IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks - May 3, 2013

Table of Contents

Cariou v. Prince, USCA Second Circuit, April 25, 2013
 Click here for a copy of the full decision.

  • Second Circuit reverses summary judgment in favor of photographer on his infringement claims against well-known appropriation artist Richard Prince, holding that, to qualify as fair use, a secondary use need not comment on original artist or work, or on popular culture, so long as it is sufficiently transformative.

In 2000, Patrick Cariou published Yes Rasta, a book of classical portraits and landscape photographs that he took over the course of six years spent living among Rastafarians in Jamaica. Richard Prince, a well-known appropriation artist, altered and incorporated pages containing several photographs from Yes Rasta into a series of paintings and collages, called the Canal Zone works, which he exhibited in 2007 and 2008. Prince did not seek Cariou’s authorization to use the Yes Rasta photos in Canal Zone, and Cariou sued Prince for copyright infringement. The district court granted Cariou’s motion for summary judgment, concluding that Prince’s artwork did not constitute fair use because it did not comment on Cariou, his photographs or on aspects of popular culture closely associated with Cariou or his photos. (Read our summary of the district court’s decision here.) On appeal, Prince argued that his works are transformative and constitute fair use, and that the district court imposed an incorrect legal standard in requiring that Prince comment on the original artist, his work or popular culture.

At the outset, the Second Circuit noted the four non-exclusive fair use factors provided in the Copyright Act: (1) the purpose and character of the use, including whether the use is commercial or for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for the value of the copyrighted work. Calling the first factor the “heart of the fair use inquiry,” the Second Circuit focused primarily on whether Prince’s work was transformative. The court explained that, while many types of fair use, such as satire and parody, do comment on the original work or on popular culture, the law does not impose a requirement that a work comment on the original or its author in order to be considered transformative. In addition, a secondary work may constitute a fair use even if it serves some purpose other than those specifically enumerated in the Copyright Act – i.e., criticism, comment, news reporting, teaching, scholarship, and research. In order to qualify as a fair use, the new work generally must be sufficiently transformative that it alters the original with “new expression, meaning, or message.”

Based on its own observation of Prince’s works, the Second Circuit concluded that 25 of the 30 photographs used by Prince were transformative works. The court found that “these twenty-five of Prince’s artworks manifest an entirely different aesthetic from Cariou’s photographs[,]” based on its observation that “Prince’s composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of Prince’s work.” The court specifically contrasted “Cariou’s serene and deliberately composed portraits and landscape photographs [that] depict the natural beauty of Rastafarians and their surrounding environs,” with “Prince’s crude and jarring works,” which are “hectic and provocative.” Plaintiff’s original photographs are black-and-white and printed in a 9 1/2" x 12" book, whereas Prince’s works are “collages on canvas that incorporate color, feature distorted human and other forms and settings, and measure between ten and nearly a hundred times the size of the photographs.” The court found that Prince’s testimony – that he did not have an interest in the intent of the creator of a work that he incorporated into his own, because his purpose was to “completely try to change it into something that’s completely different” – demonstrated Prince’s “drastically different approach and aesthetic” from plaintiff’s. The Second Circuit also noted, as the district court had, that Prince’s Canal Zone artworks related to and emphasized the themes in a post-apocalyptic screenplay that Prince had planned, including themes of equality of the sexes, relationships between and among the sexes, and a contemporary take on the music scene.

On appeal, Cariou argued that, like the district court, the Second Circuit should not find Prince’s work transformative in light of Prince’s testimony that he did not have a message and was not trying to create works with a new meaning or message. The Second Circuit disagreed. “What is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work. Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so. Rather than confining our inquiry to Prince’s explanations of his artworks, we instead examine how the artworks may ‘reasonably be perceived’ in order to assess their transformative nature.” The Second Circuit concluded: “The focus of our infringement analysis is primarily on the Prince artworks themselves, and we see twenty-five of them as transformative as a matter of law.”

The Second Circuit also found that the district court had improperly applied the fourth statutory factor –the effect of the secondary use upon the potential market for the value of the copyrighted work. The district court had concluded that Prince damaged both the actual and potential markets for Cariou’s original work, as well as the potential market for derivative uses, based on the fact that one gallery decided not to host a show of Cariou’s Yes Rasta photographs after learning of Prince’s Canal Zone show, on the incorrect assumption that Cariou was working with Prince on the Canal Zone show. The Second Circuit explained that the fourth factor does not focus on whether the allegedly infringing works suppress or destroy the market for the original works and their derivatives, but rather whether they usurp it. An alleged infringer usurps the market for the original work and its derivatives when the target audience and the nature of the infringing content are the same as the original. The more transformative a work, the less likely it will serve as a market substitute for the original, even though it may still harm or even destroy the market for the original. Noting that the gallery owner’s mistaken assumption that Cariou was part of the Canal Zone show caused the loss of his Yes Rasta show, the Second Circuit concluded that neither Prince nor the Canal Zone show had usurped the market for Cariou’s photographs. The court noted specifically that Prince’s audience – wealthy collectors and celebrities – is very different from Cariou’s audience, and that Prince’s works sold for millions of dollars while the majority of Cariou’s Yes Rasta book sold for less than $60 each and just over $8,000 in total. Moreover, nothing in the record suggested that Cariou would ever develop or license secondary uses of his work that were similar to Prince’s artworks, or that Prince’s artworks had any impact on Cariou’s marketing of his photographs.

The transformative nature of Prince’s work also weighed heavily in the Second Circuit’s analysis of the other two fair use factors – the nature of the copyrighted work, and the amount and substantiality of the portion used in relation to the work as a whole. Acknowledging that Cariou’s work was both creative and published, which weighed against a finding of fair use, the court reasoned this factor was less important when the creative work is used for a transformative purpose. Similarly, while Prince had used all or substantially all of Cariou’s photographs in some of his works, this does not necessarily weigh against fair use because copying the entirety of a work is sometimes necessary to make a fair use of the image. And while Prince had left Cariou’s work almost intact in some of his Canal Zone artworks, in 25 of the works, Prince had “transformed those photographs into something new and different and, as a result, this factor weighs heavily in Prince’s favor.”

With respect to the five remaining works, the court concluded that these works did not differ sufficiently from the photographs they incorporate to find they are transformative as a matter of law. While Prince’s minimal alterations of Cariou’s photographs in those works “moved the work in a different direction from Cariou’s classical portraiture and landscape photos,” the court determined that it could not say that these works presented a new expression, meaning, or message, and remanded to the district court for a determination as to whether the five remaining works constituted fair use.

Slate v. American Broadcasting Companies, Inc., USDC D.D.C., April 23, 2013

  • District court grants summary judgment in favor of ABC News and related entities, finding that investigative journalist Gregory Slate was equitably estopped from asserting that he personally owned copyright in hidden-camera video footage because he held himself out as employee of corporate organization, and dismisses Slate’s action as sanction for fabrication of evidence and other bad-faith litigation tactics.

Pro se plaintiff Gregory Slate and non-party Diop Kamau, principal of an entity named the Police Complaint Center, collaborated with defendant ABC News, Inc. on at least two projects involving the surreptitious videotaping of police engaging in improper conduct. In 2006, PCC and ABC’s Cincinnati local affiliate WCPO undertook to investigate local police responses to persons seeking to file complaints. ABC agreed to pay PCC a fee of $3,000 and to cover its expenses in exchange for ownership of and rights to any video produced in the investigation, which included hidden-camera video of plaintiff’s interactions with police. Plaintiff held himself out to ABC as an employee of PCC. In 2007, PCC approached ABC with a proposal to conduct a similar project in Chicago on similar terms, in which Chicago police officers would be surreptitiously videotaped drinking excessively in bars. ABC agreed, and PCC sent investigators and videographers, including plaintiff, to scout locations in Chicago and to film interactions with police at various locations in Chicago using hidden-camera equipment provided by ABC. Plaintiff turned over all of the video he recorded to ABC. After relations between plaintiff and PCC principal Kamau soured at the end of 2007, plaintiff wrote to ABC purporting to withdraw ABC’s license to use his video and claiming that he was not an employee of PCC. ABC nevertheless aired less than a minute of plaintiff’s video footage during an episode of 20/20. Plaintiff sued ABC and its corporate affiliates for direct and contributory copyright infringement.

Defendants moved for summary judgment, arguing that (1) plaintiff was a PCC employee and that the video he recorded constituted a work for hire and was therefore owned by PCC, (2) plaintiff held himself out as a PCC employee and was equitably estopped from asserting that he personally owned the video, and (3) plaintiff had implicitly granted defendants a license to use plaintiff’s video. The court granted summary judgment in defendants’ favor on equitable estoppel grounds, finding that plaintiff and PCC’s Kamau held plaintiff out as a principal of PCC and led ABC to believe that it was purchasing video owned by PCC. The court found that plaintiff had held himself out as an employee of PCC by, among other things, using an email address with a domain name associated with PCC, proposing additional hidden-camera projects on behalf of PCC, asking for and accepting payment of expenses through PCC, and remaining silent when PCC held Slate out as one of its agents. The court rejected plaintiff’s argument that defendants had not demonstrated detrimental reliance, finding that, although plaintiff asserted rights to the video before ABC actually edited and aired it, he did not do so until after ABC had expended substantial resources to create and obtain the video footage, including compensating PCC for its work.

Defendants also moved to dismiss plaintiff’s claims as a sanction for plaintiff’s bad-faith litigation conduct, including fabricating a letter that plaintiff purportedly sent to PCC prior to the Chicago video project stating that plaintiff was not a PCC employee and that he expected to be compensated separately. The court found that the letter was a fake based on the fact that defendants denied ever receiving the letter, plaintiff could not produce an electronic version of the letter, and the letter referenced plaintiff as an Emmy award-winner, even though the Emmy nominations had not even been announced as of the date of the letter. The court also found that plaintiff had engaged in vexatious and bad-faith discovery practices, including corresponding with ABC under an alias in an attempt to create evidence helpful to his case, producing discovery documents in a soiled envelope smelling of excrement, attempting to improperly videotape his own deposition, and producing voluminous irrelevant and misleading materials. Although plaintiff was proceeding pro se, the court found that this bad-faith conduct warranted severe sanctions and dismissed plaintiff’s claims.


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Loeb & Loeb LLP on:

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