Copyright Suit Requires Fair Use Analysis

By Jesse M. Brody, Partner, Advertising, Marketing and Media

A fair use analysis is required before a copyright suit against “appropriation artist” Richard Prince can be dismissed, a New York federal court judge decided this week, declining to grant a quick win.

The dispute is strikingly similar to prior litigation against Prince, who copies, reproduces and modifies existing works to create his own art. In the prior case, Prince used 35 photographs of Rastafarians without the photographer’s permission to create his own images by enlarging, tinting and coloring the photos. The photographer sued and in 2013, the U.S. Court of Appeals, Second Circuit, ruled that Prince’s use of the photographs was transformative and constituted fair use.

Prince’s latest collection is the subject of the current dispute. As a purported commentary on social media in the “New Portraits” exhibition, Prince took images from Instagram and added his own comments. In one instance, he took an image depicting a Rastafarian man standing shirtless against a white background, smoking a marijuana cigarette. Cropping the image slightly, Prince left the number of likes and comments on the Instagram post, and added his own: “Real Bongo Nyah man a real Congo Nyah [emoji of a raised fist].”

Dubbed “Untitled,” the image appeared among the dozens in the exhibit and on a billboard near a Manhattan highway promoting the gallery show. Prince also used the image as part of a Twitter compilation.

Professional photographer Donald Graham, who took the photograph in 1996 (but had not posted it to Instagram), sued Prince for copyright infringement. Relying on the Second Circuit opinion, Prince moved to dismiss based on a defense of fair use.

But U.S. District Court Judge Sidney H. Stein was unwilling to let Prince off the hook that easily. “Because the affirmative defense of fair use requires the Court to engage in a fact-sensitive inquiry that cannot be completed—in this case—on a motion to dismiss the complaint, defendants’ motion is denied,” the court said.

Courts generally do not address the fair use defense until the summary judgment phase, the court noted, and Prince could not establish that “Untitled” was transformative as a matter of law.

Reviewing the four-factor test of fair use, Judge Stein found that the purpose and character of Prince’s use did not demonstrate sufficient transformation to end the dispute.

“In this case, because Prince’s ‘Untitled’ does not make any substantial aesthetic alterations to [Graham’s photograph], a simple side-by-side comparison of the two works is insufficient to show that Prince made transformative use of Graham’s original as a matter of law,” the court said. “Viewing Graham’s [photograph] and Prince’s ‘Untitled’ side-by-side, it is evident that Prince’s work does not belong to a class of secondary works that are so aesthetically different from the originals that they can pass the Second Circuit’s ‘reasonable viewer’ test as a matter of law.”

“Untitled” simply reproduced the entirety of Graham’s photograph with some de minimis cropping in the frame of an Instagram post, along with a cryptic comment written by Prince, the court wrote. “Given Prince’s use of essentially the entirety of Graham’s photograph, defendants will not be able to establish that ‘Untitled’ is a transformative work without substantial evidentiary support.”

As for the other fair use factors, Judge Stein reiterated that more evidence was needed for the commercial use prong, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect on the potential market for the copyrighted work. Similarly, the court said it would be premature to dismiss the claims based on the billboard and Twitter post.

“To the extent that the Court is able to evaluate the statutory fair use factors on the basis of the facts alleged in the Complaint, the Court concludes that each of them weighs against a finding that Prince’s ‘Untitled’ makes fair use of [Graham’s photograph],” the court wrote.

To read the opinion and order in Graham v. Prince, click here.

Why it matters: In a reversal of his previous success with a fair use defense, Prince was denied a motion to dismiss and appears to face an uphill battle in convincing the court that his use was transformative.



pursuant to New York DR 2-101(f)

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