Appropriation FTW
The Second Circuit recently published its decision in Cariou v. Prince, a case involving appropriation artist Richard Prince's use of photos from photographer Patrick Cariou's book Yes Rasta. Both the art and copyright communities were watching closely, with the decision having potential implications on everyone in the art food chain (collector and gallery owner Larry Gagosian is also a defendant), technology companies and others. An analysis of some of the amicus briefs can be found here. OK, let's draw some lines. Consider whether you think Prince's Graduation (right) should be considered a fair use of Cariou's original:
Now, how about James Brown Disco Ball, which takes from multiple Cariou photographs among other places:
After a detailed description of Cariou's and Prince's works, the court begins its discussion of fair use and rejects the District Court's rule:
Judge Wallace** dissents from this part of the opinion, and would have remanded the entire case to the District Court to apply the correct legal standard (which he agrees with). He rejects the majority's strong reliance on Brownmark both because of its factual differences and complicated procedural history. Deciding fair use at the summary judgment stage isn't new, though it has been criticized. For example, the Southern District of New York recently decided Associated Press v. Metlwater in favor of the plaintiff on summary judgment. However, since the Second Circuit has corrected a legal standard here, Wallace thinks the entire case must be remanded. He also disapproves of the implicit approval of the "fleeting glance" test in this case because Brownmark involved a clear case of parody while Prince's works aren't so obviously transformative. He further notes that other evidence might pop up on remand, and the black letter copyright law stretching from Bleistein to Campbell admonishing judges not to be art critics.
On the other hand, the discussion of the size, shapes, context, materials and other blatantly obvious differences between most of Prince's works and the Cariou originals seems to easily support a finding of transformativeness under the "reasonable observer" test. Citing Castle Rock (Seinfeld trivia game not fair use) and Twin Peaks (third party TV show guide not fair use), they do pull back a bit. "Our conclusion should not be taken to suggest, however, that any cosmetic changes to the photographs would necessarily constitute fair use. A secondary work may modify the original without being transformative."
Given its finding of transformative use, the court doesn't dig in to the commercial nature of Prince's use under the first factor and turns to the fourth factor, finding that neither Prince's work nor its display usurp the original or potential licensing markets for the Cariou photographs due to the different intended audiences and nature of the works. The court mentioned Cariou's lack of follow up about a canceled showing of his work (which was due to mistaken belief he was involved in an exhibition of Prince's works), paltry sales and no attempted licensing. The court continues, "just as with the commercial character of Prince’s work, [the second fair use] factor “may be of limited usefulness where,” as here, “the creative work of art is being used for a transformative purpose.” Bill Graham.
Finally, there's the third factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” The District Court had considered whether Prince took no more than necessary for his work. However, "the secondary use “must be [permitted] to ‘conjure up’ at least enough of the original” to fulfill its transformative purpose." Leibovitz, citing Campbell. Given the transformative level of most of the works, this factor favored Prince too.
Sidetrack: As Matthew Sag explains here, the Author's Guild's recent arguments in the ongoing Author's Guild v. HathiTrust case is essentially that the defendants took too much by retaining additional copies of the scanned books beyond what was necessary for their transformative use. This is reminiscent of Warner Brothers v. RDR Books, the SDNY case holding that a Harry Potter fan guide took too much of the original work to qualify as a fair use. The Second Circuit is clear in Prince that the standard is just enough to 'conjure up' the original work. However the question is framed, it still leaves open the question of how much is too much. For HathiTrust, is it a snippet? No more than two backup copies? Only indexed title metadata? I agree with Sag's point about needing to retain the originals as better OCR technology comes along, likening it to a biologist preserving original specimens. Between RDR Books and the favorable citations to Castle Rock and Twin Peaks here, it might seem that fan fiction and reference works have to do a bit more to avoid liability in the Second Circuit. Still, factor four (usurping the existing or potential market of the original) becomes more important on those facts since the transformative use is far less apparent and the plaintiff is already operating or likely to enter the appropriator's intended market. Now back to your regularly scheduled Cariou v. Prince summary..
The court discusses the remaining five works on their way back to the District Court and calls Prince's alterations "minimal." Why not just say they aren't fair use? Why leave just the hard ones to the District Court as Judge Wallace points out? The final section of the opinion notes that Gagosian cannot be a secondary infringer on the twenty five works since there's no direct infringement due to the fair uses, and that the District should determine his direct or secondary liability as appropriate on the remaining five works.
Is this a coup of social norms ultimately shifting the law away from creators' rights as some have suggested? I haven't seen side-by-side comparisons of all the original and secondary uses, but are photos of Rastafarian men in the woods really deserving of such strict copyright protection to begin with? Although there's a line of case law suggesting "thin" copyright protection in certain types of works (data-based, compilations, functional, recipe books, others), that argument might not go far given the (arguably unfortunately) low threshold for copyrightability of photographs.
Building on Brownmark, this case is good news from a defendant's perspective since plaintiffs are less likely to force them into lengthy litigation or settlement. Also, the repeated facts about the commercial and promotional failure of Cariou's work leave the door open for strong factual distinctions in future cases. The big takeaways are that a new work doesn't have to comment on the original to be considered a fair use and the reasonable observer test stands, though lower courts are invited to invoke it earlier in litigation. While the case offers a bit of clarification for lawyers, the effect on artists remains less clear as usual. As you might have guessed, James Brown Disco Ball is a fair use (along with twenty four others, mostly similar collages from what I've seen) and Graduation is one of the five on its way back to the District Court. Until next time..
* The factors come from 17 U.S.C. §107, which reads:
Now, how about James Brown Disco Ball, which takes from multiple Cariou photographs among other places:
"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. Campbell at 577; Harper & Row, 471 U.S. at 561. Instead, 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.” Campbell, 510 U.S. at 579; see also Blanch, 467 15 F.3d at 253 (original must be employed “in the creation of new information, new aesthetics, new insights and understandings” (quotation marks omitted)); Castle Rock, 150 F.3d at 142."The court spends the most time on the first fair use factor,* finding that twenty five of the works are clearly transformative. It remands the case to the District Court to apply the correct legal standard to the remaining five. Further correcting the District's standard, the majority says that it should not have mattered whether Prince claimed the works were satires or parodies since transformativeness is assessed from the point of view of the "reasonable observer." They favorably cite the Seventh Circuit's 2012 decision in Brownmark Films LLC v. Comedy Partners (the South Park “What What (In The Butt)” case) to support their side-by-side review of the works and finding of fair use early in the litigation.
Judge Wallace** dissents from this part of the opinion, and would have remanded the entire case to the District Court to apply the correct legal standard (which he agrees with). He rejects the majority's strong reliance on Brownmark both because of its factual differences and complicated procedural history. Deciding fair use at the summary judgment stage isn't new, though it has been criticized. For example, the Southern District of New York recently decided Associated Press v. Metlwater in favor of the plaintiff on summary judgment. However, since the Second Circuit has corrected a legal standard here, Wallace thinks the entire case must be remanded. He also disapproves of the implicit approval of the "fleeting glance" test in this case because Brownmark involved a clear case of parody while Prince's works aren't so obviously transformative. He further notes that other evidence might pop up on remand, and the black letter copyright law stretching from Bleistein to Campbell admonishing judges not to be art critics.
On the other hand, the discussion of the size, shapes, context, materials and other blatantly obvious differences between most of Prince's works and the Cariou originals seems to easily support a finding of transformativeness under the "reasonable observer" test. Citing Castle Rock (Seinfeld trivia game not fair use) and Twin Peaks (third party TV show guide not fair use), they do pull back a bit. "Our conclusion should not be taken to suggest, however, that any cosmetic changes to the photographs would necessarily constitute fair use. A secondary work may modify the original without being transformative."
Given its finding of transformative use, the court doesn't dig in to the commercial nature of Prince's use under the first factor and turns to the fourth factor, finding that neither Prince's work nor its display usurp the original or potential licensing markets for the Cariou photographs due to the different intended audiences and nature of the works. The court mentioned Cariou's lack of follow up about a canceled showing of his work (which was due to mistaken belief he was involved in an exhibition of Prince's works), paltry sales and no attempted licensing. The court continues, "just as with the commercial character of Prince’s work, [the second fair use] factor “may be of limited usefulness where,” as here, “the creative work of art is being used for a transformative purpose.” Bill Graham.
Finally, there's the third factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” The District Court had considered whether Prince took no more than necessary for his work. However, "the secondary use “must be [permitted] to ‘conjure up’ at least enough of the original” to fulfill its transformative purpose." Leibovitz, citing Campbell. Given the transformative level of most of the works, this factor favored Prince too.
Sidetrack: As Matthew Sag explains here, the Author's Guild's recent arguments in the ongoing Author's Guild v. HathiTrust case is essentially that the defendants took too much by retaining additional copies of the scanned books beyond what was necessary for their transformative use. This is reminiscent of Warner Brothers v. RDR Books, the SDNY case holding that a Harry Potter fan guide took too much of the original work to qualify as a fair use. The Second Circuit is clear in Prince that the standard is just enough to 'conjure up' the original work. However the question is framed, it still leaves open the question of how much is too much. For HathiTrust, is it a snippet? No more than two backup copies? Only indexed title metadata? I agree with Sag's point about needing to retain the originals as better OCR technology comes along, likening it to a biologist preserving original specimens. Between RDR Books and the favorable citations to Castle Rock and Twin Peaks here, it might seem that fan fiction and reference works have to do a bit more to avoid liability in the Second Circuit. Still, factor four (usurping the existing or potential market of the original) becomes more important on those facts since the transformative use is far less apparent and the plaintiff is already operating or likely to enter the appropriator's intended market. Now back to your regularly scheduled Cariou v. Prince summary..
The court discusses the remaining five works on their way back to the District Court and calls Prince's alterations "minimal." Why not just say they aren't fair use? Why leave just the hard ones to the District Court as Judge Wallace points out? The final section of the opinion notes that Gagosian cannot be a secondary infringer on the twenty five works since there's no direct infringement due to the fair uses, and that the District should determine his direct or secondary liability as appropriate on the remaining five works.
Is this a coup of social norms ultimately shifting the law away from creators' rights as some have suggested? I haven't seen side-by-side comparisons of all the original and secondary uses, but are photos of Rastafarian men in the woods really deserving of such strict copyright protection to begin with? Although there's a line of case law suggesting "thin" copyright protection in certain types of works (data-based, compilations, functional, recipe books, others), that argument might not go far given the (arguably unfortunately) low threshold for copyrightability of photographs.
Building on Brownmark, this case is good news from a defendant's perspective since plaintiffs are less likely to force them into lengthy litigation or settlement. Also, the repeated facts about the commercial and promotional failure of Cariou's work leave the door open for strong factual distinctions in future cases. The big takeaways are that a new work doesn't have to comment on the original to be considered a fair use and the reasonable observer test stands, though lower courts are invited to invoke it earlier in litigation. While the case offers a bit of clarification for lawyers, the effect on artists remains less clear as usual. As you might have guessed, James Brown Disco Ball is a fair use (along with twenty four others, mostly similar collages from what I've seen) and Graduation is one of the five on its way back to the District Court. Until next time..
* The factors come from 17 U.S.C. §107, which reads:
Notwithstanding the provisions of sections
106 and
106A,
the fair use of a copyrighted work, including such use by reproduction
in copies or phonorecords or by any other means specified by that
section, for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship, or
research, is not an infringement of copyright. In determining whether
the use made of a work in any particular case is a fair use the factors
to be considered shall include—
(1)
the purpose and character of the use,
including whether such use is of a commercial nature or is for nonprofit
educational purposes;
(3)
the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
The fact that a work is unpublished shall not
itself bar a finding of fair use if such finding is made upon
consideration of all the above factors.
**Sitting by designation from the Ninth Circuit, interestingly.