Two copyright lawsuits against appropriation artist Richard Prince arising out of his controversial “New Portraits” artworks have cleared a major hurdle—summary judgment—and appear to be headed for trial.  In a decision issued in May (just days before the Supreme Court issued its Warhol ruling), a federal judge rejected Prince’s fair use defense.
 
Background
 
Our previous posts (here, here, here, here, here, and here) contain more detail on this long-running litigation, but in short, at the center of the case is Prince’s controversial New Portraits works, which were first shown at the Gagosian Gallery in 2014.  The exhibition featured large-scale canvases on which Prince printed screen shots he took while using the image-based social media network Instagram; the screen shots featured other people’s photos, sometimes cropped and with cryptic comments and emojis added by Prince.  Prince was promptly sued by Eric McNatt and Donald Graham—two of the photographers whose pictures were among those incorporated into New Portraits.  The cases, which were assigned to the same judge and have been progressing in tandem, also named Prince’s dealer, Gagosian, among other defendants.  In 2017, plaintiff Graham’s claims survived a motion to dismiss, after which Prince’s lawyers withdrew their parallel attempt to dismiss McNatt’s claims.  The parties completed discovery and then the defendants moved for summary judgment on the issue of fair use, an affirmative defense to copyright infringement claims in which courts weigh four factors (dictated by a federal statute, see here) to determine whether a defendant has made a permissible fair use of another person’s copyrighted creation.
 
Summary Judgment Ruling
 
In an order dated May 11, 2023, U.S. District Judge Stein of the Southern District of New York refused to apply a fair use defense to bar Graham’s and McNatt’s claims.
 
In analyzing the first factor, the Court concluded that, even after discovery, “defendants still cannot show that the first factor favors a finding of fair use.  Prince’s use of plaintiffs’ images is not transformative as a matter of law.”  The Court also rejected as “drawn from whole cloth” the defendants’ attempt to define a “reasonable observer” as someone who has “general interest in and appreciation of, but not specialized knowledge of, the arts.”  The Court concluded that Prince’s works were not “so aesthetically different” from Graham and McNatt’s originals that a reasonable observer looking at them side by side would conclude that they have a different character, new expression, and new aesthetics.  Prince, in the Court’s view, had altered the photographs but “only minimally,” and not enough to be transformative as a matter of law; the original images are “unobstructed, unaltered but for being cropped, and unquestionably dominant.”  The Court also held that Prince’s works were not parody; while he was apparently commenting on social media culture generally, the original works themselves were not the target of Prince’s satire.
 
On the second fair use factor, the Court noted that the original photographs were not simply factual, but creative works themselves.  The Court’s analysis of the third factor largely reiterated that, because the Prince works were not transformative, their use of “nearly the entirety” of the plaintiffs’ photos was not reasonable.  And as to the fourth factor, the Court acknowledged that collectors of Richard Prince’s works were an entirely different market than the audience who might buy Graham’s or McNatt’s work, and there was no evidence that anyone might decide not to buy a Graham or McNatt photo because of what Prince did here.  The fourth factor thus weighed “slightly” in favor of the defendants.  But overall, the Court held that on balance, the factors weighed against fair use.
 
On May 25, Prince’s counsel asked for reconsideration, arguing that, when, Graham posted his photo to his Facebook page back in 2010, Facebook’s Terms of Use were very broad and included language that should be construed to provide Prince with a non-exclusive, express license to use the photograph.  But on July 6, Judge Stein issued a short ruling denying the motion for reconsideration, stating that there was no basis for a finding of an express license.
 
Rulings On The Parties’ Experts
 
As we have discussed before (see here), the parties in the New Portraits litigation had also briefed some interesting questions about the appropriate role of expert witnesses in this fair use dispute.  Judge Stein has also now disposed of those motions.  He struck one expert’s entire expert report, holding that the expert was effectively “functioning as a lawyer” and admonishing, “I don’t need her to tell me about the law.” 
 
The Court also indicated it would “disregard the experts’ comparison of the works to the extent they encroach on the jury’s role to visually compare the works.  The jury can compare the works;
they don't need an expert to compare the works.”  However, Judge Stein held that “art criticism experts are generally allowable” and that he would accept testimony about how art critics interpret Prince’s work, to the extent such testimony was helpful to the court. 
 
As to some of the other questions raised by the parties regarding the experts, Judge Stein held that many of them were matters that might impact the weight to be given to the experts, but would not render their testimony inadmissible.  For example, the fact that some experts did not inspect the Prince works in person and only examined copies did not mean that those experts’ testimony should be rejected wholesale; rather, the Court could consider that fact in deciding how much weight to accord their opinions.
 
Analysis and What’s Next
 
The recent summary judgment ruling is interesting in part because it was actually issued just a few days before the Supreme Court’s May 18 decision in the Goldsmith v. Warhol case.  So the Supreme Court’s most recent guidance (such as it is) on fair use and transformativity was not available to Judge Stein, who instead relied on older precedent (including the Second Circuit’s Cariou case as well as the Supreme Court’s Campbell v. Acuff-Rose case involving 2 Live Crew’s parody of the Roy Orbison song “Pretty Woman”).  Judge Stein did cite the Second Circuit’s decision in the Goldsmith/Warhol dispute (see here), for the proposition that the secondary work must “reasonably be perceived as embodying a distinct artistic purpose,” and holding that Richard Prince’s New Portraits did not meet that standard.  For now, though, Judge Stein was spared the difficulty of trying to determine how or whether the Supreme Court’s Warhol decision applies here; indeed, one recent story quoted one of Richard Prince’s lawyers as arguing that, because the Warhol decision was so narrowly focused on the licensing aspects of that dispute, it should have no bearing on the McNatt and Graham claims, which are instead focused on the individual one-of-a-kind New Portrait artworks.
 
Unless the parties reach a settlement (as Prince did with Cariou when faced with a possible trial over a handful of the works at issue in that case), the cases appear to be headed for a trial.  There, one focus will likely be how to calculate the plaintiffs’ damages, and the parties may engage in further disputes about experts, since Judge Stein has postponed ruling on questions about at least one damages expert.  We’ll continue to follow the case as it moves forward.