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Bar News - June 18, 2014

Intellectual Property Law: Settlement in Cariou v. Prince Addresses Fair Use


Richard Prince’s work, “Graduation” (right), was widely cited throughout this case (here depicted side-by-side with Patrick Cariou’s original photograph on the left), and was one of the five pieces the court did not find to be transformative.
After five years of litigation, including an unsuccessful petition for review by the United States Supreme Court, photographer Patrick Cariou and internationally renowned appropriation artist Richard Prince recently settled a lawsuit stemming from Prince’s unauthorized use of Cariou’s copyrighted images in his Canal Zone series.

The case, settled in March 2014, focused on the fair use defense and has fascinated both the art and legal communities. It is an important example of how these two seemingly opposite worlds often collide.

In 2000, Cariou published Yes Rasta, a collection of photographs he took while living among the Rastafarians in Jamaica in the mid-1990s. Cariou retained ownership of the copyrights in each of his photographs. Although Yes Rasta enjoyed some limited commercial success, Cariou earned only $8,000 from the sales of his book.

In 2008, Prince unveiled his Canal Zone series, in which he incorporated partial or whole images from Cariou’s Yes Rasta book into a series of paintings and collages. In many of Prince’s pieces, Cariou’s images were almost entirely obscured. In others, however, Cariou’s images are readily apparent. Prince exhibited 22 pieces in his Canal Zone series at the Gagosian Gallery in New York City, and the gallery published images of Prince’s collages in a show catalog. In stark contrast to the relatively small amount of money Cariou earned from the sales of his book, Yes Rasta, works from Prince’s Canal Zone series sold for more than $10 million.

Prince never sought permission from Cariou to use the photographs in his Canal Zone series. After learning about the Gagosian Gallery show in December 2008, Cariou sued Prince, the gallery, and its owner, Larry Gagosian, for copyright infringement.

Copyright infringement occurs when any one of the exclusive rights in copyright is exercised by someone without the copyright owner’s permission. To show direct infringement, a copyright owner must show a valid copyright in the work, and that the “infringer” exercised any one of the exclusive rights. Copying can be shown directly or indirectly. When there is no direct evidence of copying, the owner may show that the alleged infringer had access to the copyrighted work and that there are similarities between the works.

Prince admitted to taking and incorporating Cariou’s copyrighted photographs into his artwork, but denied that by doing so he was violating any of Cariou’s copyrights. Prince and the other defendants argued that Prince’s work is transformative and constitutes a fair use of Cariou’s images.

At its most fundamental level, the fair use defense balances the rights of the intellectual property owner against another’s First Amendment rights and the constitutional purpose of copyright law, which is to promote the progress of science and useful arts. Some of the categories of uses the fair use doctrine is designed to protect include parody, criticism, comment, news reporting, and teaching or scholarship.

The Copyright Act lists four non-exclusive factors that courts must consider when determining whether fair use applies. These factors are: 1) the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect of the use on the potential market for the copyrighted work. In certain circumstances, a court may also consider whether there is any evidence of bad faith, as well as the public interest. Fair use is a subjective balancing test that is fact-specific.

The first factor, the purpose and character of the use, focuses on two issues. First, whether the use is a commercial use, and second, whether the use is transformative. A transformative work is one that adds something “new,” whether a new meaning, a new expression, or a new message. This factor can overshadow the other factors. For example, if the work is very transformative and provides significant public benefits, then the courts tend to find the use “fair.” Similarly, if the transformative use is found to be a parody or criticism, then fair use is likely. In contrast, if the work is not transformative and serves essentially a commercial purpose, then it is unlikely to be seen as fair use.

In this case, the district court went one step further, imposing an additional requirement that, to be transformative and qualify for a fair use defense, the “new work [must] in some way comment on, relate to the historical context of, or critically refer back to the original works.” The court concluded that because Prince never intended to comment on Cariou’s work when he appropriated the images from Yes Rasta, fair use did not apply and it granted summary judgment to Cariou. The defendants then appealed.

The Court of Appeals for the Second Circuit reversed the district court’s ruling with respect to 25 out of the 30 pieces from Prince’s Canal Zone series, ruling that those 25 pieces are transformative and make fair use of Cariou’s copyrighted images.

Significantly, the Second Circuit expressly rejected the requirement imposed by the district court that Prince’s work must comment on Cariou’s work or on culture in order to be transformative: “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship and research)” identified in the Copyright Act. Rather, the Second Circuit ruled that the critical inquiry is whether a reasonable observer would find the work transformative.

Assuming the role of a reasonable observer, the Second Circuit compared Cariou’s original photographs against Prince’s artworks. The court characterized Cariou’s photographs as “serene and deliberately composed,” works that “depict the natural beauty of Rastafarians and their surrounding environs.” Prince’s artwork, on the other hand, was comprised of “crude and jarring” and “hectic and provocative” images such that it “manifest[ed] an entirely different aesthetic from Cariou’s photographs.” Against this backdrop, the Court held that all but five of Prince’s artworks qualified as fair use. The Court sent the five remaining pieces back to the district court for further rulings consistent with its decision.

Artists and lawyers alike have praised the Second Circuit’s decision, calling it an important development for artists to create without fear of legal retribution. Critics, however, think the Second Circuit went too far and that the decision opens the door for misappropriation of copyrighted images under the guise of fair use. Still others believe the proper fair use standard lies somewhere between the district court’s ruling that requires commentary on the original work and the Second Circuit’s much more liberal and subjective “reasonable observer” test.

Leigh Willey and Kimberly Peaslee are associates at Devine Millimet. Willey is a member of the firm’s commercial litigation department. Peaslee is a member of the firm’s patent, trademark and licensing practice group.

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