hope you take the time to at least let me know what you think about the blog and how I can make it a better resource.

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