IP Law Daily Appropriation artist’s use of Rastafarian man photograph not fair use
Wednesday, July 19, 2017

Appropriation artist’s use of Rastafarian man photograph not fair use

By Linda O’Brien, J.D., LL.M.

In an action by a professional photographer against an appropriation artist and art gallery for unauthorized copying of his original photographic portrait for use in a derivative work, the defendants failed to establish that the artist’s reproduction made fair use of the photographer’s work that insulated them from copyright infringement liability, the federal district court in New York City has decided. The defendants’ contention the artist’s work was a transformative use of the original photograph was rejected because the photograph dominated the artist’s work and the works were not sufficiently aesthetically different. In addition, the artist’s work had a distinctly commercial purpose and potentially usurped the potential market for or value of the original photograph. Thus, the defendants’ motion to dismiss was denied (Graham v. Prince, July 18, 2017, Stein, S.).

Professional photographer Donald Graham created the original photograph Rastafarian Smoking a Joint. The portrait depicts a Rastafarian man with long dreadlocks, standing shirtless against a white background, smoking a marijuana cigarette. First published in August 1998, the work was recognized for its artistic merit and Graham sold prints of the photograph to collectors.

Richard Prince, known as an "appropriation artist," created a print known as Untitled (Portrait). Prince’s Untitled is an inkjet print of a screenshot that captures a post on the social media platform Instagram. The screenshot consists of a slightly cropped copy of Rastafarian Smoking a Joint—reproduced without Graham’s permission—which included Prince’s comment as well as other elements of the Instagram graphic interface. The print was displayed in Gagosian Gallery in September and October 2014.

After Graham learned of Untitled in October 2014, he registered Rastafarian Smoking a Joint with the U.S. Copyright Office and sent Prince and Gagosian Gallery a cease and desist letter. Despite receiving the letter, Prince produced a billboard which featured a photograph of Untitled for several months. In December 2015, Graham filed suit against Prince and Gagosian Gallery for willful copyright infringement. The defendants asserted the affirmative defense of fair use and moved to dismiss the complaint and to limit damages.

Fair use. The court determined that the defendants failed to establish that the affirmative defense of fair use insulated them from liability for copyright infringement. In analyzing the purpose and character of the use, Prince reproduced Graham’s portrait without significant aesthetic alterations. The defendants’ contention that Untitled was a transformative use of Rastafarian Smoking a Joint was rejected because, in a side-by-side comparison, it was evident that Prince’s work was not so aesthetically different that a "reasonable viewer" would recognized that Prince used Graham’s original simply as "raw material." Notwithstanding Prince’s additions, Graham’s unobstructed and unaltered photograph was the dominant image in Untitled.

Additionally, Untitled is a work made with a distinctly commercial purpose, the court noted. Prince’s print and exhibition at the gallery were both commercial works. Any public benefit was limited since the print was only displayed for one month prior to its sale.

Furthermore, Graham adequately alleged usurpation of the potential market or value for Untitled. The complaint alleged that Graham and Prince both market their artwork to fine art collectors and display their artwork at fine art galleries. Graham also pleaded sufficient facts that Prince’s work could serve as a substitute for Graham’s original work, notwithstanding Prince’s alterations. Untitled contains an essentially unaltered reproduction of Rastafarian Smoking a Joint and both works are two-dimensional artworks made available in virtually identical sizes. According to the court, these were plausible allegations that the Untitled artwork, as well as the catalog in which it was printed and distributed, shared the same audience and nature as Graham’s photograph. Accepting the facts set forth in the complaint, Prince’s Untitled did not make fair use of Graham’s Rastafarian Smoking a Joint. Therefore, the complaint stated a claim for copyright infringement and the motion to dismiss must be denied.

Limitation of damages. In his complaint, Graham sought an unspecified amount of actual damages. The defendants’ argument that actual damages could not exceed their profits from the sale of Untitled because the plaintiff did not allege any actual lost licensing opportunities was rejected. The court noted that the determination of a reasonable licensing fee for Rastafarian Smoking a Joint was a question of fact and that the reasonable licensing fee might ultimately be lower than the yet undetermined profits did not compel the limitation of the plaintiff’s potential damages on the basis of the pleadings.

The Copyright Act makes registration a condition precedent for recovering both statutory damages and attorney fees, the court explained. Although it was undisputed that Untitled was created and displayed as part of an exhibition prior to the October 2014 registration date of Rastafarian Smoking a Joint, it was premature to bar statutory damages and fees for other allegedly infringing works, such as the billboard display. Each alleged infringing work must be analyzed on its own merits and it would be impermissible to determine that other works created after the registration date could only be infringements if Untitled was one as well, the court concluded.

The case is No. 1:15-cv-10160-SHS.

Attorneys: David James Kappos (Cravath, Swaine & Moore LLP) for Donald Graham. Joshua Schiller (Boies, Schiller & Flexner LLP) for Richard Prince.

Companies: Gagosian Gallery, Inc.

MainStory: TopStory Copyright NewYorkNews

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