Yes Rasta! Appropriate Appropriation: Second Circuit Holds That Commentary on Original Work Unnecessary for Fair Use Defense, Only Transformative Quality Required

by Sheppard Mullin Richter & Hampton LLP

In Cariou v. Prince, No. 11-1197-cv (2d Cir. Apr. 25, 2013), an opinion with significant importance for the art world, the U.S. Court of Appeals for the Second Circuit clarified what is required for a defendant’s entitlement to the “fair use” defense to a claim of copyright infringement, holding that the law does not require that a secondary use comment on the original artist or work, or popular culture, but only that the secondary work be “transformative.”

In 2000, photographer Patrick Cariou published a book entitled Yes Rasta, featuring portraits of Rastafarians shot during his years in Jamaica, which enjoyed modest sales and distribution. Years later, well-known appropriation artist Richard Prince, in a series of paintings and collages, incorporated to varying extents several of Cariou’s Yes Rasta portraits into his works. Prince’s work for decades has involved taking others’ photographs and other images and integrating them into his paintings and collages in different contexts. The works at issue were featured in number of exhibitions, including those by the Eden Rock Hotel in St. Barth’s and defendant New York’s Gagosian Gallery, owned by defendant Lawrence Gagosian.

Cariou brought claims of copyright infringement against Prince, the Gagosian Gallery, and Lawrence Gagosian, alleging that Prince’s works infringed Cariou’s rights in his Yes Rasta photographs. Prince (and the other defendants) raised a “fair use” defense. When satisfied, the “fair use” defense, codified in the federal Copyright Act, permits a defendant to make use of another’s copyright work or portions thereof. Courts look to four main factors in determining whether a secondary use is “fair”: the nature of the original copyrighted work, the extent of the original work used, whether the secondary use is commercial or non-commercial, and whether the secondary use replaces the market for the original.

The district court held that Prince’s works were not eligible for the fair use defense and issued a permanent injunction compelling the defendants to deliver to Cariou all infringing works not yet sold for Cariou to destroy, sell, or otherwise dispose of. In doing so, the district court concluded that in order to qualify for a fair use defense, Prince’s work must comment on Cariou, on Cariou’s photographs, or on aspects of popular culture closely associated with Cariou or his photographs. The district court determined that Prince’s works did not make any such comments, so the fair use defense was inapplicable and Prince’s works were infringing.

On appeal, the Second Circuit evaluated whether the district court applied the incorrect standard to determine if Prince’s artworks made fair use of Cariou’s copyrighted photographs. As a primary matter, the Second Circuit looked to the aims of the Constitution’s “intellectual property” clause, reasoning that copyright law was designed to stimulate activity and progress in the arts, and that excessively broad copyright protection would stifle, rather and advance, the law’s objective; the fair use doctrine functions as a mediator between the property rights that copyright law establishes in creative works and the ability of artists or authors to express themselves by reference to others’ works. Quoting its prior precedent, the Court stated that the “ultimate test of fair use is whether the copyright law’s goal of promoting the Progress of Science and the useful Arts would be better served by allowing the use than by preventing it.”

The Second Circuit made clear that the real test for the fair use defense is whether the secondary artwork is a “transformative” use of the original work, and stated that the law imposes no requirement that a work comment on the original or its author in order to be considered transformative. Indeed, the Court said that a secondary work “may constitute 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.” What is critical is whether the new work alters the original with new expression, meaning, or message, and how the work in question appears to the reasonable observer. The Court was careful to clarify that cosmetic changes to an original work would not automatically qualify a secondary work to fair use protection; it is possible that a secondary work could modify the original without being transformative.

In evaluating the use of Cariou’s photographs in Prince’s paintings and collages, the Second Circuit concluded that twenty-five of the thirty works at issue were transformative, manifesting “an entirely different aesthetic from Cariou’s photographs” – Cariou’s photos depicted the natural beauty of Rastafarians in their environment whereas Prince’s works were “crude and jarring,” “hectic and provocative.” Further, where Cariou’s pictures were relatively small and in black and white, Prince’s collages and paintings were massive, colorful, and made of varying media, all contributing to the distinct expressive nature Princes’ work. Even though Prince’s works were commercial in nature, the Court did not give that factor significant weight because of the works’ transformative quality. With regard to whether the Prince’s works would harm the market for Cariou’s photographs, the Court said that in a fair use analysis, the concern is not whether the secondary use suppresses or even destroys the market for the original work (or potential derivatives), but whether the secondary use usurps the market for the original work. The Court reasoned that the audiences for Prince’s artwork and Cariou’s photographs were quite different – Prince’s works sold for millions of dollars and were displayed at exhibitions attended by major celebrities, whereas Cariou’s works had modest sales that would not be impacted by Prince’s works. The Court further reasoned that while Cariou’s photographs were themselves creative works of art, which weighed against fair use, that factor was of limited use where the works of art were being used for a creative purpose. In analyzing the significance of how much of Cariou’s photographs Prince took, the Court said the concern was not only whether Prince took more than what was necessary, but also the quality and importance of the taken materials to the original work. The Second Circuit determined that although Prince used key portions of certain of Cariou’s photographs, Prince transformed those photographs into something new and different.

The Court concluded that twenty-five of the Prince works were entitled to fair use protection due to their transformative qualities. The Court was not able to reach that same conclusion as to five other Prince works, and sent the question back to the district court to look at whether those five works, which had relatively minimal alterations, impermissibly infringed Cariou’s copyrights. The Gagosian Gallery and art dealer Lawrence Gagosian could not be held directly or secondarily liable with regard to the twenty-five non-infringing works, but could be held liable were the other five works found to be infringing by the district court.

The Cariou case is an important clarification of copyright law with substantial and obvious impact on the art world, both for artists as well as for exhibitors and dealers of artwork. In not limiting the fair use defense to only those works which comment in some way on the original work, the original work’s creator, or popular culture surrounding the original work or its creator, the Second Circuit’s decision permits a much greater universe of secondary works to be eligible for the fair use defense. This reading of the fair use doctrine permits a more expansive potential for appropriation of original works, provided that the new works actually transform the underlying works by in adding new expression, meaning, or message.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Sheppard Mullin Richter & Hampton LLP | Attorney Advertising

Written by:

Sheppard Mullin Richter & Hampton LLP

Sheppard Mullin Richter & Hampton LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.