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Photographs Are Worth Millions, But Not for the Photographer

Photographs Are Worth Millions, But Not for the Photographer

Fair Use: Transformative is the Name of the Game

In the case of Cariou v. Prince, the plaintiff, Patrick Cariou, [1] was a French photographer. Cariou alleged that defendant, Richard Prince, [2] infringed the copyrights in some of Cariou’s photographs. Prince is a painter well-known for his appropriation art. An appropriation artist takes others works, or portions thereof, and uses them in his own works that present the appropriated work in a different context.

Prince took Cariou’s photographs of island people, modified them, and placed them in collages on canvas paintings. Prince sold his works for more than $10 million without compensating Cariou in any manner.

Cariou filed a lawsuit in the Southern District of New York (S.D.N.Y.). Prince asserted a fair use defense. On a Cariou motion for summary judgment, the district court found Prince’s works were not a fair use and ruled in favor of Cariou, including an injunction against Prince’s further sale or use of Cariou’s photographs.

On appeal, the Second Circuit held that the district court applied the incorrect standard for a fair use determination and that twenty-five of the thirty Prince works were a fair use. The Second Circuit remanded the five other works to the district court and removed the injunction.

FACTS:

Cariou spent six years taking pictures of Rastafarians [3] in Jamaica. Cariou published a book, “Yes Rasta,” [4] which included the pictures he took. Prince purchased several copies of Yes Rasta, tore out pages, and posted them in various collages on pieces of plywood and canvases.

Prince altered the photos by whiting out portions of the photographs, e.g. the eyes and mouths of portraits. In some of Prince’s works, Cariou’s photographs are barely recognizable; in others they are clearly recognizable with minimal alterations performed by Prince. Prince’s works consisted of a series of paintings, called Canal Zone, [5] which were displayed in galleries and photographed for a catalog of the paintings.

DISTRICT COURT PROCEEDING:

Cariou sued for copyright infringement. Prince asserted a fair use defense based on his paintings being transformative. Both parties filed summary judgment motions. The district court granted Cariou’s and denied Prince’s. Prince appealed.

In his appeal, Prince contended that “Prince’s work is transformative and constitutes fair use of Cariou’s copyrighted photographs, and that the district court imposed an incorrect standard when it concluded that, in order to qualify for a fair use defense, Prince’s work must ‘comment on Cariou, on Cariou’s Photos, or on aspects of popular culture closely associated with Cariou or the Photos.” [6]

On appeal, the Second Circuit held that a finding of transformative does not require the defendant’s works to comment on the plaintiff, the plaintiff’s work, or on aspects of pop culture closely associated with the plaintiff’s works.

SECOND CIRCUIT ANALYSIS:

When making a fair use determination, the court considers four factors: [7]

  1. The purpose and character of the defendant’s use (Is it commercial, non-profit, or transformative?);
  2. The nature of the copyrighted work (How creative is it? How close is it to the core of the works the Copyright Act intended to protect?);
  3. The amount and substantiality of the portion the defendant used in relation to the total copyrighted work; and
  4. The effect of the defendant’s use on the market for the copyrighted work.

The Second Circuit viewed the transformative analysis as the preeminent factor in the fair use determination. [8] The transformative analysis asks whether the defendant’s work is a replacement or substitute for the copyrighted work, or does it add something new with a different purpose or character. [9] “For a use to be fair, it must… employ the quoted matters in a different manner for a different purpose.” [10]

Cariou asserted that the different purpose must be one of the purposes listed in the Copyright Act. However, Campbell allows courts to find fair use in a defendant’s work even if it serves a purpose different than those listed in the statute, “criticism, comment, news reporting, teaching, scholarship, and research.” [11]

Cariou also argued that a transformative work must comment on the copyrighted work, its author, or pop culture closely related to the copyrighted work. But the Second Circuit did not agree with Cariou’s argument. A work is transformative if it creates a “new expression, meaning, or message.” [12] The Second Circuit uses the terms “new information, new aesthetics, new insights and understandings.” [13] This does not limit transformative works as Cariou asserted.

In its transformative analysis, the court viewed the works as a reasonable observer would view them and not as an artist would observe them. [14] The court found fair use for twenty-five of the thirty Prince works. The following table illustrates where the Second Circuit found transformative characteristics:

Feature Cariou’s photographs Prince’s works
Aesthetics / Expression Completely different than Cariou’s photos
Depictions Serene and natural beauty in natural settings “Hectic and provocative” w/ “distorted human forms and settings.”
Human condition Portraits of real people at ease in their environment Shows people that do not seem real and are uncomfortable with their environment
Size 9-1/2” x 12” 40” x 30” up to 110-1/2” x 104-1/2”
Material Printed black & white photographs Collages on canvas w/ color

Each of the distinguishing features alone was not enough to find Prince’s secondary use was transformative, but taken together the court found Prince’s works were transformative. The court added that its decision should not be interpreted as granting fair use for any cosmetic change of photographs. For example, presenting a plaintiff’s photographs in a book with samples of the photographs would not be transformative and would not be a fair use.

The Second Circuit’s significant weighting of transformative is apparent in its consideration of whether Prince’s works were commercial in nature. Prince’s works were commercial in nature; Prince earned millions of dollars for his works. Despite the obvious commercial nature, the Second Circuit found it did not way against a fair use holding.

In its analysis of the fourth factor, the Second Circuit’s “concern [was] not whether the secondary use suppresse[d] or even destroy[ed] the market for the original work or its potential derivatives, but whether the secondary use usurp[ed] the market of the original work.” [15] To support this concern, the court cited Campbell:  “The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop.” [16]

The court provided an example of a defendant’s work usurping the plaintiff’s work. In Castle Rock, [17] the court found a book of trivia about the Seinfeld sitcom did supplant a derivative market for the television show. Nevertheless, the Castle Rock court held that a clearly transformative work could damage the market for the plaintiff’s work and still be a fair use. In other words, there is an inverse relationship between how transformative the defendant’s work is and how much weight the court gives the fourth factor.

Cariou’s strongest argument for damage to the market for his works was his loss of sells to an art gallery. Cariou had talked to a gallery owner who had contacted Cariou about exhibiting his photographs in her gallery. After she became aware of Prince’s use of Cariou’s photographs, she mistakenly assumed Cariou and Prince had a close business relationship, and she no longer pursued exhibiting Cairou’s photographs.

The Second Circuit acknowledged the incident but did not find it significant. The Second Circuit remained at the higher level of whether Prince’s works harmed the market in general for Cariou’s photographs. Cariou did not present any evidence that he had or would develop or license a market like that of Prince’s works. Cariou had not engaged in much of any effort to develop a market for his photographs.

The Second Circuit treated the transformative finding as sufficient for a holding of fair use. However, it did discuss the other factors. In evaluating the second factor, the nature of the work, the closer the copyrighted work is to the core of the works the Copyright Act intends to protect, the higher the threshold to finding a fair use. Works that are closer to the core are expressive, creative, and published. Works further from the core are factual, informational, and unpublished.

Cariou’s photographs are creative and published. The Second Circuit discounted this by citing to a case where it held the second factor weight “may be of limited usefulness where the creative work of art is being used for a transformative purpose.” [18]

For the third factor, amount and substantiality, the issue is whether the “quantity and value” of the portions Prince took were reasonable for the purpose for which Prince used them. The reasonable amount of copying is case specific. There are cases where the courts have found a complete copy of the copyrighted work was a fair use. [19] In addition, the law does not require the defendant to take “no more than is necessary.” [20]

The Second Circuit acknowledged that Prince used “key” portions of Cariou’s photographs. However, Prince’s works were so new and different and expressed such different meanings, i.e. they were highly transformative, that the third factor did not weigh heavily against fair use in the mind of the Second Circuit.

For the five Prince works that the court remanded back to the district court, the court was not able to find them transformative based on the record. The five retained aesthetics similar to Cariou’s photographs.

Boaldin Law Comments:

The Fair Use defense is not straight forward. Consequently, the courts are inconsistent in their decisions where the Fair Use defense is raised. As an artist, you are likely to find yourself on both sides of the Fair Use debate. You need reasonable access to the works of others to create your own. But you do not want others to profit from your works without fairly compensating you.

A takeaway from the Cariou decision is what the court looked for to determine whether Prince’s works were transformative. The Second Circuit looked for new expressions, meanings, or messages. This is a broad gate through which to assert a Fair Use defense. To protect yourself from others entering through this gate, consider starting now to develop derivative markets for your works. By purposely developing your derivative markets, you can add to the counterbalance against a finding of Fair Use.

To see the Seventh Circuit’s take on the Second Circuit’s transformative analysis in Cairu, see http://boaldinlaw.com/copyright-fair-use-transformatives-preeminence-ending/

Contact our office, solutions@boaldinlaw.com or 405.305.1046, with any comments or questions about this post.

 

[1] Patrick Cariou, https://twitter.com/PatrickCariou

[2] Richard Prince, http://en.wikipedia.org/wiki/Richard_Prince

[3] Rastafarians believe Africa is the Promised Land to which all believers will one day return. They believe Haile Selassie, late Emperor of Ethiopia, is the Messiah.

[4] Yes Rasta, http://www.amazon.com/Yes-Rasta-Perry-Henzell/dp/1576870731

[5] Canal Zone, http://www.amazon.com/Canal-Zone-Richard-Prince-RASTA/dp/0615473857 ; http://images.search.yahoo.com/search/images;_ylt=A0LEV0gcIaxUZNcA9DJXNyoA;_ylu=X3oDMTByaHEyNGMxBHNlYwNzYwRjb2xvA2JmMQR2dGlkA1VJQzFfMQ–?_adv_prop=image&fr=altavista&va=canal+zone+richard+prince

[6] Cariou v. Prince, 784 F. Supp. 2d 337, 349 (S.D.N.Y. 2011).

[7] 17 U.S.C. § 107.

[8] The Seventh Circuit recently dismissed the Second Circuits transformative reasoning. http://boaldinlaw.com/copyright-fair-use-transformatives-preeminence-ending/

[9] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).

[10] Pierre N. Leval, Toward a Fair Use Standard, 103 Har. L. Rev. 1105, 1107 (1990).

[11] Campbell 510 U.S. at 577.

[12] Id. at 579.

[13] Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 137 (2d Cir. 1998).

[14] Campbell 510 U.S. at 582.

[15] Blanch v. Koons, 467 F.3d 244, 258 (2d Cir. 2006).

[16] Campbell 510 U.S. at 592.

[17] Castle Rock 150 F.3d at 145.

[18] Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 612 (2d Cir. 2006).

[19] Id. at 613.

[20] Campbell 510 U.S. at 588.

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