Prof. Rodney A. Smolla
Duke University School of Law
October 29, 2013

In a prior IP Viewpoints piece, I wrote about a colorful copyright infringement case brought by a professional photographer, Patrick Cariou, against the well-known and highly successful “appropriation artist” Richard Prince, a case in which the photographer Cariou prevailed against the artist Prince for Prince’s appropriations.  Cariou’s victory in the district court, however, was recently erased by the U.S. Court of Appeals for the Second Circuit.

To re-set the stage, Richard Prince “appropriates” the works of others to create his own artistic works.  His efforts have been successful; his works have been shown at many museums and galleries, including a solo show at the Guggenheim Museum in New York.  Patrick Cariou’s case against Prince involved photographs taken over a six-year period by Cariou of Rastafarians in Jamaica.  Cariou published a book of the photos, entitled Yes, Rasta.  The book contained photographs of individual Rastafarians in Jamaica and Jamaican landscape scenes.

Prince initially appropriated Cariou’s photographs by tearing some 35 photos from the book Yes, Rasta and attaching them to a wooden backer board.  Prince then painted over some portions of the 35 photos.   In some cases he appropriated only portions of Cariou’s photographs; in others he used them in their entirety.  The result was a collage he entitled “Canal Zone.”  Prince’s “Canal Zone” appropriation art was first displayed at the Eden Rock Hotel in St. Barts.  Prince went on to create 29 paintings in his “Canal Zone” series, 28 of which involved images taken from Yes, Rasta.

Federal District Judge Deborah Batts ruled against Prince’s claim that his appropriation of Cariou’s photographs – and indeed his entire genre of “appropriation art” – was protected “fair use,” in that he was required by his artistic genre to make use of the “raw ingredients” of others, which he used “to get as much fact” into his works as possible and reduce “the amount of speculation.”  Judge Batts rejected Prince’s asserted fair use defense, reasoning that nothing in Prince’s “Canal Zone” work was intended to comment on Cariou’s photographs, and this rendered them insufficiently “transformative” to qualify as fair use.  Prince was not commenting on the photos themselves, Judge Batts reasoned, but merely using them as the raw material for his own work, an “appropriation” that constituted infringement, even if it also constituted art.

These conclusions were reversed on appeal by the U.S. Court of Appeals for the Second Circuit, which held that Prince’s work was a fair use of Cariou’s.1  On appeal, the Second Circuit expressed strong disagreement with the core of the district court’s reasoning, repudiating the argument that a work may only be treated as transformative for fair use purposes if it includes some form of critique of the appropriated work or its author, or if it contains some form of comment, news reporting, teaching, scholarship, or research.  “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative,”2 the court stated, 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.”3  The Second Circuit’s ruling in this regard is a very important expansion of the nature and range of material that may, for fair use analysis, be treated as qualifying as a transformative work.

The Second Circuit then applied its standard to hold that Prince’s work was a fair use.  Unlike Cariou’s work, which did not sell for substantial sums and did not draw great artistic attention, Prince was a highly regarded artist who was able to garner tens of millions of dollars for his works, and whose works often drew attention from movie stars, recording artists, and other major celebrities.  This difference in glamour and market appeared to influence the Second Circuit, which found Prince’s artistic celebrity and commercial power as an artist to be factors in his favor in measuring the fair use defense.4

Finally, the Second Circuit disagreed with the district court’s determination that Prince had appropriated more than necessary of Cariou’s underlying work.  The Second Circuit observed that a proper application of fair use doctrine does not require that the second artist take “no more than necessary” from the first.5   All that matters, the Second Circuit ruled, was that when measured by factors such as quality and importance, the second artist has appropriated what was needed to conjure up the original and fulfill the transformative purpose of the second artist.6  “Prince used key portions of certain of Cariou’s photographs,”7 the court conceded.  In doing that, however, the court determined, “in twenty-five of his artworks, Prince transformed those photographs into something new and different and, as a result, this factor weighs heavily in Prince’s favor.”8