The first prong of the fair use defense in copyright infringement cases, the “purpose and character of the use,” is often described as an inquiry into whether the allegedly infringing work is “transformative.” In other words, does the allegedly infringing work add something new, thus altering the message of the original, or does it essentially just copy (and potentially usurp the market for) the original? A classic example of a transformative use is parody, where the new work “conjures up” (i.e., copies some of) the original in order to criticize it.
But what if the author of the allegedly infringing work, when asked point blank whether his work was a parody or criticism, says “no”? Does he still have a fair use defense? Yes, held the Second Circuit last week in its opinion in Cariou v. Prince.
Plaintiff Patrick Cariou is a professional photographer whose images of Jamaican Rastafarians were published in 2000 in the book, Yes Rasta. The defendant, Richard Prince, is a well-known “appropriation artist,” who takes existing objects and images and appropriates them into new works of art. In 2005, Prince purchased a copy of Cariou’s book, cut out the images, and incorporated them into mixed-media collages for a show called Canal Zone. In some of Prince’s pieces, what is left of Cariou’s images is hardly noticeable. But in other works, Cariou’s images are reproduced with only slight alterations. For example, in a work called Graduation, Prince did little more than tint the image blue, add a guitar and paint some shapes over the subject’s face.
In 2008, Cariou first learned of Prince’s appropriation when a show of Cariou’s photographs was canceled on the grounds that it had been “done already” by Prince. While Cariou’s book sold only a few thousand copies, Prince’s works were selling for nearly a million dollars each. Cariou brought suit in the Southern District of New York, alleging copyright infringement.
Prince asserted a fair use defense but, at his deposition, he did something odd. Instead of expounding on the transformative character and meaning of his work, Prince admitted that his works “don’t really have a message” and that he was not “trying to create anything with a new meaning.” And far from a parody, Prince had no intention of commenting on Cariou’s photographs or their subject matter.
The District Court held that, in order to invoke the fair use defense, the allegedly infringing work must “comment on, relate to the historical context of, or critically refer back to original works,” as in a parody. Because Prince admitted that this was not his intent, the District Court held that his work was non-transformative and that he therefore had no fair use defense.
The Second Circuit reversed, taking issue with two aspects of this reasoning. First, the District Court was incorrect in limiting fair use only to works that expressly comment on or otherwise refer to the original. On the contrary, the Court held that the concept of transformation is broader than that, encompassing any new meaning or aesthetic.
Second, the District Court was incorrect in relying on Prince’s own testimony to determine that the work was not transformative. What is critical, the Second Circuit held, is not what the artist says about his work, but how the work appears to the reasonable observer. Taking on itself the role of the “reasonable observer,” the Second Circuit found that most of the thirty allegedly infringing works were obviously transformative. However, the Court found this was not so obvious with respect to five of the works, including Graduation. The Second Circuit remanded the matter to the District Court as to these five pieces only to determine whether “Prince had transformed Cariou’s work enough to render it transformative.”
Senior Ninth Circuit Judge J. Clifford Wallace, sitting by designation, concurred in part and dissented in part. While agreeing that the District Court decision should be vacated, Judge Wallace argued that the majority, once it determined the proper legal standard, should have stopped there and remanded all of the works back to the District Court, not just those it regarded as “close calls.” Furthermore, Judge Wallace argued that Prince’s testimony about the purpose and effect of his work, while not determinative, was relevant to the transformative analysis. Judge Wallace expressed concern that the majority’s methodology had cast the court in the role of art critic, a role for which an appellate court was especially unqualified.
For artists and others subject to this doctrine, the moral of the story can be clearly expressed, but may be difficult to follow. If you claim fair use in the Second Circuit, evidence of a parodic or critical intent may not help, and lack of such evidence may not hurt. The most important inquiry might not even be whether the work is transformative, but rather whether the finder of fact — as “reasonable observer” — thinks that the work is transformative enough. So next time you take someone else’s image and simply add a guitar, maybe you should think about adding some drums and a bass as well. And would a little more color hurt?