Friday, April 26, 2013

Transformativeness doesn't require commentary on original

Cariou v. Prince, No. 11-1197-cv (2d Cir. April 25, 2013)

The court of appeals reversed the grant of summary judgment to photographer Patrick Cariou, and ordered the entry of summary judgment in favor of well-known appropriation artist Richard Prince as to 25 out of 30 works, leaving the district court to analyze 5 for fair use on remand.

Cariou published Yes Rasta, “a book of [20] classical portraits and landscape photographs that he took over the course of six years spent living among Rastafarians in Jamaica.” He testified that the book was “extreme classical photography [and] portraiture,” and that he did not “want that book to look pop culture at all.” The book did not sell out of its initial printing of 7000, and fell out of print; almost 5800 copies were sold, almost 60% at a price below suggested retail of $60.  The publisher paid him just over $8000. Except for a handful of private sales to acquaintances, he never sold or licensed individual photos.

Prince altered and incorporated several of Cariou’s photographs into a series of paintings and collages, called Canal Zone, later exhibited at New York’s Gagosian Gallery. Gagosian sold an exhibition catalog that contained reproductions of Prince’s paintings and images from Prince’s workshop. The district court’s injunction, among other things, ordered the defendants to deliver to Cariou all unsold infringing works so that he could destroy them if he wanted (though on appeal he disavowed any such intention).

The court of appeals concluded that fair use did not require Prince to comment on Cariou, the photos, or aspects of popular culture closely associated with Cariou or the photos.

Prince is a “leading exponent” of the genre of appropriation art, “taking photographs and other images that others have produced and incorporating them into paintings and collages that he then presents, in a different context, as his own.”

In the Canal Zone show, Prince altered Cariou’s photographs “significantly,” “by among other things painting ‘lozenges’ over their subjects’ facial features and using only portions of some of the images.”  You can see all thirty challenged works, along with the Cariou photos incorporated into them, on the court’s website.  The portions of the photos used, and the amount of each Prince work they constituted, varied significantly.  In some, such as James Brown Disco Ball, Prince used headshots from Cariou on top of other appropriated images on top of a painted canvas, almost entirely obscuring Cariou’s work.  Prince’s work was also much larger.

In other works, “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.” The catalog published by the Gagosian gallery included all the Canal Zone artworks, including some not displayed in the Gagosian show, and also included photos showing Cariou’s photos in Prince’s studio.

Before the Gagosian show, a gallery owner, Cristiane Celle, contacted Cariou and asked if he’d be interested in discussing an exhibit in New York, expressing interest in Cariou’s pictures of surfers.  They met and discussed a possible exhibit, including prints from Yes Rasta, but didn’t select a date, photos, or any other details. At some point during the Canal Zone show, Celle learned that Cariou’s photographs were “in the show with Richard Prince.” She called him, and when he didn’t respond, she mistakenly concluded that he was “doing something with Richard Prince . . . . [Maybe] he’s not pursuing me because he’s doing something better, bigger with this person. . . . [H]e didn’t want to tell the French girl I’m not doing it with you, you know, because we had started a relation and that would have been bad.”  Celle decided not to put on a “Rasta show” because it had been “done already,” but remained interested in exhibiting his surfer prints.

On appeal, the majority concluded that fair use could be resolved for 25 of the paintings on summary judgment.  “[T]he fair use determination is an open-ended and context-sensitive inquiry.” The court quoted Judge Leval’s influential article stating that “if [the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings – this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”  

The district court mistakenly required Prince’s use to “comment on, relate to the historical context of, or critically refer back to the original works.”  Certainly this is true for many types of fair use, such as satire and parody.  However, there was no requirement of commentary on the original or its author for transformativeness, and a work may be a fair use even if it serves a purpose other than “criticism, comment, news reporting, teaching, scholarship, and research” as identified in the statutory preamble.  Instead, what is required is alteration of the original with new expression, meaning, or message.

The majority’s “observation of Prince’s artworks themselves” convinced it of the transformative nature of 25 of them.  They “manifest[ed] an entirely different aesthetic from Cariou’s photographs.”  Cariou offered “serene and deliberately composed portraits and landscape photographs depict[ing] the natural beauty of Rastafarians and their surrounding environs,” while Prince’s “crude and jarring works” were “hectic and provocative.”  While Cariou’s black and white photos were printed in a standard-sized photo book, Prince created “collages on canvas that incorporate color, feature distorted human and other forms and settings, and measure between ten and nearly a hundred times the size of the photographs.”  Overall, the “composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of Prince’s work.”

Moreover, Prince’s deposition testimony demonstrated his “drastically different approach and aesthetic.” He testified that he “[doesn’t] have any really interest in what [another artist’s] original intent is because . . . what I do is I completely try to change it into something that’s completely different. . . . I’m trying to make a kind of fantastic, absolutely hip, up to date, contemporary take on the music scene.”  His artworks related to a planned “post-apocalyptic screenplay” emphasizing themes of sexual equality, highlighting “the three relationships in the world, which are men and women, men and men, and women and women,” and portraying “a contemporary take on the music scene.”  

The district court focused on Prince’s testimony that he “do[es]n’t really have a message,” that he was not “trying to create anything with a new meaning or a new message,” and that he “do[es]n’t have any . . . interest in [Cariou’s] original intent.”  But that didn’t prevent the court from considering how Prince’s works may reasonably be perceived, which is the appropriate measure.  (I have argued as much!)  Prince didn’t need to claim his works were satire or parody.  “[W]e do not analyze satire or parody differently from any other transformative use.”

While it’s not surprising when an alleged infringer goes to great lengths to explain and defend his use, the fact that Prince didn’t do so here wasn’t dispositive.  “What is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work. 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.”  Thus, the focus was primarily on the artworks themselves.  The court saw 25 of them as transformative as a matter of law, requiring no further factfinding.  (Citing Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012), which affirmed a finding of fair use on a motion to dismiss given the clarity of the transformation, there a parody.)

Not all cosmetic changes to photos are fair use.  As previously held, a derivative work that presents the same material in a new form, such as a book of synopses of TV shows, isn’t transformative.  (Is it adaptive?)  But 25 of the images had a “fundamentally different aesthetic.”  That being so, it didn’t much matter that they were unquestionably commercial (ed. note: copyright has a funky definition of commercial speech). 

Turning next to the effect on the market, it further demonstrated the significant differences between the works. The district court relied on Celle’s decision not to host a Yes Rasta show once she learned of the Canal Zone show and held that Prince damaged actual and potential markets for Cariou’s original work and for derivative work licenses.  But factor four doesn’t “focus principally on the question of damage to Cariou’s derivative market.” The concern is not suppression or destruction of the market for the original or derivatives, but rather usurpation of the market. Moreover, the market for derivative uses includes only those that creators of original works in general would develop/license.  This can occur when an infringer’s target audience and the nature of the infringing content is the same as the original, as with a book of Seinfeld trivia.  But the more transformative the use, the less likelihood of market substitution.

So here.  Celle didn’t decide against a Yes Rasta show because it had already been done, but because she mistakenly believed that Cariou had collaborated with Prince at the Gagosian show.  Prince didn’t usurp the market for the photos.  His audience was very different from Cariou’s, and there was no evidence that Prince’s work usurped either primary or derivative markets for Prince’s works.  Nothing in the record suggested that Cariou would license secondary uses “in the vein of” Prince’s work.  Nor did the record suggest that Prince’s works had any impact on the marketing of the photos. Cariou didn’t aggressively market his work anyway, and Prince’s work “appeals to an entirely different sort of collector”—the wealthy and the famous.  Prince sold works for millions of dollars, while Cariou didn’t, and nothing in the record suggested that anyone would avoid Cariou’s work “as a result of the market space that Prince’s work has taken up.”  Thus, the effect on the market weighed in Prince’s favor.

Given transformativeness, the creativity of Cariou’s work wasn’t important. However, the proportion of the original used (factor three), differed across works.  Some of Prince’s works used the Cariou photos “in whole or substantial part,” and in some works such as Charlie Company Prince didn’t alter the source photo very much.  In others, such as Djuana Barnes, Natalie Barney, Renee Vivien and Romaine Brooks take over the Guanahani, the entire photo was used but also “heavily obscured and altered” so that it was “barely recognizable.”  Copying the entire work doesn’t always weigh against fair use; the extent of permissible copying varies with the purpose and character of the use.
Charlie Company and original Cariou photo:

Djuana Barnes and Cariou photo:

The district court determined that Prince took substantially more than necessary.  “We are not clear as to how the district court could arrive at such a conclusion.”  (We’d first have to know what was necessary in art.)  Anyway, the law doesn’t require a secondary artist to take “no more than is necessary.”  The secondary use can conjure up at least enough of the original to fulfill its transformative purpose; use of key portions of Cariou’s photos was, in 25 instances, okay because Prince transformed them into something new and different, making factor three weigh heavily in Prince’s favor.

However, five works—Graduation, Meditation, Canal Zone (2008), Canal Zone (2007), and Charlie Company—weren’t sufficiently different from the photos for the court to be confident that they were transformative as a matter of law.  “Although the minimal alterations that Prince made in those instances moved the work in a different direction from Cariou’s classical portraiture and landscape photos, we can not say with certainty at this point whether those artworks present a “‘new expression, meaning, or message.’” True, there were “key differences” in things like tint and focus, as well as the lozenges over subjects’ eyes and mouth that made each “appear anonymous, rather than as the strong individual who appears in the original.”

Graduation and Cariou photo:

In Graduation, the lozenges combined with the enlarged hands and electric guitar to create the impression that the subject wasn’t quite human, compared to Cariou’s “human being in his natural habitat, looking intently ahead.” Cariou presented “someone comfortably at home in nature,” while Graduation “combines divergent elements to create a sense of discomfort.” But the court wasn’t certain enough to rule definitively, and it felt the same way about the other four.  Each was different from, but “still similar in key aesthetic ways,” to Cariou’s photographs.  For example, in Canal Zone (2008), Prince put the subject, with lozenges and guitar, on a collaged background, creating the cumulative effect of “the subject in a habitat replete with lush greenery, not dissimilar from many of Cariou’s Yes Rasta photographs”:
Charlie Company prominently displayed four substantially unaltered copies of a Cariou photo, which was aesthetically similar to the photo because it maintained the pastoral background and individual focal point of the original.  “While the lozenges, repetition of the images, and addition of the nude female unarguably change the tenor of the piece, it is unclear whether these alterations amount to a sufficient transformation of the original work of art such that the new work is transformative.” 

The district court was in the best position to make the initial determination of whether the relatively minimal alterations were fair uses, including whether they were transformative.  (What standard is the district court to use?  It sure seems like a new meaning or message may reasonably be perceived.  Aren’t circuit court judges reasonable as a matter of law?)

Judge Wallace (9th Cir., by designation) concurred in part and dissented in part, arguing that the majority mostly got the law right but should have left all the application thereof to the district court on remand.  Plus, he would have allowed the court to consider Prince’s statements, since the court has relied on creators’ statements before, e.g., Blanch v. Koons and Castle Rock (the Seinfeld case).  Brownmark, the case on which the majority relied, was so clear a case that no further evidence other than a “fleeting glance” at the two works was required.  Judge Wallace didn’t believe that the transformativeness here could so readily be determined.  He wanted evidence other than “our own artistic perceptions of the original and secondary works.”  While he disclaimed expertise in art, he couldn’t see how the majority could “confidently” distinguish between the 25 works it blessed and the 5 it didn’t.  Quoting Campbell quoting Bleistein, “[I]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits.’”  (It’s not clear to me that sending it back to the district court, also embodied by a person trained to the law, solves this problem!  But he thinks there might be other evidence that might matter—though what?  Surveys?)


  1. I think there's a considerable tension between the 2d Circuit's analysis here and the Federal Circuit's analysis in Gaylord v. US, the 2010 case rejecting a fair use defense to the Post Office's creation and sale of a stamp using a photo of the Korean War memorial sculpture in DC comprising 19 soldiers.
    How would you compare the two cases?
    - Joe Miller

  2. I always thought Gaylord was wrong. I'm quite comfortable saying this case has it right and that asking artists to produce justifications for their choices is a bad idea. Of course there's also a conflict with the 9th Circuit's more influential Dr. Seuss case.

  3. Laura Heymann10:26 AM

    On Judge Wallace's point, I think evidence as to the works' appeal to different audiences should be sufficient (what I've called here discursive communities: The reactions of the art world, for example, can tell us what we need.

    My sense is that there is already enough in the record such that the Second Circuit could have resolved the remaining works on appeal as well, but I guess I'm not surprised that it felt as if it had to give the district court something to do on remand.

  4. I think Gaylord is unwise, as well. It leaves me wondering: Is there enough tension between the two to make for good cert petition on the question, what does transformativeness require?