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IP/Entertainment Case Law Updates

Graham v. Prince

District court denies appropriation artist Richard Prince’s motions for summary judgment, finding Prince’s creation of oversized versions of portrait photographs posted to Instagram with added social-media-style comments was not sufficiently transformative to constitute fair use.

Photographers Donald Graham and Eric McNatt sued well-known appropriation artist Richard Prince and several art galleries for copyright infringement over Prince’s use of plaintiffs’ portrait photographs in an art installation designed to resemble Instagram posts. The lawsuit centered on Graham’s photograph of a Rastafarian man with long dreadlocks smoking a marijuana cigarette, and McNatt’s photograph of musician Kim Gordon, a member of the alternative rock band Sonic Youth. Prince found an Instagram post that contained Graham’s photograph, added a comment to the post, took a screenshot and ink-jetted the resulting image onto a large canvas. Prince also found McNatt’s photograph of Gordon on Instagram. He took a screenshot of the image, posted a cropped version to his own Instagram account, added three comments below the image, took another screenshot and ink-jetted the resulting image onto a large canvas. The dispute centered on whether Prince’s use of the photographs met the criteria for the fair use defense to copyright infringement. 

The court conducted the fair use inquiry by considering four factors. The court recognized that the first factor, the purpose and character of the use¬—specifically, whether or not the use is transformative—is the main focus of the inquiry. The court found that this factor weighed in plaintiffs’ favor. Prince argued that there were key aesthetic differences, such as “the intentional cropping of images in an homage to Andy Warhol” and “his comments below the images” that provided a “vastly different context to the images.” While the court acknowledged that Prince did not copy the photographs in their entirety, it found Prince’s modifications to be minor and not sufficiently transformative, because plaintiffs’ photographs remained “unobstructed…and unquestionably dominant.” The court also rejected Prince’s contention that the transformative use standard should be viewed from the perspective of “an individual who has a general interest in and appreciation of, but not specialized knowledge of, the arts.” The court found no legal authority for such a standard and held that a “reasonable observer” would identify Prince’s alterations as merely adding an Instagram frame and Prince’s own comments to the existing photographs. Those modifications, the court found, “do not begin to approach the alterations found to be transformative as a matter of law” in prior fair use cases decided by the Second Circuit.

As to the transformative purpose—also under the first factor—Prince contended that he was providing commentary on plaintiffs’ photographs by satirizing social media culture. The court disagreed, as Prince had not articulated a consistent purpose in creating the art series. The court also noted that Prince admitted he could have used many other images of Rastafarians and had the same visual impact. Accordingly, it could not be said that plaintiffs’ photos were specific targets of Prince’s satire. Commenting on or satirizing the social media culture in general was insufficient. The “murkiness” of Prince’s purpose also weighed against him, as at one point Prince testified that his purpose was simply to “have fun.” The first factor also weighed in plaintiffs’ favor because Prince had made substantial profits from the sales of his works—thus, his work was clearly made for a commercial purpose. While commercialism is discounted for sufficiently transformative works, that was not the case here. 

The second factor—the nature of plaintiffs’ works—weighed in plaintiffs’ favor. This factor asks whether plaintiffs’ works are creative or factual, and whether the works are published. The parties did not dispute that plaintiffs’ images had been published, and plaintiffs sufficiently alleged that they were creative by describing their artistic decisions as to composition, coloration, and editing. 

The third factor asks whether the quantity and value of the portion used are reasonable in relation to the purpose of the copying. Prince argued that he had cropped plaintiffs’ photographs and removed negative space, and that what remained was necessary to meet his transformative purpose. However, because the court had already found non-transformative use and purpose, Prince’s use of nearly the entirety of plaintiffs’ photographs was not deemed to be reasonable.

The court acknowledged that the fourth factor—the effect of the use on the potential market for or value of the copyrighted work—partially weighed in Prince’s favor. Prince submitted evidence that his work appeals to a different type of art collector than do plaintiffs’ photographs and that plaintiffs do not stand to lose licensing revenues as a consequence of Prince’s works. The court also acknowledged evidence that collectors purchased Prince’s work for the name and brand recognition that he had built up, and that plaintiffs had sold copies of their photographs even after Prince’s works were exhibited and offered for sale.  

Overall, the court weighed the four factors and concluded that they weighed significantly against a finding of fair use.  

Prince also attempted to invoke an implied license defense to the copyright infringement claims. He argued that Instagram’s and Facebook’s terms of use granted him a nonexclusive implied license to use Graham’s photograph, especially because Graham had posted the photograph without a copyright notice. The court found this argument to be untenable, because it would mean any copyright holder who posted his or her copyrighted work on social media would have waived his copyright to the work. The court also recognized that there was no “meeting of the minds” between Graham and Prince that resulted in an implied license.

The court also addressed other uses of Prince’s works, including their inclusion on a billboard posted in New York City and as part of a compilation of blurry, cropped images that Prince posted to Twitter during the litigation. As to the billboard, the court rejected Prince’s de minimis use defense, because defendants “displayed a significant portion of Graham’s photograph on a very large, very public billboard for all of Manhattan to see.” However, the court accepted Prince’s de minimis use argument with respect to the Twitter compilation.

Summary prepared by Tal Dickstein and Alex Loh

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