We here at Grossman LLP, along with many other legal commentators, have been following with interest the lawsuits against appropriation artist Richard Prince arising out of his controversial New Portraits works, first shown at the Gagosian Gallery in 2014, which Prince created from screen shots of photos taken by other Instagram users.  Our previous posts (here, here, here, here, and here) contain more detail, but in short, Prince has been sued by Eric McNatt and Donald Graham—two of the photographers whose pictures were incorporated into Prince’s New Portraits series.
 
The two plaintiffs filed separate copyright infringement cases against Prince and other defendants (including the Gagosian and its owner), but the cases are before the same judge and are progressing in tandem.  Last summer, plaintiff Graham’s claims survived a motion to dismiss (and after that ruling, Prince’s lawyers withdrew their parallel attempt to dismiss McNatt’s claims).  The parties have now completed discovery. 
 
As we discussed here, the court is now considering the defendants’ motions for summary judgment on the issue of fair use, which have been fully briefed.  But along with the main event—the summary judgment motion—the court is also considering additional motions filed by both parties with regard to each other’s expert witnesses.  These motions are worth examining because they will presumably be resolved along with the summary judgment decision, and they raise some interesting questions that may have implications in the larger arena of fair use case law.
 
The Basics
 
There are three different motions pending with regard to expert witnesses in these cases.  In one, which for purposes of this post we’ll call the Prince Motion (see S.D.N.Y. Docket No. 15-cv-10160, Document Nos. 145, 156, and 181), the defendants seek to exclude testimony of several of plaintiffs’ experts.  In another, which we’ll call the Graham Motion, the plaintiffs seek to exclude testimony from several of defendants’ experts (see Docs. 166, 169, and 174).  And in the third, which we’ll call the Damages Expert Motion, the defendants seek to exclude plaintiffs’ damages expert (see Docs. 148, 157, and 177).   
 
The motions, taken together, raise some larger questions about the proper role of expert witnesses when it comes to fair use. 
 
How Much Expert Testimony Regarding Transformativity Is Appropriate?
 
Both the Prince Motion and the Graham Motion are grappling with a larger question about the extent to which courts should allow expert testimony about transformativity.  For example, the Prince Motion takes issue with several experts who venture into this territory, saying that such testimony simply usurps the jury’s role, in that the experts are simply looking at reproductions of the works at issue and comparing them, which is all a jury would do.  In their opposition brief, plaintiffs explain that they actually agree that expert testimony about whether works are transformative is unnecessary and inappropriate.  But, they say, if it is to be permitted by defendants’ experts, plaintiffs should be able to rebut it. 
 
Likewise, in the Graham Motion, the plaintiffs argue that the defendants’ experts shouldn’t be allowed to prompt the jury to look at specific differences between the works, or coach the jury on how to do a side-by-side comparison of a Prince New Portrait versus the plaintiff’s underlying photo.  They also argue that “whether appropriation art and, by extension, Prince’s Works follow a legitimate artistic tradition, and are therefore ‘transformative,’ is the very issue upon which this case turns,” and an expert shouldn’t be able to simply tell the jury what to think about that issue.  In opposition, the defendants urge that much of their expert testimony is meant to explain how Prince’s works “are transformative within their historical context and genre,” and that side-by-side comparison does not fully convey the significance of Prince’s “alterations” to the original works.   In reply, the plaintiffs say that transformativeness is judged by the ordinary observer and thus expert testimony is inappropriate, especially where works are not technical in nature.   
 
Relatedly, Plaintiffs also want to prevent defendants’ experts from presenting a “prejudicial narrative” about topics like appropriation art, Richard Prince’s “genius”, the internet, and common social media usage.  They urge that topics such as how people use Instagram is a “lay matter” for the jury, and that a lengthy expert report on the history of the internet is unnecessary to the case and will waste the jury’s time.  Defendants counter that these experts are simply providing relevant context for the jury, while plaintiffs say its prejudicial effect outweighs its usefulness.
 
These disputes raise some thorny questions for the court about how much these parties’ experts should be allowed to provide context to the jury—and at what point that testimony becomes more like telling the jury what to think.  The analysis also dovetails with an important concept that is at issue in the summary judgment motions: who is the “reasonable observer” for purposes of fair use questions, and how much knowledge should that “reasonable observer” have about art, art history, and the context in which a work was created?  The court’s decision on these motions may provide important guidelines for future fair use cases regarding how much experts should be able to offer opinions about the key question of transformativity. 
 
How Much Should Experts Be Permitted To Testify About An Artist’s Intent? 
 
In the Graham Motion, plaintiffs argue that the defendants’ experts should not be able to testify regarding what Richard Prince intended in making his New Portrait works; rather, Prince must speak for himself on his state of mind.  In response, the defendants urge that postmodern art theory envisions art as involving a dialogue between the creator, work, and viewer, and an artist’s stated intent is not controlling.  They argue that the fact that their experts see a meaning that may differ from Prince’s own account of what he was “trying to do” should not exclude that testimony; rather, the experts are not literally testifying about Prince’s subjective state of mind but about the nature of his works.   (This issue seems in part driven by the fact that Prince has given sometimes ambiguous explanations about his purpose in creating New Portraits—saying, for example, that he just wanted people to have fun—but his fair use defense will be stronger if New Portraits is instead viewed as “social commentary” on the nature of social media, as defendants’ lawyers have sought to portray it.)
 
On a related note, plaintiffs also take issue with some aspects of the defendants’ expert testimony about how prevalent copying is on social media.  The plaintiffs argue that such testimony amounts to an “everybody does it” defense that should be excluded from the case, pointing out that that just because copyright infringement is common has no bearing on whether a particular instance of it is legal.  But defendants say this is a misreading of the testimony, which is not opining on what is legal, but rather is simply discussing user expectations and cultural practices; this, they say, is relevant to Prince’s good faith. 
 
How Does a Fair Use Plaintiff Prove Damages?
 
In their Damages Expert Motion, Defendants also seek to exclude the plaintiffs’ expert on damages, who is a valuation analyst.  In addition to attacking his qualifications (his background is in valuing patents and trademarks, not copyright or photograph licensing or art appraisal), the defendants also say he shouldn’t be able to testify about Prince’s and Gagosian’s overall earnings in 2014-2015, because the only relevant numbers should be amounts related to these infringing works (and not even other works in the New Portraits series), and the larger numbers are merely prejudicial. 
 
Additionally, plaintiffs intend to seek damages based on defendants’ use of their underlying photographs not only in Prince’s actual canvas artworks, but also in promotional materials associated with the New Portraits exhibition.  Defendants argue that no damages are traceable to those promotional materials, particularly because all the New Portrait works were sold before the exhibitions opened, so those materials have no causal nexus to any of defendants’ revenue.
 
Interestingly, Larry Gagosian himself owns Portrait of RastaJay92, the work Prince created from Graham’s photo, and the plaintiffs want him to disgorge “unrealized profits” from it even though he has no intent to sell it.  The defendants challenge the expert’s methodology for how he arrived at the price range for which that work would resell on the secondary market.  They further challenge his opinion regarding what the license fee for Graham’s image might be.
 
On a related note, in the Prince Motion, defendants take issue with some of the plaintiffs’ experts’ opinions regarding the “market impact” of Prince’s work on the market for the plaintiffs’ original works; defendants call these opinions “speculative.”  (Some of the opinions here include that the Prince works prevent the plaintiffs from controlling the scarcity of their work and guaranteeing exclusivity to a potential licensee, and the fact that there’s no evidence that the Prince works helped these artists, particularly where Prince did not identify or acknowledge the original artists’ names.)  But the plaintiffs respond that defendants’ challenges should go to weight, not admissibility, and further note that the market impact factor by its nature considers “potential” markets, so some degree of forward-looking analysis is appropriate and not merely speculative. 
 
Overall, this Damages Expert Motion highlights the challenges of determining monetary damages in a copyright infringement case, especially one where the original artist has quite a different market than the allegedly infringing artist.
 
How Much Expert Testimony On the Other Fair Use Factors Is Appropriate?
 
As we’ve discussed before, courts examine a fair use defense in light of four factors, which are outlined in a federal statute (see here).  The parties in this case, through their wrangling over expert testimony, have raised issues for the court regarding how much expert testimony a jury should hear regarding these four fair use factors.
 
For example, one of plaintiffs’ experts opines that the Prince works are “commercial,” which is one of the fair use factors.  In so opining, she apparently describes Prince’s works as “in the manner of a late career brand extension that borrows not broadly and abstractly by repurposing corporate published materials but from individuals exploitatively at a personal level.”  Defendant calls her testimony merely political commentary that will confuse and prejudice jury.   The plaintiffs respond that her testimony is not “political” but backed by facts about the sale prices of Prince’s works and the profits to the defendants.
 
In another example, in the Graham Motion, plaintiffs argue that the defendants should not be able to present expert testimony on Prince’s accomplishments, arguing that it’s just duplicative of Prince’s own testimony and the fact that he is very famous and successful is only minimally relevant to the issues in the case.  But the defendants respond that the prices Prince’s works command is relevant to the fourth fair use factor, which deals with the extent to which Prince’s works act as a “market substitute” for plaintiffs’ works.
 
Relatedly, the parties dispute whether an expert should be able to testify about the “amount and substantiality” of the portion of the original works used by Prince, or whether that should simply be the province of the jury.  Again, plaintiffs say that if the defendants “are permitted to opine about the purported insignificance of Plaintiffs’ images in the Challenged Works, Plaintiffs should be allowed to rebut that testimony with expert opinion explaining the contrary.”
 
What Kind of Methodology Is Appropriate for Expert Witnesses In Fair Use Cases?
 
Defendants attack several of plaintiffs’ experts’ opinions on the ground that the experts had no “methodology” for formulating their opinions.  Further, Defendants argue, as to several of plaintiffs’ experts, that their opinions are inadequate because they didn’t inspect Prince’s full-scale works, but rather only viewed the works as images on a computer screen.  Plaintiffs respond that their experts could not inspect the original works because the defendants didn’t produce them and didn’t disclose the existence of any full-scale replicas until just before these motions were filed.  They also say that examining the originals is not necessary to express a fair use opinion.  Moreover, the plaintiffs’ experts did eventually inspect the replicas and concluded that it did not change their reports.  At most, plaintiffs urge, the failure to view the original works should go to the weight and not the admissibility of the testimony.  The discussion does raise an interesting question for the court about how exactly these experts should be examining the works at issue, and whether some works really need to be viewed in a certain way in order to be fully assessed.
 
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Overall, the briefs filed in connection with these motions touch on some important questions regarding the proper role of expert testimony in fair use cases.  While many in the art world have been awaiting court’s summary judgment ruling, it’s possible that the court’s decision on these accompanying motions could also have an impact not just on this case but on the type of expert testimony that will be permitted in future fair use case.