Appropriation Art Need Not ‘Comment On' Original Work to Be Fair Use, 2d Cir. Says

Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...

By Tamlin H. Bason


The vast majority of appropriation artist Richard Prince's works that were based on photographer Patrick Cariou's photographs of Rastafarians were transformative, and thus protected under the Copyright Act's fair use doctrine, the U.S. Court of Appeals for the Second Circuit held April 25 (Cariou v. Prince, 2d Cir., No. 11-1197-cv, 4/25/13).

The appeals court reversed a district court's finding of copyright infringement and it also vacated the lower court's sweeping injunction that had authorized the destruction of the infringing artwork. The court said that a visual comparison of the 30 works in question reveals that “twenty-five of Prince's artworks manifest an entirely different aesthetic from Cariou's photographs.” Accordingly, those works constitute fair use under Section 107 of the Copyright Act, the court said. In so holding, the court rejected the lower court's determination that in order to be fair use a secondary piece of art must “comment on” the original work. There is no such requirement in the law, the Second Circuit said.

The court, however, said that five pieces of Prince's work are not different enough to allow an appeals court to make a fair use determination. The court thus remanded these works back to the district court to determine whether Prince's “relatively minimal alterations” constituted fair use.

Concurring with the majority's determination that the district court applied the wrong fair use standard was Judge John Clifford Wallace of the U.S. Court of Appeals for the Ninth Circuit, sitting by designation. However, the district court, not the appeals court, is best suited to make a determination on whether each work-in-suit constitutes fair use under the applicable standard, Wallace said. He therefore dissented in part, saying that all 30 works should have been subject to the remand.

Competing Shows Lead to Lawsuit

Patrick Cariou is a photographer who spent six years photographing Rastafarians in Jamaica. In 2000, he published a book of photographs titled Yes, Rasta. He is the sole copyright holder in the images that appear in the book.

Richard Prince is an “appropriation artist” who has exhibited works at numerous museums and other institutions. He created a series of works titled Canal Zone featuring part or whole portions of pictures from Yes, Rasta, attached to a wooden backer board with painting over portions of the photos. In total, Prince used 41 photos from Yes, Rasta for his work.


The law imposes no requirement that a work comment on the original or its author in order to be considered transformative.  



--Judge Barrington D. Parker, Second Circuit

In addition to displaying his artwork at the Eden Rock hotel in St. Barths, West Indies, in 2007, Prince showed 22 of his 29 Canal Zone paintings at Gagosian Gallery Inc., a New York art gallery run by Lawrence Gagosian that represents Prince and markets the artwork he creates. The gallery also published and sold an exhibition catalog from that show, similarly titled Canal Zone, containing reproductions of many of Prince's Canal Zone paintings.

Cariou also was in negotiations with gallery owner Christiane Celle, who planned to show and sell prints of the Yes, Rasta photos at her Manhattan gallery before the Canal Zone's show opening. Planning to exhibit between 30 and 40 of the photos from Yes, Rasta, Celle cancelled the show when she became aware of the Canal Zone exhibition at the Gagosian Gallery, not wanting to capitalize on Prince's success and notoriety and because it “had been done already.”

Cariou sued Prince, Gagosian Gallery, and Lawrence Gagosian for copyright infringement. Both sides moved for summary judgment, with Prince and the Gagosian defendants seeking a determination that their use of the photographs was a fair use under 17 U.S.C. § 107.

Artist, Gallery Found Liable for Infringement

Judge Deborah A. Batts rejected Prince's fair use defense, finding that in order for a work to be transformative--and thus satisfy the first prong of the fair use defense--it must “in some way comment on, relate to the historical context of, or critically refer back to the original works.” 784 F. Supp. 2d 337, 98 USPQ2d 1318 (S.D.N.Y. 2011).

The district court held that Prince only used Cariou's photographs for a commercial purpose, and thus his use was not transformative. The court also found the Gagosian defendants directly, vicariously, and contributorily liable for the infringement.

Batts then granted Cariou a permanent injunction and gave him the option of impounding or destroying the unsold works. The court also ordered the defendants to contact the current owners of Prince's works--some of whom paid over $1 million for a single painting--and inform them that the paintings could not be lawfully displayed.

The defendants appealed. In addition to taking issue with the district court's transformative use analysis, the defendants also criticized the court for issuing a permanent injunction without first considering the equitable factors set forth by the U.S. Supreme Court in eBay Inc. v. MercExchange L.L.C.,21 547 U.S. 388, 78 U.S.P.Q.2d 1577 (2006) (97 PTD, 5/19/06).

Amicus briefs were filed by a number of interested parties. Briefs in support of Prince and the Gagosian defendants were filed by a consortium of museums and art directors, and by the Andy Warhol Foundation for the Visual Arts. The American Society of Media Photographers and the Picture Archive Council of American filed a brief in support of Cariou, and Google filed a neutral brief in which it expressed its concerns over the district court's narrow transformative use determination.

'Comment On' Is Not a Fair Use Prerequisite

The district court's determination that fair use is reserved for appropriation art that “comments on” the original seemed doomed during the Second Circuit's May 21 hearing of the case (102 PTD, 5/29/12).

Indeed, the three appellate judges appeared less interested in determining whether the district court's fair use standard was correct than they were in determining how best to remedy the district court's application of an erroneous standard.

Even Cariou's attorney, Daniel J. Brooks of Schnader Harrison Segal & Lewis, New York, consented during oral argument that the district court had applied the wrong standard. He argued, however, that the appeals court nonetheless had an ample record in front of it on which it could affirm the district court's injunction, if not its reasoning.

In its April 25 opinion, the Second Circuit soundly rejected the district court's “comment on” requirement. It said:  

The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute.  



Quoting Campbell v. Acuff-Rose Music Inc., 510 U.S. 569, 576, 29 U.S.P.Q.2d 1961 (1994), Judge Barrington D. Parker said, “as the Supreme Court as well as decisions from our court have emphasized, to qualify as a fair use, a new work generally must alter the original with 'new expression, meaning, or message.' ”

Comparison of Works Shows Prince Transformed Photos

The appeals court then conducted a side-by-side comparison of Prince's artwork and Cariou's photographs. Such a review, the court said, shows that 25 out of Prince's 30 images transform the works that they are based on. The court said: 

These twenty-five of Prince's artworks manifest an entirely different aesthetic from Cariou's photographs. Where Cariou's serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince's crude and jarring works, on the other hand, are hectic and provocative.  



In reaching its transformative use determination, the court declined to give any weight to Prince's own deposition testimony where he undermined his transformative use argument by stating that he was not “trying to create anything with a new meaning or a new message.”

Whether a work transforms the original is an objective determination, the court said. Thus, “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.”

Applying the objective standard to the works in question here it is clear that 25 of Prince's works are “transformative as a matter of law,” the court said.

Because the works are so transformative, the remaining fair use factors also weighed against a finding of copyright infringement with respect to these 25 works, the court said. Notably, “Although there is no question that Prince's artworks are commercial, we do not place much significance on that fact due to the transformative nature of the work,” the court said.

Prince Did Not 'Usurp' Market

The Second Circuit also criticized the district court for placing so much emphasis on Celle's assertion that she cancelled Cariou's scheduled show after she learned of the Canal Zone exhibition. The district court assumed that this demonstrated that Prince's derivative works were damaging the market for Carious's original photographs. This, the appeals court said, was an erroneous assumption.

“We have made clear that 'our concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps the market of the original work,' ” the court said, quoting Blanch v. Koons, 467 F.3d 244, 251-52, 80 U.S.P.Q.2d 1545 (2d Cir. 2006) (211 PTD, 11/1/06). The court noted that in this case Celle cancelled the show because she believed--mistakenly--that the Canal Zone exhibit was a collaboration between Cariou and Prince. The show was not cancelled simply because Prince had used Cariou's works, the court said.

Moreover, “Prince's audience is very different from Cariou's, and there is no evidence that Prince's work ever touched--much less usurped--either the primary or derivative market for Cariou's work,” the court said.

Portion of Work Used Not Dispositive

The final fair use factor the court looked at, which is the third statutory factor under Section 107, assesses the amount and substantiality of the portion used in relation to the copyrighted work as a whole. The district court had determined that Prince's “taking was substantially greater than necessary.”

The appeals court once again rebuffed the district court for applying the wrong standard.

“We are not clear as to how the district court could arrive at such a conclusion,” the court said. “In any event, the law does not require that the secondary artist may take no more than is necessary.” Rather, “The secondary use 'must be [permitted] to conjure up at least enough of the original' to fulfill its transformative purpose,” the court said, quoting Campbell.

There is no question that all of the subject works utilized Cariou's photographs to some degree, the court said. But “in twenty-five of his artworks, Prince transformed those photographs into something new and different and, as a result, this factor weighs heavily in Prince's favor.”

Five Works Remanded

The court then identified five photographs that it said “do not sufficiently differ from the photographs of Cariou's that they incorporate for us confidently to make a determination about their transformative nature as a matter of law.”

The court said: 

We believe the district court is best situated to determine, in the first instance, whether such relatively minimal alterations render [the five works] fair uses (including whether the artworks are transformative) or whether any impermissibly infringes on Cariou's copyrights in his original photographs.  



Scope of Injunction Criticized

During the May 21 oral arguments all three judges seemed concerned with the breadth of the injunction. In particular, the portion of the district court's injunction order that authorized the destruction of appropriation art pieces that the court determined were infringing “seems like something that would appeal to the Huns or the Taliban,” Parker said during arguments.

The Second Circuit vacated the injunction, though by remanding five pieces of art back to the district court it acknowledged that the district court may once again have an opportunity to grant injunctive relief. In a footnote, it suggested that the district court grant such relief sparingly. It said:  

In the event that Prince and Gagosian are ultimately held liable for copyright infringement, and in light of all parties' agreement at oral argument that the destruction of Prince's artwork would be improper and against the public interest, a position with which we agree, the district court should revisit what injunctive relief, if any, is appropriate.  



Judge Peter W. Hall joined the court's opinion.

Dissent: Remand All 30 Works

Wallace argued in his dissent that the appeals court overstepped its bounds by determining that 25 of the works were transformative. Quoting the majority, he said: 

In my view, because the district court takes the primary role in determining the facts and applying the law to the facts in fair use cases, after which we exercise our appellate review if called upon to do so, I conclude that as to each painting, 'the district court is best situated to determine, in the first instance,' whether Prince is entitled to a fair use defense in light of the correct legal standard.  



All 30 works should be remanded for application of the appropriate transformative use standard, Wallace said.

He also said that he would give weight to Prince's deposition testimony in a transformative use determination. Though perhaps not dispositive, those statements are “relevant to the transformativeness analysis” and should not be ignored, Wallace said.

Prince was represented by Joshua Schiller of Boies, Schiller & Flexner, New York.

By Tamlin H. Bason  

Majority opinion at

Dissent at

Request Intellectual Property on Bloomberg Law