Transformative Work Need Not Include Commentary To Be Classified As Transformative Under Copyright Act’s Fair Use Provisions

The Second Circuit Court of Appeals in New York (2nd Circuit) reversed a lower court ruling which applied the wrong standard for determining whether a work was transformative under the Copyright Act’s fair use statute, 17 U.S.C. § 107.  Cariou v. Prince, Case No. 11-1197-cv (2d Cir. April 25, 2013) (available here).  Defendant Prince appealed the decision of the lower court, which found that his artworks did infringe on Plaintiff Cariou’s registered copyrights in certain photographs.  On appeal, the 2nd Circuit held that the lower court had applied the wrong standard and, in applying the correct standard, the Appeals Circuit found that all but five of Prince’s works fell under fair use protection.

In 2002, Plaintiff Cariou published a book of classical portraits and landscape photographs.  In 2007 and 2008, Defendant Prince took several of Cariou’s photographs, altered them, and included them into a series of paintings and collages that he exhibited in Saint Barthelemy (“St. Barth’s”) and at New York’s Gagosian Gallery.  At the Gagosian exhibit, an exhibition catalog containing reproductions of Prince’s paintings was sold.  Prince used Cariou’s photographs in several works, and the amount of each of Cariou’s photographs used varied from work to work.  Cariou sued Prince and Gagosian for copyright infringement and the defendants claimed fair use.  The lower court found in favor of Cariou and entered a permanent injunction against Prince and Gagosian.  On appeal, Prince and Gagosian argued that Prince’s work was transformative and therefore fell under the fair use protection.

Under the Copyright Act, there are several non-exclusive factors to consider in determining whether use of a copyrighted work constitutes fair use.  Per Section 107, the court should consider: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and ( 4) the effect of the use upon the potential market for the value of the copyrighted work.”  17 U.S.C. § 107.

The purpose and character factor includes consideration of the the transformative nature of defendant’s use.  The lower court said that Prince’s work would be transformative if it commented on Cariou, his photographs, or aspects of popular culture closely associated with Cariou or his photographs.  The 2nd Circuit disagreed with respect to the commentary component. “Here, our observation of Prince’s artworks themselves convinces us of the transformative nature of all but five, which we discuss separately below. 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.”  Prince, Slip Op. P. 12.

The transformative nature of Prince’s works turns on how his works appear to the reasonable observer.  When comparing Prince’s works with Cariou’s photographs, the 2nd Circuit concluded that 25 of the 30 works were transformative.  However, the Appeals Court noted that cosmetic changes to photographs does not always constitute fair use, because a secondary work can modify an original without being transformative.  Even though Prince’s works were commercial in nature, the 2nd Circuit did not place much significance on that fact because the 25 works were so transformative compared to Cariou’s photos.

As for the effect upon the potential market for Cariou’s photos, the lower court concluded that because a gallery owner decided not to host Cariou’s book at her gallery once she learned of Prince’s exhibit at the Gagosian, that Cariou’s market was adversely effected.  “Contrary to the district court’s conclusion, the application of this factor does not focus principally on the question of damage to Cariou’s derivative market.”  Prince, Slip Op. P. 16.  The focus is whether the secondary use by Prince usurps the market of the original work for Cariou’s photos.  “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. There is nothing in the record to suggest that Cariou would ever develop or license secondary uses of his work in the vein of Prince’s artworks. Nor does anything in the record suggest that Prince’s artworks had any impact on the marketing of the photographs.”  Prince, Slip Op. P. 17.

As for the nature of Cariou’s copyrighted works, the 2nd Circuit noted that the photographs were creative and published.  This factor weighed against a finding of fair use, but this “nature of the work” factor was given little weight since Prince’s use was extremely transformative.

As for “the amount and substantiality” factor, that is, the amount and substantiality of Cariou’s works used by Prince in relation to Cariou’s works as a whole, many of Prince’s works used Cariou’s photographs in whole or substantial part.  Sometimes Prince barely altered the original photo but at other times Prince heavily obscuring the copyrighted photo.  However, in 25 of Prince’s works, he transformed Cariou’s photographs into something new and different, thereby weighing the final factor in favor of Prince.  Prince’s use of the photos in these 25 works constituted fair use and non-infringement, and therefore the Gagosian gallery was not liable as a vicarious or contributory infringer.

Per the 2nd Circuit, the remaining 5 artworks did not sufficiently differ from Cariou’s photographs, therefore the Appeals Court remanded the issue back to the trial court stating: “Although the minimal alterations that Prince made in those instances moved the work in a different direction from Cariou’ s classical portraiture and landscape photos, we can not say with certainty at this point whether those artworks present a new expression, meaning, or message.”  Prince, Slip Op. P. 20.  As a result, these 5 works go back to trial.  If the lower court finds that the works fall under the fair use defense, Prince and the Gagosian gallery are not liable.

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