Category: Photography

Richard Prince “New Portraits” Show Was a Big Fair Use Error

Yesterday, New York federal judge Sidney Stein ruled that Richard Prince, one of the most famous appropriation artists in the world, infringed the copyright rights of photographers Donald Graham and Eric McNatt by using their works in the controversial “New Portraits” series. Prince and his co-defendant, gallery owner Lawrence Gagosian, are ordered to pay Graham and McNatt five times the sale price of Prince’s infringing canvases, plus unspecified expenses. Further, Prince is “enjoined from reproducing, modifying, preparing derivative works from, displaying publicly, selling, offering to sell, or otherwise distributing the” photographs belonging to Graham and McNatt.

The “New Portraits” canvasses sold for prices ranging between about $40,000 and $150,000, indicating that the combined awards will be substantially higher than maximum statutory damages in an outcome that highlights the significance of the Supreme Court decision in Andy Warhol Foundation v. Lynn Goldsmith. I think it’s fair to say that the over-expansive interpretation of “transformativeness” under the fair use factor one analysis is now settled, and independent creators—perhaps especially those who are not celebrities—will benefit as a result.

The “New Portraits” series stirred outrage in the Fall of 2014, when Prince and New York’s Madison Gallery first exhibited the 5’ x 6’ canvasses, the hearts of which were made by copying images that both amateurs and professionals had posted to Instagram. Subsequently, the show moved to the Gagosian Gallery, where the “Instagram series” continued to make headlines with the Prince canvasses selling to collectors for prices many found shocking considering that nearly the entire work being sold was somebody else’s photograph.

Opinions vary about the “New Portraits” series as an artistic statement, but the question of copyright infringement vs. fair use became clearer on May 11, 2023, when Judge Stein denied Prince’s motion for summary judgment (MSJ), and then the matter became even sharper about a week later with the Warhol decision. As the district court stated in May:

A close comparison reveals that Prince enlarged the images when he printed them onto the canvases, cropped portions of the photographs, added the Instagram frame, and included his own comments. But these alterations do not begin to approach those found to be transformative as a matter of law by the Second Circuit.

Even before Warhol, the district court found unpersuasive Prince’s shifting theories as to why his use was transformative. Arguing at the outset that the purpose of “New Portraits” was just “art and fun,” Prince later tried to hone his defense, averring that the series was a comment about social media and culture. Indeed, that commentary was present in the show—I said as much when the story was new—but that kind of commentary does not make the uses at issue fair uses.

As the district court stated in denying Prince’s MSJ, and then SCOTUS affirmed resoundingly in Warhol, the use of a protected work must express some “critical bearing” on the work used. With that clear finding in a Supreme Court case so obviously analogous to the “New Portraits” case, Prince could not have expected to prevail had he proceeded to trial. His canvasses titled Portrait of Rastajay 92 and Portrait of Kim Gordon express no comment of any kind about Graham’s Rastafarian Smoking a Joint or McNatt’s Kim Gordon 1 respectively.

“Phony fraud photographers keep mooching me. Why? I changed the game.”

– Tweet by Richard Prince, 2017 –

Photographers everywhere will celebrate this outcome, not only as a validation of their copyright rights, but also because Richard Prince himself is hardly modest about his appropriations or his presumed right to make them. Amid a 2016 tweet storm over the use of Graham’s photograph, Prince wrote defiantly:  “U want fame? Take mine. Only thing that counts is good art. All the everything else is bullshit.” To this, an art critic friend Jerry Saltz added, “Amen. These litigious ‘artists’ ‘photographers’ are so middle-class conservative it shivers the timbers. Neo-know-nothings.” Well, timbers shivered, I guess. Turns out that knowing nothing about fair use can be costly.

On that point, it is highly significant that this case does not end in a confidential settlement, in which the plaintiffs would ordinarily receive more money. According to plaintiff’s attorney David Marriott of Cravath, Swaine & Moore, Graham and McNatt both wanted a public ruling by the court to send a message to the creative community that what Prince had done was categorically not allowed under the fair use exception.

Graham’s “Untimely” Registration

Of note, Donald Graham’s resolution in this case is another example of the importance of timely registration with the U.S. Copyright Office. At the time Prince first exhibited Rastafarian Smoking a Joint, the photograph, created in 1996, was not registered. This could have barred Graham a path to federal litigation, or at least deny him access to statutory damages, which would require that he prove actual damages (i.e., loss of income). Graham registered the photograph in October after the Madison show went up that September. That was too late to effectively litigate the original infringement, but Prince and Gagosian subsequently made infringing use of Rastafarian by producing a billboard and art book, which together violated Graham’s rights of reproduction, display, and distribution.

Warhol Reins in Prince

As discussed in other posts, there are aspects of the Warhol case that remain food for thought, if not litigation—namely the unanswered, substantial similarity question as to whether Warhol copied the protectable expression in the Goldsmith photograph. But the importance of that decision was that it resharpened the contours of the transformative consideration after many years in which defendants have tried to present vague and overbroad definitions that would deprive the fair use doctrine of all meaning.

Richard Prince’s attempt to fit the “New Portraits” project into a transformative finding was a classic and high-profile example of pushing the boundary of the fair use doctrine beyond reason. And it is hard to miss the cultural significance of the Court’s posthumous check on Andy Warhol ultimately tempering the hubris of Richard Prince. Both artists benefitted substantially from the metaphysics of merely attaching their names to works, including creative expressions they did not really make. As such, the judgment in Graham and McNatt’s favor is a satisfying punctuation to this saga worthy of a toast. Cheers!

Sedlik v. Kat von D After Warhol

On August 7, photographer Jeff Sedlik and tattoo artist Katherine Von Drachenberg (Kat Von D) filed motions for reconsideration of summary judgment, with both sides arguing that their allegations are favored by the Supreme Court’s decision in Goldsmith v. Warhol delivered on May 18, 2023, finding for plaintiff Lynn Goldsmith. The parties also filed oppositions on August 21. I’ll cut to the chase and assert that to the extent Warhol is instructive here, it is impossible to see how it helps Kat Von D’s fair use defense as a matter of law.

I have written about this case before, but to repeat the background, Kat Von D (owner and operator of High Voltage Tattoo) is a celebrity tattoo artist with millions of fans and followers. In April of 2018, she tattooed a copy of Jeff Sedlik’s portrait of Miles Davis onto the arm of Blake Farmer, a lighting tech, with whom she had worked on a film project. Kat Von D did not charge Farmer for the tattoo, but she did publicize its making through her social media accounts, and these promotional posts included the Davis photograph, as shown here:

Sedlik reached out to Kat Von D to discuss her unlicensed use of the Davis photograph, but receiving no reply, he filed suit against her and High Voltage for copyright infringement (both for the tattoo and the display of his photo in the promotional materials). Kat Von D contends that tattoo artists are not required to license the images they use. Notwithstanding the validity of that claim, however, she argues that the Davis tattoo was a fair use and, further, that the outcome in Warhol is “new law” that now supports her defense. Conversely, Sedlik argues that Warhol rejects Kat Von D’s fair use claim, stating that her argument is “very similar” to that of Andy Warhol Foundation.

Tattoos Are Not Unique Re. Licensing

First, let’s dispense with the proposal that tattoos are generally exempt from a requirement to license protected images. Although tattoos are a distinctive form of image rendering in that they are permanently fixed on a person’s body, there is no exception in copyright law to which Kat Von D et al. can point to justify avoiding a requirement to license protected visual works. Although Sedlik presents evidence that licensing images for tattoos is common practice, and that he has personally licensed his photos for many uses, including tattoos, the requirement to obtain a license is not predicated on these facts, but rather on a core principle of copyright law that it does not protect a use-it-or-lose-it bundle of rights.

Sedlik could have created the Davis portrait as a work of fine art, sold a few limited-edition prints, and declined to license the image for any other purpose, and the legal considerations in this case should be the same.[1] A copyright owner retains the exclusive right to permit or deny the use of a work for any reason, at any price, and at any time during the term of protection. In fact, perhaps the most prominent, relevant case in which a court held that a rightsholder needed to be in a market to show potential harm was Cariou v. Prince. But Cariou was not only decided in a different (i.e., non-controlling) circuit, it is arguably dead law after Warhol.

But this gets ahead of the narrative, jumping into factor four considerations, so let’s return to factor one (the purpose of the use) and the effect of Warhol on Kat Von D’s fair use defense. Because to put it bluntly, her post-Warhol motions make a hash of the relevant aspects of that decision—even implying that the commercial consideration weighs more heavily than the transformative consideration. This inverts the analysis, but in any order of consideration, her use is clearly commercial and even more clearly not transformative.

The Tattoo is Commercial

Citing Warhol, Kat Von D alleges that Sedlik and the district court erroneously conflated the commercial nature of the social media posts with the allegedly non-commercial making of the tattoo itself. “Under the new rule set forth in Warhol, each of those challenged uses must be analyzed separately and assessed on their own terms,” the KVD motion states. In seeking to separate the tattoo’s production from promoting herself, Kat Von D then argues that the tattoo was made for a non-commercial purpose because she did not charge Mr. Farmer for the work. This legerdemain is aided by the misdirection in asking the court to look at commerciality first and transformativeness second,[2] but even if the promotional uses are separately analyzed for alleged infringement, this does not mean they cannot serve as factual evidence of a commercial purpose in the initial making of the tattoo.

Advertising or promoting an enterprise or a brand (Kat Von D is a brand) with the use of a protected work is sufficient to find that the user gained some “advantage,” and this is generally held to be a commercial use as a matter of law. Both for-profit and not-for-profit entities give away goods and services all the time and usually obtain some PR value by making these donations. In this same light, Kat Von D cannot escape the commercial nature of the Davis tattoo simply because it was a “gift” to Mr. Farmer.[3]

The widespread and sophisticated promotion of the tattoo, reaching millions of followers, can only be viewed as adding value to the Kat Von D brand. So, even if the promotional images were found, under separate analysis, to be non-infringing, they nevertheless demonstrate that the production of the tattoo served a commercial purpose. But more importantly, even if Kat Von D’s use of the Davis photo were found to be non-commercial, the lack of transformativeness must still find that factor one favors Sedlik. And Warhol makes this abundantly clear.

The Tattoo is Not Transformative (Before or After Warhol)

Kat Von D misreads the meaning of “purpose” under factor one and overlooks the most significant aspect of the holding in the Warhol decision. Because the Supreme Court found that the Warhol screen and the Goldsmith photo served the same “illustrative purpose” (in context to the facts at issue), Kat Von D argues that this means Sedlik’s original job to photograph Davis to illustrate a jazz magazine is distinguishable from her non-illustrative, “transformative” intent to make a tattoo. This strains the Court’s discussion in Warhol and tries to revive the argument that using a work in a different medium or context is transformative. This was an error even before Warhol.

The purpose of Sedlik’s photograph is to be a portrait of Miles Davis. It does not matter whether the first use of that portrait was to illustrate a magazine article, to hang in a fine art gallery, to be printed in a book about Miles Davis, etc. If Kat Von D’s premise were the foundation for transformativeness, it would be tantamount to finding that nearly any adaptation of a work to a new medium or context (e.g., book to movie, movie to video game) is transformative favoring fair use.

Because this would swallow the author’s exclusive right to prepare derivative works, the Supreme Court’s reaffirmation of the boundary between transformative use and derivative works was arguably the most important aspect of the Warhol opinion. Specifically, the Court restated the principle (citing Campbell) that to find transformativeness, the purpose in using a protected work must include some “critical bearing” on the work used. “Critical bearing” means some element of comment upon the used work—a claim that Kat Von D cannot make, which may be why her briefs omit this critical result in the Warhol decision.[4]  From the Opinion:

The asserted commentary [by Warhol] is at Campbell’s lowest ebb. Because it “has no critical bearing on” Goldsmith’s photograph, the commentary’s “claim to fairness in borrowing from” her work “diminishes accordingly (if it does not vanish).”

Some Difference in Expression is Not Transformative

Kat Von D also overstates the significance of alleged expressive distinctions between her tattoo and Sedlik’s photograph, noting that at summary judgment, “The Court found that Defendants carried their burden of showing that the Tattoo ‘has a purpose or meaning distinct from the Portrait by virtue of the way Kat Von D changed its appearance to create what she characterizes as adding movement and a more melancholy aesthetic.’” [5] In my view, the district court erred in its finding here, but even if the question was determined to be a triable issue of fact before Warhol, the question should evaporate after Warhol because the essential element of “critical bearing” is clearly absent from the Kat Von D tattoo just as it is absent from the Warhol screen(s).

Further, any claim to expressive distinctions between the tattoo and the photograph that may find shaky purchase on factor one would be doomed to fall under analysis of factor three, which considers the amount of the original work used. Any court should hold that the tattoo copies the “heart” of Sedlik’s photograph and that many of the distinctions between the two works are largely the result of adaptation from one medium to another.[6] Adaptation from one medium to another is typically evidence that a derivative work has been made, and in this case, it is an unlicensed derivative that is not allowed by fair use.

Threat to the Potential Market

On the fourth factor analysis, regardless of whether Sedlik has previously licensed his photos for making tattoos, Kat Von D’s failure to obtain a license constitutes a threat to the “potential” market for the photograph. Here, Kat Von D argues that the tattoo cannot serve as a substitute for, say, photographic reproductions of the image, and this is true but irrelevant. The threat is to potential licensing opportunities for the image, and unless there is a foundation for finding that tattoo artists are exempt from copyright obligations, the tattoo market remains a licensing avenue for Sedlik and all other visual artists.

Further, because Kat Von D is a celebrity, other tattoo artists will follow her example and, likely, view the outcome of this case as instructive. Thus, under Ninth Circuit precedent in (among other cases) McGucken v. Pub Ocean, the district court should recognize the factor four holding that if tattoo artists “carried out in a widespread and unrestricted fashion” the same conduct with other visual works, this would “destroy” a “licensing market.”

Freehand Drawing, Bodily Integrity, and Other Distractions

Kat Von D directs the court’s attention (and that of a putative jury) to her testimony that she inked the image of Miles Davis freehand, but this is irrelevant. She admits to first tracing Sedlik’s photograph (and there is video evidence of same) and then doing the inking freehand, and she will presumably want to make a show of all this process to a jury. But none of it matters.

Facts related to the process of making a copy of a protected work are only relevant to the alleged infringer’s intent and may be evidence of access to the work used. The method of copying, no matter how impressive or mundane, has no bearing on the questions of infringement or fair use. Here, the tattoo is clearly a copy of the photograph, and to the extent Kat Von D’s process matters at all, it only serves as evidence that her copying was intentional.

There has also been some discussion among legal pundits and in the blogosphere about bodily integrity and the nature of tattoos, and this is another distraction from the salient issues. In addition to the fact that Sedlik has not filed suit against Farmer nor sought any form of injunctive relief whereby the tattoo might be ordered removed from his arm, this case is not an attack on the tattoo industry or on tattoo wearers. This case is about the need to obtain a license to copy protected works (in any medium), and if a celebrity like Kat Von D fails to honor that principle with a high-profile image, this sets a poor example for less well-known parties appropriating other works.

From my reading, this litigation contains a lot of unnecessary discussion about artistic process and subjective meaning (e.g., Farmer’s feelings about Miles Davis) that would likely be immaterial even in a more complex case. But this isn’t a complex case. A child can recognize that the tattoo is a very faithful copy of the heart of the photograph, and the Supreme Court in Warhol has affirmed that the tattoo is not a fair use. I fail to see how this case is more difficult than that.

Disclosure: The copyright advocacy world is quite small. I know Jeff Sedlik and have spoken to him about copyright matters in general and about the publicly available record in this case. In addition to his work as a photographer, he has served as an expert witness in over 450 copyright cases, including for Lynn Goldsmith. He is the founder of PLUS Coalition and is a board member of Copyright Alliance.

[1] e.g., The Beastie Boys sued GoldieBlox in 2013 for use of one of its songs because the band had never allowed commercial/advertising uses of its music.

[2] As Campbell makes clear, transformativeness is more determinative of fair use than commercial use, and the factor one analysis in Warhol rests substantially on Campbell.

[3] Also, although Sedlik does not allege barter, it is notable that Farmer worked for Kat Von D and then received what would be a rather expensive tattoo as a “gift.”

[4] To clarify, any claim to “comment” about Davis, about Farmer, about jazz, etc. is outside the standard for “critical bearing.” The comment must be about the work used, e.g., to critique the photograph.

[5] Notably, Warhol’s claim to “new expression” is stronger than Kat Von D’s.

[6] For instance, Sedlik’s solid black background is likely not achievable nor desirable on human skin.

Court in Richard Prince Case Affirms that “Transformative” Has Boundaries

The big battle over application of the fair use defense has been focused on the highly subjective, often confusing, doctrine of “transformativeness,” which is addressed under factor one of the four-factor test. Factor one considers the purpose of the use, including whether the purpose is commercial; and over the past decade or so, several high-profile defendants have sought to broaden the concept of a “transformative” purpose to encompass any use of a work that results in any new development, from fine art to technology.

The courts have largely rejected this over-broad approach because it would render fair use a boundaryless and, therefore, meaningless aspect of copyright law. And in an opinion delivered last week, we see why it is essential to draw contours around the “transformativeness” doctrine because the “purpose” inquiry so often controls the rest of the fair use analysis.

In a case that I frankly did not realize was still active, the S.D.N.Y. affirmed the significance of a meaningful “transformativeness” consideration when it denied the fair-use-based motion for summary judgment (MSJ) to famed appropriation artist Richard Prince and co-defendant Gagosian Gallery. At issue are photographs taken by Donald Graham and Eric McNatt, which Prince reproduced, displayed, and offered for sale as part of his “New Portraits” series in 2015. The story went viral when Prince created (and sold for six-figure prices) the series of canvasses made from enlarged screen grabs of Instagram posts. Because the main expression in each of the canvasses is someone else’s visual work, which Prince used without permission, photographers and other artists responded with mixed, but generally negative, feelings about the exhibit.

Although I discussed the idea that the “New Portrait” series itself was an artistic and engaging statement about social media, I also noted, regarding the Graham complaint, that finding creative significance in the exhibit itself does not mean that any of the works copied were fairly used. According to the opinion released last week, the years since the MSJ was filed have entailed a lengthy discovery process during which Prince apparently changed his “purpose” statement from a nondescript intent “to make art” to a more assertive claim that the “New Portraits” series is a comment about social media and its role in contemporary culture.

Inconsistency in testimony notwithstanding, the court found Prince’s elaborated statement of intended social message no more persuasive that his use was “transformative” than his originally stated intent to just “make art.” Citing substantial circuit precedent, the district court reiterated the opinion that the user of a protected work must in some way comment upon the work used, not merely use a work to make a statement about something else.

…where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’ … is insufficient to render a work transformative.[1] 

The court found that Prince’s latter testimony about the intent of the series only reinforced the fact that he could have selected any of the millions of images posted to Instagram and that he in no way commented upon or added new expression to the photographs made by Graham and McNatt. Combine the finding that the appropriator could have selected any work for his purpose with the fact that the works used happen to convey the heart of the follow-on expression, and then find the purpose to be commercial, and factor one is likely fatal to the defendant’s claim of fair use. In fact, this opinion, while not articulating anything new, is a good example of how the “transformative” question affects other dispositive aspects of the fair use inquiry.

As usual, the court addressed factor two (nature of the work used) as a simple, binary question finding the photographs in suit to be expressive in nature and, so, favors the plaintiffs with scant discussion on the matter. The factor three analysis (amount of the work used) restates that while it is possible to make fair use of a whole work, this inquiry is dependent upon factor one. “Because Prince’s use is not transformative, his use of nearly the entirety of plaintiffs’ photographs cannot be deemed ‘reasonable,’” the opinion states. [2] The court found that the fourth factor (potential market harm to the work used), “weighs slightly in favor of fair use” based on evidence indicating that Prince’s use does not threaten the market for the Graham and McNatt photographs, but…

…Prince has failed to show that other artists would not be emboldened by his success in declining to compensate plaintiffs for his non-transformative use, which negatively affects the value of the original works.

So, with three factors favoring the plaintiffs and the fourth maybe “partially” supporting the defendants, Prince and Gagosian lose on the MSJ. The consistency of this opinion with Second Circuit caselaw could mean that this litigation is about to settle. On the other hand, the Supreme Court has yet to drop its later-than-expected opinion in Andy Warhol Foundation v. Lynn Goldsmith—another Second Circuit case presenting a similar question on the meaning of “transformativeness.”

Warhol is more complicated than the “New Portraits” case for several reasons, including the fact that it highlights the tension between “transformative” for an unauthorized fair use, and “transformative” for an authorized derivative work. But AWF’s argument is similar to Richard Prince’s—namely that Warhol’s use is “transformative” because it expresses a “new meaning or message.” Thus, the Supreme Court may also find that this is too broad a definition for a prong of the inquiry that so often carries the day. As argued in an older post on Warhol, requiring that some comment on the work used must be present in the follow-on work would be consistent with the purpose of the fair use exception, and it would inject some long-needed clarity into a doctrine that has caused much confusion for all parties.

[1] Warhol v. Goldsmith citing Rodgers v. Koons (2nd Cir.)

[2] Citing Cariou v. Prince (2nd Cir).