Carry-on over Cariou: when works are transformative 'as a matter of law'

In a world of fluctuating intellectual property law, we are used to seeing trends of judicial thought drifting first in one direction and then in another, as courts struggle to maintain the balance between rights owners and their competitors and between the rights of consumers and individuals and the rights and expectations of businesses. But there may be few more fascinating, and regularly shifting, areas of judicial juggling than that of the application of the doctrine of fair use under United States copyright law.  In the piece that the IPKat publishes below, Katfriend and guest blogger Philippa Malas takes a look at a recent US decision in which the dynamics of the see-saw between user liability and user entitlement are clear for all to see: the ruling in Cariou v Prince.  As Philippa explains:

Mr Jones by Cariou ...

Late last month, the US Court of Appeals for the Second Circuit handed down judgment in Cariou v Prince.  As some readers may be aware [particularly if they spotted Iona's post on the 1709 Blog, here], the photographer Patrick Cariou brought an action for summary judgment against artist Richard Prince for copyright infringement in 2008 (Cariou v Prince, 784 F. Supp. 2d 337, 349 (S.D.N.Y. 2011)).  The original proceedings found in Cariou´s favour.   Permanent injunctive relief was granted and the defendants were ordered to “deliver up for impounding, destruction, or other disposition, as [Cariou] determines, all infringing copies of the Photographs, including the Paintings”.  The injunction covered sold and unsold pieces from Prince´s Canal Zone series in the defendants´ possession.  On appeal, Prince and co-appellant the Gagosian Gallery (and its proprietor Larry Gagosian) argued that the District Court used the wrong legal standard when it held that the fair use defence was not available because Prince´s work did not “comment on, relate to the historical context of, or critically refer back to the original works”. A number of parties acted as amici curiae (including the Andy Warhol Foundation, the Whitney Museum of American Art, the Guggenheim, and the American Society of Media Photographers) and the issues raised are likely to be of interest to those working in the visual arts. 

... and as he is treated by Prince

Patrick Cariou published a collection of photographic works called Yes Rasta in 2000.  The photographs were products of a six-year period Cariou spent living with Rastafarian communities in Jamaica.  7,000 copies of Yes Rasta books were printed with sales at just over $8,000.   Prince´s Canal Zone series was exhibited during 2007 and 2008, including a high profile exhibition at New York´s Gagosian Gallery.  The first piece, Canal Zone (2007), consisted of photographs torn out of Yes Rasta, attached to a plywood board, which Prince then painted over.  Prince obtained further copies of Yes Rasta and the resulting series Canal Zone numbered thirty-one works, with the majority incorporating images from Cariou´s book.  By 2010, sales of works from Canal Zone totalled more than $10 million.      

Under the US Copyright Act of 1976, 17 U.S.C. § 107, four criteria must be satisfied in order for a court to uphold fair use: 

´[T]he fair use of a copyrighted work […] for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for non profit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copy-righted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copy-righted work.´

The Appeals Court began by reminding that the US defence (broader than UK fair dealing) required ´open ended and context sensitive inquiry’.  After considering how Cariou’s work had been used (the first statutory element) and therefore, whether it was ´transformative´, the court concluded that ´[t]he law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary may constitute fair use even if it serves some purpose other than those […] identified in the preamble to the statute.´  In the opinion of the majority of the Appeals Court, the District Court was also wrong to place too much emphasis on Prince´s deposition testimony in which he said that he did not have any interest in Cariou´s original intent.  Instead, ´what is critical is how the work in question appears to the reasonable observer’ (following Campbell v Acuff-Rose Music, Inc., 510 U.S. 569 (1994) and Leibovitz v Paramount Pictures Corp., 137 F.3d 109, 113-14 (2d Cir 1998).  It was held that twenty-five out of the works ´were transformative as a matter of law´.    

A notable part of the judgment was the reasoning of why the works were transformative: Prince ´presented images with a fundamentally different aesthetic´.  The majority observed that side-by-side, Prince’s images gave Cariou’s photographs a ‘new expression, and employ new aesthetics with creative and communicative results’ and were therefore transformative.  The extent to which legal scrutiny borders on factual and artistic interpretation is certainly an interesting feature of the appeal judgment.  Judge Wallace was troubled by the degree to which his colleagues embraced an artistic commentary.  In his dissenting opinion, he noted that ‘after correcting an erroneous legal standard employed by the district court, we would remand for reconsideration’.  He also dismissed the majority’s application of Brownmark Films v Comedy Partners, 682 F.3d 687 (7^thCir.2012) that ‘transformative’ could be determined on a side-by-side analysis of the artworks and argued that the court’s inquiry should not be limited to ‘our own artistic perceptions of the original and secondary works’. 

Judge Wallace might have a point.  The court only applied the defence to twenty-five out of the thirty works and surmised that Prince’s works ´sufficiently differ from the photographs of Cariou´s that they incorporate for us to confidently make a determination about their transformative nature as a matter of law´.   Reader note: ‘as a matter of law’.  However, in relation to five of Prince’s creations, the majority found that ´although the minimal alterations that Prince made […] 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, or message”’ (as in Campbell).   Wallace J noted: ‘…while I admit freely that I am not an art critic or expert, I fail to see how the majority in its appeallate role can “confidently” draw a distinction between the twenty-five works that it has identified as constituting fair use and the five that do not’.  In his mind, the entire case (all thirty works) should have been remanded for further proceedings in the district court after the point of law had been clarified. 

Some argue that the case does not offer much on how ‘transformative’ should be assessed in the future.   It was said in Mattel, Inc. v Walking Mountain Productions, 353 F.3d 792, 802, n. 7 (9th Cir.2003), that the court does “not make judgments about what objects an artist should choose for their art.”   The decision in Prince avoided creating a rule that any cosmetic change to a photograph would constitute fair use.  Is not transformative surely better judged on a case-by-case basis?  Yet a few days after Prince was handed down, the difficulties of the area reappeared when the Los Angeles District Court concluded that Thierry Guetta had infringed Dennis Morris’s copyright by painting a copy of Morris’s photograph of Sid Vicious on to a wall.  Whether this discrepancy was created in light of the original finding in Prince is yet to be seen and, while both cases fall within the US jurisdiction, the art market is an international market and such cases could have implications for European artists transacting in the US.

The IPKat, who can't help feeling just as puzzled after the Court of Appeals' decision as he was before it, hopes that the substantial publicity generated by this litigation will have generated sufficient further sales of Cariou's and Prince's works to cover the cost of their legal fees.

Merpel wonders whether the judiciary are any better equipped by their qualifications to rule on matters of applied aesthetics of this nature than artists are able, by virtue of their skill and training, to rule on matters of law.