Intellectual Property Attorney

Second Circuit Sides With Artist In Closely Watched Copyright Case But Questions Remain About “Fair Use”

A panel of three judges of the U.S. Court of Appeals for the Second Circuit has issued an opinion reversing a lower court’s ruling that artist Robert Prince’s artwork infringed photographer Patrick Cariou’s registered copyrights. The case has attracted considerable and close attention in the art and legal communities for testing the boundaries of the “fair use” doctrine and the specific art technique known as “appropriation“. Appropriation is where an artist deliberately “borrows” pre-existing images, objects or elements and incorporates them into new works of art. One famous example of “appropriation” is Andy Warhol’s
Campbell’s Soup Can series. There has long been extensive debate concerning precisely when an artist’s “appropriation” of pre-existing images, objects or elements is no longer considered mere “borrowing” and crosses the line into copyright infringement.

In 2007 and 2008, Prince exhibited a series of artworks, collectively titled Canal Zone, that incorporated a number of photographs from Cariou’s book,
Yes Rasta, a collection of photographs of Rastafarians in Jamaica. The photographs were “torn out” of
Yes Rasta and “pinned to a piece of plywood”. The panel noted that Prince had “significantly” altered many, but not all, of the photographs “by among other things painting ‘lozenges’ over their subjects’ facial features and using only portions of some of the images.” A grand total of 29 of the 30 artworks featured in Prince’s
Canal Zone collection used “partial or whole images from
Yes Rasta.”

The panel carefully dissected the “use” of the photographs by Prince. For example, the panel wrote: “In certain works, such as James Brown Disco Ball, Prince affixed headshots from
Yes Rasta onto other appropriated images, all of which Prince placed on a canvas that he had painted. In these, Cariou’s work is almost entirely obscured.” The panel also noted that Prince’s artworks were generally printed in largely different formats and sizes than Cariou’s photographs in
Yes Rasta. However, in other works, such as a piece titled
Graduation, “Cariou’s original work is readily apparent: Prince did little more than paint blue lozenges over the subject’s eyes and mouth, and paste a picture of a guitar over the subject’s body.”

Prince never attempted to obtain Cariou’s permission to use the photographs from Yes Rasta. Consequently, shortly after Cariou learned of Prince’s use of the photographs in December 2008 he filed a lawsuit alleging copyright infringement against Prince, as well as against a gallery that displayed the artworks and its owner. In response, the defendants claimed “fair use”, i.e., that “Prince’s artworks are transformative of Cariou’s photographs.” On motions for summary judgment, Southern District of New York Judge Deborah Batts applied to the doctrine of fair use “a requirement that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works” and explained that “Prince’s [artworks] are transformative only to the extent that they comment on [Cariou’s photographs].” In applying these standards, Judge Batts rejected defendants’ “fair use” defense. Specifically, she concluded that “Prince did not intend to comment on Cariou, on Cariou’s [photographs], or on aspects of popular culture closely associated with Cariou or the [photographs] when he appropriated the [photographs].” In addition to granting summary judgment for Cariou, Judge Batts imposed injunctive relief that required the defendants to “deliver up for impounding, destruction, or other disposition, as [Cariou] determines, all infringing copies of the [p]hotographs, including the [artworks] and unsold copies of the
Canal Zone exhibition book, in their possession.”

Applying the factors relevant to fair use set forth at 17 U.S.C. § 107, the panel of Second Circuit judges reversed. Of particular note is the Second Circuit’s rejection of Judge Batts’ conclusion that the doctrine of fair use imposes a requirement “that a secondary use comment on the original artist or work, or popular culture.” Rather, fair use requires that a reasonable observer would find the work transformative. The majority of Prince’s artworks were found to be transformative because they exhibited “an entirely different aesthetic” than Cariou’s pictures. Indeed, the panel noted: “Where Cariou’s serene and deliberately composed portraits and landscape photographs depict the natural beauty of the Rastafarians and their surrounding environs, Prince’s crude and jarring work, on the other hand, are hectic and provocative.” Thus, the panel held that 25 of the works were “transformative as a matter of law.”

Not all of the paintings were found to fall within the doctrine of “fair use”, however. Five of the works were deemed questionable and, therefore, the panel sent the case back to the lower court to determine whether a reasonable observer would find the five artworks to be transformative.

While the decision may be a boon to artists engaging in “appropriation” of images, objects or elements, the decision is not a model of clarity and does not offer a great deal of helpful explanation as to what precisely may be considered transformative. The only conclusion to draw from this case is that fair use is not subject to a bright-line test. Rather, fair use is determined on a case-by-case basis dependent upon the unique, individual facts presented in each case.

The case is Cariou v. Prince, Docket No. 11-1197-cv (2d Cir.). A copy of the panel’s decision can be found

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