The Second Circuit's recent decision in Cariou v.
Prince, Docket No. 11-1197-cv (2d Cir. April 25, 2013),
clarifies that copyright fair use is not limited to works that
offer some "comment" on copyrighted content. The court
held as a matter of law that 25 of well-known appropriation artist
Richard Prince's paintings and collages that incorporated
photographs from Patrick Cariou's book Yes Rasta were
"fair use" as the works were "new and
different" and therefore transformative. The opinion also
highlights how lack of evidence in the record as to potential
markets and licensing can work against the copyright owner claiming
infringement, and how deposition testimony of an alleged infringer
can be used to support a fair use defense.
Richard Prince used 35 photographs torn out of purchased copies of
Yes Rasta in various artworks—at times using an
entire photograph but painting over certain aspects and adding
material. Prince had testified in a deposition that his work did
not really have a message, nor was he trying to create anything
with a new meaning or new message. The district court held that
Prince had infringed Cariou's copyrights because his use of the
photographs in his artworks did not "comment" on the
original work, and therefore was not fair use.
The Second Circuit vacated this decision as too narrow, clarifying
that a work does not need to "comment" on another work to
qualify as fair use. It dismissed any significance of the testimony
and found the critical question to be how the work in question
appears to the reasonable observer, not what an artist might say
about his or her work. Accordingly, the correct test in this case
was whether Prince's work was transformative—having a new
expression, meaning, or message—when compared to Cariou's
photographs.
The court found that 25 of Prince's works constituted fair use
because they "have a different character, give Cariou's
photographs a new expression, and employ new aesthetics with
creative and communicative results distinct from
Cariou's," including ink jet printing, acrylic paint, and
pasted-on elements. Prince's works were also several times the
size of Cariou's classic photographs. The court cautioned that
merely modifying a work does not necessarily make it
"transformative" and used an example of a derivative work
that merely presents the same material in a new form, such as a
television show based on a book.
In considering the other statutory copyright fair use factors, the
court also emphasized that Cariou's classic black and white
photos had a very limited distribution and were not aggressively
marketed, while Prince's appropriation artworks were sold for
millions of dollars and often to celebrities. Key to the
court's analysis was that there was no evidence that
Prince's artworks had "usurped" the market space that
otherwise would have belonged to Cariou. There was nothing in the
record to suggest Cariou would ever develop or license secondary
uses of his work similar to Prince's artworks, nor was there
any evidence that the target audience of Prince's work was the
same as Cariou's.
The court remanded to the district court for consideration whether
Prince had sufficiently "transformed" the original
photographs in five other works to constitute fair use. In each of
these five photographs, the alterations when compared to the
original were minimal, such as merely painting blue lozenges over
the subject's eyes and mouth or pasting a picture of a guitar
over the subject's body, and similar in key aesthetic ways. The
dissent commented that after clarifying the legal standard, it
would have remanded the entire case to the district court to apply
the facts as to each of the 30 works.
This decision emphasizes the critical fact and record development
by outside counsel from the beginning of a case. While the Second
Circuit disregarded Prince's deposition testimony as to his
intent, it found persuasive the lack of testimony or evidence
regarding the potential market for Cariou's works, a key factor
in the fair use analysis to find that Prince had not usurped the
market for Cariou's works.
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