Not For Trademark : Hermès Claims MetaBirkin NFTs Are Infringing

May 13, 2022 · by ·

On January 14, 2022, Hermès filed a trademark infringement suit against artist Mason Rothschild, claiming that by selling “MetaBirkins” NFTs, Rothschild infringes and dilutes the HERMÈS trademark. Defendant filed a motion to dismiss on February 9, claiming that the First Amendment gives him the right to sell the NFTs. The case is Hermès International, et al. v. Mason Rothschild, 1:22-cv-00384 (SDNY).

The facts

NFTs (non-fungible tokens) are unique digital assets. Their authenticity and uniqueness are guaranteed by a blockchain from their creation through transfer of ownership, as the blockchain also record the transfers. As such, NFTs are suited to the art market, and NFTs are popular and sometime expensive. A NFT created by digital artist Beeple sold in auction in March 2021 for 69 million USD.

Hermès is a luxury house having its headquarters in Paris. One of its most famous sacs is the Birkin, named after British actress and singer Jane Birkin. The Birkin bag is a bigger version of the Kelly Bag, itself named after Grace Kelly, the American actress who became Princess of Monaco.

Mason Rothschild is an artist living in California. Last May, he created a “Baby Birkin” NFT, the digital image of a 40-week-old fetus gestating inside a Hermès Birkin bag. The NFT originally sold for 23,000 USD and was resold for 47,000 USD. Rothschild then created the MetaBirkins.com website, which features and sells “a collection of 100 unique NFTs created with faux fur in a range contemporary color and graphic executions.” The complaint alleges that Mason Rothschild “first began advertising the METABIRKINS NFTS under The METABIRKINS trademarks on December 2, 2021, at Art Basel Miami.

A BIRKIN bag may be considered by some as a work of art, at least as a highly collectible item: a bag made from crocodile skin sold at auction in 2016 for HKD 2,320,000 (more or less USD 300,000.00). MetaBirkins are valuable as well: one sold in February 2022 for 3.5 Ether, that is, more or less USD 10,500.

The C&D letter

On December 16, 2022, Hermès International sent a Cease-and-Desist letter (C&D) to Mason Rothschild and carbon copied the OpenSea platform, on which the NFTs were sold. Hermès asked the artist to cease using commercially the Hermès trademarks. Indeed, Hermès owns, among others, U.S. trademark registrations for HERMÈS, BIRKIN, and for the configuration of the Birkin handbag.

The C&D claimed that Mason Rothschild was identifying the NFTs he is selling by using the BIRKIN trademark and that he “employ(s) the HERMÈS trademark to advertise and promote the sale of the Birkin NFTs…”. Hermès also claimed that this use of the marks may dilute them.

Disclaimer is not enough

After receiving the C&D, as alleged in the complaint, the MetaBirkins.com website was updated to add a disclaimer stating:  “We are not affiliated, associated, authorized, endorsed, or in any way officially connected with HERMES, or any of its subsidiaries or affiliates. The official HERMES website can be found at https://www.hermes.com.” The complaint alleges that the disclaimer “unnecessarily” linked to the official Hermes website and “capitalizes the HERMÈS mark” and that “Defendant’s uses of the HERMÈS  Mark in conjunction with his uses of the BIRKIN Mark, and the display of the METABIRKINS bags, serves only to create a confusing impression among consumers as to the Hermès’ sponsorship of the METABIRKINS NFTs or the METABIRKINS website.”

The complaint

OpenSea took the NFTs down. Mason Rothschild then sold the MetaBirkins on another platforms. As Mason Rothschild had not taken the MetaBirkins down, Hermès filed a trademark infringement suit on January 14, 2022, in the federal court of the  Southern District of New York. The complaint includes claims of false designation of origin, trademark dilution, and cybersquatting (claiming that <metabirkins.com> is infringing and confusingly similar to the BIRKIN mark).

In its complaint, Hermès described Defendant as “a digital speculator who is seeking to get rich quick by appropriating the brand METABIRKINS for use in creating, marketing, selling and facilitating the exchange of [NFTs]”.

Hermès claimed that the name MetaBirkin is formed by merely adding “the generic prefix “meta” to the famous trademark Birkin.” Hermès has not registered METABIRKIN as a trademark.  Other companies have filed trademark registration applications for trademarks protecting their marks in the meta universe, such as McDonald’s who filed in February 2022 several meta-related trademarks (for instance, MCDONALD’s in Class 43 for “Operating a virtual restaurant featuring actual and virtual goods, operating a virtual restaurant online featuring home delivery”).

The motion to dismiss

On February 9, 2022, Mason Rothschild filed a motion to dismiss, arguing that the trademark infringement claim must be dismissed under Rogers v. Grimaldi. In this case, the Second Circuit held that the Lanham Act must be broadly interpreted in cases when the allegedly infringing product is an artistic expression. Under Rogers, the Lanham Act:

“should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

First prong of the Rogers test: artistic relevance

Use of the mark by defendant is protected under the Rogers test unless such use has no artistic relevance to the underlying work whatsoever.

The motion to dismiss argues it does, pointing out that the bags are “depicted as fur covered… [to] commen[t] on the animal cruelty inherent in Hermès’manufacture of its ultra-expensive leather handbags” and further argues that “[t]he First Amendment guarantees [Defendant]’s rights to respond in the marketplace of ideas to the inescapable corporate brand  message by which we are bombarded every day, virtually everywhere we look.”

Before Hermès filed its suit, Mason Rothschild had posted on social media a response to both Hermès and Open Sea, writing that “… the First Amendment gives [him] every right to create and based on [his] interpretations of the world around [him].” He also argued that the NFTs he sells “are also a commentary on fashion’s history of animal cruelty, and its current embrace of fur-free initiatives and alternative textiles.” Jane Birkin had asked Hermès a few years ago to stop using her name for the bag after a video released by People for the Ethical Treatment of Animals showing reptiles being skinned or sawed open alive on farms which supplied luxury brands, including Hermès. The parties settled after Hermès showed that the incident was a unique occurrence.

The motion to dismiss argues that the NFTs are “depicted as fur covered… [to] commen[t] on the animal cruelty inherent in Hermès ’manufacture of its ultra-expensive leather handbags” and further argues that “[t]he First Amendment guarantees [Defendant]’s rights to respond in the marketplace of ideas to the inescapable corporate brand message by which we are bombarded every day, virtually everywhere we look.” As such, the Metabirkins could also be considered a parody. The motion to dismiss cites the SDNY Vuitton v. My Other Bag case, where the court found that fabric totes with drawings of famous bags  were not infringing nor diluting the Louis Vuitton marks, as they were a parody. Hermès was not a plaintiff, but could have been, as one tote showed a drawing of the Hermès Kelly bag.

Second prong of the Rogers test: not explicitly misleading as to the source

The second prong of the Rogers test is determining whether use of the mark is not explicitly misleading as to its source. The  Rogers case was about the title of the Fellini movie Ginger and Fred. The Second Circuit distinguished cases where the title of the product would be an endorsement, giving as example “Jane Fonda’s Workout” (the case is from 1989…). Such titles would be protected by the Lanham Act. However, as explained by the Second Circuit, “Many titles… include a well-known name without any overt indication of authorship or endorsement — for example, the hit song “Bette Davis Eyes,” and the … film “Come Back to the Five and Dime, Jimmy Dean, Jimmy Dean.” Defendant argues that the website clearly identifies that the MetaBirkins are works of art.

Rogers would likely guarantee the motion to dismiss to be granted if Jane Birkin, not Hermès, was the Plaintiff, or if the case would have been filed in the Ninth Circuit.  The Ninth Circuit adopted Rogers in its Barbie Girl case, and extending it beyond mere title, as explained in Mattel, Inc. v. MCA Records. In VIP Products  v. Jack Daniel’s Properties, the Ninth Circuit held in 2020 that chewy dog toys “Bad Spaniels Silly Squeaker” in the shape of a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey were not infringing.

Defendant argues that his images “show luxury with no function but communication, luxury emptied of anything but its own image, calling into questions what it is that luxury lovers actually pay for.” It is an interesting argument but may be weaker because of the nature of the goods protected by the Hermès marks. When trademarks are used logos, used prominently and externally on the product, they may have very well  “no function but communication.” Hermès bags are made by highly trained artisans, by hand, and thus the Hermès marks indicate what “luxury lovers actually pay for.”

What if a similar lawsuit would be filed across the Atlantic?

The lawsuit was filed in the U.S., where the Birkin handbag cannot be protected by copyright, because it is a useful article, defined by Section 101 of the Copyright Act as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”. Useful articles are not protectable under U.S. copyright laws.

Other countries, such as France, offer bags and other fashion goods protection under their copyright laws. What is an NFT is currently debated by legal scholars and practitioners. The motion to dismiss argues that the NFTs “signify ownership of an image of a handbag.” The defendant does not sell the Hermès handbags, nor does Hermès claim he does. If the Hermès bag would be protected by copyright, Mason Rothschild would have argued fair use. In a country such as France, he would likely not have  claimed that NFTs “signify ownership of an image of a handbag”, as such image may be infringing, because there is not a comprehensive “fair use” defense available to the defendant of a copyright infringement suit. The artist  would likely claim instead that the MetaBirkin NFTs are parodies, a defense against copyright infringement claims, commenting on the luxury industry or on the use of expensive leather to manufacture the bags.

This case will be an interesting suit to watch, as it is one of the first trademark infringement suit filed against the seller of NFTs. Other cases have been filed, such as one filed on February 3 by Nike v. StockX LLC, also in the Southern District of New York (Nike v. StockX LLC, 1:22-cv-00983, SDNY), which claims that an online resale platform selling NFTs of Nike sneakers is infringing and diluting Nike’s trademarks. The platform claims on its site that the NFTs do “no more than track ownership of a physical Nike product safely secured in its vault” and that buyer can trade the NFT for the associated physical shoes. This case shows that blockchain can be used to authenticate goods. As Hermès and Nike product ‘s are routinely illegally reproduced, they will have at heart to defend the source of any Hermès or Nike NFT, for fear of not being able to use the technology to authenticate their products.

 

This post was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments,  Stanford-Vienna Transatlantic Technology Law Forum.

 

Image of “Pink Handbags” is courtesy of Flickr user Layla’s Sugar Flowers and is used, with no modifications, under a CC BY-SA 2.0 license.

 

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Copyright’s Conceptual Cabin Fever

October 5, 2018 · by ·
Conceptual artist Cady Noland filed a copyright infringement suit last year [see my post on The 1709 Blog here], claiming that, by reconstructing one of her wooden sculptures which had been damaged, a museum had thus infringed her copyright by reproducing her work and had also violated her moral rights, as provided to her by the Visual Artists Rights Act and Section 14.03 of the New York Arts & Cultural Affairs Law.

 

Cady Noland had created in 1990 her “Log Cabin Blank With Screw Eyes and Cafe Door” (the Work), made out of wooden logs. It represents the façade of a log cabin, with one open door and two windows, and “[t]wo U.S. flags are an integral part of the sculpture,” according to the July 2017 complaint. The work was created to be displayed outdoors, and after years exposed to the sun and cold of Berlin, the wood used to create the Work had rotted. 

 Cady Nolan asserted in the 2017 complaint that she “has continuously owned the copyright to the Work.  An application for registration of the copyright to Log Cabin together with the required fee and deposit material was transmitted to the Copyright Office in proper form and registration was refused.  Plaintiff has complied with the requirements for registration of Log Cabin as provided in 17 U.S.C.  § 411(a), and in accordance with said section will be serving notice and a copy of this Complaint on the Register of Copyrights” (my emphasis).

Indeed, the artist had filed an application to register the Work as a sculpture in July 2017, but this was denied the same month, because the work “lacks the authorship necessary to support a copyright claims” and because it “is a useful article… that … does not contain any non-useful design element that could be copyrighted and registered.”

A log cabin can be an iconic motel sign or even conceptual art

Log Cabin or Conceptual Art?

The following month, Noland requested the Review Board to reconsider this decision and to register her work. This time, the Copyright Office considered the work to be a sculpture and not a useful article (indeed, what exactly is the use of a single log wall?), but refused to register it anyway, as it did “not contain a sufficient amount of creativity either elementally or as a whole to warrant registration.”

In December 2017, Noland requested the Review Board of the United States Copyright Office (the Board) to reconsider the Registration Program’s refusal to register her work a second and final time, claiming that the work was original enough to be protected by copyright, and arguing she had made creative choices in order for the work to embody her idea to “construct the front of a house… to showcase the failed promise of the American dream” and that “the selection, arrangement, and combination of elements present in [the] work clearly meet the threshold of creativity required for a work to obtain copyright protection.”

 

On May 25, 2018, the Board affirmed the Copyright Registration Program’s denial to register Cady Nolan’s Log Cabin.
Defendant in the copyright infringement suit filed a motion to dismiss last April and this month Nolan filed an opposition to the motion. Plaintiff in a copyright infringement suit must prove ownership of a valid copyright, and thus the Board denial of copyright registration is likely to influence the outcome of the current lawsuit.

 

Why is Log Cabin not original enough to be protected by copyright? 

A work needs to be original to be protected by copyright. The Copyright Act does not define what is “originality,” but the Supreme Court defined it in Feist as “mean[ing] only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” The Board quoted Feist, and also Section 906.1 of the Compendium on “uncopyrightable material,” which explains that “[t]he Copyright Act does not protect common geometric shapes, either in two-dimensional or three-dimensional form.” Such shapes must be combined “in a distinct manner indicating ingenuity” (Atari Games Corp at 883). Indeed, while geometric shapes cannot be protected by copyright, their creative arrangement, if original, can be protected.

 

The Board analyzed Noland’s Work and found that it “does not contain a sufficient amount of original and creative artistic or graphic authorship to sustain a claim in copyright. The Work is a simple representation of a standard log cabin façade with joinery; thus any authorship is de minimis and does not support registration. “

 

Nolan had argued that, while some of its elements are found in architectural work, it is a sculpture. The Board recognized that argument, and agreed that the work is a sculpture. It added, however, that the Work “is a simple expression of rote designs and representations of a log cabin; the fact that it is not functional or useful is irrelevant to that analysis” and concluded that “[t]he Work thus is a standard representation of a log cabin façade, which does not meet the minimum degree of creativity required for copyright protection.”

 

Conceptual art and copyright

Copyright and conceptual art have a somewhat difficult relationship and rooted in the necessity to prove their originality and fixation in a tangible medium of expression.

 

Wildflower Work is such conceptual work of art which has been denied copyright protection. It was a flower garden designed by Chapman Kelley and planted in the eighties in Chicago’s Grant Park In Kelley v. Chicago Park District, the Seventh Circuit found that Wildflower Work was original enough to be protected by copyright, but could not be protected because it “lack[ed] the kind of authorship and stable fixation normally required to support copyright.”

 

The Seventh Circuit explained that:
“recognizing copyright in Wildflower Works presses too hard on these basic principles. We fully accept that the artistic community might classify Kelley’s garden as a work of postmodern conceptual art. We acknowledge as well that copyright’s prerequisites of authorship and fixation are broadly defined. But the law must have some limits; not all conceptual art may be copyrighted.”… A garden’s constituent elements are alive and inherently changeable, not fixed. Most of what we see and experience in a garden — the colors, shapes, textures, and scents of the plants — originates in nature, not in the mind of the gardener.”

 

The district court in Kelley had found the work to be uncopyrightable for lack of originality because its design used simple elliptical shapes. However, the Seventh Circuit found this argument to be “misplaced,” explaining that “an author’s expressive combination or arrangement of otherwise noncopyrightable elements (like geometric shapes) may satisfy the originality requirement.” 

 

In our case, the Board cited Satava v. Lowry, a Ninth Circuit case  which explained that “a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

 

Cady Nolan is not yet out of the woods (sorry).

 

This post was originally published on The 1709 Blog.

 

Image is from the John Margolies Roadside America Photograph Archive (no known copyright restriction)
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Donald Graham’s Copyright Infringement Suit against Richard Prince Allowed to Go Forward

August 18, 2017 · by ·

People interested in the U.S. fair use doctrine owe appropriation artist Richard Prince gratitude for providing several interesting fair use cases to monitor and comment about.

Prince has been the defendant in several high profile cases in the Second Circuit (see here and here). He famously won the Second Circuit Cariou v. Prince case (see here), where the Court of Appeals found that Prince’s  use of Patrick Cariou’s photographs to create his thirty paintings and collages featured in his Canal Zone exhibition was fair use, as it was transformative.Prince Street Photographer Donald Graham filed a copyright infringement suit against Prince in 2016 (see here and here), claiming that Prince’s use without permission of Graham’s Rastafarian Smoking a Joint photograph, to create an Untitled (Portrait) featured in Prince’s New Portraits exhibition, was copyright infringement. Prince claims it is fair use.

On July 18, U.S. District Judge Sidney H. Stein from the Southern District of New York allowed the case to go forward, as, while granting Prince’s request to dismiss Graham’s demand for punitive damages, he denied Prince’s motion to dismiss the case. The case is Graham v. Prince, 1:15-cv-10160.

Judge Stein noted that, because the fair use defense is fact-related, discovery will be necessary to conduct the fair use inquiry. Therefore, the case cannot be dismissed and will have to go forward. Judge Stein quoted the Second Circuit in Cariou v. Prince, which stated that finding whether a particular use is fair or not requires “an open-ended and context-sensitive inquiry.”

Prince used Graham’s work almost in its entirety, when he printed and exhibited the original work as originally cropped and posted on Instagram, without Graham’s permission, by another Instagram user, then reposted by yet another user and finally reposted by Prince on his own Instagram account. Prince added the nonsensical comment “ReCanal Zinian da lam jam,” followed by an emoji. Is this add-on enough to make Prince’s work transformative enough to be found fair use?

Prince argued that the use was transformative as it added new messages such as “a commentary on the power of social media to broadly disseminate others work, an endorsement of social media’s  ability to generate[ ] discussion of art,”or a “condemnation of the vanity of social media.”

Judge Stein was not convinced, finding “evident” that Prince’s work is not “so aesthetically different”from the original work and thus not transformative enough. Untitled (Portrait) does not manifest “an entirely different aesthetic” from the original work, as required under Cariou. Unlike the works featured in the Canal Zone exhibition, Untitled (Portrait) does not render the original work, according to Judge Stein, “barely recognizable” as Princes works did in Cariou.

Instead,

“[t]he primary image in both works is the photograph itself… Untitled simply reproduces the entirety of Graham’s photograph –  with some de minimis cropping – “ in the frame of an Instagram post, along with a cryptic comment written by Prince… There is no question that, notwithstanding Prince’s additions, Graham’s unobstructed and unaltered photograph is the dominant image in Untitled.”

Judge Stein concluded that “[b]ecause Prince’s Untitled is not transformative as a matter of law, the Court cannot determine on a motion to dismiss that a “reasonable viewer” would conclude that Prince’s alterations imbued the original work “with new expression, meaning, or message,” quoting the U.S. Supreme Court Campbell v. Acuff-Rose Music 1994 case.

 Given Prince’s  use of essentially the entirety of Grahamâ’s photograph, defendants will not be able to establish that Untitled is a transformative work without substantial evidentiary support. This evidence may include art criticism, such as the articles accompanying defendant’s briefing, which the Court may not consider in the context of this motion.”

Judge Stein called Cariou v. Prince a “prequel to this action.” However, his fair use analysis does not bode well for Prince, who may this time be found to have appropriated a bit too much. To be continued…

Image is courtesy of Gryffindor under a  CC BY-SA 3.0 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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