Famed artist Richard Prince is no stranger to litigation; over the years, he’s been sued by multiple plaintiffs whose art he has incorporated into his own “appropriation art” works.  A few years ago, he was the defendant in the Cariou v. Prince case, which resulted in an important Second Circuit Opinion about the fair-use defense to copyright infringement.

Over the summer, a New York court ruled that another plaintiff’s claims against Prince can move forward to the next phase of litigation.  Our earlier post contains more detail, but in short, the case involves Prince’s appropriation of a photograph titled “Rastafarian Smoking a Joint,” which was taken by the plaintiff, a professional photographer named Donald Graham.  Graham alleges that “Rastafarian” was uploaded by a user without Graham’s consent onto the photo-sharing network Instagram, where it ultimately caught the eye of Prince, who incorporated Graham’s image into one of his now-notorious “New Portraits” series of works (essentially giant printed versions of other Instagram users’ photographs, minimally cropped and flanked by elements of the Instagram user interface from which they came; Prince created them by adding a comment, taking a screen shot of the image and a handful of the accompanying comments, and then enlarging and printing the screen shot on canvas.  The “New Portraits” series was exhibited at the Gagosian Gallery in the fall of 2014 and later at the 2015 Frieze Art Fair.)

The Motion to Dismiss

Graham sued Prince more than a year ago, along with the Gagosian Gallery and its owner; the defendants then moved to dismiss the claims.  Again, our previous post contains a more detailed discussion of the arguments made in the motion to dismiss, but a primary argument was that, under the Second Circuit’s guidance in Cariou v. Prince, Prince’s appropriation of “Rastafarian” is protected as “fair use” under federal copyright law, and Graham should not be permitted to “essentially re-litigate Cariou.”

The district court, however, was unpersuaded.  In an opinion issued in mid-July, the judge opined that the fair-use defense, which requires a court to weigh four statutory factors, see 17 U.S.C. § 107, is generally a highly fact-sensitive inquiry, and that, unless fair use is “clearly established” by a complaint, “courts generally do not address the fair use defense until the summary judgment phase.”  Indeed, the court reminded readers that Cariou was not decided on a motion to dismiss, but on summary judgment after discovery. 

The court acknowledged that it is “conceivable – albeit highly unlikely – that a fair use affirmative defense can be addressed on a motion to dismiss.”  Therefore, the court went on to examine “the four fair use factors in light of the factual allegations of the Complaint and its exhibits.”  But, it ultimately decided that the issue of fair use could not be decided at the pleading stage:

Defendants’ motion is premised on the supposition that [Prince’s work] Untitled is transformative as a matter of law and that crediting its transformative character compels a finding that the other fair use factors also weigh decidedly in defendants’ favor. This logical chain breaks at the first link; the Second Circuit’s precedents do not support a finding that Untitled is transformative as a matter of law. Moreover, because the Court can only review the narrow set of facts that appear in the Complaint and its appended exhibits – and because all of the plausible factual allegations contained in those documents must be viewed in the light most favorable to the plaintiff – the Court cannot conclude that any of the four fair use factors favors defendants.

On the first fair use factor, “purpose and character of the use,” the court held that, because Prince’s “New Portrait” had not made substantial aesthetic alterations to Graham’s “Rastafarian,” “a simple side-by-side comparison of the two works is insufficient to show that Prince made transformative use of Graham’s original as a matter of law.”  The court held that Prince’s work “does not belong to a class of secondary works that are so aesthetically different from the originals” that a “reasonable viewer” would deem them transformative as a matter of law, or would conclude that Prince’s alterations imbued the original work “with new expression, meaning, or message.”  In the court’s estimation, Prince’s “New Portrait” was “certainly no more transformative than the five works in Cariou that the Court of Appeals remanded to the district court” for being too “similar in key aesthetic ways” to the originals.  Rather, Graham’s photograph, “unobstructed and unaltered,” is the dominant image in Prince’s work.  The court indicated that defendants face an uphill battle—“defendants will not be able to establish that Untitled is a transformative work without substantial evidentiary support”—but also provided a hint of the type of evidence that might help defendants later in the case, suggesting that such evidence “may include art criticism,” as well as evidence of Prince’s intent, which is not dispositive but is also “not irrelevant.”

On the character of the use, the court also observed that Prince’s “New Portraits” are commercial in nature, in that they were for sale, and only displayed to the public for about a month.  While “a distinctly commercial purpose will be discounted if the work is sufficiently transformative,” the transformativeness here could not be assessed at this early stage of the case. 

As to the second fair use factor, the nature of the original work, the court held this favored Graham, since his original “Rastafarian” photograph was “both creative and published.”

On the third factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” the court cited case law holding that “[v]erbatim copying of an entire copyrighted work militates against a finding of fair use,” and noted that Prince’s work “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 court acknowledged that Prince may well have needed to use the Graham image in its entirety in order to comment on it and the Instagram post and interface in which it was contained, but concluded that “only a determination that Prince’s use of the photograph was transformative could enable this factor to weigh in their favor,” and a transformativity ruling must wait until a later phase of the case.

Finally, on the fourth factor, the court examined whether Prince’s work “usurps” the market for Graham’s original work or potential derivative markets that Graham might develop or license.  In the court’s view, this factor, too, is impacted by the transformativeness of the allegedly infringing work; the court opined that the more transformative the secondary use, the less likely that the secondary use substitutes for the original.  The court concluded that, because the plaintiffs adequately pled that the target audiences of the two works are the same (“fine art collectors”), and further factual questions (such as whether Prince’s works appeal to a different type of collector than Graham’s, and whether any collector might buy Prince’s work instead of Graham’s) were inappropriate for resolution on a motion to dismiss.

The court also rejected the defendants’ request to convert the motion into one for summary judgment; that is only appropriate where discovery is unnecessary, and here, the court held that more evidence—for example, about the purpose of Prince’s works, and the market for each artist’s work—was needed.  The court also refused to preemptively limit Graham’s potential damages; the defendants had argued that Graham should recover, at most, the profits defendants made from the sale of Prince’s work based on Graham’s photograph.  But the court held that there were factual questions that might impact damages; for example, Graham has alleged that defendants not only profited from the sale of that Prince work, but also used Graham’s photograph in promotional materials for the “New Portraits” exhibition, thus potentially generating profits beyond those earned from that one sale.  The court also declined to rule out the recovery of at least some statutory damages and costs, although it agreed with defendants that punitive damages would be unavailable.

What’s Next

In late August, the court set a schedule for the case’s next phase.  The parties are set to complete fact discovery by March 30, 2018, and expert discovery by June 29, 2018.  Following discovery, it seems likely that the court will consider whether the case can be resolved on summary judgment, or whether a trial is needed.

It’s worth noting that the case is now proceeding in tandem with the other “New Portraits” case currently pending against Prince in the Southern District of New York.  In that case, filed by photographer Eric McNatt—who snapped musician Kim Gordon in an image that Prince later appropriated—the parties had also fully briefed a motion to dismiss focusing on Prince’s fair-use defense.  Following the Graham decision, Prince’s attorneys opted to withdraw the motion to dismiss in the McNatt case, and the McNatt parties are now headed to discovery on the same timetable as the Graham case.

The Graham court’s ruling on the motion to dismiss is, in some ways, an exercise in restraint—arguably, the court’s main conclusion is simply that it lacked sufficient facts to fully evaluate the four fair-use factors at this early stage of the case.  But that in itself is an important message to potential litigants in the fair-use arena; parties should be aware that, in many cases, an early victory at the motion-to-dismiss stage will be unlikely, and they should instead be prepared for a longer litigation battle that likely will include costly discovery. 

Moreover, the opinion provides important signals about how the court might view the issues in this case down the road.  For example, the court kept returning to the issue of whether Prince’s work was transformative as central to each of the fair-use factors, suggesting that this important but difficult-to-define inquiry will continue to be front and center in the case (as it was in Cariou).  (Recall that the question of transformativeness has been criticized by one circuit court and that indeed, the judge who coined the term has warned against “oversimplified reliance” on it.)  The court also foreshadowed the type of evidence that it might find compelling as the case continues.  For example, the court indicated that it would evaluate Prince’s work not simply based on the aesthetic and visual alterations he made to Graham’s work, but also in light of evidence about Prince’s intent in creating his “New Portraits,” how those works have been viewed by art critics and scholars.  The court also suggested that evidence about the two artists’ markets might be important to its analysis.  

The decision also hints at one of the many difficulties of analyzing artwork by “appropriation artists” like Prince.  The court labeled Prince’s work as unequivocally “commercial” in nature, given that it was “exhibited at and sold by a commercial art gallery,” and “only displayed to the public . . . for approximately one month.”  But he idea of “commercial” use is tricky when it comes to high-end art; Prince’s Gagosian exhibition somehow feels more expressive and less unabashedly commercial than, for example, a case of an electronics company, clothing retailer, or fast-food chain using an artist’s work to peddle their wares—yet Prince’s works are nevertheless a commercial endeavor. 

We’ll continue to watch both cases against Prince as they move into the next phase.