Richard Prince May Offer the SDNY Another Chance to Define Transformative Use of a Work

January 2, 2017 · by ·

Richard Prince was sued on November 16 by yet another photographer over the use of a photograph in his New Portraits series. The case is Eric McNatt v. Richard Prince, 1:16-cv-08896, Southern District of New York (SDNY).

Readers of this blog may remember that Richard Prince used various photographs protected by copyright to create his New Portraits exhibition. He had commented, cryptically, or nonsensically, whatever your mood is, below several photographs which had been uploaded by others on Instagram. He then printed the results on canvas to create a series of works, New Portraits, which has been shown in New York. Prince has been sued by some of the copyright holders of the original works. One of these cases, Donald Graham v. Prince, is still pending at the SDNY.

This time, it is photographer Eric McNatt who is suing Richard Prince and the Blum and Poe Gallery for copyright infringement. The complaint alleges that Richard Prince reproduced a photograph taken by Plaintiff of Kim Gordon, a founding member and bassist of Sonic Youth, by downloading it from the web, where it had been published with a copyright notice, and uploading it on his own Instagram account. Prince has since deleted this account. Prince then wrote three lines of comments under the photograph:  “Portrait of Kim Gordon,” then “Kool Thang You Make My Heart Sang You Make Everythang Groovy” and finally added a string of music-related emojis.

This Instagram post and its comments was then printed and added to the New Portraits exhibition, which was shown in the spring of 2015 by the Blum & Poe gallery in Tokyo and featured in the catalog of the exhibition.7197150970_772ee19f92_z

Will TCA Television Corp. v. McCollum Influence the Outcome of this Case?

The Donald Graham v. Richard Prince case is still pending at the SDNY. On November 4, attorneys for Donald Graham sent a letter to Judge Sidney Stein from the SDNY, who is presiding over the case, to alert him of the recent TCA Television Corp. v. McCollum Second Circuit case (2nd Circ. Oct. 11, 2016), which, in their view, “undermines Defendants ‘motion to dismiss on fair use grounds.”

In TCA Television Corp., the author of the play Hand of God had been sued by the heirs of Abbot and Costello over the use of their famous “Who’s on First” routine. The main character of the play recites the routine verbatim in the play with his trusty (but evil) sock puppet acting as sidekick. Judge Daniels from the SDNY had dismissed the copyright infringement suit, finding the use of the routine in the play to be fair use. The Second Circuit affirmed, but on alternative grounds: the use of the routine was not transformative enough to be fair use, but the heirs had not proven that they owned the copyright in the routine.

Attorneys for Prince sent their own letter a few days later, where they argued that the holding in TCA Television is distinguishable from the case, that the TCA Television case is not even related to fair use and that thus “the entire discussion of fair use is dicta.” They also argue that the Second Circuit did not find the use of the routine to be fair because, according to the Court, “the extent of defendants’ taking is identically comedic to that of the original authors, that is, to have two performers expand on a singular joke in order to generate increasing audience laughter.”

Attorneys for Prince also argued in the letter, that, “[b]y contrast, Prince used Graham’s photograph for a highly transformative purpose: as a commentary on social media. This new meaning and message is apparent to any reasonable observer who looks at the artwork. “Prince’s attorneys also argued that “Prince’s transformative purpose [was] to provide a commentary on social media [and thus] required the incorporation of the entire Instagram post… to accomplish that purpose. “

Is the use of the McNatt Photograph Transformative Enough to be Fair Use?

What is transformative use? We still do not have a “so transformative it is fair use” test. However, the TCA Television case may influence the McNatt v. Prince case. If we consider that Prince’s purpose for reproducing Eric McNatt’s photograph of Kim Gordon was to comment on social media, as claimed by Prince’s attorneys in the Graham v. Prince case, then it is fair use under Cariou if Prince added something materially new or provided a different aesthetic. The Second Circuit had found in Cariou v. Prince that Prince’s use of Cariou’s photographs was fair use, because he had used them to create new works and had “employ[ed] new aesthetics with creative and communicative results distinct from Cariou.”

Judge Daniels from the SDNY had found in TCA Television that the use of the routine was fair use, explaining that “[t]he contrast between Jason’s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small town in the Bible Belt. Thus, Defendants’ use of part of the Routine is not an attempt to usurp plaintiffs’ material in order to “avoid the drudgery in working up something fresh.” Campbell, 510 U.S. at 580, 114 S.Ct. 1164. Nor is the original performance of the [r]outine “merely repackaged or republished.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 97 (2d Cir.2014).”

The Second Circuit found that the use was not fair because it had not transformed the routine’s aesthetic, it had appropriated the routine extensively, and “[n]o new dramatic purpose was served by so much copying” and “there is nothing transformative about using an original work in the manner it was made to be used.”

If we apply this to our case, then Prince must prove that he used the original work in a different manner than it was made to be used. Should we only look at the comments written by Prince to decide if the use is transformative enough to be fair, or at the ensemble, work and comments? In both ways, the Prince’s work could be considered fair use if proven to be a critique on the desperate banality of social media and social media comments. But is it?

As noted by the Complaint, “Kool Thang You Make My Heart Sang You make Everythang Groovy” is “a transliteration of lyrics to the 1960 song “Wild Thing,”written by Chip Taylor, except that the word “Kool” replaces the word “Wild.” “Kool Thing” is the title of Sonic Youths first major label record single.” As itself, this comment may not be original enough to be protected by copyright yet it is more creative than most social media comments. The emojis chosen by Prince, however, are quite banal and so their banality may comment on banality. Pass the aspirin.

Image is courtesy of Flickr user torbakhopper under a CC BY 2.0 license.

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Plus Ça Change… Prince, Rastafarians, and Fair Use

April 15, 2016 · by ·
You may remember that Richard Prince, the Gagosian Gallery, and Larry Gagosian have been sued by photographer Donald Graham for copyright infringement in the Southern District of New York (SDNY). Plaintiffs moved to dismiss on February 22, asserting a fair use defense (motion).

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Appropriation artists and copyright

Prince used Graham’s Untitled (Portrait) to create one of the works presented at his New Portraits exhibition (I wrote about it here). The original image had been cropped and posted on Instagram, without Graham’s permission, by another Instagram user, then reposted by yet another user. Prince reposted it again from his own Instagram account, adding the comment “ReCanal Zinian da lam jam,” followed by an emoji (see p. 11 of the motion).

 In his motion, Prince placed himself in “a long line of[appropriation] artists” such as Marcel Duchamp, Jasper Johns and Jeff Koons. The latter has been involved in several copyright infringement suits over his work, for instance Rogers v. Koons where the Second Circuit found no fair use. But in Blanch v. Koons, the Second Circuit found that Koon’s appropriation of a photograph reproduced, at a different angle, in a painting was protected by fair use. Following this Second Circuit decision, Judge Stanton from the SDNY denied plaintiff Blanch’s motion for sanctions, which gave him an opportunity to explain the dynamic between appropriation artists and copyright:

“Appropriation artists take other artists’ work and use it in their own art, appropriating it and incorporating it in their own product with or without changes. Because of this appropriation, often (as in this case) done without giving credit to the original artist, the appropriation artists can expect that their work may attract lawsuits. They must accept the risks of defense, including the time, effort, and expenses involved. While that does not remove the appropriation artist from the protection of the statute, litigation is a risk he knowingly incurs when he copies the other’s work.”

Is this case the same as Cariou?

In his motion, Prince argued that, in Cariou v. Prince, “the Second Circuit held that “appropriation art” created by Prince that is substantially similar to the artwork at issue here constituted fair use as a matter of law” and argues that the Graham lawsuit “reflects an attempt to essentially re-litigate Cariou and should be dismissed with prejudice”(p. 2). [I wrote about the Cariou v. Prince case here.)

However, every fair use case is different since fair use is a mixed question of law and fact, as acknowledged by Prince on p. 12 of his motion. In Cariou, the Second Circuit set aside five artworks, remanding to the SDNY to consider whether the use of Cariou’s work was fair. Because the case settled, the SDNY did not have an opportunity to rule on that point on remand. Whether a court will find this Prince work to be fair use is an open question.

Is Prince’s character of the use of Graham’s photograph the same than his use of Cariou’s photographs? The Second Circuit noted in Cariou that “[t]he portions of the [Cariou photographs] used, and the amount of each artwork that they constitute, vary significantly from piece to piece” (at 699). As the affirmative defense of fair use is a matter of both law and fact, Cariou cannot be interpreted as the Second Circuit having given carte blanche to Prince to create any derivative works based on Rastafarian photographs “as a matter of law.” Indeed, in Cariou, the Second Circuit took care to note that its conclusion that twenty-five of Prince’s works were protected by fair use “should not be taken to suggest… that any cosmetic changes to the photographs would necessarily constitute fair use“ (at 708).

Fair use or not?

The Graham photograph is somewhat similar to the Cariou photographs, as they are classic black and white portraits of a Rastafarian. However, if the nature of the original work is one of the four fair use factors used by courts to determine whether a particular use of a work protected by copyright is fair, the first factor, the purpose and the character of the use, is “[t]he heart of the fair use inquiry” (Blanch at 251).

A work is transformative, as explained by the Supreme Court in 1994, if it does not merely supersede the original work, but instead “adds something new, with a further purpose or different character, altering the first with a new expression, meaning or message… in other words, whether and to what extent the new work is transformative”,Campbell v. Acuff-Rose Music, Inc., at 577-578.

What is determining is whether the new work is transformative, and Prince recognizes this in his motion (p.1). He argued that, by incorporating Plaintiff’s photograph into a social media post, and adding “Instagram visuals and text,” the derivative work has become “a commentary on the power of social media to broadly disseminate others’ work” (p.3).

To create his Canal Zone series, Prince had torn multiple photographs from the Cariou book, enlarged them using inkjet printing, pinned them to plywood, then altered them by painting or collaging over them, sometimes using only parts of the original photographs, sometimes tinting them, sometimes adding photographs from other artists. The result was declared fair use by the Second Circuit. In our case, Prince inkjet printed his original Instagram repost of the Graham picture, complete with his comment, with no further change, except for the change in format and size.

But whether a particular work is transformative does not depend on the amount of sweat of the brow, and a derivative work can be created by a mere stroke of the pen, such as Marcel Duchamp’s L.H.O.O.Q. Nevertheless, the more detailed the process to create a derivate work is, the more likely it is transformative.

It remains to be seen if the SDNY will find this new Prince appropriation work to be fair use. The court is becoming somewhat an expert on appropriation art. Jeff Koons has recently been sued in the SDNY for copyright infringement over the use of a photograph by a commercial photographer, Mitchel Gray. Gray claims that his photograph of a couple on a beach, which he had licensed in 1986 to Gordon’s Gin for the company to create an ad, was reproduced the same year by Koons as part of his “Luxury and Degradation” series. Koons reproduced the whole ad, with no change. Mr. Gray only discovered this use in July 2015 and filed his suit.

We’ll see how this case and the Koons case will proceed. ReCanal Zinian da lam jam.

The post first appeared on The 1709 Blog. 

Image is courtesy of Flickr user Joseph Teegardin under a CC BY-ND 2.0 license.

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Only Thing That Counts is… Fair Use?

February 11, 2016 · by ·

Appropriation artist Richard Prince is famous and is not known by every IP attorney in the U.S., following the Cariou v. Prince case (see earlier blog post here.)  He recently  ‘repurposed’ again more photographs taken by third parties to create this time art presented in his New Portraits exhibition, and a rather lucrative art that is, both for him and for the gallery representing him.

Now, photographer Donald Graham has filed a copyright infringement suit against Prince, the Gagosian Gallery, and its owner Larry Gagosian. Graham claims that Prince used the “Rastafarian Smoking a Joint” photograph without permission in the New Portraits exhibition. Prince presented inkjet prints on canvases of images he had found on Instagram, complete with his own comments as @richardprince4nd. This did not fare well with several authors of the photographs, but so far Donald Graham is the only one who has taken legal action.

It is not the first time that Richard Prince is been sued for copyright infringement. Patrick Cariou, the author of the Yes Rasta photography book, sued Prince after he had used some of the Yes Rasta photographs to create his Canal Zone series, also presented at the Gagosian Gallery. The Second Circuit found this use to be fair. Just like Cariou, Graham had traveled to Jamaica and taken black and white pictures of Rastafarians after gaining their trust. Does that insure that a court will find Prince’s use of Graham’s work to be fair?Prince

This Time, It May Not Be Fair Use

Fair use is a defense to copyright infringement, but it is not fool-proof or automatic. Instead, judges use four non-exclusives factors to determine if a particular use of a work protected by copyright is fair: (1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount and substantiality of the portion taken, and (4) effect of the use on the potential market.

The second and the third factor are likely to favor Graham, as the work reproduced is artistic, and has been reproduced in its entirety. Therefore, the first and the fourth factor will probably decide whether the use is fair or not.

Graham had not posted himself a reproduction of his work on Instagram, but a third party did, without Graham’s authorization. Under the post, Prince added the comment ““Canal Zinian da lam jam”, which may allude to his Canal Zone series, deemed to be fair use, and printed the page featuring the Graham photograph and his comments.

In Cariou v. Prince, the Second Circuit noted that “Prince altered [the Cariou] photographs significantly” (at 699). Adding a nonsensical comment under a photograph, even if one chooses to describe it as poetry, is not a significant alteration of the original work. This point is likely to be debated by the parties, as the Supreme Court stared in Campbell v. Acuff-Rose Music, when explaining the first fair use factor, that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that weigh against a finding of fair use” (at 579).

In Cariou, the Second Circuit explained:

“These twenty-five of Prince’s artworks manifest an entirely different aesthetic from Cariou’s photographs. Where Cariou’s serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince’s crude and jarring works, on the other hand, are hectic and provocative.”

In our case, one would be at pain to describe Prince’s use of Graham’s photography as being “hectic and provocative. “ It may be considered a provocation, but this does still not make the work “provocative” for fair use purposes.

Prince knows how to provoke: he posted a comment about the Graham suit on Twitter: “U want fame? Take mine. Only thing that counts is good art. All the everything else is bullshit.” Interestingly, fair use protects art whether it is good or not, without the judges having to concern themselves about whether fair use is good art or not, or even if it is art at all, or whether the author of the work is famous or not .

As for the fourth factor, the effect on the use on the market, Graham does license his work, including the work at stake, which was not the case in Cariou, and so Prince’s use may be deemed to have an effect on the market.

A Lucrative Business, Thanks to Copyright

Graham posted on Instagram a view of the New Portraits exhibition, including the print reproducing his own work, and added the hashtag #PrinceofAppropriation. The complaint argues that Prince “has achieved notoriety in the “appropriation art” industry for his blatant disregard of copyright law” (at 23).

All the prints forming the New Portraits exhibition have been sold. The Gagosian Gallery has published a catalog of the exhibition, and, according to the Complaint (at 35) “a gigantic photograph of the Exhibition prominently featuring the Infringing Work on a billboard at 50th Street and West Side Highway in New York City for several months, until at least July 2015.”

As noted in the complaint (at 28), the Gagosian Gallery is aware that copyright law prevents a third party to reproduce its inventory without permission (“All images are subject to copyright. Gallery approval must be granted prior to reproduction.” Therefore, Graham himself would have to ask permission to reproduce the unauthorized reproduction of this work by Prince reproducing the original unauthorized post on Instagram by a third party (dizzy yet?).

This case is on the watch list of every IP attorney in the US.

This post was first published on The 1709 Blog.

Image is courtesy of Flickr user jpmueller99 under a CC BY 2.0 license

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Appropriation Art and Fair Use

May 24, 2013 · by ·

fair useThe US Court of Appeals for the Second Circuit issued last month an important decision for artists. The Andy Warhol Foundation, which had filed a brief of amicus curiae in favor of Prince, stated that it “does not object to other artists building freely on Mr. Warhol’s work in the creation of new art, because it recognizes that such freedom is essential to fulfilling copyright’s goal of promoting creativity and artistic expression.“

At issue was whether Richard Prince’s artwork had made fair use of Patrick Cariou’s copyrighted photographs.

Patrick Cariou published in 2000 a book, Yes Rasta, which featured photographs taken during his 6-year long stay in Jamaica. Richard Prince used some of these photographs to create his Canal Zone series.  Prince enlarged the Cariou photographs and sometimes cropped them. He also painted over on some of the faces and bodies of the subjects of the photographs, but used some of the Cariou photographs almost entirely. Prince did not seek licensing nor did he ask Cariou for permission to use his work.

Canal Zone was exhibited at the Gagosian Gallery in New York, and the gallery also published and sold a catalog for this exhibition reproducing the Richard Prince’s artworks.

Cariou sued both Prince and the Gagosian Gallery for copyright infringement, and the defendants raised a fair use defense. Fair use is an affirmative defense to a claim of copyright infringement. The United States District Court for the Southern District of New York (SDNY) found in 2011 that the use by Richard Price of photographs taken by Cariou to create his Canal Zone series was not fair use. It consequently ordered all infringing copies of the series to be delivered so that they can be destroyed. Defendants appealed.

The Second Circuit held on April 25 that the SDNY had applied the incorrect standard to determine whether Prince’s use of Cariou’s work was fair use, and concluded, after extensive analysis of the paintings, that all but five of Prince’s works made fair use of the original works. The Court remanded to the SDNY to decide whether Prince is entitled to a fair use defense for these five works as well.

What is Appropriation Art?

As noted by the Second Circuit, “Prince is a well-known appropriation artist” and quotes a definition of the Tate Gallery of appropriation art as “the more or less direct taking over of work of art a real object or even an existing work of art.”

The Gagosian Gallery describes Prince’s way to work as “[m]ining images from mass media, advertising and entertainment” adding that “Prince has redefined the concepts of authorship, ownership, and aura.”

Another artist using such techniques, Jeff Koons, was also the defendant in several fair use cases. In Blanch v. Koons, the Second Circuit held in 2006 that the use by Jeff Koons of a copyrighted fashion photograph in his collage painting, Niagara, was fair use.

Fair Use Defense

As noted by the Second Circuit in its Blanch v. Koons decision, referring to such art as ‘appropriation art’ may be unfortunate in a legal context. Indeed, copyright law provides copyright owners exclusive rights in their works, and appropriation of a copyrighted photograph to create a new work may or may not be fair use. In practice, it means that the outcome of a fair use case is difficult, if not impossible to predict.

So, what is fair use? The Copyright Act, 17 U.S.C. § 107, provides a fair use  limitation on copyright owners ‘rights, and provides four non-exclusive  factors that courts must follow in order to find out, case by case, if a particular use of a protected work is fair. These four factors are:

1)      The purpose and character of the use (the transformative use, the commercial use)

2)      The nature of the copyrighted work

3)      The amount and substantiality of the portion used in relation to the copyrighted works as a whole

4)      The effect of that use on the market

The SDNY had found that none of these four factors supported a finding of fair use in favor of the defendants.

I will discuss the fair use factors in the order used by the Second Circuit.

First Factor: What is Transformative Use?

The Supreme Court explained in the 1994 Campbell v. Acuff-Rose case what constitutes transformative use. The new work adds something new, and alters the original work while adding a new expression or message. Even if it is not necessary that the use be transformative to find fair use, the Supreme Court noted that “[s]uch transformative works lie at the heart of the fair use doctrine.”

The SDNY interpreted transformative use as meaning that the new work has to comment on the original work, and that if Prince’s works would “merely recast, transform, or adapt the [Cariou] [p]hotos,” they would be infringing. Prince had testified that he did not intend to comment on the original work of Cariou, nor even on “the broader culture,” and thus the SDNY concluded that the first factor weighted against the Defendants.

However, the Second Circuit found that, because the new work does not necessarily have to comment on the original work in order to be transformative, the SDNY had applied an incorrect legal standard. Instead, the Second Circuit stated, quoting Campbell, that the “new work generally must alter the original with “new expression, meaning or message.””

The Second Circuit found than most of the Prince works added something new to the plaintiff’s photographs and “presented images with a fundamentally different aesthetic.”

First Factor: The Commercial Use

The SDNY also found that the Defendant’s use of the Carious’s photos was “substantially commercial” as Gagosian sold paintings from the Canal Zone series for a total of $ 10,480,000.00, traded some for other works of art at an estimated value of $6 million to $8 million, and also sold catalogs of the exhibition. However, the Second Circuit, while noting that Prince’s works are indeed commercial, did not give much significance to it, as his work was transformative enough to make the issue of commercial use insignificant.

Fourth Factor: The Effect on the Market

As Prince’s work is highly transformative, it did not usurp the primary or derivative market for Cariou’s work. The record shows that Cariou had not marketed his work “aggressively.” He earned about $8,000 in royalties from the sale of his Yes Rasta book, and only sold four prints of the photographs. Also, the potential buyers of Prince’s works are not the same than Cariou’s works. The Second Circuit noted for instance that Jay-Z and Angelina Jolie were invited to the opening diner of the Canal Zone show at Gagosian.

Second Factor: The Nature of the Work

The defendants had unsuccessfully argued in front of the SDNY that Cariou’s works were merely compilations of facts about Jamaican Rastafarians, and thus not protected by copyright. The Second Circuit pointed out that it is undisputed that Cariou’s work is creative. However, as Prince’s work used it for transformative purpose, this factor has limited, if any use.

Third Factor: The Amount of the Use

While some of the original photographs of the Yes Rasta book can easily be recognized in the Canal Zone series, others are hardly identifiable as in, for instance, James Brown Disco Ball (you can see it here).  However, the photograph taken by Cariou of a man looking at the camera from a three quarter angle is easily recognizable in Graduation, in spite of the addition of a guitar and the paint over the face.

Even copying the entirety of a work may be fair use. The SDNY found that Prince had taken more of the Cariou work than necessary, but the Second Circuit points out it is not required by law to only take what is necessary, and, in any case, it could not understand how the SDNY had actually come to that conclusion.

The Second Circuit engaged in its own pictorial analysis, and came to the conclusion that twenty five of Prince’s photographs transformed Cariou’s work “into something new and different,” but that Graduation, Meditation, Canal Zone (2008), Canal Zone (2007) and Charlie Company were not transformative enough, and remanded to the SDNY to determine if these five works are indeed transformative.

Judges as Art Experts?

Senior Circuit Judge Wallace, from the Ninth Circuit, sitting by designation, concurred with the majority that the SDNY had applied an incorrect legal standard. However, he dissented in part as, he believed that the whole case should have been remanded to the SDNY so that the lower court could analyze all the paintings using the proper standard, after new evidence is presented. Judge Wallace regretted that the Second Circuit judges used their own artistic judgment to determine whether the works were transformative or not.  Fair use is a mixed question of law and fact. Therefore, each fair use case requires extensive analysis of the works of both plaintiff and defendant, even to the point as making a judgment of the worthiness of a particular work. This is troubling, and Justice Holmes famously wrote in the 1903 case Bleistein v. Donaldson Lithographing Co. that “[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations.”

The image is my own play with a photography from the Yes Rasta book… Yes, it was a wise choice to go to law school, not art school…

 

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