THE PRINCE OF FAIR USE: PUTTING THE BRAKES ON TRANSFORMATIVE USE
Graham V Prince
In a week when the “Monkey Selfie” case has been back in the news, another favourite copyright personality, Richard Prince, also returns to the headlines. This follows Judge Sidney Stein’s opinion in Graham v Prince, otherwise known as the "Prince Instagram" case.
Prince used Graham’s photograph “Rastafarian Smoking a Joint” which he sourced from Instagram to create an art work “Untitled (Portrait)”. “Untitled Portrait” was included in an exhibition of “New Portraits” at Gagosian Gallery in New York. It also appeared in promotional material including the exhibition catalogue, a billboard, and in a post on Twitter.
Graham issued proceedings for copyright infringement.
Emboldened by his success in the Cariou litigation Richard Prince sought to have the claim dismissed on the grounds that his use of Graham’s photograph was transformative and therefore amounted to fair use.
Could the claim for copyright infringement be dismissed at an interlocutory stage based on a fair use defence?
Stein J of the US District Court for the Southern District of New York denied Prince’s application to dismiss. In doing so he emphasised that the affirmative defiance of fair use requires the Court to engage in a fact-sensitive inquiry and that there was insufficient evidence before the Court at that stage of the proceedings to do so.
During the course of his opinion, Judge Stein examined the four fair use factors, the Second Circuit’s opinion in Cariou, and applied the fair use factors to the case before him.
- Fair Use
After listing the factors, Stein J noted the importance of transformative use.
“The first factor, and in particular a sub-factor called
“transformativeness,” is at “[t]he heart of the fair use inquiry.” Blanch v. Koons,
467 F.3d 244, 251 (2d Cir. 2006) (citation omitted). If the allegedly offending
use of the original work is “transformative” – that is, if it “alter[s] the first
[work] with new expression, meaning, or message,” Campbell, 510 U.S. at 579 –
it is likely to be “the very type of activity that the fair use doctrine intends to
protect for the enrichment of society,”
- Cariou v Prince
He then goes on to show how transformative use influenced the Second Circuit’s decision in the Cariou litigation.
“The Second Circuit’s decision in Cariou v. Prince, 714 F.3d 694 (2d Cir.
2013) – essentially a prequel to this action, but arising in the context of a
summary judgment motion – illustrates the application of the statutory fair use
factors to cases involving appropriation art.
In its analysis, the Second Circuit placed the most significance on the
transformativeness sub-factor of the first fair use factor – “the purpose and
character of the use,” 17 U.S.C. § 107(1). The majority adopted an objective
viewer test to determine whether the new works were transformative, noting
that “[w]hat 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
- Applying Fair Use to the current case
Stein J examined each of the fair use factors. He concluded:
“The Defendants‘ motion is premised on the supposition that “Untitled” is transformative as a
matter of law and that crediting its transformative character compels a finding
that the other fair use factors also weigh decidedly in defendants’ favor. This
logical chain breaks at the first link; the Second Circuit’s precedents do not
support a finding that Untitled is transformative as a matter of law. Moreover,
because the Court can only review the narrow set of facts that appear in the
Complaint and its appended exhibits – and because all of the plausible factual
allegations contained in those documents must be viewed in the light most
favorable to the plaintiff – the Court cannot conclude that any of the four fair
use factors favors the defendants.”
The decision is interesting for a number of reasons. For artists, it serves as a cautionary tale about protecting your work online. For those of us interested in the fair use doctrine, it emphasises that fair use is a question of both fact and law. While Stein J’s analysis of the Second Circuit’s opinion in Caroiu shows how important transformative use has become in US fair use jurisprudence, it also shows that merely alleging that your work is transformative will not be enough.