Robert W. Clarida and Robert J. Bernstein
Robert W. Clarida and Robert J. Bernstein ()

Appropriation artist Richard Prince is back in court this summer for alleged copyright infringement, and the initial proceedings do not augur well for his current efforts to defend his “recontextualizing” of another’s photograph as a fair use. “Appropriation art” involves taking a prior work and presenting it in a different or altered context so as to add new meaning or expression to the prior work. A work of appropriation art may or may not qualify for the fair use defense depending on how the fair use factors are balanced in evaluating the parties’ works.

In 2013, readers of this column may recall, Prince won a controversial fair use ruling in the Second Circuit, Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), which held that his alterations of photographs by Patrick Cariou were sufficiently transformative to qualify as fair use of the plaintiff’s works under §107 of the Copyright Act. Cariou’s photos were “serene” black and white fine-art portraits of Rastafarians in Jamaica. Prince’s works, a series of paintings and collages called “Canal Zone,” were variously described by the court as “crude” “jarring” “hectic” and “provocative.” Thirty of Prince’s works were at issue in Cariou, and a divided panel of the Second Circuit reversed the Southern District of New York to find that 25 of them were fair use as a matter of law. The other five, involving “relatively minimal alterations” of the Cariou material, were remanded for further fact-finding. The case ultimately settled as to those remaining works in April 2014.

Rastafarian Smoking a Joint photograph by Donald Graham

The following year, a different photographer, Donald Graham, sued Prince over a different fine art photo of a Rastafarian, called “Rastafarian Smoking a Joint.” Originally recognized for artistic merit and published in a photography annual in 1998, the Graham photo has since been sold in limited edition prints to fine art collectors, in sizes ranging up to four feet by five feet. At some point it was posted anonymously and without authorization to Instagram, then re-posted (again without authorization) by an Instagram user identified as rastajay92. Prince encountered the rastajay92 post on Instagram, added a brief text of self-confessed “gobblygook” in Instagram’s caption space, took a screen shot, and had the result printed by inkjet on canvas, roughly four feet by five feet. The Prince image was also reproduced in a catalog for Prince’s gallery show featuring the work, and for a billboard advertising the show, and a more distorted version of Graham’s original was posted on Twitter by Prince himself. Unlike the “crude,” “jarring” and “provocative” changes Prince made to the Cariou photos however, he left Graham’s photo essentially unaltered in “Untitled,” except for the “gobblygook” caption and some minimal cropping.

Graham sued. Prince, relying heavily on the Second Circuit Cariou decision, moved to dismiss on fair use grounds under Rule 12(b)(6). Judge Sidney H. Stein denied the motion on July 18th. No. 15-cv-10160(SHS) (ECF 54) (S.D.N.Y. July 18, 2017). The comprehensive decision includes a detailed discussion of the Cariou ruling (“essentially a prequel to this action”), not to mention a 27-section table of contents, embedded photos, footnotes defining “Instagram,” “emoji,” “Bob Marley” and “Richard Avedon,” and Scaramucci-worthy quotes from Prince’s Twitter feed (“You can call me asshole lazy shit. But you can’t sue me.”).

But the ruling ultimately rests on procedure: Citing recent Second Circuit case law, the court concluded that fair use is simply too fact-dependent to be resolved at the 12(b)(6) stage, except in rare cases where the transformativeness of the defendant’s use is immediately evident from side-by-side comparison of the parties’ works. Judge Stein held that Graham was not such a case. In fact, the court found that the Prince image in Graham was more akin to the five images that the Second Circuit remanded in Cariou—the ones with “relatively minimal alterations”—than it was to the 25 more heavily modified works that Cariou held to be fair use as a matter of law:

It is evident that Prince’s work [in Graham] does not belong to a class of secondary works that are so aesthetically different from the originals that they can pass the Second Circuit’s “reasonable viewer” test as a matter of law [citation omitted]. “Untitled” is certainly no more transformative than the five works in Cariou that the Court of Appeals remanded to the District Court … . The reader of this Opinion—perhaps a reasonable observer—is invited to perform his or her own side-by-side comparison of Graham’s “Rastafarian Smoking a Joint” and Prince’s “Untitled.” That observer must conclude that Prince’s “Untitled” does not so ‘heavily obscure[ ] and alter[ ]‘ Graham’s “Rastafarian Smoking a Joint” that it renders the original photographs ‘barely recognizable’ [quoting and distinguishing Cariou]. The primary image in both works [in Graham] is the photograph itself. Prince has not materially altered the ‘composition, presentation, scale, color palette and media’ originally used by Graham [quoting and distinguishing Cariou]. In fact the ‘alterations’ Prince made in this case are materially less significant than those that were found to be insufficiently transformative to clearly warrant a finding of fair use in Cariou … . Here “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.

Id. at 17-18.

Turning to the statutory fair use factors under §107 of the Act, the Southern District could not conclude under Rule 12(b)(6) that any of them favored Prince. Factor one, which looks to the purpose and character of the defendant’s use, weighed in Graham’s favor because Prince’s use was commercial (despite the public benefit that arises from the exhibition of art) and because it did not make sufficient “aesthetic alterations” to imbue Graham’s work with “new expression, meaning or message” in the eyes of a reasonable observer, the traditional test for determining whether a defendant’s work is transformative. In support, the court cited the recent Southern District decision in North Jersey Media Group v. Pirro, 74 F. Supp. 3d 605, 615 (S.D.N.Y. 2015), which denied defendant’s motion for summary judgment in a case involving the re-posting of a photo on Facebook with accompanying commentary; such use was not deemed transformative. Absent greater aesthetic alteration, the Graham court held, “defendants will not be able to establish that ‘Untitled’ is a transformative work without substantial evidentiary support,” such as art criticism and even the artist’s own stated intent. At the dismissal stage, “limited to an analysis of the pleadings,” the court could not resolve the first statutory factor against plaintiff.

Section 107(2), which considers the nature of the plaintiff’s work, weighed for plaintiff as well because his work was creative and published, thus “closer to the core of intended copyright protection” and less susceptible to fair use. Section 107(3), which addresses the amount and substantiality of the defendant’s copying, also “militates against the finding of fair use” because Graham’s work was copied in full, except for some minor cropping. Unlike the works in Cariou, Prince’s “Untitled” “does not obscure Graham’s original photograph but instead reproduces it in its entirety, in a size that enables the original to retain its full aesthetic appeal.”

The fourth statutory factor under §107, which looks to actual or potential market harm, weighed in Graham’s favor for two reasons. First, because “plaintiff has adequately pled that the target audience and the nature of the defendant’s work is the same as for Graham’s original,” there was a “question of fact about the market for each artist’s work that cannot be resolved at the motion to dismiss stage.” The court cited the Supreme Court’s landmark 1994 fair use decision in Campbell v. Acuff-Rose Music, 510 U.S. 569, 590 (1994), in which the Supreme Court, after famously adopting the concept of transformative use as a key to fair use analysis, and finding the defendant’s work transformative, still not-so-famously remanded the case for fact-finding as to potential market harm, rather than simply assuming that gentle 1960s rocker Roy Orbison and bawdy 1990s Miami rap group 2Live Crew occupied different markets.

Second, the Graham court found for plaintiff on the market-harm factor because Graham “pled facts that allow the Court to draw a reasonable inference that Prince’s work can serve as a substitute for Graham’s original work, notwithstanding Prince’s alterations.” Specifically, Graham alleged that the works were both “two-dimensional artworks made available in virtually identical sizes.” While the court acknowledged that “defendants may well be proven correct” that “art collectors would never consider buying Prince’s appropriation art in lieu of Graham’s photograph,” again the court was “required to give deference to the plaintiff’s allegations” at the pleading stage.

Conclusion

The Graham 12(b)(6) decision takes pains to emphasize that its holdings are provisional, to be revisited after the parties have developed a factual record through discovery. For the parties in the case, that day may someday arrive, though Prince’s settlement of the Cariou action after remand leaves reason to doubt even that. For most litigants, however, the ruling seems to reinforce the sensible view that a defendant should not waste its time with a 12(b)(6) motion on fair use unless its “aesthetic alterations” to the plaintiff’s work are immediately apparent and compelling. Graham tells us clearly that Cariou did not change that, although the definition of “aesthetic alteration” is not yet entirely clear. It is an open question, for example, whether the Graham court viewed Prince’s added text caption as not being an “aesthetic alteration” at all, because it didn’t change the appearance of the photo, or simply considered it inadequately transformative. Certainly one can imagine some captions having a transformative effect, as in parody. See, e.g., Kienitz v. Sconnie Nation, 766 F.3d 756 (7th Cir. 2014). But the appropriated nature of the Prince work—the “transformative context” it allegedly occupies by virtue of Prince’s working methods—is apparently not an “aesthetic alteration” that the Graham court was willing to credit at all.