Tag: Donald Graham

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).

Graham v. Prince or Art v. Fair Use

Richard Prince is one of the most reviled names in the worlds of photography and copyright.  This is because his career and notoriety are built largely on high-profile “appropriation” art works, which have earned him considerably more income than most artists ever see, including, of course, most of the photographers whose images he has used without permission.  

In September of 2015, artists, copyright advocates, and the web-conscious reacted with strong emotions to New York’s Gagosian Gallery hosting an exhibit called “New Portraits,” comprising 38 pieces in which Prince used people’s Instagram photos without permission.  Each of the nearly 5’ x 6’ canvasses depicts a screen-grab of the photograph within the Instagram interface and with a few comments, including one made by Prince himself.   The headline about this exhibit that seemed to outrage most people was that Prince had appropriated these Instagram photos without permission and then sold them as fine art, reportedly earning $150,000 for at least one of the pieces.  

In response to that story, I wrote a post in May of 2015 arguing that what Prince had done, despite his utter disdain for copyright, was indeed art.  Specifically, I considered the fact that he had “artified” images which had essentially been thrown away—because posting on social media relinquishes individual authorship to an extent—to be the kind of provocative, contemporary statement that clearly follows a well-established tradition in modern art.  But just because the overall purpose of the multiple appropriations Prince made may be defensible as an “artistic statement,” this does not necessarily mean that each appropriation is itself a fair use under copyright law.  And one litigation stemming from this collection of “New Portraits” may prove this point.  

Graham v. Prince

One of the photos Prince used for this series is not the work of an amateur, and was not even uploaded by the photographer himself to Instagram.  Titled “Rastafarian Smoking a Joint” the photograph was captured in Jamaica in 1996 by professional photographer Donald Graham, who—and this is important—also sells his photographs in the fine art market.  In Prince’s “New Portraits” show, the Instagram reprint of Graham’s photo was presented as “Untitled” and was eventually purchased by the Gagosian Gallery itself.  

Graham filed suit for copyright infringement naming both Prince and Gagosian as defendants in December of 2015.  In addition to being used in “Untitled,” Graham alleges that his photo was displayed in marketing material, including a billboard used to promote the series, and that Prince made an infringing use when he posted the photo on Twitter in a defiant (okay, fuck you) response to the lawsuit. 

Prince and Gagosian are of course making a fair use defense and even filed a motion to dismiss on that basis; but the court (S.D.N.Y.) denied the motion in July of 2017, primarily because fair use is a fact-based analysis which is not, in general, properly weighed at the motion to dismiss phase of a lawsuit.  Further, the court’s opinion in its denial of the motion suggests Graham would likely prevail in a fair use analysis and also reveals that the rationale being applied by the defendants asserts (once again) a very broad interpretation of that bugaboo doctrine of fair use known as “transformativeness.”

Akin to the manner in which certain tech companies have tried to argue that merely migrating an appropriated work into a new medium or context is inherently “transformative” (see post here), Prince is presenting a very similar argument in Graham.  His defense amounts to an assertion that, despite his having copied the entire “Rastafarian” photograph with only de minimis alterations, he has “transformed” the work by placing it in a new context—one which asks viewers to think about themes related to social media, but not related to anything specifically expressed in Graham’s original photograph.  This understanding of “transformativeness” does not typically hold up in a fair use defense, but Prince is not the only party to try to promote such an interpretation.

It is not normally kosher to use a whole work without license as a supporting or central asset in an expression that is entirely separate from the meaning or expression embodied in the work being used.  In this regard, I would argue that Prince has used Graham’s photograph in much the same way a non-fiction author might include a protected photograph in her book.  Absent a license, the infringement of a photograph in this case would not be mitigated by the overall merits—including its value to to society—of the book itself.  Similarly, it should not matter what Prince was saying—or trying to say—with the “New Portraits” exhibit; the fact that Graham’s “unobstructed and unaltered photograph is the dominant image” in “Untitled” weighs substantially against finding “transformativeness” under the first factor.

In citing Prince v. Cariou, a case in which Prince prevailed on a fair use in defense for his use of all but five photographs belonging to Patrick Cariou, the court states, “In fact, the ‘alterations’ Prince made in this case are materially less significant than those that were found to be insufficiently transformative to clearly warrant a finding of fair use in Cariou.”  

Further, on the subject of art v. fair use, I would caution that what Prince has truly done to “transform” Graham’s photograph (and all the others he appropriated) is to put his name on it.  Remove Prince himself from the equation, and the perceived value—both artistic and monetary—of these Instagram canvasses drops quite possibly to zero.  Just ask Gagosian what they would pay if, for instance, I offered them the same images; and it is worth noting that the commercial nature of “Untitled,” which weighs against fair use, is substantially intertwined with Prince’s rather thin “transformative” argument, both of which turn on the assumption of some Midas-like quality to his celebrity.

Such metaphysics may be sufficient for the world of fine art (see Banksy shredding his painting the moment it sold for $1.4 million at Sotheby’s), and there is an extent to which the same metaphysics are present in the foundation of authorship in copyright law; but if it were indeed correct to say that the artist with the most marketable name may “transform” the work of another artist simply by moving it wholesale into the domain of his imprimatur, then the boundaries of copyright, and the fair use exception, would have no meaning whatsoever.   

In fact, it was Prince himself who emphasized the (often absurd) relationship between publicity and artistic value when he publicly revoked his authorship of the Instagram canvass he had made from a selfie of Ivanka Trump, and which she purchased for $36,000.  Displeased with Trump’s election, Prince supposedly returned the money to Ivanka and declared the work to be “no longer a Prince,” which begs all manner of legal and metaphysical questions as to whether an artist can truly disavow a work made from little more than a photograph he originally appropriated from the buyer of the work!  (And of course the most likely outcome will be an increase in the work’s monetary value because of the story.)

A Few Unusual Details

Graham v. Prince also entails a few nuances that do not often present themselves in copyright cases.  For one thing, “Rastafarian Smoking a Joint” was not registered at the Copyright Office at the time Graham filed suit, though it was registered by the time the billboard was made and certainly before Prince posted the photo in his allegedly infringing tweet.  Although it is a general rule of thumb that authors who do not register works have a hard time proceeding with litigation, this case illustrates that Graham may be able to prove actual damages (i.e. losses) and, more likely, that he may be awarded some portion of profits generated by both Prince and Gagosian based partly on the unlicensed exploitation of his work.  

Another aspect of this case that caught my eye was that if Graham prevails, part of his relief may include a court order to have the infringing works forfeited and/or destroyed.  This remedy dates back at least as far as the first copyright statute of queen Anne (1710), which provides for infringing copies of a book to be turned over to the proprietor, “who shall forthwith damask and make waste paper of them;” but it is not a remedy we see very often in the modern, let alone digital, world where infringers are usually enjoined from continuing some practice.  

But in the fine art world, where both Graham and Prince have market value that clearly intertwines name (i.e. brand) and creative expression, the very existence of “Untitled” and its use in promotional materials by Gagosian may be viewed as an appropriation that fails under the fourth factor of the fair use test, which assess potential market harm to the original work.  Prince has argued the opposite—that his use in fact elevates the market potential for Graham’s photograph, but I suspect a court will not find this persuasive if this case proceeds.  

Of course, if in fact Prince’s “Untitled” is destined to be destroyed, I suppose he and Graham could collaborate and ask Banksy to shred it, which will then make it worth a cool million at Sotheby’s.  At that point, the work will arguably be Banksy’s, which only further emphasizes my point that copyright law cannot be quite as ambiguous as the mercurial nature of what we call, or don’t call, “art.”