FORDHAM LAW ROUNDTABLE SERIES PRESENTED BY The Future of Fair Use After Cariou v. Prince Sonia Katyal Joseph M. McLaughlin Professor of Law, Fordham Law School Dale Cendali Partner, Kirkland & Ellis LLP Virginia Rutledge Art Historian and Attorney, PIPE Arts Group Christine Steiner Special Counsel, Art Law Practice, Sheppard Mullin Richter & Hampton LLP

The Images at Issue

Facts of the case  Plaintiff: Patrick Cariou is a professional photographer who spent time with Rastafarians in Jamaica for six years, gaining their trust and taking their portraits in a book, Yes, Rasta.  Defendant: Richard Prince is a well known appropriation artist who has shown at a number of prominent museums,  Co-defendant: The Gagosian Gallery, which represents Prince.  Issue: The case concerns a collage by Prince called Canal Zone, made in 2007, which consisted of 35 photographs torn from Yes, Rasta. Prince painted over some portions of the 35 photographs, using portions of some photos and other in their entirety.

The Canal Zone series  The collage was meant to serve as an introduction to a series of characters who were supposed to appear in a screenplay and a planned series of artworks.  Prince ultimately completed 29 images for a Canal Zone series, 28 of which had images taken from the book, Yes, Rasta. Some were images taken from the book and then collaged, enlarged, cropped, tinted, painted over, etc.  Prince used a total of 41 photos from the book as elements for his paintings.  Gagosian showed 22 of the 29 Canal Zone paintings, and sold an exhibition catalog; the managing editor of the catalog did not inquire regarding the source of the photographs.

Market effect?  Cariou was negotiating with a gallery owner to potentially sell prints for between $3,000 and $20,000.  The gallery owner cancelled the show after hearing about the Canal Zone exhibition because she did not want to seem to be capitalizing on Prince’s success and notoriety and because she did not want to do something that had already been done at another gallery.

Fair use: The District Court’s opinion Purpose and character of the use: Refers to whether the use is for criticism, comment, or news reporting and the like.  Is the work transformative? Only slightly.  The court said that the fact that a work recasts, transforms or adapts a work does not automatically make it transformative; the issue in this case was whether using copyrighted materials as “raw materials” when someone does not comment on the copyrighted original can qualify as a fair use.  The district court required the work to ‘comment’ on the original.  The less transformative a work is, the more importance should be attached to the commerciality of a work.  Also found evidence of bad faith.

Fair use: The District Court’s opinion The nature of the work: Considers whether the work is expressive or creative, or more factual—with greater weight towards fair use placed on a work when it is factual or informational.  The court found that Cariou’s works were highly original and creative and that they constitute creative expression for public dissemination, falling within the core of the copyright’s protective purposes.

Fair use: The District Court’s opinion Amount and substantiality: Involves the amount and substantiality of the portion used—finding that a defendant’s use is generally not considered fair when an entire work is reproduced.  Because Prince appropriated entire photos and the central figures in the portraits, essentially taking the heart of the work, the court found that the amount taken was greater than necessary, given the slight transformative value of his secondary use.

Fair use: The District Court’s opinion Market effect: Involves the effect of the use on the potential market for or value of the copyrighted work. Requires the court to consider not just the harm to the original, but also the harm to derivative works that flow from the original  The court found that it was irrelevant whether Cariou marketed his works as aggressively as Prince; it noted that the gallery owner did not want to show Cariou’s works after Prince’s show.  The court also found that this weighed in favor of Cariou.

Direct, contributory, vicarious infringement  The court noted that the gallery was well aware “and capitalized on” Prince’s reputation as an appropriation artist, but that they knew or should have known of the infringement at the time they reproduced the paintings.  A final piece is the question of remedy: it demanded that they deliver all copies of the photographs, paintings, and unsold catalogs, for impounding or destruction.

Issues to Discuss  Is the work truly transformative? Should the court have looked at each painting separately rather than as a single whole?  How much weight should a court give the artist’s ‘intentions’ vs. the audience’s receipt of a work?  How should copyright law account for the possibility of a positive market effect?  Is there a chilling effect on creativity as a result of this decision? How do we deal with the question of incentives after this outcome?  What about the distributive effects here? What would have been the harm in licensing these images? Is attribution sufficient?

References  Cariou v. Prince, 08 Civ , Memorandum & Order  “Cariou v. Prince, Painter or Prince of Thieves?,” 2011 D EN. U. S PORTS & E NT. L.J. 117 (2011) %2Fwww.law.du.edu%2Fdocuments%2Fsports-and-entertainment-law- journal%2Fissues%2F11%2FJenniferEdited-VersionSELJFall pdf&ei=mhVTUIi9BpG89QSzq4GwAw&usg= AFQjCNE_T9GQDLltANw92FqPvEW4TxRS2g %2Fwww.law.du.edu%2Fdocuments%2Fsports-and-entertainment-law- journal%2Fissues%2F11%2FJenniferEdited-VersionSELJFall pdf&ei=mhVTUIi9BpG89QSzq4GwAw&usg= AFQjCNE_T9GQDLltANw92FqPvEW4TxRS2g  “Cariou v. Prince: The Copyright Bungle,” Artnet  “Court Jester: Is Richard Prince Using the Legal System as a Medium?,” The Observer/GalleristNY  "Handicapping Cariou v. Prince: 4 Possible Outcomes for the Landmark Appropriation Art Lawsuit," Blouin/Art Info landmark-appropriation-art-lawsuit landmark-appropriation-art-lawsuit  “Cariou v. Prince: The Money Issue,” Hyperallergic The preceding presentation was prepared by Fordham Law Professor Sonia Katyal.Sonia Katyal