On April 25, the United States Court of Appeals for the Second Circuit issued an important decision about the “fair use” defense in copyright infringement cases.  The court’s ruling will have implications for artists and galleries, especially those who create or deal in artwork that incorporates or builds off the work of others.

In this case, the plaintiff, Patrick Cariou, is a photographer who had registered copyrights on photographs he had taken while living among Rastafarians in Jamaica.  Cariou’s photos were published in a 2000 book entitled Yes Rasta.

A few years later, well-known “appropriation artist” Richard Prince came across a copy of Yes Rasta. Without permission from Cariou, he incorporated many of the Yes Rasta photos into a series of artworks and collages, which he called Canal Zone.  Prince’s use of the Yes Rasta photographs varies from piece to piece, but generally, Prince altered the photos (for example, by painting over facial features of some of the subjects, using only portions of some photographs, or tinting or enlarging some images).

In late 2008, many of Prince’s Canal Zone works were displayed at an exhibition at the Gagosian Gallery.  When Cariou learned of the Gagosian Canal Zone show, he sued Prince (as well as the Gagosian and its owner) for copyright infringement.  The defendants argued that their actions were protected by the fair use defense, because Prince’s artworks were transformative of Cariou’s and thus did not violate Cariou’s copyrights.

The U.S. District Court for the Southern District of New York disagreed, and granted summary judgment in favor of Cariou.  The court acknowledged that “there may be some minimal transformative element in Prince’s use” of Cariou’s photos, but held that Prince’s works did not qualify as fair use because they did not “in some way comment on, relate to the historical context of, or critically refer back to” Cariou, his photos, or on aspects of culture closely associated with Cariou or the photos.  The district court ordered the defendants to hand over all of their copies of the photographs, including Prince’s works and any copies of the Canal Zone exhibition book, to be impounded, destroyed, or otherwise disposed of as Cariou saw fit.  The defendants appealed to the Second Circuit.

On appeal, the court had to decide whether the district court applied the correct standard in deciding whether Prince’s artworks had made fair use of Cariou’s copyrighted photographs.  The court explained that, generally speaking, the fair use doctrine is a way to “mediate” between a copyright owner’s rights in their works, “which must be protected up to a point,” and the ability of “the rest of us” to express ourselves by reference to others’ works, which also “must be protected up to a point.”  A fair use determination considers four factors: 1) the purpose and character of the use, including whether the use is of a commercial nature (as opposed to educational or nonprofit purposes); 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use on the potential market for the copyrighted work.

Importantly, the Second Circuit held that the district court had been wrong to require the secondary use to comment on or somehow refer to the original works or their author in order to be deemed fair use.  While such comment or reference to the original is often present in fair use cases, especially those involving satire or parody, it is not necessary.  Fair use simply requires the new work to be transformative, altering the original work in the creation of “new information, new aesthetics, new insights and understandings.”

The Second Circuit then went on to apply this rule, using “our observation of Prince’s artworks themselves.”  The majority of judges on the panel held that all but five of the Prince works were of sufficiently “transformative nature” to qualify for a fair use defense. The court clarified that mere cosmetic changes or simply presenting the same material in a new form would not necessarily be fair use.  However, the bulk of Prince’s works, said the court, “manifest an entirely different aesthetic from Cariou’s photographs”—Cariou’s work being “serene and deliberately composed” while Prince’s was “crude and jarring… hectic and provocative.”  The court also noted differences in Prince’s “composition, presentation, scale, color palette, and media” as compared to Cariou’s photographs.

Because of the works’ transformative nature, the court put less weight on some of the other factors in a fair use inquiry, such as the fact that Prince’s work is commercial and published.  The court also did not give significant weight to Prince’s own statements about his intent.  The decision cites Prince’s deposition testimony, in which he discussed his approach to the Canal Zone works; he was not interested in Cariou’s original intent, but rather sought to convey completely different themes related to a “post-apocalyptic screenplay” exploring issues including gender relationships and music.  In the district court’s view, Prince’s testimony demonstrated that he had no real new message, nor any interest in Cariou’s original intent.  The Second Circuit, however, rejected any requirement that he have anything to say about the Cariou works, and emphasized that “we do not analyze satire or parody differently from any other transformative use.”  Rather, “Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so.  Rather than confining our inquiry to Prince’s explanation of his artworks, we instead examine how the artworks may ‘reasonably be perceived.’”  In that light, 25 of the works were, in the judges’ view, “transformative as a matter of law.”

The court also discussed whether Prince’s work had affected the market for Cariou’s work. Before the Gagosian show in late 2008, Cariou had been in discussions with a New York art gallery about an exhibition of some of Cariou’s works, including some of the photographs from Yes Rasta.  Upon learning that some of Cariou’s photographs were “in the show with Richard Prince,” the gallery owner decided that she would not put on a “Rasta show” because it had been “done already.”  Based on this evidence, the district court had concluded that Prince’s work had damaged the market for Cariou’s.  The appeals court disagreed, explaining that the relevant question is whether Prince’s work usurped the market for derivative works that Cariou might have developed or licensed himself.  Here, the court noted that Prince’s market was quite different (and much more high-end and high-profile) than Cariou’s, and there was no evidence that Cariou would ever license his works for uses like Prince’s, particularly given that Cariou had not extensively marketed his book or his prints.

Finally, the court looked at how much of Cariou’s original work Prince used.  While Prince used some of the source photographs in their entirety, the court cautioned that that did not necessarily rule out a fair use defense; indeed, “copying the entirety of a work is sometimes necessary to make a fair use of the image.”  While the district court had opined that Prince’s taking of Cariou’s material was “substantially greater than necessary,” the appellate court did not see “how the district court could arrive at such a conclusion,” and that in any case, “no more than necessary” is not the legal standard.

As to the remaining five Prince works, the court remanded the case to the district court for further consideration of whether they constituted a fair use.  In those works, Prince had made only “minimal alterations” to Cariou’s photographs, and the court could not say with certainty whether they presented a “new expression, meaning, or message.”  The appeals court tasked the district court with determining whether Prince’s alterations were enough to render those five works fair use.

If any of those five works are found to be infringing, the district court will also need to decide whether, in addition to Prince’s liability, the Gagosian and its owner should be held liable as vicarious or contributory infringers.  The Second Circuit also instructed that, if the district court finds infringement, it should revisit the question of what relief is appropriate, because apparently all parties agreed at oral argument that destroying Prince’s work “would be improper and against the public interest.”

One of the three judges on the Second Circuit’s panel disagreed with some aspects of the majority decision.  Judge J. Clifford Wallace, in a separate opinion, said that, although he agreed that the district court had applied the incorrect approach, he would have simply corrected the district court’s standard and then remanded the case to the district court to apply the proper standard to all of Prince’s works.  He noted, “I am not an art critic or expert,” and expressed skepticism that the majority could so confidently draw a distinction between the 25 works held to be fair use and the other five that were less clear.  He warned of the danger of appellate courts using “our personal art views” to make decisions like this one; instead, he believed that the district court should make that decision in the first instance.

Understandably, this case has generated interest and discussion throughout the art world, not only due to the high-profile defendants but due to the larger questions it raises about appropriation art and how artists can and cannot use or incorporate the works of others.  A number of art and media entities filed amicus briefs in the case, including the Andy Warhol Foundation for the Visual Arts, Google, a group of prominent museums and museum organizations, and organizations representing the interests of photographers.

The court’s decision gives some comfort to artists and galleries by emphasizing that, when an artist’s work incorporates someone else’s work, the secondary work may be fair use even if it does not comment on the original in any way.  The decision also clarifies that works involving parody and satire are not analyzed differently than any other works when it comes to questions of fair use.

On the other hand (as Judge Wallace points out in his dissent), this case illustrates the reality that fair use is a difficult, case-by-case question that does not lend itself to bright-line rules and clear guidelines.  Rather, in some cases, a fair use defense—and therefore copyright infringement liability—may turn on the artistic observations and evaluations of individual judges with little background in art.

Images of all of the Prince artworks and Yes Rasta photographs at issue in this case were appended to the court’s opinion and are available at http://www.ca2.uscourts.gov/11-1197apx.htm.