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By Tamlin H. Bason
It was one of a few comments that seemed to indicate that the appeals court was considering overturning an injunction issued in a case that is being closely watched by the art community. However, while it was all too willing to discuss whether the district court acted appropriately in issuing its sweeping injunctive order, the appeals court was less interested in discussing the underpinnings of the district court's decision--a decision that the appellants' brief claimed was “infected” by a “fundamental error” in its interpretation of the relevant fair use factors.
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.
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 the 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.
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.”
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 LLC.,21 547 U.S. 388, 78 USPQ2d 1577 (2006) (97 PTD, 5/19/06).
Amicus briefs were filed by a number of interested parties, including briefs in support of Prince and the Gagosian defendants 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.
“We don't want [the paintings] destroyed,” Brooks said. “But this court has enough to uphold the injunction.”
Brooks acknowledged that the district “should have applied the eBayfactors,” but he said that its failure to do so should not be fatal to the injunction.
Unlike Salinger v. Colting, 607 F3d 68, 94 USPQ2d 1577 (2d Cir. 2010) , where the Second Circuit vacated a district court's permanent injunction because the lower court had failed to apply the eBay factors, here “we have a fully developed record,” Brooks said.
Brooks said the district court “mined the record for facts” concerning the injunction and ultimately concluded that Cariou was entitled to an injunctive relief even if it failed to specify its determinations on each of the four eBayfactors.
Noting that Cariou spent six years in Jamaica taking photographs for hisYes, Rasta book, Brooks said, “He has a right to not have his painstakingly created work displayed in a slightly different manner.”
However, Brooks also said that his client did not move for the broad injunction, seemingly suggesting that Batts decided sua sponte to grant the relief.
Schiller, in his rebuttal argument, took issue with this characterization of the proceedings.
“The district court did not simply invent the injunctive relief, it lifted the language from the request for relief in the original complaint,” Schiller said.
“Why aren't we requiring [the district court] to make findings on each individual painting so that we can then uphold or refute those findings?” Wallace asked.
However, Wallace also seemed to indicate that he agreed with the district court's finding of infringement with regards to at least a portion of the paintings.
Wallace expressed his doubts on the matter following Schiller's argument that a transformative use determination can be reached through “an objective look at market facts.” Schiller said that the determination should consider “audience interest in not just viewing but also purchasing the paintings,” and should also take into account the fact that Prince's paintings target a different end user and were created for a different purpose than were Cariou's photographs.
“Given what you have just said, I can find at least ten of these paintings that do not qualify as a transformative use,” Wallace said.
When Wallace made a similar remark to Brooks, Brooks responded by saying the defendants “are liable for copyright infringement even if just ten of the paintings are infringing.”
Neither Wallace nor Hall appeared to be persuaded by this argument. The injunction prohibits the display and sale of all of the subject paintings, and thus it is overbroad if only ten of the paintings are infringing.
Hall asked, “What should we do? Should we send it back to the district court to fashion individual determinations on each painting?”
Brooks said that such a decision should only be as a last resort. He said that while the district court did not make a separate determination for each painting, it did in fact look at images of each painting before reaching its determination that they were all infringing.
“The district court concluded that while some of the paintings were changed more than others, none were transformative,” Brooks said.
Based on this fact, Brooks reiterated his position that there was a sufficient record for the appeals court to uphold the injunction.
Schiller said that the district court should have “looked at each work and determined transformative use on the face of each” painting. “Each [paining] is different in how Cariou's work is incorporated,” Schiller said, and thus it is appropriate to look at them on a painting-by-paining basis.
Wallace wondered if Prince hadn't waived this argument by failing to raise it when Cariou moved for summary judgment.
“There were cross motions for summary judgment and you did not object at the time to the court treating the series as a whole,” Wallace said. Accordingly, he asked Schiller if Prince was foreclosed from raising such an objection at this stage in the litigation.
Wallace later asked if it was Prince's position that analyzing each painting separately is a legal--not a procedural--objection, and thus cannot be waived. Schiller agreed that it was, and regardless he said the district court “applied the incorrect transformative use analysis to all 29 paintings.”
“It seems to me that the market issues is a clear loser for you,” Parker said. “Cariou published a handful of books that went out of print whereas [Prince] was selling these things to a very wealthy clientele.”
Brooks attempted to reclaim the market argument by pointing out that Cariou in fact had a show lined up withe Celle's gallery that was cancelled because of Prince's Canal Zone exhibit. The show equaled a “potential market” Brooks said.
“If that is all the proof of market you have, it seems weak,” Parker said. He pointed out that Prince and Cariou were marketing to “totally different people at a different price structure.”
On this point, Brooks argued that Twin Peaks Productions Inc. v. Publications International, 996 F.2d 1366, 27 USPQ2d 1001 (2d Cir. 1993), counseled against narrowly interpreting the fourth fair use factor in a way that excludes the plaintiff's potential to use its own works in derivative markets.
Twin Peaks held that plot summaries of a television series were so extensive that they served as substitutes for rather than complements of the copyrighted scripts. The television program had in fact previously licensed derivative market publications, and thus the court said that it could prevent other derivative market works that did not comment on or criticize its copyrighted material.
Like Twin Peaks, where the court found that an end user may simply buy the publication rather than watch an episode, Brooks said that here consumers may decide not to purchase Yes, Rasta after seeing Cariou's images in the Canal Zone exhibition. Thus, Cariou's market argument requires a finding that Prince's paintings resulted in an usurpation of a derivative market that Cariou could have entered.
Prince's attorney, Joshua I. Schiller of Boies, Schiller & Flexner, New York, disagreed. In his rebuttal argument, Schiller said the “the testimony of one gallery owner is insufficient to show market harm.” He added, “The loss of one show is inadequate to show usurpation of market.”
“[T]he district court was wrong in holding that a work must comment or criticize the original work in order to constitute fair use,” the brief said.
Looking to the language of Section 107 of the Copyright Act and to relevant Supreme Court case law, namely Campbell v. Acuff-Rose Music Inc., 510 U.S. 569, 576, 29 USPQ2d 1961 (1994), as well as the Second Circuit's decision in Blanch v. Koons, 467 F.3d 244, 251-52, 80 USPQ2d 1545 (2d Cir. 2006), Prince's brief concluded, “Nothing in Section 107 requires such a result, and the Supreme Court and this Court have emphasized that the reference to comment or criticism in the Copyright Act is purely illustrative.”
Rather, “the Supreme Court emphasized that what makes a work transformative is that it 'adds something new, with a different purpose or different character, altering the first with new expression, meaning or message,' ” the brief said, quoting Campbell.
“Prince's paintings meet this court's and the Supreme Court's standard for transformative use because they use a different medium, convey a different message, and appeal to different audiences,” Schiller said.
The panel, however, never engaged Schiller in a discussion over the district court's transformative use analysis. Likewise, the court remained silent when Schiller said, “The injunctive relief should be undone because it has created a chilling effect.”
The chilling argument was specifically addressed to the district court's assessment of liability on the Gagosian defendants. According to the defendants' brief, holding art galleries and museums vicariously liable for infringing artwork that they have no control over “could remove all appropriation art from public view.”
Brooks addressed that issue during his argument. “The alarm about a chilling effect is overdone,” Brook said. “There is no evidence that the district court's decision has impacted appropriation art.”
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