Significant Copyright Issues— Treatment of “Appropriation Art” Under United States Copyright Law

SIGNIFICANT COPYRIGHT ISSUES— TREATMENT OF “APPROPRIATION ART” UNDER UNITED STATES COPYRIGHT LAW

NEW YORK STATE BAR ASSOCIATION INTERNATIONAL LAW AND PRACTICE SECTION FALL MEETING—2016 PARIS, FRANCE

PROGRAM 6

L. Donald Prutzman Tannenbaum Helpern Syracuse & Hirschtritt LLP 900 Third Avenue New York, New York 10022 (212) 508-6739

TREATMENT OF “APPROPRIATION ART” UNDER UNITED STATES COPYRIGHT LAW

L. Donald Prutzman Tannenbaum Helpern Syracuse & Hirschtritt LLP New York, New York

I. “Appropriation Art” and Copyright Law—A Clash of Artists’ Rights

Appropriation art is an artistic genre in which the appropriation artist uses existing

works by other artists to create new works that recontextualize the original work in some

way, often to attempt to make a comment on some aspect of society. Appropriation artists consider it essential to the genre to appropriate existing work of others rather than

create a new, wholly original work from scratch. The Tate Gallery has defined

appropriation art as “the more or less direct taking over into a work of art of a real object

or even an existing work of art.” The appropriation aspect creates significant copyright

law issues because it is also part of the cannon of appropriation art that the appropriated

underlying work cannot be licensed or credited.

The creation of “appropriation art” implicates primarily two provisions of United

States copyright law. First, § 106 of the Copyright Act gives the copyright owner the

exclusive right “to prepare derivative works based upon the copyrighted work.” 17

U.S.C. § 106(2). A derivative work is defined as “a work based upon one or more

preexisting works,” including “any other form in which a work may be recast,

transformed, or adapted.” 17 U.S.C. § 101. Thus, in almost all cases, the appropriation

artwork will be a derivative work of the appropriated artwork.

However, the exclusive rights of the copyright owner are not absolute. Because

the purpose of copyright law is to promote and foster the progress of creative work, the

exclusive rights are subject to what is known as the “fair use” privilege, where society’s interests supersede the copyright owner’s interests. Under the United States Copyright

Act, the fair use privilege is codified in § 107. This section provides that:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, 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 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 or value of the copyrighted work.

The cases discussed below showing the evolution of the treatment of appropriation art under the copyright law in the United States all analyze and apply the four factors of the fair use privilege to determine whether the work of appropriation art in issue is an infringement or a fair use (and therefore not an infringement).

As will be seen, the treatment of the copyright issues involved in appropriation art in the United States has evolved significantly over the years. Courts initially applied copyright principles relatively strictly and found that use of another’s work to create appropriation art infringed the copyright. More recently, courts have relied on the emerging concept of “transformative use” to find that appropriation art is often, but not invariably, a “fair use” of the underlying work.

II. The Seminal Case—Rogers v. Koons

The first United States case to apply the copyright law to a work of appropriation

art was Rogers v. Koons, 960 F.2d 301 (2d Cir.), cert denied, 506 U.S. 934 (1992)

(attached as Exhibit A). The court there considered whether the artist’s relatively exact

copy (except for adding color and a few minor embellishments) of the plaintiff’s

photograph of two people with eight puppies on their laps in the form of a life size, three-

dimensional sculpture infringed the copyright in the photograph. The plaintiff,

photographer Art Rogers created the photograph “Puppies,” shown below”

Rogers sold prints of the photograph to the human subjects, sold signed prints to collectors, and licensed the photograph to a company known as Museum Graphics for use on note cards. The highly successful appropriation artist Jeff Koons purchased a copy of

the notecard in a “very commercial, tourist-like card shop” and used it to create a work in

what he termed his “Banality Series.” Through detailed directions he instructed a firm of

Italian artisan wood carvers in the creation of a life-sized color sculptural version of the

photograph, which he titled “String of Puppies, shown below:

When Rogers learned of Koons’ work through a newspaper photograph of the

sculpture exhibited in an art museum, he brought an action for copyright infringement.

After the court of first instance found infringement on summary judgment, Koons appealed to the United States Court of Appeals for the Second Circuit (which covers the states of New York, Connecticut and Vermont).

The court affirmed the lower court’s finding of infringement. The first paragraph of the court’s decision left no doubt where the court was heading.

The key to this copyright infringement suit, brought by a plaintiff photographer against a defendant sculptor and the gallery representing him, is defendants’ borrowing of plaintiff’s expression of a typical American scene—a smiling husband and wife holding a litter of charming puppies. The copying was so deliberate as to suggest that defendants resolved so long as they were significant players in the art business, and the copies they produced bettered the price of the copied work by a thousand to one, their piracy of a less well-known artist’s work would escape being sullied by an accusation of plagiarism.

But the court was not about to let that happen. Koons argued (1) that the portions

of the photograph copied were not sufficiently original to merit copyright protection, and

(2) that even if original material was copied the copying was “fair use.

The court easily refuted the lack of originality argument. “Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved.” 960

F.2d at 307. The court found that “Rogers’ inventive efforts in posing the group for the photograph, taking the picture, and printing ‘Puppies’ suffices to meet the original work of art criteria.” Id. The court further found that the evidence that the sculpture was copied from the photograph was so compelling that summary judgment, rather than a trial, was an appropriate way to resolve the issue. In particular, the court noted that “this case presents the rare scenario where there is direct evidence of copying. Koons admittedly gave a copy of the photograph to the Italian artisans with the explicit instruction that the work be copied,” including specific details such as the shading, the expressions and the texture of the puppies’ fur.

On the fair use issue Koons’ primary argument on the “purpose and character of the use” factor was that the sculpture was a parody or satire of society at large, if not of the photograph itself. The court acknowledged that use of a copyrighted work for a

parody or satire is a legitimate fair use purpose, but rejected the argument here because the photograph was not sufficiently well known to the public to be the object of a parody or satire. The court stated, “It is the rule in this Circuit that though the satire need not be only of the copied work and may, as appellants urge of “String of Puppies,” also be a parody of modern society, the copied work must be, at least in part, an object of the parody, otherwise there would be no need to conjure up the original work.” 960 F.2d at

310. The court considered this “a necessary rule, as were it otherwise there would be no real limitation on the copier’s use of another’s copyrighted work to make a statement on some aspect of society at large.” The court further found that “The circumstances of this case indicate that Koons’ copying of the photograph “Puppies” was done in bad faith, primarily for profit-making motives,” which it held against Koons in evaluating this factor.

The court next found that the “nature of the work” factor militated against fair use, “Since ‘Puppies’ is creative and imaginative and Rogers, who makes his living as a photographer, hopes to gain a financial return for his efforts with this photograph”. 960

F2d at 310.

In considering the “amount and substantiality of the work used” factor, the court noted that the relevant inquiry is the amount and substantiality of the protected expression that has been used, not the factual content of the material in the copyrighted work and that the qualitative degree of the copying—i.e., whether the essence of the work, or peripheral details, have been copied. 960 F.2d at 311. Here, the court found that the copying was substantial and that the essence of the photograph had been copied.

Finally, in looking at the effect of the use on the market value of the original, the court noted that the Supreme Court considered this factor “the most important, and, indeed, central fair use factor.” The court viewed Koons’ profit motive as a lot more significant than his motive to create works of art. In the judges’ view, “there is simply nothing in the record to support a view that Koons produced “String of Puppies” for anything other than sale as high-priced art. Hence, the likelihood of future harm to

Rogers’ photograph is presumed, and plaintiff’s market for his work has been prejudiced.”

In summary, the court was not very sympathetic to Koons’ artistic goals and viewed him more as a profiteer on Rogers’ work. The court even quoted a New York

Times critic’s complaint that “’Koons is pushing the relationship between art and money so far that everyone involved comes out looking slightly absurd.’” 960 F.2d at 304. The primary takeaway from the decision for the development of the analysis of appropriation art as fair use is the adherence to the requirement that a parody or satire must comment, at least in part, on the copied work to be considered fair use, that comment on society at large is insufficient, and that the underlying work must be sufficiently well known to the audience to be “conjured up” in their minds.

III. Round Two—Blanch v. Koons

Fourteen years after Rogers v. Koons, the same court – the United States Court of

Appeals for the Second Circuit – again addressed a copyright infringement case involving appropriation art. Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006), (attached as Exhibit B).

The artist involved was, again, Jeff Koons and the plaintiff was a photographer whose work Koons had “appropriated.” This time, however, the Koons work was a collage that

incorporated part of the plaintiff Andrea Blanch’s work, along with parts of several other works. Blanch’s work, shown below, was an advertising photograph that initially appeared in Allure magazine entitled “Silk Sandals by Gucci.”

Koons’ work, from his then-latest series entitled “Easyfun-Ethereal” paintings, was a collage entitled “Niagara” that combined images from advertisements and Koons’ own photographs and digitally superimposed them against a background of a landscape.

“Niagara,” shown below, depicts four pairs of women’s feet and lower legs dangling prominently over images of desserts, with a grassy field and Niagara Falls in the background. (Blanch’s feet and legs appear second from the left.)

As in Rogers there was a significant disparity between Koons’ profit and Blanch’s profit

from their respective works. Koons realized at least $126,877. Blanch received $750 for her work creating her photograph. She retained the copyright but had not licensed it subsequently.

The intervening years between 1992 and 2006 had seen one important development in the area of fair use analysis that figured in the Blanch decision. In 1990,

Judge Pierre N. Leval, then a district court judge in the Southern District of New York, published what became an influential law review article entitled, Toward a Fair Use

Standard, 103 Harv. L. Rev. 1105 (1990). In 1993, he was elevated to the Second Circuit

Court of Appeals (although he did not sit on the panel of three judges that heard Blanch v.

Koons). Judge Leval’s article introduced the concept of “transformative use” as a

consideration in evaluating the first fair use factor—the purpose and character of the use.

A use of a copyrighted work is considered “transformative” when it does something more

than supersede the object of the original. Instead, it “adds something new, with a further

purpose or different character, altering the first with new expression, meaning, or

message.” 467 F.3d at 251, quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569

(1994). The “transformative use” concept is much harder to apply than to describe

conceptually. By 2006, the concept had “caught on” as part of the fair use evaluation, at

least within the Second Circuit, but courts were (and still are) wrestling with exactly what

it means as a practical matter.

In Blanch, unlike Rogers, the lower court had sided with Koons and found that his

appropriation of Blanch’s image was fair use. The appellate court was reviewing that

determination. In considering the purpose and character of the use, the “transformative

use” concept heavily influenced the court. The court noted that “Koons does not argue

that his use was transformative solely because Blanch’s work is a photograph and his a

painting, or because Blanch’s photograph is in a fashion magazine and his painting is

displayed in museums. . . . But Koons asserts—and Blanch does not deny—that his

purposes in using Blanch’s image are sharply different from Blanch’s goals in creating it.

. . Koons is, by his own undisputed description, using Blanch’s image as fodder for his

commentary on the social and aesthetic consequences of mass media. His stated

objective is thus not to repackage Blanch’s ‘Silk Sandles,’ but to employ it ‘in the

creation of new information, new aesthetics, new insights and understandings.” In short,

the court was saying that when the underlying work is used as “raw material” in

furtherance of distinct creative or communicative objectives, the use is transformative.

467 F.3d at 252-53.

The court also considered the commercial nature of Koons’ use of Blanch’s work

and concluded that it was not sufficiently dominant to undercut the transformative aspect.

It also considered parody and satire as justifications for the copying, but concluded, as in

Rogers that the lack of actual reference to Blanch’s work and the relevant audience’s lack

of familiarity with it meant that it was not a parody or satire. In addition, the court

considered Koons’ good or bad faith in copying the underlying work. It concluded that decisions since Rogers had deemphasized bad faith as a factor, and that Koons’ failure to ask Blanch’s permission to use her work—the only alleged “bad faith” by Koons—was not indicative of bad faith since there is no need to ask permission if the use is “fair use.”

The court thus made the “transformative use” concept the primary inquiry under the purpose and character of the use factor. It found the use “transformative,” but both

the articulation and application of the test are opaque, difficult to apply, and difficult for

lawyers to use to predict results and advise clients.

In considering the second factor—nature of the copyrighted work—the court

found (a) the fact that the work was published cuts somewhat in favor of fair use and (b)

the creative nature of the work militates somewhat against fair use. However, the court

stated that where “transformative use” is in play, the creative nature of the work is “of

limited usefulness.” 467 F.3d at 257.

As to the third factor—amount and substantiality of the portion used—even

though Koons’ used the very heart of Blanch’s image, the feet and legs, and discarded

only the background, the court discounted this factor almost entirely. It found that

Koons’ copying “was indeed reasonable when measured in light of his purpose, to convey the ‘fact’ of the photograph to viewers of the painting.” Based on this, the court weighed this factor in Koons’ favor. 467 F.3d at 257-58.

Finally, the court wholly discounted the fourth factor—market effects—which was considered the most important factor at the time of the Rogers decision. The court reasoned that Koons’ use did not suppress or destroy any market for her photograph that

Blanch would ever have exploited. The decision notes that Blanch had never licensed this particular photograph except for the initial magazine ad, and that in general she did not license her works for use in graphic or visual art. Accordingly, this factor “greatly favors Koons.” 467 F.3d at 458.

In summary, Although the court purported to consider and apply all four fair use factors, it placed primary, almost paramount emphasis on the evolving concept of

“transformative” use. In addition, the use of Blanch’s work in barely recognizable form as part of a collage made this a much different case from Rogers.

IV. The Latest Word—Cariou v. Prince

Appropriation art came before the courts again, and the Second Circuit again, in

2013 in Cariou v. Prince, 714 F.3d 694 (2d Cir.), cert. denied, 134 S. Ct. 618 (2013)

(attached as Exhibit C). In 2000, photographer Patrick Cariou published Yes Rasta, a book of photographs of Rastafarians in Jamaica. The book enjoyed limited success and had a print run of 7,000 copies. Appropriation artist Richard Prince found a copy in a bookstore in St. Barth’s in 2005. He purchased three additional copies in 2008. He used the photographs to create a series of artworks called the “Canal Zone” series, most of which incorporated partial or whole images from Yes Rasta. The portions of the photographs used, and the amount of each artwork that they constitute, “vary significantly from piece to piece.” Some of the works, such as “James Brown Disco

Ball,” shown below, display head shots from Yes Rasta affixed onto other appropriated images placed on a canvas Prince painted.

Other works, such as Prince’s “Graduation,” shown below at right alongside Cariou’s original, made minor additions to Cariou’s original photographs.

This time, the lower court had found decisively in favor of Cariou and issued a broad injunction baring further display and distribution of Prince’s infringing works and

ordering their delivery to Cariou for destruction, sale or other disposition. Relying on the

increasing popularity with the courts and influence of the “transformative use” concept,

Prince argued that his works constituted fair use of Cariou’s photographs largely on that

basis alone. The appeal turned primarily on the court’s rejection of the lower court’s

view that to qualify for a fair use defense, Prince’s work must comment on Cariou,

Cariou’s photos, or on aspects of popular culture closely associated with Cariou or the

photos, a concept based on Rogers v. Koons’ requirement that a parody or satire must

comment on the underlying work, not just appropriate the underlying work to comment

on some aspect of society.

As the court analyzed the issue, comment on the underlying work may be required

to fit within a parody or satire fair use defense, but not to invoke the “transformative use”

defense. According to the court, “The law imposes no requirement that a work comment

on the original or its author in order to be considered transformative, and a secondary

work may constitute a fair use even if it serves some purpose other than those (criticism,

comment, news reporting, teaching, scholarship, and research) identified in the preamble to [§ 107 of the Copyright Act]. . . . [T]o qualify for fair use, a new work generally must alter the original with ‘new expression, meaning, or message.’” 714 F. 3d at 706.

Indeed, according to the court, even if the artist disavows any purpose to comment on society at large, as Prince did in his pre-trial testimony, the artist’s view does not constrain the court, which can look to its own view of how the public would view the work in question. “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. . . 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.” 714 F.3d at 707.

The court next gave brief consideration to the commercial nature of Prince’s use of the photographs but gave it next to no weight. In the court’s view, the more

“transformative” the accused work, the less significance should be accorded to “other factors, like commercialism, that may weigh against a finding of fair use.” 714 F.3d at

708.

The court then turned to the fourth factor—the effect of the use upon the market for the work. Again, the decision narrowed and discounted this factor in light of the

“transformative” use it found. It held that damage to the market for derivative works is not within the purview of this factor, rather it focuses only on whether the secondary use usurps the market for the original work, and that the market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop. 714 F.3d at 708. In other words, because Cariou would never have

thought of offering to license his photographs to appropriation artists he suffered no

market damage.

The nature of the copyrighted work factor also received short shrift from the

court. It found “no dispute that Cariou’s work is creative and published. Accordingly,

this factor weighs against a fair use determination. However, just as with the commercial

character of Prince’s work, this factor ‘may be of limited usefulness where,’ as here, ‘the

creative work of art is being used for a transformative purpose.’” 714 F.3d at 710.

In short, in considering the application of the fair use factors to appropriation art,

under Cariou v. Prince, if the use is “transformative” nothing else matters much. The

court found that twenty-five of the thirty works under consideration were

“transformative” as a matter of law. As to five works, including Graduation shown

above, the court could not conclude that they were “transformative” as a matter of law

and remanded the case to the district court for a determination as to those five. However,

before the lower court ruled on the remanded issues the case was settled.

Most significantly, the Cariou court did not even mention Rogers v. Koons. It

was neither distinguished, nor overruled, nor even cited.

V. Is Cariou v. Prince the Final Word?

The United States Supreme Court declined to review Cariou v. Prince, and so it

currently represents the law, at least within the Second Circuit (comprised of New York,

Connecticut and Vermont). However, its exaltation of “transformative use” above all else has not met with universal acclaim. In Kienitz v. Sconnie Nation LLC, 766 F.3d 756

(7th Cir. 2014) (attached as Exhibit D), another United States Court of Appeals,

questioned whether such heavy reliance on the “transformative” concept was appropriate.

Kienitz did not involve appropriation art, but did consider whether the use of a

photograph of the Mayor of Madison, Wisconsin, shown below at the left, to create an

image used on t-shirts and tank tops that criticized one of the Mayor’s policies, shown

below on the right, was a fair use.

Not surprisingly, the defendants argued that the use of the photograph was

“transformative” and prevailed below on that theory. On appeal, the court noted that the

Second Circuit had “concluded that ‘transformative use’ is enough to bring a modified

copy within the scope of” fair use, but pointedly stated that,

We’re skeptical of Cariou’s approach, because asking exclusively whether something is “transformative” not only replaces the list in § 107 but also could override 17 U.S.C. § 106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under § 106(2). Cariou and its predecessors in the Second Circuit do no[t] explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under § 106(2).

We think it best to stick with the statutory list, of which the most important usually is the fourth (market effect).

766 F.3d at 758.

Since the image created from the photograph was used to comment on the

Mayor’s policies, and the underlying photograph was barely recognizable, the

appropriation was, not surprisingly, found to be fair use. However, the dissatisfaction with the Cariou approach and its elevation of “transformative use” above all else was significant. It remains to be seen whether the Cariou approach to fair use will catch on outside the Second Circuit. It seems likely, however, that the next significant challenge to an appropriation artist’s use of an underlying work will be brought in a court within the

Seventh Circuit, which decided Kienitz, or at least a court outside the Second Circuit. If a conflict between the Second Circuit’s approach and that taken by other circuits develops, the United States Supreme Court may decide to accept a case for review and resolve the issue on a nationwide basis.

QUESTIONS FOR FURTHER THOUGHT

The development of the law concerning whether appropriation art makes “fair use” of the appropriated works discussed above leaves some questions for further thought. Should “transformative use” essentially trump all other fair use factors as

Cariou effectively holds? What role should the underlying copyright holder’s exclusive right to create derivative works play? Would Rogers v. Koons be decided differently if the case arose today? Is there really a significant societal importance to allowing an artist such as Richard Prince to appropriate Patrick Cariou’s work, without compensation or even attribution, when Prince could have created, or commissioned, his own photographs of Rastafarians? If so, should Congress create a compulsory license for appropriation art use of copyrighted works (similar to the compulsory license that allows any recording artist to record any composer’s work) so that the underlying artist at least gets some compensation for the use of his or her work?

Exhibit 1

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

Presumption of ownership arising from KeyCite Yellow Flag - Negative Treatment certificate of registration from United States Declined to Extend by Telenor Mobile Communications AS v. Storm Register of Copyrights may be rebutted. 17 LLC, S.D.N.Y., November 19, 2008 U.S.C.A. § 410(c). 960 F.2d 301 United States Court of Appeals, Second Circuit. 31 Cases that cite this headnote

Art ROGERS, Plaintiff–Appellee–Cross–Appellant, v. Jeff KOONS; Sonnabend Gallery, Inc., [2] Copyrights and Intellectual Property Defendants–Appellants–Cross–Appellees. Scope of Exclusive Rights; Limitations

Nos. 234, 388 and 235, Dockets 91–7396, Copyright protection extends only to those 91–7442 and 91–7540. components of work that are original to creator; | fact that whole work is copyrighted does not Argued Oct. 3, 1991. mean that every element of it is copyrighted; | however, quantity of originality needed to be Decided April 2, 1992. shown is modest. 17 U.S.C.A. § 101 et seq.

30 Cases that cite this headnote Photographer brought suit against sculptor alleging infringement of his copyrighted photograph “Puppies” to create sculpture “String of Puppies.” The United States District Court for the Southern District of New York, Charles S. Haight, Jr., J., 751 F.Supp. 474, as amended on [3] Copyrights and Intellectual Property reargument, 777 F.Supp. 1, held that sculptor infringed Pictorial, graphic, and sculptural works photographer’s copyright, issued permanent injunction Copyrights and Intellectual Property and turnover order, and held sculptor in contempt for Pictorial, graphic, and sculptural works violation of turnover order. Sculptor appealed. Photographer cross-appealed from denial of damage Portion of photographers’ photograph allegedly award for infringing profits. The Court of Appeals, infringed by sculptor was original work of Cardamone, Circuit Judge, held that: (1) photographer authorship protected under Copyright Act; established valid ownership of copyright in original work photographer’s inventive efforts in posing group of art; (2) evidence supported determination that sculptor for picture, taking picture, and printing picture copied photographer’s protected work without sufficed to meet original work of art criteria. 17 authorization; (3) sculptor’s unauthorized use of U.S.C.A. § 101 et seq. photograph did not fall within fair use doctrine; (4) remand was necessary to determine amount of damages; 46 Cases that cite this headnote and (5) holding sculptor in contempt for violation of turnover order was proper.

Affirmed. [4] Copyrights and Intellectual Property Other works

Undisputed direct evidence of copying of West Headnotes (15) copyrighted photograph by sculptor, who admittedly gave copy of photograph to artisans and told them to copy it, was sufficient to [1] Copyrights and Intellectual Property support entry of summary judgment in Certificate as prima facie proof, in general photographer’s favor on issue of unauthorized

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

copying in copyright infringement action. 17 work—of small import quantitatively or U.S.C.A. § 101 et seq. qualitatively that finding of no infringement is appropriate in copyright infringement action. 17 19 Cases that cite this headnote U.S.C.A. § 101 et seq.

18 Cases that cite this headnote

[5] Copyrights and Intellectual Property Summary judgment [9] Copyrights and Intellectual Property Where access to copyrighted work was Acts Constituting Infringement conceded, and accused work was so substantially similar to copyrighted work that Exploitation of copyrighted work for personal reasonable jurors could not differ on issue, gain militated against finding of fair use of summary judgment on issue of unauthorized copyrighted material. 17 U.S.C.A. § 107. copying could be sustained. 17 U.S.C.A. § 101 et seq. 7 Cases that cite this headnote 22 Cases that cite this headnote

[10] Copyrights and Intellectual Property [6] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works Nature and elements of injury Sculptor’s “String of Puppies” could not be In determining whether two works of art are deemed parody of photographers’ photograph substantially similar for purposes of Copyright for purposes of fair use doctrine where Act, focus must be on similarity of expression of photographer’s “Puppies” was not, even in part, idea or fact, not on similarity of facts, ideas or object of alleged parody; copied work must be, concepts themselves. 17 U.S.C.A. § 101 et seq. at least in part, object of parody, otherwise there would be no need to conjure up original work. 22 Cases that cite this headnote 17 U.S.C.A. § 107.

26 Cases that cite this headnote

[7] Copyrights and Intellectual Property Defenses

[11] No copier may defend act of plagiarism by Copyrights and Intellectual Property pointing out how much of copy he has not Pictorial, graphic, and sculptural works pirated. 17 U.S.C.A. § 101 et seq. Sculptor’s claim that his infringement of 10 Cases that cite this headnote photographer’s work was fair use solely because he was acting within artistic tradition of commenting upon commonplace could not be accepted; copied work was not object of sculptor’s parody, as required for protection [8] Copyrights and Intellectual Property under fair use doctrine. 17 U.S.C.A. § 107. Nature and elements of injury

It is only where points of dissimilarity between 25 Cases that cite this headnote works exceed those that are similar and those similar are—when compared to original © 2016 Thomson Reuters. No claim to original U.S. Government Works. 2

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

attempted to ship infringing copy of his sculpture from United States after turnover order [12] Copyrights and Intellectual Property was issued. 17 U.S.C.A. § 503(b). Acts Constituting Infringement

Where original work is factual rather than 11 Cases that cite this headnote fictional, scope of fair use doctrine is broader. 17 U.S.C.A. § 107.

1 Cases that cite this headnote Attorneys and Law Firms

*303 John B. Koegel, New York City (Frank H. Wright, Michael D. Rips, Cathy Wright Isaacson, Wright [13] Copyrights and Intellectual Property Manning Rips & Maloney, of counsel), for Pictorial, graphic, and sculptural works defendants-appellants Jeff Koons and Sonnabend Gallery, Inc. Sculptor’s unauthorized use of photographer’s copyrighted photograph to craft sculpture did L. Donald Prutzman, New York City (Andre R. Jaglom, not fall under fair use doctrine; among other Stecher Jaglom & Prutzman, of counsel), for things, sculptor’s intent was to make substantial plaintiff-appellee Art Rogers. profit, sculpture could not be considered Gregory F. Hauser, New York City (Walter, Conston, “parody” of photograph, photograph was copied Alexander & Green, P.C., New York City, Louis A. nearly in total, sculptor’s work was primarily Colombo, John D. Parker, Michael K. Farrell, Baker & commercial in nature, being produced for sale as Hostetler, Cleveland, Ohio, of counsel), filed a brief on high-priced art, and sculpture created likelihood behalf of United Feature Syndicate, Inc. as amicus curiae. of future harm to market for photographer’s work. 17 U.S.C.A. § 101 et seq. Before: CARDAMONE, PIERCE and WALKER, Circuit Judges. 40 Cases that cite this headnote Opinion

CARDAMONE, Circuit Judge:

[14] Copyrights and Intellectual Property Elements, measure, and amount The key to this copyright infringement suit, brought by a plaintiff photographer against a defendant sculptor and In apportioning profits for infringement of the gallery representing him, is defendants’ borrowing of photographer’s copyrighted work, sculptor was plaintiff’s expression of a typical American scene—a entitled to retain profits to extent he could prove smiling husband and wife holding a litter of charming they derived solely from his own position in art puppies. The copying was so deliberate as to suggest that world. 17 U.S.C.A § 504(b). defendants resolved so long as they were significant players in the art business, and the copies they produced bettered the price of the copied work by a thousand to 10 Cases that cite this headnote one, their piracy of a less well-known artist’s work would

escape being sullied by an accusation of plagiarism.

[15] Copyrights and Intellectual Property Permanent relief BACKGROUND FACTS

Contempt order for direct violation of turnover order in copyright infringement case was entirely proper after defendant sculptor A. Rogers © 2016 Thomson Reuters. No claim to original U.S. Government Works. 3

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

We think it helpful to understanding this appeal to set including, for example, Ansel Adams. Museum Graphics forth the principals’ professional backgrounds. Plaintiff, has produced and distributed the “Puppies” notecard since Art Rogers, a 43–year–old professional 1984. The first printing was of 5,000 copies and there has artist-photographer, has a studio and home at Point Reyes, been a second similar size printing. California, where he makes his living by creating, exhibiting, publishing and otherwise making use of his rights in his photographic works. Exhibitions of his photographs have been held in California and as far away as Maine, Florida and New York. His work has been C. Koons described in French (“Le Monde”), British (“The Photo”) and numerous American publications, including the Defendant Jeff Koons is a 37–year–old artist and sculptor Journal of American Photography, Polaroid’s Close–Up residing in New York City. After receiving a Bachelor of Magazine and the Popular Photography Annual. Rogers’ Fine Arts degree from Maryland Institute College of Art photographs are part of the permanent collection of the in 1976, he worked at a number of jobs, principally San Francisco Museum of *304 Modern Art, the Center membership development at the Museum of Modern Art for Creative Photography at the University of Arizona and in New York. While pursuing his career as an artist, he Joseph E. Seagrams and Sons in New York City. He has also worked until 1984 as a mutual funds salesman, a taught photography at the San Francisco Museum of registered commodities salesman and broker, and a Modern Art. commodities futures broker. In the ten years from 1980 to 1990 Koons has exhibited his works in approximately 100 Group Exhibitions and in eleven one-man shows. His bibliography is extensive. Koons is represented by Sonnabend Gallery, New York, Donald Young Gallery, B. Creating The Photograph “Puppies” Chicago, and Galerie Max Hetzler, Cologne, Germany. His works sell at very substantial prices, over $100,000. In 1980 an acquaintance, Jim Scanlon, commissioned He is a controversial artist hailed by some as a “modern Rogers to photograph his eight new German Shepherd Michelangelo,” while others find his art “truly offensive.” puppies. When Rogers went to his home on September A New York Times critic complained that “Koons is 21, 1980 he decided that taking a picture of the puppies pushing the relationship between art and money so far alone would not work successfully, and chose instead to that everyone involved comes out looking slightly include Scanlon and his wife holding them. Substantial absurd.” creative effort went into both the composition and production of “Puppies,” a black and white photograph. At the photo session, and later in his lab, Rogers drew on his years of artistic development. He selected the light, the location, the bench on which the Scanlons are seated D. Creating the Sculpture “String of Puppies” and the arrangement of the small dogs. He also made creative judgments concerning technical matters with his After a successful Sonnabend show in 1986, Koons began camera and the use of natural light. He prepared a set of creating a group of 20 sculptures for a 1988 exhibition at “contact sheets,” containing 50 different images, from the same gallery that he called the “Banality Show.” He which one was selected. works in an art tradition dating back to the beginning of the twentieth century. This tradition defines its efforts as After the Scanlons purchased their prints for $200, follows: when the artist finishes his work, the meaning of “Puppies” became part of Rogers’ catalogue of images the original object has been extracted and an entirely new available for further use, from which he, like many meaning set in its place. An example is Andy Warhol’s professional photographers, makes his living. “Puppies” reproduction of multiple images of Campbell’s soup cans. has been used and exhibited a number of times. A signed Koons’ most famous work in this genre is a stainless steel print of it has been sold to a private collector, and in 1989 casting of an inflatable rabbit holding a carrot. During it was licensed for use in an anthology called “Dog 1986 and 1987 the sculptor traveled widely in Europe Days.” Rogers also planned to use the picture in a series looking at materials and workshops where he might of hand-tinted prints of his works. In 1984 Rogers had fabricate materials for the Banality Show. He decided to licensed “Puppies”, along with other works, to Museum use porcelain, mirrors and wood as mediums. Certain Graphics, a company that produces and sells notecards European studios were chosen to execute his *305 and postcards with high quality reproductions of porcelain works, other studios chosen for the mirror photographs by well-respected American photographers pieces, and the small Demetz Studio, located in the © 2016 Thomson Reuters. No claim to original U.S. Government Works. 4

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

northern hill country town of Ortessi, Italy, was selected was not authorized by plaintiff. Rogers learned of Koons’ to carve the wood sculptures. unauthorized use of his work through Jim Scanlon, the man who had commissioned Rogers to create “Puppies.” Koons acknowledges that the source for “String of A friend of Scanlon’s, who was familiar with the Puppies” was a Museum Graphics notecard of “Puppies” photograph, called to tell him that what she took to be a which he purchased in a “very commercial, tourist-like “colorized” version of “Puppies” was on the front page of card shop” in 1987. After buying the card, he tore off that the calendar section of the May 7, 1989 Sunday Los portion showing Rogers’ copyright of “Puppies.” Koons Angeles Times. In fact, as she and Scanlon later learned, saw certain criteria in the notecard that he thought made it the newspaper actually depicted Koons’ “String of a workable source. He believed it to be typical, Puppies” in connection with an article about its exhibition commonplace and familiar. The notecard was also similar at the Los Angeles Museum of Contemporary Art. to other images of people holding animals that Koons had collected. Thus, he viewed the picture as part of the mass culture—“resting in the collective sub-consciousness of people regardless of whether the card had actually ever been seen by such people.” PRIOR PROCEEDINGS

Appellant gave his artisans one of Rogers’ notecards and Rogers brought this action against Koons and Sonnabend told them to copy it. But in order to guide the creation of a Gallery on October 11, 1989, alleging copyright three-dimensional sculptural piece from the infringement and unfair competition under § 43(a) of the two-dimensional photograph, Koons communicated Lanham Act and under state law. Both sides advised the extensively with the Demetz Studio. He visited it once a district court at an early stage of the proceedings that, at week during the period the piece was being carved by the least as to copyright infringement, disputed factual issues workers and gave them written instructions. In his were unlikely and disposition on summary judgment “production notes” Koons stressed that he wanted would probably be appropriate. After completion of “Puppies” copied faithfully in the sculpture. For example, discovery, both sides moved for that relief on July 5, he told his artisans the “work must be just like 1990. Rogers’ motion was limited to the copyright photo—features of photo must be captured;” later, infringement claim. Koons and the Sonnabend Gallery “puppies need detail in fur. Details—Just Like Photo!;” sought summary judgment dismissing all counts in other notes instruct the artisans to “keep man in angle of plaintiff’s complaint. photo—mild lean to side & mildly forward—same for woman,” to “keep woman’s big smile,” and to “keep [the *306 The district court held oral argument on November sculpture] very, very realistic;” others state, “Girl’s nose 26, 1990. In a December 10, 1990 decision, described is too small. Please make larger as per photo;” another more fully below, it found that Koons copied “Puppies” in reminds the artisans that “The puppies must have “String of Puppies” and that this copying was not a fair variation in fur as per photo—not just large area of use. It therefore found infringement, 751 F.Supp. 474. paint—variation as per photo.” (emphasis supplied). Rogers’ motion for an infringing profits award was denied because the trial court believed there were disputed To paint the polychromed wood “String of Puppies” questions of fact concerning their computation. As to sculptures, Koons provided a chart with an enlarged Sonnabend Gallery, the district court concluded on photocopy of “Puppies” in the center; painting directions February 22, 1991 that the record showed Sonnabend’s as were noted in the margin with arrows drawn to various well as Koons’ liability for infringing profits. On March areas of the photograph. The chart noted, “Puppies, 27, 1991 it entered a permanent injunction enjoining painted in shades of blue. Variation of light-to-dark as per Koons and Sonnabend Gallery from making, selling, photo. Paint realistic as per photo, but in blues.” and lending or displaying any copies of, or derivative works “Man’s hair, white with shades of grey as per black and based on, “Puppies,” and, pursuant to 17 U.S.C. § 503, white photo!” (emphasis supplied). requiring defendants to deliver all infringing articles to plaintiff within 20 days, including the fourth or artist’s When it was finished, “String of Puppies” was displayed copy of “String of Puppies.” at the Sonnabend Gallery, which opened the Banality Show on November 19, 1988. Three of the four copies When defendants failed to comply with the turn-over made were sold to collectors for a total of $367,000; the order, Rogers moved to hold defendant Koons in fourth or artist’s copy was kept by Koons. Defendant contempt. The proceedings on that motion revealed that Koons’ use of “Puppies” to create “String of Puppies” nine days after the injunction was issued, Koons had loaned the fourth copy of “String of Puppies” to a © 2016 Thomson Reuters. No claim to original U.S. Government Works. 5

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

museum in Germany and arranged for its shipment out of the United States. After a hearing on May 8, 1991 the [2] Of the several issues before us, the first concerns the district court held Koons in contempt, directed him to do originality of “Puppies.” Defendants do not challenge whatever was necessary to effect the sculpture’s return plaintiff’s ownership of a valid copyright, but assert from Germany, and imposed a daily fine for continued instead that the portion of Rogers’ work allegedly non-compliance to commence eight days later. infringed was not an original work of authorship protected under the *307 1976 Copyright Act. Since the law On May 28, 1991 we denied Koons’ motion to stay the protects authors’ exclusive rights to their works, the injunction and the contempt penalty pending appeal, but cornerstone of that law is that the work protected must be delayed the commencement of the daily fine until June 7, original. See Feist Publications, Inc. v. Rural Telephone 1991. From the finding of copyright infringement, the Service Co., Inc., 499 U.S. 340, 111 S.Ct. 1282, 1287, granting of a permanent injunction, and the turn-over 113 L.Ed.2d 358 (1991). Thus, that a whole work is order appellants Koons and Sonnabend appeal. Rogers copyrighted does not mean that every element of it is cross-appeals from the denial of an award prior to trial for copyrighted; copyright protection extends only to those infringing profits. We affirm. components of the work that are original to the creator. Id. 111 S.Ct. at 1289. But the quantity of originality that need be shown is modest—only a dash of it will do. Id. at 1287; 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 1.08[C][1] (1991) (Nimmer). DISCUSSION [3] Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and I Ownership of Copyright in an Original Work of Art camera, evoking the desired expression, and almost any One of the powers given Congress under Art. I, § 8 of the other variant involved. See Burrow Giles, 111 U.S. at 60, United States Constitution is: “To promote the Progress of 4 S.Ct. at 282. 1 Nimmer, § 2.08[E][1]. To the extent that Science and useful Arts, by securing for limited Times to these factors are involved, “Puppies” is the product of Authors and Inventors, the exclusive Right to their plaintiff’s artistic creation. Rogers’ inventive efforts in respective Writings and Discoveries.” Madison noted that posing the group for the photograph, taking the picture, “[T]he utility of this power will scarcely be questioned.” and printing “Puppies” suffices to meet the original work The Federalist No. 43 (Madison) at 279. He further of art criteria. Thus, in terms of his unique expression of observed that copyright for authors was their right under the subject matter captured in the photograph, plaintiff common law. Id.; see 2 Blackstone, Commentaries on the has established valid ownership of a copyright in an Laws of England 407 (Univ. of Chicago ed. 1979). As a original work of art. result, Congress enacted a copyright law, 17 U.S.C. § 101 et seq. (1976), under which the instant litigation was instituted.

[1] II Unauthorized Copying by Defendant To establish an infringement of a copyright, a plaintiff [4] Plaintiff next must demonstrate that defendant Koons must show both ownership of a copyright and that copied his protected work without authorization. The defendant copied the protected material without district court granted summary judgment to Rogers on this authorization. See Weissmann v. Freeman, 868 F.2d 1313, issue, finding Koons’ sculpture “String of Puppies” an 1320 (2d Cir.), cert. denied, 493 U.S. 883, 110 S.Ct. 219, unauthorized copy of Rogers’ photograph. Summary 107 L.Ed.2d 172 (1989). The Copyright Act makes a judgment may be an appropriate remedy in copyright certificate of registration from the U.S. Register of infringement suits. See, e.g., Peter Pan Fabrics, Inc. v. Copyrights prima facie evidence of the valid ownership of Dan River Mills, Inc., 295 F.Supp. 1366, 1369 a copyright, see 17 U.S.C. § 410(c), though that (S.D.N.Y.), aff’d, 415 F.2d 1007 (2d Cir.1969). Yet, such presumption of ownership may be rebutted, see Hasbro relief will be denied when the question of substantial Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d similarity is one on which reasonable minds could differ. Cir.1985). Protection under the copyright statute extends See, e.g., Twentieth Century–Fox Film Corp. v. MCA, to pictorial works, 17 U.S.C. § 102(a)(5). For more than a Inc., 715 F.2d 1327, 1329 (9th Cir.1983). century photographs have been held to be copyrightable “writings” under Article I, § 8 of the Constitution. Here, the trial court found original elements of creative Burrow–Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 expression in the copyrighted work were copied and that S.Ct. 279, 28 L.Ed. 349 (1884) (photograph of Oscar the copying was so blatantly apparent as not to require a Wilde an original work of art). trial. We agree that no reasonable juror could find that © 2016 Thomson Reuters. No claim to original U.S. Government Works. 6

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

copying did not occur in this case. First, this case presents this idea—as caught in the placement, in the particular the rare scenario where there is direct evidence of light, and in the expressions of the subjects—that gives copying. Koons admittedly gave a copy of the photograph the photograph its charming and unique character, that is to the Italian artisans with the explicit instruction that the to say, makes it original and copyrightable. work be copied. Moreover, the importance of copying the very details of the photograph that embodied plaintiff’s Thus, had appellant simply used the idea presented by the original contribution—the poses, the shading, the photo, there would not have been infringing copying. But expressions—was stressed by Koons throughout the here Koons used the identical expression of the idea that creation of the sculpture. His instructions invariably Rogers created; the composition, the poses, and the implored that the creation must be designed “as per expressions were all incorporated into the sculpture to the photo.” This undisputed direct evidence of copying is extent that, under the ordinary observer test, we conclude sufficient to support the district court’s granting of that no reasonable jury could have differed on the issue of summary judgment. substantial similarity. For this reason, the district court properly held that Koons “copied” the original. [5] Further, even were such direct evidence of copying unavailable, the district court’s decision could be upheld [7] [8] Moreover, no copier may defend the act of in this case on the basis that defendant Koons’ access to plagiarism by pointing out how much of the copy he has the copyrighted work is conceded, and the accused work not pirated. See Sheldon v. Metro–Goldwyn Pictures is so substantially similar to the copyrighted work that Corp., 81 F.2d 49, 56 (2d Cir.) (L. Hand, J.), cert. denied, reasonable jurors could not differ on this issue. See 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936). Thus, Warner Brothers, Inc. v. American Broadcasting Cos., where substantial similarity is found, small changes here Inc., 654 F.2d 204, 207 (2d Cir.1981). and there made by the copier are unavailing. It is only where the points of dissimilarity exceed those that are Substantial similarity does not require literally identical similar and those similar are—when compared to the copying of every detail. See 3 Nimmer, § 13.03[A]. See original work—of small import quantitatively or also Comptone Company Ltd. v. Rayex Corp., 251 F.2d qualitatively that a finding of no infringement is 487, 488 (2d Cir.1958). Such similarity is determined by appropriate. See 3 Nimmer § 13.03[B][1][a]. This is not the ordinary observer test: the inquiry is “whether an the case here. Koons’ additions, such as the flowers in the average lay observer would recognize the alleged copy as hair of the couple and the bulbous noses of the puppies, having been appropriated from the copyrighted work.” are insufficient to raise a genuine issue of material fact Ideal Toy Corp. v. Fab–Lu Ltd., 360 F.2d 1021, 1022 (2d with regard to copying in light of the overwhelming Cir.1966). Or, stated another way, whether “the ordinary similarity to the protected expression of the original work. observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic Because of Koons’ extensive use of the same expression appeal as the same.” *308 Peter Pan Fabrics, Inc. v. of the idea that Rogers’ created, it was properly held that Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960). he “copied” the protected features of the original. No Thus, Koons’ allegation that a trial judge uneducated in genuine issue of material fact exists with respect to this art is not an appropriate decision-maker misses the mark; finding; “String of Puppies” was copied from the the decision-maker, whether it be a judge or a jury, need photograph “Puppies” based either on the direct evidence not have any special skills other than to be a reasonable of copying or on proof of access and substantial and average lay person. similarity. In light of this summary judgment was properly granted on this issue. [6] We recognize that ideas, concepts, and the like found in the common domain are the inheritance of everyone. What is protected is the original or unique way that an author expresses those ideas, concepts, principles or III The Fair Use Doctrine processes. Hence, in looking at these two works of art to Defendant Koons further defends his use of Rogers’ work determine whether they are substantially similar, focus “Puppies” to craft “String of Puppies” under a claim of a must be on the similarity of the expression of an idea or privilege of “fair use.” This equitable doctrine permits fact, not on the similarity of the facts, ideas or concepts other people to use copyrighted material without the themselves. See Durham Industries, Inc. v. Tomy Corp., owner’s consent in a reasonable manner for certain 630 F.2d 905, 912 (2d Cir.1980). It is not therefore the purposes. Codified in § 107 of the 1976 Copyright Act, it idea of a couple with eight small puppies seated on a is of ancient lineage. Section 107 states that an original bench that is protected, but rather Roger’s expression of work copied for purposes such as criticism or comment may not constitute infringement, but instead may be a fair © 2016 Thomson Reuters. No claim to original U.S. Government Works. 7

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

use. The section provides an illustrative—but not use calculus affects the ultimate determination of whether exhaustive—list of factors for determining when a use is there is a fair use depends on the totality of the factors “fair.” These factors include (1) the purpose and character considered; it is not itself controlling. See of the use, (2) the nature of the copyrighted work, (3) the Maxtone–Graham v. Burtchaell, 803 F.2d 1253, 1262 (2d amount and substantiality of the work used, and (4) the Cir.1986), cert. denied, 481 U.S. 1059, 107 S.Ct. 2201, 95 effect of the use on the market value of the original. 17 L.Ed.2d 856 (1987). Thus, while we note that Koons’ U.S.C. § 107. substantial profit from his intentionally exploitive use of Rogers’ work also militates against the finding of fair use, The fact that the test envisioned by the Act is dependent we turn next to consider his contention that the primary on the circumstances of each case, see 3 Nimmer, § purpose of the use was for social comment. 13.05[A], might suggest summary judgment is unavailable *309 when fair use is the issue, but such relief Parody or Satire as Fair Use: The Act expressly provides may be granted when appropriate. See e.g., Stewart v. that comment on or criticism of a copyrighted work may Abend, 495 U.S. 207, 110 S.Ct. 1750, 109 L.Ed.2d 184 be a valid use under the fair use doctrine. We must (1990) (summary judgment granted upon finding of no analyze therefore whether “String of Puppies” is properly fair use). The trial court found no genuine issues of fact considered a comment on or criticism of the photograph present regarding the fair use exception and granted “Puppies.” Koons argues that his sculpture is a satire or summary judgment to plaintiff on this issue also. We parody of society at large. He insists that “String of proceed therefore to analyze the fair use factors in the Puppies” is a fair social criticism and asserts to support circumstances of the case at hand. Our examination of that proposition that he belongs to the school of American these factors leads us to conclude that the district court artists who believe the mass production of commodities properly granted summary judgment in favor of plaintiff. and media images has caused a deterioration in the quality of society, and this artistic tradition of which he is a member proposes through incorporating these images into works of art to comment critically both on the 1. Purpose and Character of the Use incorporated object and the political and economic system The first factor, purpose and character of the use, asks that created it. These themes, Koons states, draw upon the whether the original was copied in good faith to benefit artistic movements of Cubism and Dadaism, with the public or primarily for the commercial interests of the particular influence attributed to Marcel Duchamp, who in infringer. See MCA, Inc. v. Wilson, 677 F.2d 180, 182 (2d 1913 became the first to incorporate manufactured objects Cir.1981). Knowing exploitation of a copyrighted work (readymades) into a work of art, directly influencing for personal gain militates against a finding of fair use. Koons’ work and the work of other contemporary And—because it is an equitable doctrine—wrongful American artists. We accept this definition of the denial of exploitative conduct towards the work of objective of this group of American artists. another may bar an otherwise legitimate fair use claim. See 3 Nimmer, § 13.05[A] [1]. Relevant to this issue is To analyze Koons’ parody defense, we must first define Koons’ conduct, especially his action in tearing the it. Parody or satire, as we understand it, is when one artist, copyright mark off of a Rogers notecard prior to sending for comic effect or social commentary, closely imitates it to the Italian artisans. This action suggests bad faith in the style of another artist and in so doing creates a new art defendant’s use of plaintiff’s work, and militates against a work that makes ridiculous the style and expression *310 finding of fair use. of the original. Under our cases parody and satire are valued forms of criticism, encouraged because this sort of [9] The Supreme Court has held that copies made for criticism itself fosters the creativity protected by the commercial or profit-making purposes are presumptively copyright law. See Warner Bros., Inc. v. American unfair. See Sony Corp. of America v. Universal City Broadcasting Cos., Inc., 720 F.2d 231, 242 (2d Cir.1983). Studios, Inc., 464 U.S. 417, 449, 104 S.Ct. 774, 792, 78 We have consistently held that a parody entitles its creator L.Ed.2d 574 (1984). The Court explained in a subsequent under the fair use doctrine to more extensive use of the case that the “crux of the profit/nonprofit distinction is not copied work than is ordinarily allowed under the whether the sole motive of the use is monetary gain but substantial similarity test. See Elsmere Music, Inc. v. whether the user stands to profit from exploitation of the National Broadcasting Co., 623 F.2d 252, 253 (2d copyrighted material without paying the customary Cir.1980) (per curiam). price.” Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 562, 105 S.Ct. 2218, 2231, 85 [10] Hence, it must first be determined whether “String of L.Ed.2d 588 (1985). We have stated that, though it is a Puppies” is a parody of Rogers’ work for purposes of the significant factor, whether the profit element of the fair © 2016 Thomson Reuters. No claim to original U.S. Government Works. 8

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492... fair use doctrine. We agree with the district court that it is represents an investment of time in anticipation of a not. It is the rule in this Circuit that though the satire need financial return also should be considered. MCA, Inc. v. not be only of the copied work and may, as appellants Wilson, 677 F.2d at 182. Here “Puppies” was a published urge of “String of Puppies,” also be a parody of modern work of art. As an original expression it has more in society, the copied work must be, at least in part, an common with fiction than with works based on facts, such object of the parody, otherwise there would be no need to as, for example, biographies or telephone directories. conjure up the original work. See MCA, Inc. v. Wilson, Since “Puppies” was creative and imaginative and 677 F.2d at 185; 3 Nimmer, § 13.05[C] n. 60.9. Rogers, who makes his living as a photographer, hopes to gain a financial return for his efforts with this photograph, [11] We think this is a necessary rule, as were it otherwise this factor militates against a finding of fair use. there would be no real limitation on the copier’s use of another’s copyrighted work to make a statement on some aspect of society at large. If an infringement of copyrightable expression could be justified as fair use 3. Amount and Substantiality of Work Used solely on the basis of the infringer’s claim to a higher or [13] Where the amount of copying exceeds permissible different artistic use—without insuring public awareness levels, summary judgment *311 has been upheld. Walt of the original work—there would be no practicable Disney Productions v. Air Pirates, 581 F.2d 751, 758 (9th boundary to the fair use defense. Koons’ claim that his Cir.1978), cert. denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 infringement of Rogers’ work is fair use solely because he L.Ed.2d 94 (1979). To a large degree, this factor involves is acting within an artistic tradition of commenting upon the same analysis as that used when determining if the the commonplace thus cannot be accepted. The rule’s copy is substantially similar to the original. Sometimes function is to insure that credit is given where credit is wholesale copying may be permitted, while in other cases due. By requiring that the copied work be an object of the taking even a small percentage of the original work has parody, we merely insist that the audience be aware that been held unfair use. See Maxtone–Graham, 803 F.2d at underlying the parody there is an original and separate 1263. “[W]hat is relevant is the amount and substantiality expression, attributable to a different artist. This of the copyrighted expression that has been used, not the awareness may come from the fact that the copied work is factual content of the material in the copyrighted works.” publicly known or because its existence is in some Salinger v. Random House, Inc., 811 F.2d 90, 97 (2d Cir.) manner acknowledged by the parodist in connection with (emphasis in original), reh’g denied, 818 F.2d 252, cert. the parody. Of course, while our view of this matter does denied, 484 U.S. 890, 108 S.Ct. 213, 98 L.Ed.2d 177 not necessarily prevent Koons’ expression, although it (1987). It is not fair use when more of the original is may, it does recognize that any such exploitation must at copied than necessary. Even more critical than the least entail “paying the customary price.” Harper & Row quantity is the qualitative degree of the copying: what Publishers, Inc., 471 U.S. at 562, 105 S.Ct. at 2231. degree of the essence of the original is copied in relation to its whole. Id. at 98; see also New Era Publications The problem in the instant case is that even given that Int’l., 904 F.2d at 159. “String of Puppies” is a satirical critique of our materialistic society, it is difficult to discern any parody Appellants claim that under a parody defense their use of of the photograph “Puppies” itself. We conclude therefore Rogers’ work did not exceed the level permitted under the that this first factor of the fair use doctrine cuts against a fair use doctrine. As discussed previously, this Circuit has finding of fair use. The circumstances of this case indicate traditionally afforded parodists significant leeway with that Koons’ copying of the photograph “Puppies” was respect to the extent and nature of their copying. See done in bad faith, primarily for profit-making motives, Elsmere, 623 F.2d at 253, n. 1; Berlin v. E.C. and did not constitute a parody of the original work. Publications, Inc., 329 F.2d 541, 545 (2d Cir.), cert. denied, 379 U.S. 822, 85 S.Ct. 46, 13 L.Ed.2d 33 (1964). Yet, even under such a defense there are limitations on what constitutes fair use. See MCA v. Wilson, 677 F.2d at 2. Nature of the Copyrighted Work 185. Here, the essence of Rogers’ photograph was copied [12] The next fair use factor asks what is the nature of the nearly in toto, much more than would have been work that has been copied. Where the original work is necessary even if the sculpture had been a parody of factual rather than fictional the scope of fair use is plaintiff’s work. In short, it is not really the parody flag broader. See New Era Publications, Int’l. v. Carol that appellants are sailing under, but rather the flag of Publishing Group, 904 F.2d 152, 157 (2d Cir.), cert. piracy. Moreover, because we have already determined denied, 498 U.S. 921, 111 S.Ct. 297, 112 L.Ed.2d 251 that “String of Puppies” is not a parody of Rogers’ work, (1990). Whether the original is creative, imaginative, or appellants cannot avail themselves of this heightened © 2016 Thomson Reuters. No claim to original U.S. Government Works. 9

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tolerance under a parody defense. their exploitation of “Puppies” without paying Rogers for their use of his photo—that is, whether Koons’ work is Nor does Sony Corp. of America, 464 U.S. at 449–50, 104 primarily commercial in nature. We have already S.Ct. at 792–93, bear the weight that appellants place on it concluded that it is. In this case, of course, the copy was for the proposition that even 100 percent copying does not in a different medium than the original: one was a preclude a fair use finding. Although correct as a general three-dimensional piece of sculpture, and the other a statement, it applied in Sony to a narrow set of two-dimensional black and white photo. But the owner of circumstances. Sony’s copying equipment (Betamax a copyright with respect to this market-factor need only VCRs) was used by members of the public to record demonstrate that if the unauthorized use becomes television programs—the copyright of which was owned “widespread” it would prejudice his potential market for by plaintiffs. The question was whether Sony’s selling of his work. See id.; Harper & Row, 471 U.S. at 568, 105 the copying equipment violated plaintiffs’ rights under the S.Ct. at 2234. The reason for this rule relates to a central Copyright Act. The Supreme Court said “no” because concern of copyright law that unfair copying undercuts “time-shifting” for those watching a television program demand for the original work and, as an inevitable enlarges the viewing audience, and does not impair consequence, chills creation of such works. Hence the plaintiffs’ commercial right in the value of the copyright. inquiry considers not only harm to the market for the Hence, no basis existed under the Act upon which original photograph, but also harm to the market for plaintiffs could hold Sony liable for selling VCR’s to the derivative works. It is obviously not implausible that general public. Id. at 421, 104 S.Ct. at 778. another artist, who would be willing to purchase the rights from Rogers, would want to produce a sculpture like Those are not the facts found here. Instead, Koons’ Rogers’ photo and, with Koons’ work extant, such market copying of Rogers’ work was the essence of the is reduced. Similarly, defendants could take and sell photograph, and designedly done as the notes to the photos of “String of Puppies,” which would prejudice Italian artisans conclusively reveal. Koons went well Rogers’ potential market for the sale of the “Puppies” beyond the factual subject matter of the photograph to notecards, in addition to any other derivative use he might incorporate the very expression of the work created by plan. Rogers. We find that no reasonable jury could conclude that Koons did not exceed a permissible level of copying Further, in discussing this fourth factor, the leading under the fair use doctrine. scholar in this area of the law uses an example that closely parallels the facts of the present case and demonstrates the irrelevance of copying in a different medium when analyzing this factor: a movie adaptation is 4. Effect of the Use on the Market Value of the Original made of a book. Even though the movie may boost book The fourth factor looks at the effect of the use on the sales, it is an unfair use because of the effect on the market value of the original. The Supreme Court in potential sale of adaptation rights. 3 Nimmer, § 13.05[B]. Stewart, 495 U.S. 207, 110 S.Ct. 1750, 109 L.Ed.2d 184, The function of demand for each original work of art is a stated that the fourth factor “is the ‘most important, and relevant facet in this factor’s analysis; that is, fair use indeed, central fair use factor.’ ” Id. at 238, 110 S.Ct. at permits lyrics or music to be copied in a literary 1769 (quoting 3 Nimmer § 13.05[A] ); see also Harper & magazine, but where the same material is published in a Row, 471 U.S. at 566, 105 S.Ct. at 2233. Under this factor song sheet magazine, purchased for playing and not a balance must be struck between the benefit gained by simply for reading, it is an unfair use. Id. the copyright owner when the copying is found an unfair use and the benefit gained by the public when the use is Here there is simply nothing in the record to support a held to be fair. The less adverse impact on the owner, the view that Koons produced “String of Puppies” for less *312 public benefit need be shown to sustain anything other than sale as high-priced art. Hence, the non-commercial fair use. It is plain that where a use has likelihood of future harm to Rogers’ photograph is no demonstrable impact on a copyright owners’ potential presumed, and plaintiff’s market for his work has been market, the use need not be prohibited to protect the prejudiced. artist’s incentive to pursue his inventive skills. Yet where the use is intended for commercial gain some meaningful likelihood of future harm is presumed. See Sony Corp. of America, 464 U.S. at 451, 104 S.Ct. at 793. IV Infringing Profits [14] The next issue concerns Rogers’ claim for infringing A critical inquiry under this factor then is whether profits in the amount of $367,000. Under 17 U.S.C. § defendants Koons and Sonnabend planned to profit from 504(b) a copyright owner is entitled to recover actual © 2016 Thomson Reuters. No claim to original U.S. Government Works. 10

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damages suffered as a result of the infringement as well as 60 S.Ct. 681, 687–88, 84 L.Ed. 825 (1940) (considering apportioned profits. The section states: “In establishing “the drawing power of the ‘motion picture stars’ ... the the infringer’s profits, the copyright owner is required to artistic conceptions ... and ... the expert supervision and present proof only of the infringer’s gross revenue, and direction of the various processes which made possible the infringer is required to prove his or her deductible the composite result”); Frank Music Corp. v. expenses and the elements of profit attributable to factors Metro–Goldwyn–Mayer Inc., 886 F.2d 1545, 1549 (9th other than the copyrighted work.” Alternatively, in place Cir.1989), cert. denied, 494 U.S. 1017, 110 S.Ct. 1321, of actual damages and apportioned profits, a copyright 108 L.Ed.2d 496 (1990) (“Where a defendant alters owner may elect to recover an award of statutory infringing material to suit its own unique purposes, those damages. See 17 U.S.C. § 504(c). alterations and the creativity behind them should be taken into account in apportioning the profits of the infringing In Rogers’ cross-appeal he asserts, in response to work.”); Abend v. MCA, Inc., 863 F.2d 1465, 1478, aff’d defendants’ argument that we lack appellate jurisdiction sub nom. Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, over this issue, that jurisdiction exists on two independent 109 L.Ed.2d 184 (1990) (considering outstanding bases. He further contends that there are no issues of fact performances and brilliant direction); ABKCO Music, Inc. and that the matter should be remanded simply to enter an v. Harrisongs Music, 508 F.Supp. 798, 801 award in his favor. Although we agree with Rogers that (S.D.N.Y.1981), modified, 722 F.2d 988 (2d Cir.1983) jurisdiction over this aspect of the judgment appealed (considering “international ‘name’ ” of infringing from exists, we are unable to grant the award he seeks. recording artist). See also 3 Nimmer § 14.03[C]. To the extent that Koons is able to prove that the profits at issue *313 The district court stated that deposition and derive solely from his own position in the art world, he documentary evidence regarding the deductible expenses should be allowed to retain them. referred to in § 504(b) are present in the record. We are satisfied that defendants have incurred deductible Finally, we note that Rogers remains at liberty to elect expenses in some amount and that they should have an statutory damages in lieu of an award of actual damages opportunity to prove them as an offset to plaintiff’s and apportioned profits. See 17 U.S.C. § 504(c). In fact, evidence of infringing damages. Further, the amount of given Koons’ wilful and egregious behavior, we think actual damages incurred by Rogers, as well as the proper Rogers may be a good candidate for enhanced statutory apportionment of Koons’ profits between Rogers and damages pursuant to 17 U.S.C. § 504(c)(2). See Koons, remain to be determined on remand. With respect Fitzgerald Pub. Co., 807 F.2d at 1115. Of course, that to the calculation of actual damages, “the primary determination remains for the district court to make in the measure of recovery is the extent to which the market first instance. value of the copyrighted work at the time of the infringement has been injured or destroyed by the The case must be remanded therefore for the district court infringement.” Fitzgerald Pub. Co., Inc. v. Baylor Pub. to determine the amount of the award, a matter which it Co., Inc., 807 F.2d 1110, 1118 (2d Cir.1986). While we had reserved to itself prior to the institution of this appeal. leave the ascertainment of damages to the district court, under the circumstances of this case, we think that a reasonable license fee for the use of “Puppies” best approximates the market injury sustained by Rogers as a V The Turn–Over Order result of Koons’ misappropriation. See Deltak, Inc. v. [15] Finally, the turn-over order of the artist’s copy is an Advanced Systems, Inc., 767 F.2d 357, 360–61 (7th equitable remedy issued under the broad powers vested in Cir.1985) (“The value of the infringer’s use is a a trial judge under 17 U.S.C. § 503(b) (court may order permissible basis for estimating actual damages.”); Sid & destruction or other reasonable disposition of infringing Marty Krofft Television Productions, Inc. v. McDonald’s copies). In this case, after Judge Haight issued his Corp., 562 F.2d 1157, 1174 (9th Cir.1977) (same). turn-over order, Koons arranged to ship the fourth or artist’s copy of “String of Puppies” from the United States On the subject of apportioning profits, the copyright law to Germany. We see no abuse of the district court’s requires that Koons have the opportunity to establish discretion in directing turn-over and, under the those “elements of profit attributable to factors other than circumstances, the contempt order for the direct violation the copyrighted work.” 17 U.S.C. § 504(b). These of the turn-over order was entirely proper. “elements” may include Koons’ own notoriety and his related ability to command high prices for his work. See Sheldon v. Metro–Goldwyn Corp., 309 U.S. 390, 407–09,

Rogers v. Koons, 960 F.2d 301 (1992) 60 USLW 2682, 1992 Copr.L.Dec. P 26,893, 22 U.S.P.Q.2d 1492...

*314 CONCLUSION All Citations

Accordingly, the judgment of the district court is affirmed 960 F.2d 301, 60 USLW 2682, 1992 Copr.L.Dec. P in all respects. 26,893, 22 U.S.P.Q.2d 1492, 20 Media L. Rep. 1201

Exhibit 2

Blanch v. Koons, 467 F.3d 244 (2006) 2006 Copr.L.Dec. P 29,269, 80 U.S.P.Q.2d 1545

use; the use of the photograph was transformative, since it was used as part of KeyCite Yellow Flag - Negative Treatment artist’s commentary on the social and aesthetic Distinguished by Cariou v. Prince, S.D.N.Y., March 18, 2011 consequences of mass media, artist copied a 467 F.3d 244 reasonable portion of the photograph to fulfill United States Court of Appeals, his purpose of conveying the “fact” of the Second Circuit. photograph to viewers, and his use had no deleterious effect upon the potential market for Andrea BLANCH, Plaintiff–Appellant, or value of the photograph. 17 U.S.C.A. § 107. v. Jeff KOONS, the Solomon R. Guggenheim Foundation, and Deutsche Bank AG, 8 Cases that cite this headnote Defendants–Appellees.

Docket No. 05–6433–CV. | Argued: May 30, 2006. [2] Copyrights and Intellectual Property | Fair use and other permitted uses in general Decided: Oct. 26, 2006. | Ultimate test of fair use is whether the copyright As Amended Nov. 16, 2006. law’s goal of promoting the progress of science and useful arts would be better served by allowing the use than by preventing it. U.S.C.A. Synopsis Const. Art. 1, § 8, cl. 8; 17 U.S.C.A. § 107. Background: Fashion photographer brought copyright infringement action against visual artist and institutions 5 Cases that cite this headnote that commissioned and exhibited his paintings after artist used her copyrighted photograph in a collage painting. The United States District Court for the Southern District of New York, Louis L. Stanton, J., 396 F.Supp.2d 476, entered summary judgment in favor of defendants, and [3] Copyrights and Intellectual Property photographer appealed. Pictorial, graphic, and sculptural works

Artist’s use of copyrighted photograph from a fashion magazine in his collage painting was [Holding:] The Court of Appeals, Sack, Circuit Judge, transformative, in determining whether it was held that artist’s use of the photograph was fair use. fair use; artist used the photograph as fodder for

his commentary on the social and aesthetic Affirmed. consequences of mass media, rather than merely repackaged it. 17 U.S.C.A. § 107(1). Katzmann, Circuit Judge, filed concurring opinion. 9 Cases that cite this headnote

West Headnotes (13) [4] Copyrights and Intellectual Property

[1] Fair use and other permitted uses in general Copyrights and Intellectual Property Pictorial, graphic, and sculptural works Finding of transformativeness is not absolutely necessary for a finding of fair use, nor is Artist’s use of copyrighted photograph from a transformativeness necessarily the only fashion magazine in his collage painting was fair © 2016 Thomson Reuters. No claim to original U.S. Government Works. 1

Blanch v. Koons, 467 F.3d 244 (2006) 2006 Copr.L.Dec. P 29,269, 80 U.S.P.Q.2d 1545

important fair use factor. 17 U.S.C.A. § 107(1).

5 Cases that cite this headnote [8] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works

Artist’s failure to seek photographer’s [5] Copyrights and Intellectual Property permission before using her copyrighted Fair use and other permitted uses in general photograph in a collage painting could not be an act of bad faith if artist’s use of the photograph When the copyrighted work is used as “raw was fair use. 17 U.S.C.A. § 107(1). material,” in the furtherance of distinct creative or communicative objectives, the use is transformative, in determining whether it is fair 1 Cases that cite this headnote use. 17 U.S.C.A. § 107(1).

18 Cases that cite this headnote [9] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works

“Nature of copyrighted work” factor had limited [6] Copyrights and Intellectual Property weight in determining whether artist’s use of Pictorial, graphic, and sculptural works copyrighted photograph from a fashion magazine in his collage painting was fair use, Commercial nature of artist’s collage painting where artist used photograph in a transformative could be discounted in determining whether his manner to comment on the image’s social and use of copyrighted photograph in the painting aesthetic meaning rather than to exploit its was fair use, where the painting was creative virtues. 17 U.S.C.A. § 107(2). substantially transformative, and artist’s economic gain from the painting was not to the exclusion of broader public benefits created by 13 Cases that cite this headnote the painting’s exhibition in museum. 17 U.S.C.A. § 107(1).

1 Cases that cite this headnote [10] Copyrights and Intellectual Property Fair use and other permitted uses in general

Although the creative nature of artistic images typically weighs in favor of the copyright holder [7] Copyrights and Intellectual Property in determining whether a use is fair use, that Pictorial, graphic, and sculptural works factor may be of limited usefulness where the creative work of art is being used for a Artist’s use of copyrighted photograph from a transformative purpose. 17 U.S.C.A. § 107(2). fashion magazine in his collage painting was supported by genuine creative rationale, in determining whether it was fair use; artist’s use 23 Cases that cite this headnote of a fashion photograph enabled him to satirize life as it appeared when seen through the prism of fashion photography.

[11] Copyrights and Intellectual Property 7 Cases that cite this headnote Pictorial, graphic, and sculptural works

Blanch v. Koons, 467 F.3d 244 (2006) 2006 Copr.L.Dec. P 29,269, 80 U.S.P.Q.2d 1545

Amount and substantiality of artist’s copying Attorneys and Law Firms was reasonable in relation to the purpose of the copying, in determining whether his use of *245 Robert W. Cinque, Cinque & Cinque, P.C. (James copyrighted photograph from a fashion P. Cinque, of counsel) New York, NY, for magazine in his collage painting was fair use; Plaintiff–Appellant. artist’s purpose was to convey the “fact” of the photograph to viewers of the painting, and he *246 John B. Koegel, The Koegel Group, New York, NY, did not copy portions of the photograph for Defendant–Appellee Jeff Koons. representing photographer’s key creative decisions. 17 U.S.C.A. § 107(3). Lawrence B. Friedman, Cleary Gottlieb Steen & Hamilton LLP (Inna Reznik, Hoon–Jung Kim, of counsel) New York, NY, for Defendant–Appellee The Solomon R. 4 Cases that cite this headnote Guggenheim Foundation.

Carol A. Witschel, White & Case LLP (Steven Betensky, Stefan M. Mentzer, of counsel), New York, NY, for Defendant–Appellee Deutsche Bank AG. [12] Copyrights and Intellectual Property Fair use and other permitted uses in general Before: SACK and KATZMANN, Circuit Judges, and * MURTHA, District Judge. Judge KATZMANN concurs In considering the market effect of a secondary in a separate opinion. use on a copyrighted work, in determining whether such use is fair use, court’s concern is Opinion not whether the secondary use suppresses or SACK, Circuit Judge. even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps the market of the original This appeal presents the question whether an artist’s work. 17 U.S.C.A. § 107(4). appropriation of a copyrighted image in a collage painting is, under the circumstances, protected “fair use” under the 26 Cases that cite this headnote copyright law. See 17 U.S.C. § 107.

On commission from defendants Deutsche Bank AG, a German corporation (“Deutsche Bank”), and The Solomon R. Guggenheim Foundation, a New York [13] Copyrights and Intellectual Property not-for-profit corporation (“Guggenheim”), defendant Jeff Pictorial, graphic, and sculptural works Koons created a collage painting, initially for display in Berlin, Germany, in which he copied, but altered the Artist’s use of copyrighted photograph from a appearance of, part of a copyrighted photograph taken by fashion magazine in his collage painting had no the plaintiff Andrea Blanch. After seeing the painting on deleterious effect upon the potential market for subsequent display at Guggenheim’s museum in New or value of the photograph, in determining York City, Blanch brought this action for copyright whether such use was fair use; photographer infringement. The district court (Louis L. Stanton, Judge ) admitted that artist’s use of her photograph did granted summary judgment to the defendants on the not cause any harm to her career or upset any ground that Koons’s appropriation of Blanch’s plans she had for it or any other photograph, and photograph was fair use. We affirm. that the value of the photograph did not decrease as the result of the artist’s alleged infringement. 17 U.S.C.A. § 107(4). BACKGROUND 2 Cases that cite this headnote Jeff Koons is a visual artist. His work has been exhibited widely in museums and commercial galleries and has been the subject of much critical commentary. He is known for incorporating into his artwork objects and © 2016 Thomson Reuters. No claim to original U.S. Government Works. 3

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images taken from popular media and consumer January 2001. advertising, a practice that has been referred to as “neo-Pop art” or (perhaps unfortunately in a legal context) One of the “Easyfun–Ethereal” paintings, “Niagara,” is “appropriation art.”1 His sculptures and paintings often the subject of this action. Like the other paintings in the contain such easily recognizable objects as toys, series, “Niagara” consists of fragmentary images collaged celebrities, and popular cartoon figures. against the backdrop of a landscape. The painting depicts four pairs of women’s feet and lower legs dangling Koons has been the subject of several previous lawsuits prominently over images of confections—a large for copyright infringement. In the late 1980s, he created a chocolate fudge brownie topped with ice cream, a tray of series of sculptures for an exhibition entitled the “Banality donuts, and a tray of apple danish pastries—with a grassy Show” (“Banality”). In doing so, he commissioned large field and Niagara Falls in the background. The images of three-dimensional reproductions of images taken from the legs are placed side by side, each pair pointing such sources as commercial postcards and syndicated vertically downward and extending from the top of the comic strips. Although many of the source images were painting approximately two-thirds of the way to the copyrighted, Koons did not seek permission to use them. bottom. Together, the four pairs of legs occupy the entire In separate cases based on three different sculptures from horizontal expanse of the painting. A black-and-white “Banality,” this Court and two district courts concluded reproduction of “Niagara” is included in the Appendix to that Koons’s use of the copyrighted images infringed on this opinion. the rights of the copyright holders and did not constitute fair use under the copyright law. See Rogers v. Koons, In an affidavit submitted to the district court, Koons states 960 F.2d 301 (2d Cir.), cert. denied, 506 U.S. 934, 113 that he was inspired to create “Niagara” by a billboard he S.Ct. 365, 121 L.Ed.2d 278 (1992); Campbell v. Koons, saw in Rome, which depicted several sets of women’s No. 91 Civ. 6055, 1993 WL 97381, 1993 U.S. Dist. lower legs. By juxtaposing women’s legs against a LEXIS 3957 (S.D.N.Y. Apr.1, 1993); United Feature backdrop of food and landscape, he says, he intended to Syndicate v. Koons, 817 F.Supp. 370 (S.D.N.Y.1993). “comment on the ways in which some of our most basic appetites—for food, play, and sex—are mediated by *247 The present action arises in connection with a later popular images.” Koons Aff., dated June 10, 2005, at ¶ series of Koons’s work entitled “Easyfun–Ethereal.” It 10. “By re-contextualizing these fragments as I do, I try to was commissioned in 2000 by Deutsche Bank in compel the viewer to break out of the conventional way of collaboration with Guggenheim. experiencing a particular appetite as mediated by mass media.” Id. Deutsche Bank and Guggenheim have jointly established the “Deutsche Guggenheim Berlin,” an art exhibition space housed in a Deutsche Bank building in Berlin, Germany. Under their collaboration agreement, Deutsche Blanch’s Photograph Bank provides space, underwrites exhibition expenses, Koons drew the images in “Niagara” from fashion and pays for the commission of new works of art. magazines and advertisements. One of the pairs of legs in Guggenheim curates the exhibitions and advises as to the painting was adapted from a photograph by the which work should be commissioned. Pursuant to a plaintiff Andrea Blanch, an accomplished professional separate agreement, Deutsche Bank donates a fifty fashion and portrait photographer. During her career of percent interest in each commissioned work to more than twenty years, Blanch has published her Guggenheim. photographs in commercial magazines, including Details, G.O., Vogue, and Allure; in photography periodicals and collections; and in advertisements for clients selling products under such widely recognized names as Revlon, Koons’s Painting Universal Films, Johnny Walker, and Valentino. She is To create the “Easyfun–Ethereal” paintings, Koons culled also the author of a book of photographs and interviews images from advertisements or his own photographs, entitled Italian Men: Love & Sex. scanned them into a computer, and digitally superimposed the scanned images against backgrounds of pastoral The Blanch photograph used by Koons in “Niagara” landscapes. He then printed color images of the resulting appeared in the August 2000 *248 issue of Allure collages for his assistants to use as templates for applying magazine. Entitled “Silk Sandals by Gucci” (“ ‘Silk paint to billboard-sized, 10′ x 14′ canvasses. The Sandals’ ”), it depicts a woman’s lower legs and feet, “Easyfun–Ethereal” paintings, seven in all, were exhibited adorned with bronze nail polish and glittery Gucci at the Deutsche Guggenheim Berlin from October 2000 to sandals, resting on a man’s lap in what appears to be a © 2016 Thomson Reuters. No claim to original U.S. Government Works. 4

Blanch v. Koons, 467 F.3d 244 (2006) 2006 Copr.L.Dec. P 29,269, 80 U.S.P.Q.2d 1545

first-class airplane cabin. The legs and feet are shot at includes admission fees and catalogue and postcard sales. close range and dominate the photograph. Allure The record does not reflect Deutsche Bank’s expenses for published “Silk Sandals” as part of a six-page feature on that exhibition other than the commission of the paintings. metallic cosmetics entitled “Gilt Trip.” A black-and-white reproduction of the photograph is also in the Appendix. The subsequent exhibition of the paintings at the Solomon R. Guggenheim Museum in New York sustained a net Blanch photographed “Silk Sandals” at a “shoot” loss, although when profits from catalogue and postcard organized by Condé Nast Publications, Allure ‘s sales are taken into account, Guggenheim estimates that it publisher. According to Blanch’s deposition testimony, earned a profit of approximately $2,000 from “Niagara.”2 Paul Cavaco, the creative director of Allure, suggested the In 2004, the auction house Sotheby’s reportedly appraised model, sandals, and nail polish to be used in the “Niagara” at $1 million. *249 The work has not, however, photograph. Blanch participated in their selection and been sold, nor does the record indicate that it or any other retained control over the camera, the film, the lighting, painting commissioned by Deutsche Bank has been and the composition of the photographs. She testified that offered for sale or been the subject of a bid. it was her idea to use an airplane interior as a backdrop and to place the female model’s feet on the male model’s Allure paid Blanch $750 for “Silk Sandals.” Although lap. She explained that she wanted to “show some sort of Blanch retains the copyright to the photograph, she has erotic sense[;] ... to get ... more of a sexuality to the neither published nor licensed it subsequent to its photographs.” Blanch Dep., March 8, 2005, at 112–13. appearance in Allure. Indeed, Blanch does not allege that she has ever licensed any of her photographs for use in works of graphic art or other visual art. At her deposition, Blanch testified that Koons’s use of the photograph did Koons’s Use of Blanch’s Photograph not cause any harm to her career or upset any plans she While working on the “Easyfun–Ethereal” series, Koons had for “Silk Sandals” or any other photograph in which saw “Silk Sandals” in Allure. According to Koons, she has rights. She also testified that, in her view, the “certain physical features of the legs [in the photograph] market value of “Silk Sandals” did not decrease as the represented for me a particular type of woman frequently result of Koons’s alleged infringement. presented in advertising.” He considered this typicality to further his purpose of commenting on the “commercial images ... in our consumer culture.” Koons Aff. at ¶ 10. This Lawsuit Koons scanned the image of “Silk Sandals” into his After the initial exhibition of the “Easyfun–Ethereal” computer and incorporated a version of the scanned image painting at the Deutsche Guggenheim Berlin, “Niagara” into “Niagara.” He included in the painting only the legs was exhibited in other museums and public galleries. and feet from the photograph, discarding the background Blanch did not see the painting until it was on display at of the airplane cabin and the man’s lap on which the legs the Guggenheim Museum in New York during the rest. Koons inverted the orientation of the legs so that summer of 2002. On October 10, 2003, she filed this they dangle vertically downward above the other elements lawsuit asserting that Koons infringed her copyright in of “Niagara” rather than slant upward at a 45–degree “Silk Sandals” in violation of the Copyright Act of 1976, angle as they appear in the photograph. He added a heel to 17 U.S.C. § 101 et seq. On August 20, 2004, Blanch one of the feet and modified the photograph’s coloring. amended her complaint to add Deutsche Bank and The legs from “Silk Sandals” are second from the left Guggenheim as defendants and later served them with the among the four pairs of legs that form the focal images of amended complaint. She alleges that they “participated in, “Niagara.” Koons did not seek permission from Blanch or facilitated, and caused the acts of infringement by Koons” anyone else before using the image. by commissioning the work despite knowing, based on Koons’s history with, among other things, the “Banality” cases, that Koons was likely to infringe the copyrights of others. First Am. Compl. ¶ 15. The Parties’ Economic Gains and Losses Deutsche Bank paid Koons $2 million for the seven On November 1, 2005, the district court granted summary “Easyfun–Ethereal” paintings. Koons reports that his net judgment to the defendants. The court concluded that compensation attributable to “Niagara” was $126,877. Koons’s “Niagara” did not infringe Blanch’s “Silk Deutsche Bank received gross revenues of approximately Sandals” because its use of the image from “Silk Sandals” $100,000 from the exhibition of the “Easyfun–Ethereal” constituted fair use. See Blanch v. Koons, 396 F.Supp.2d paintings at the Deutsche Guggenheim Berlin, a total that 476 (S.D.N.Y.2005). Considering the four non-exclusive © 2016 Thomson Reuters. No claim to original U.S. Government Works. 5

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statutory factors upon which a fair-use determination is 500 (1994), remarked: “From the infancy of copyright made, see 17 U.S.C. § 107, the court determined that: (1) protection, some opportunity for fair use of copyrighted the purpose and character of Koons’s use was materials has been thought necessary to fulfill copyright’s “transformative” and therefore favored by copyright law, very purpose, ‘To promote the Progress of Science and see Blanch, 396 F.Supp.2d at 480–81; (2) Blanch’s useful Arts.’ ” Id. at 575, 114 S.Ct. 1164 (quoting U.S. copyrighted work was “banal rather than creative,” and Const., Art. I, § 8, cl. 8). therefore the nature of the copyrighted work weighed in favor of the defendants, see id. at 481–82; (3) although As Judge Leval observed in his seminal law review article the women’s legs are the “focal point of interest” in on the subject, the law of copyright “is intended to Blanch’s photograph, the image is of limited originality, motivate the creative activity of authors and inventors by so the statutory factor concerning “the amount and the provision of a special reward .... The monopoly substantiality of the portion used in relation to the created by copyright thus rewards the individual author in copyrighted work as a whole,” was neutral between the order to benefit the public.” Pierre N. Leval, Toward a parties, id. at 482 (citing 17 U.S.C. § 107(3)); and (4) Fair Use Standard, 103 Harv. L.Rev. 1105, 1108 (1990) Blanch’s photograph could not have captured the market (quoting Harper & Row, 471 U.S. at 545–46, 105 S.Ct. occupied by “Niagara,” so that the final factor, the effect 2218) (ellipsis in original; internal quotation marks and of the use upon the potential market for the copyrighted footnote omitted). At the same time, though, “excessively work, favored the defendants, see id. Based on its broad protection would stifle, rather than advance, the conclusion that, as a matter of law, each of the statutory [law’s] objective.” Id. at 1109. “Monopoly protection of factors concerning fair use either favored the defendants intellectual property that impeded referential analysis ... or was neutral between the parties, the court concluded would strangle the creative process.” Id. at 1108. Fair use that the defendants were entitled to summary judgment. should therefore be perceived as an “integral part of copyright, whose observance is necessary to achieve the Blanch appeals. objectives of that law.” Id. at 1107.

Copyright law thus must address the inevitable tension between the property rights it establishes in creative works, which must be protected up to a point, and the DISCUSSION ability of authors, artists, and the rest of us to express them— or ourselves by reference to the works of others, which must be protected up to a point. The fair-use I. Standard of Review doctrine mediates between the two sets of interests, We review a district court’s grant of summary judgment determining where each set of interests ceases to control. de novo. See Tenenbaum v. Williams, 193 F.3d 581, 593

(2d Cir.1999), cert. denied, *250 529 U.S. 1098, 120 The fair-use doctrine was first codified in the Copyright S.Ct. 1832, 146 L.Ed.2d 776 (2000). Summary judgment Act of 1976, which describes four non-exclusive factors should be granted if “there is no genuine issue as to any that must be considered in determining fair use. material fact and ... the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). [T]he fair use of a copyrighted work ... for purposes “Although ‘[f]air use is a mixed question of law and fact,’ such as criticism, comment, news reporting, teaching this court has on a number of occasions resolved fair use (including multiple copies for classroom use), determinations at the summary judgment stage where ... scholarship, or research, is not an infringement of there are no genuine issues of material fact.” Castle Rock copyright. In determining whether the use made of a Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132, work in any particular case is a fair use the factors to be 137 (2d Cir.1998) (quoting Harper & Row, Publishers, considered shall include— Inc. v. Nation Enters., 471 U.S. 539, 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985) (other internal quotation marks (1) the purpose and character of the use, including and citation omitted)). whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work; II. Fair Use [1] The Supreme Court, in its landmark decision (3) the amount and substantiality of the portion used in addressing the fair-use defense, Campbell v. Acuff–Rose relation to the copyrighted work as a whole; and Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d

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(4) the effect of the use upon the potential market for or Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d Cir.2001), value of the copyrighted work. we described it this way:

*251 The fact that a work is unpublished shall not itself The heart of the fair use inquiry is into the first bar a finding of fair use if such finding is made upon specified statutory factor identified as “the purpose and consideration of all the above factors. character of the use.” 17 U.S.C. § 107(1). This formulation, as the Supreme Court observed in 17 U.S.C. § 107. Campbell, 510 U.S. at 578, 114 S.Ct. 1164, draws on Justice Story’s famous reference in Folsom v. Marsh, 9 [2] As the words of section 107 indicate, the determination F. Cas. 342, 348 (C.C.D.Mass.1841) (No. 4901), to of fair use is an open-ended and context-sensitive inquiry. “the nature and objects of the selections made.” As the In Campbell, the Supreme Court warned that the task Campbell Court explained,

is not to be simplified with The central purpose of this investigation is to see, in bright-line rules, for the statute, Justice Story’s words, whether the new work merely like the doctrine it recognizes, calls “supersedes the objects” of the original creation, or for case-by-case analysis. The text instead adds something new, with a further purpose employs the terms “including” and or different character, altering the first with new “such as” in the preamble expression, meaning, or message ..., in other words, paragraph to indicate the whether and to what extent the new work is illustrative and not limitative “transformative.” Although such transformative use function of the examples given, is not absolutely necessary for a finding of fair use, which thus provide only general the goal of copyright, to promote science and the guidance about the sorts of copying arts, is generally furthered by the creation of that courts and Congress most transformative works. Such transformative works commonly had found to be fair thus lie at the heart of the fair use doctrine’s uses. Nor may the four statutory guarantee of breathing space .... Campbell, 510 U.S. factors be treated in isolation, one at 579, 114 S.Ct. 1164 (emphasis added [in Davis ] ) from another. All are to be (alteration in original) (citations omitted). explored, and the results weighed together, in light of the purposes of Id. If “ ‘the secondary use adds value to the original—if copyright. [copyrightable expression in the original work] is used as raw material, transformed in the creation of new Campbell, 510 U.S. at 577–78, 114 S.Ct. 1164 (citations information, new aesthetics, new insights *252 and and some internal quotation marks omitted). “The understandings—this is the very type of activity that the ultimate test of fair use ... is whether the copyright law’s fair use doctrine intends to protect for the enrichment of goal of ‘promoting the Progress of Science and useful society.’ ” Castle Rock Entm’t, 150 F.3d at 142 (quoting 3 Arts,’ U.S. Const., art. I, § 8, cl. 8, ‘would be better Leval, supra, at 1111; brackets in Castle Rock ). served by allowing the use than by preventing it.’ ” Castle Rock Entm’t, 150 F.3d at 141 (quoting Arica Inst., Inc. v. Koons does not argue that his use was transformative Palmer, 970 F.2d 1067, 1077 (2d Cir.1992) (alteration solely because Blanch’s work is a photograph and his a incorporated)); see also Bill Graham Archives v. Dorling painting, or because Blanch’s photograph is in a fashion Kindersley Ltd., 448 F.3d 605, 608 (2d Cir.2006) magazine and his painting is displayed in museums. He (similar). would have been ill advised to do otherwise. We have declined to find a transformative use when the defendant has done no more than find a new way to exploit the creative virtues of the original work.4 See Davis, 246 F.3d A. First Factor: The Purpose and Character of the Use at 174 (use of plaintiff’s eyewear in a clothing The first statutory factor in the fair-use inquiry is “the advertisement not transformative because it was “worn as purpose and character of the use, including whether such eye jewelry in the manner it was made to be worn”); use is of a commercial nature or is for nonprofit Castle Rock Entm’t, 150 F.3d at 142–43 (quiz book called educational purposes.” 17 U.S.C. § 107(1). the “Seinfeld Aptitude Test” not transformative when its purpose was “to repackage [the television show] Seinfeld [3] [4] 1. “Transformative” Use. We have, post-Campbell, to entertain Seinfeld viewers”); Ringgold v. Black Entm’t addressed and applied this first factor many times. In Television, Inc. 126 F.3d 70, 79 (2d Cir.1997) (copy of © 2016 Thomson Reuters. No claim to original U.S. Government Works. 7

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plaintiff’s painting used as decoration for a television magazine—with changes of its colors, the background program’s set not transformative because it was used for against which it is portrayed, the medium, the size of the “the same decorative purpose” as the original). objects pictured, the objects’ details and, crucially, their entirely different purpose and meaning—as part of a But Koons asserts—and Blanch does not deny—that his massive painting commissioned for exhibition in a purposes in using Blanch’s image are sharply different German art-gallery space. We therefore conclude that the from Blanch’s goals in creating it. Compare Koons Aff. at use in question was transformative. ¶ 4 (“I want the viewer to think about his/her personal experience with these objects, products, and images and at [6] 2. Commercial Use. Koons made a substantial profit the same time gain new insight into how these affect our from the sale of “Niagara.” And “whether [the] use [in lives.”) with Blanch Dep. at 112–113 (“I wanted to show question] is of a commercial nature or is for nonprofit some sort of erotic sense[;] ... to get ... more of a sexuality educational purposes” is an explicit part of the first to the photographs.”). The sharply different objectives fair-use factor. 17 U.S.C. § 107(1). In American that Koons had in using, and Blanch had in creating, “Silk Geophysical Union v. Texaco Inc., 60 F.3d 913 (2d Sandals” confirms the transformative nature of the use. Cir.1994), we said: See Bill Graham Archives, 448 F.3d at 609 (finding transformative use when defendant’s purpose in using The commercial/nonprofit dichotomy concerns the copyrighted concert poster was “plainly different from the unfairness that arises when a secondary user makes *253 original purpose for which they were created”); see unauthorized use of copyrighted material to capture also 17 U.S.C. § 107(1) (first fair-use factor is the significant revenues as a direct consequence of copying “purpose and character of the use” (emphasis added)). the original work.

[5] Koons is, by his own undisputed description, using Consistent with these principles, courts will not sustain Blanch’s image as fodder for his commentary on the a claimed defense of fair use when the secondary use social and aesthetic consequences of mass media. His can fairly be characterized as a form of commercial stated objective is thus not to repackage Blanch’s “Silk exploitation, i.e., when the copier directly and Sandals,” but to employ it “ ‘in the creation of new exclusively acquires conspicuous financial rewards information, new aesthetics, new insights and from its use of the copyrighted material. Conversely, understandings.’ ” Castle Rock Entm’t, 150 F.3d at 142 courts are more willing to find a secondary use fair (quoting Leval, supra, 103 Harv. L.Rev. at 1111). When, when it produces a value that benefits the broader as here, the copyrighted work is used as “raw material,” public interest. The greater the private economic Castle Rock Entm’t, 150 F.3d at 142 (internal quotation rewards reaped by the secondary user (to the exclusion marks and citation omitted), in the furtherance of distinct of broader public benefits), the more likely the first creative or communicative objectives, the use is factor will favor the copyright holder and the less likely transformative. Id.; see also Bill Graham Archives, 448 the use will be considered fair. F.3d at 609 (use of concert posters “as historical artifacts” in a biography was transformative); Leibovitz v. Id. at 922 (internal quotation marks and citations omitted). Paramount Pictures Corp., 137 F.3d 109, 113 (2d Cir.1998) (parody of a photograph in a movie poster was *254 But the use at issue in American Geophysical Union transformative when “the ad [was] not merely different; it was photocopying—“an untransformed duplication” of differ[ed] in a way that may reasonably be perceived as the copyrighted works. Id. at 923. And we later observed commenting” on the original). in NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir.2004), that The test for whether “Niagara’s” use of “Silk Sandals” is The Supreme Court in Campbell rejected the notion “transformative,” then, is whether it “merely supersedes that the commercial nature of [a] use could by itself be the objects of the original creation, or instead adds a dispositive consideration. The Campbell opinion something new, with a further purpose or different observes that “nearly all of the illustrative uses listed in character, altering the first with new expression, meaning, the preamble paragraph of § 107, including news or message.” Campbell, 510 U.S. at 579, 114 S.Ct. 1164 reporting, comment, criticism, teaching, scholarship, (internal quotation marks and citation omitted, alteration and research ... ‘are generally conducted for profit,’ ” incorporated); Davis, 246 F.3d at 174 (same). The test Campbell, 510 U.S. at 584, 114 S.Ct. 1164 (quoting almost perfectly describes Koons’s adaptation of “Silk Harper & Row, 471 U.S. at 592, 105 S.Ct. 2218) Sandals”: the use of a fashion photograph created for (Brennan, J., dissenting), and that Congress “could not publication in a glossy American “lifestyles” have intended” a rule that commercial uses are

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presumptively unfair. Id. The commercial objective of parody because “the copied work must be, at least in part, the secondary work is only a subfactor within the first an object of the parody” and it was “difficult to discern factor. “The more transformative the new work, the less [in Koons’s work] any parody *255 of the photograph ... will be the significance of other factors, like itself”); Campbell, 510 U.S. at 581 n. 15, 114 S.Ct. 1164 commercialism, that may weigh against a finding of (“Satire has been defined as a work ‘in which prevalent fair use.” Id. at 579, 114 S.Ct. 1164. Finding the work follies or vices are assailed with ridicule,’ 14 Oxford substantially transformative, the district court properly English Dictionary, ... at 500, or are ‘attacked through discounted the secondary commercial nature of the use. irony, derision, or wit,’ American Heritage Dictionary ... We agree. at 1604.”).

Id. at 477–78; see also Campbell, 510 U.S. at 591, 114 We have applied Campbell in too many non-parody cases S.Ct. 1164 (“When a commercial use amounts to mere to require citation for the proposition that the broad duplication of the entirety of an original, it clearly principles of Campbell are not limited to cases involving ‘supersedes the objects,’ Folsom v. Marsh, 9 F. Cas. at parody. But the satire/parody distinction may nevertheless 348, of the original and serves as a market replacement be relevant to the application of these principles. As the for it, making it likely that cognizable actionable market Campbell Court observed, “[p]arody needs to mimic an harm to the original will occur. But when, on the contrary, original to make its point, and so has some claim to use the second use is transformative, market substitution is at the creation of its victim’s (or collective victims’) least less certain, and market harm may not be so readily imagination, whereas satire can stand on its own two feet inferred.”); Davis, 246 F.3d at 174–75 (similar to NXIVM and so requires justification for the very act of Corp.); Leibovitz, 137 F.3d at 113 (similar); Am. borrowing.” Id. at 580–81, 114 S.Ct. 1164. Geophysical Union, 60 F.3d at 921–22 (similar). It is not, of course, our job to judge the merits of We do not mean to suggest that the commercialism of the “Niagara,” or of Koons’s approach to art. See Campbell, use by the secondary user of the original is not relevant to 510 U.S. at 582, 114 S.Ct. 1164 (“ ‘[I]t would be a the inquiry. But here, since the “new work” is dangerous undertaking for persons trained only to the law “substantially transformative,” NXIVM Corp., 364 F.3d at to constitute themselves final judges of the worth of a 478, “the significance of other factors, [including] work, outside of the narrowest and most obvious limits.’ ” commercialism, are of [less significance],” id. (quoting (quoting Bleistein v. Donaldson Lithographing Co., 188 Campbell, 510 U.S. at 579, 114 S.Ct. 1164). We therefore U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460 (1903) “discount[ ] the secondary commercial nature of the use.” (Holmes, J.))). The question is whether Koons had a Id. genuine creative rationale for borrowing Blanch’s image, rather than using it merely “to get attention or to avoid the It can hardly be said, moreover, that the defendants’ drudgery in working up something fresh.” Id. at 580, 114 economic gains from “Niagara” were “to the exclusion of S.Ct. 1164. Although it seems clear enough to us that broader public benefits.” Am. Geophysical Union, 60 F.3d Koons’s use of a slick fashion photograph enables him to at 921–22. Notwithstanding the fact that artists are satirize life as it appears when seen through the prism of sometimes paid and museums sometimes earn money, the slick fashion photography, we need not depend on our public exhibition of art is widely and we think properly own poorly honed artistic sensibilities. Koons explained, considered to “have value that benefits the broader public without contradiction, why he used Blanch’s image: interest.” Id. at 922; see also 20 U.S.C. § 951 (stating that “access to the arts and the humanities” fosters “wisdom Although the legs in the Allure and vision” and makes citizens “masters of their Magazine photograph [“Silk technology and not its unthinking servants”). Sandals”] might seem prosaic, I considered them to be necessary for [7] 3. Parody, Satire, and Justification for the Copying. inclusion in my painting rather than The secondary work in Campbell was a parody, and some legs I might have photographed of the language in the opinion, and some of the cases myself. The ubiquity of the following it, see, e.g., Leibovitz v. Paramount Pictures photograph is central to my Corp., supra, are specifically about parody. “Niagara,” on message. The photograph is typical the other hand, may be better characterized for these of a certain style of mass purposes as satire—its message appears to target the communication. Images almost genre of which “Silk Sandals” is typical, rather than the identical to them can be found in individual photograph itself. See Rogers, 960 F.2d at 310 almost any glossy magazine, as (concluding that a previous work by Koons was not a © 2016 Thomson Reuters. No claim to original U.S. Government Works. 9

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well as in other media. To me, the to use a work does not weigh against a finding of fair legs depicted in the Allure use.’ ”) (citing Campbell, 510 U.S. at 585 n. 18, 114 S.Ct. photograph are a fact in the world, 1164) (other citation omitted). In light of that statement something that everyone by the Supreme Court, it can hardly be said to have been experiences constantly; they are not an act of bad faith for Koons to have neither “sought [n]or anyone’s legs in particular. By [been] granted” permission for the use of “Silk Sandals” using a fragment of the Allure if, as we find, the use is “otherwise fair.” photograph in my painting, I thus comment upon the culture and 5. Conclusions as to the First Factor. Because Koons’s attitudes promoted and embodied in appropriation of Blanch’s photograph in “Niagara” was Allure Magazine. By using an intended to be—and appears to be—“transformative,” existing image, I also ensure a because the creation and exhibition of the painting cannot certain authenticity or veracity that fairly be described as commercial exploitation and the enhances my commentary—it is the “commerciality” of the use is not dispositive in any event, difference between quoting and and because there is insufficient indication of “bad faith,” paraphrasing—and ensure that the we agree with the district court that the first fair-use factor viewer will understand what I am strongly favors the defendants. referring to.

Koons Aff. at ¶ 12.5 We conclude that Koons thus established a “justif[ication for] the very act of [his] B. Second Factor: Nature of the Copyrighted Work [9] borrowing.” Campbell, 510 U.S. at 581, 114 S.Ct. 1164. The second statutory factor is “the nature of the Whether or not Koons could have created “Niagara” copyrighted work.” 17 U.S.C. § 107(2). It “calls for without reference to “Silk Sandals,” we have been given recognition that some works are closer to the core of no reason to question his statement that the use of an intended copyright protection than others, with the existing image advanced his artistic purposes. consequence that fair use is more difficult to establish when the former works are copied.” Campbell, 510 U.S. [8] 4. “Bad Faith.” Much has been written about whether at 586, 114 S.Ct. 1164. good faith was de-emphasized by the advent of Campbell or essentially written out of the first part of the fair-use Two types of distinctions as to the test. The question was thoroughly explored by the nature of the copyrighted work majority and concurring opinions in NXIVM Corp., 364 have emerged that have figured in F.3d at 478–79; *256 id. at 483–87 (Jacobs, J., the decisions evaluating the second concurring). In any event, the only act of bad faith alleged factor: (1) whether the work is here is that Koons used Blanch’s photograph without first expressive or creative, such as a asking her permission. We are aware of no controlling work of fiction, or more factual, authority to the effect that the failure to seek permission with a greater leeway being for copying, in itself, constitutes bad faith. See Harper & allowed to a claim of fair use where Row, 471 U.S. at 562–63, 105 S.Ct. 2218 (purloined the work is factual or manuscript); NXIVM Corp., 364 F.3d at 478 (breach of informational, and (2) whether the confidentiality agreement); Rogers, 960 F.2d at 309 work is published or unpublished, (tearing off of copyright mark); Weissmann v. Freeman, with the scope for fair use 868 F.2d 1313, 1324 (2d Cir.1989) (“total deletion of the involving unpublished works being original author’s name and substitution of the copier’s”). considerably narrower. And as the Campbell Court noted by way of dictum, “If the use is otherwise fair, then no permission need be 2 Howard B. Abrams, The Law of Copyright, § 15:52 sought or granted.” Campbell, 510 U.S. at 585 n. 18, 114 (2006). S.Ct. 1164; see also Castle Rock Entm’t, 150 F.3d at 146 (2d Cir.1998) (“One factor that is of no relevance to the As noted, Blanch’s “Silk Sandals” was published. Under fair use equation, however, is defendants’ continued the second of the two considerations mentioned by distribution of [the defendants’ work] after [the plaintiff] Abrams, that fact favors the defendants.6 notified defendants of its copyright infringement claim, because ‘[i]f the use is otherwise fair, then no permission *257 [10] As for the first consideration, we disagree with need be sought or granted .... [B]eing denied permission the district court’s characterization of Blanch’s

Blanch v. Koons, 467 F.3d 244 (2006) 2006 Copr.L.Dec. P 29,269, 80 U.S.P.Q.2d 1545 photograph as “banal rather than creative.” Blanch, 396 510 U.S. at 587, 114 S.Ct. 1164. He did not copy those F.Supp.2d at 482.7 Accepting that “Silk Sandals” is a aspects of “Silk Sandals” “whose power lies in [Blanch’s] creative work, though, it does not follow that the second individualized *258 expression.” Harper & Row, 471 fair-use factor, even if it somewhat favors Blanch, has U.S. at 563, 105 S.Ct. 2218. As Blanch testified in her significant implications for on our overall fair-use deposition, her key creative decisions in the shoot were analysis. As we recently explained, although “the creative the choice of an airplane cabin as a setting and her nature of artistic images typically weighs in favor of the placement of the female model’s legs on the male model’s copyright holder,” “the second factor may be of limited lap. But neither the airplane background nor the man’s lap usefulness where the creative work of art is being used for appear in “Niagara.” It depicts only the woman’s legs and a transformative purpose.” Bill Graham Archives, 448 sandal-clad feet. In light of Koons’s choice to extract the F.3d at 612; cf. Campbell, 510 U.S. at 586, 114 S.Ct. legs, feet, and sandals in “Silk Sandals” from their 1164 (stating that the second factor is rarely “likely to background, we find his statement that he copied only that help much in separating the fair use sheep from the portion of the image necessary to evoke “a certain style of infringing goats in a parody case”). To paraphrase Bill mass communication,” Koons Aff. ¶ 12, to be persuasive. Graham Archives, the second fair-use factor has limited We conclude that the amount and substantiality of weight in our analysis because Koons used Blanch’s work Koons’s copying was “reasonable in relation to the in a transformative manner to comment on her image’s purpose of the copying.” Campbell, 510 U.S. at 586, 114 social and aesthetic meaning rather than to exploit its S.Ct. 1164. The district court said that “[t]he third factor creative virtues. See Bill Graham Archives, 448 F.3d at is neutral as between the parties,” Blanch, 396 F.Supp.2d 612–13. at 482; we think that it weighs distinctly in Koons’s favor. This modest difference in our views, however, does not alter our ultimate conclusion on fair use.

C. Third Factor: Amount and Substantiality of the Portion Used [11] The third factor bearing on fair use is “the amount and D. Fourth Factor: Market Effects substantiality of the portion used in relation to the [12] [13] The fourth and final statutory factor is “the effect copyrighted work as a whole.” 17 U.S.C. § 107(3). The of the use upon the potential market for or value of the question is whether “ ‘the quantity and value of the copyrighted work.” 17 U.S.C. § 107(4).8 “In considering materials used,’ are reasonable in relation to the purpose the fourth factor, our concern is not whether the of the copying.” Campbell, 510 U.S. at 586, 114 S.Ct. secondary use suppresses or even destroys the market for 1164 (quoting Folsom, 9 F. Cas. at 348); see also id. at the original work or its potential derivatives, but whether 587, 114 S.Ct. 1164 (noting that analysis “calls for the secondary use usurps the market of the original work.” thought not only about the quantity of the materials used, NXIVM Corp., 364 F.3d at 481–82. “The market for but about their quality and importance, too.”); Nihon potential derivative uses includes only those that creators Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d of original works would in general develop or license 65, 73 (2d Cir.1999) (same). others to develop.” Campbell, 510 U.S. at 592, 114 S.Ct. 1164. As we have discussed in part II.3 of this opinion, above, Koons asserts that his artistic goals led him to incorporate Blanch acknowledges that she has not published or preexisting images such as Blanch’s photograph into his licensed “Silk Sandals” subsequent to its appearance in paintings in order to reference certain “fact[s] in the Allure, that she has never licensed any of her photographs world.” Koons Aff. at ¶ 12. The issue here is not for use in works of graphic or other visual art, that “justification,” which we addressed in part II.3. The Koons’s use of her photograph did not cause any harm to question is whether, once he chose to copy “Silk her career or upset any plans she had for “Silk Sandals” or Sandals,” he did so excessively, beyond his “justified” any other photograph, and that the value of “Silk Sandals” purpose for doing so in the first place—whether the use did not decrease as the result of Koons’s alleged was “reasonable in relation to the purpose of the infringement. In light of these admissions, it is plain that copying.” Campbell, 510 U.S. at 586, 114 S.Ct. 1164 “Niagara” had no deleterious effect “upon the potential market for or value of the copyrighted work.” 17 U.S.C. § It seems to us that Koons’s copying of “Silk Sandals” was 107(4).9 The fourth fair-use factor greatly favors Koons. indeed reasonable when measured in light of his purpose, to convey the “fact” of the photograph to viewers of the painting, Koons Aff. at ¶ 12, and in light of the quantity, quality, and importance of the material used, Campbell, © 2016 Thomson Reuters. No claim to original U.S. Government Works. 11

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*259 CONCLUSION

Having explored the statutory factors and weighed them together in light of the purposes of copyright, Campbell, 510 U.S. at 78, we think that the district court’s conclusion was correct—that copyright law’s goal of “promoting the Progress of Science and useful Arts,” U.S. Const., art. I, § 8, cl. 8, would be better served by allowing Koons’s use of “Silk Sandals” than by preventing it, see Castle Rock Entm’t, 150 F.3d at 141. We therefore conclude that neither he nor the other defendants engaged in or are liable for copyright infringement. We affirm the judgment of the district court.

*260

*262 KATZMANN, Circuit Judge, concurring.

I concur in the disposition of this case and appreciate the very considerable thinking in the majority opinion. I agree that Koons’ work is highly transformative of Blanch’s, using it as raw material for an entirely different type of art, and that his use of Blanch’s work furthered a purpose (art that comments on existing images by juxtaposing them against others) that can make a finding of fair use appropriate. In both respects, the facts of this case are quite distinguishable from those of Rogers v. Koons, 960 F.2d 301 (2d Cir.1992), in which Koons slavishly recreated a copyrighted work in a different medium without any objective indicia of transforming it or *261 commenting on the copyrighted work. Moreover, the fourth factor of the fair-use analysis dramatically favors Koons, in that Blanch failed to show that Koons’ use of her work actually harmed her in any way. She thus stands in stark contrast to the plaintiff in Rogers, for whom licensing of his work in general, and the appropriated

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work in particular, yielded considerable revenue. On the U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), to the facts of this case, it is easy to conclude that the copyright effect that failure to seek authorization, even where doing law’s goals are better served by a finding of fair use. so would have been feasible, is not relevant to the fair-use inquiry. See Majority Op. at 256–57. I see no reason, on I respectfully part company with the majority opinion, these facts, to wade into the contentious battle over the however, because I believe it sweeps more broadly in role of good faith in the post-Campbell fair use inquiry. several places than is necessary to decide this simple case. Instead, I would simply conclude that whatever bad *263 For example, I see no need to state that we “discount[ ] faith Koons may have exhibited in this case, as well as the the secondary commercial nature of the use.” See limited commercial nature of his use, would not outweigh Majority Op. at 254. This language was taken from the much stronger considerations pointing toward a NXIVM Corp. v. Ross Inst., 364 F.3d 471, 478 (2d finding of fair use. Cir.2004), which used it in the context of applying our presumption that the first factor favors the defendant To be clear, I do not argue with the majority’s thoughtful where the use is for one of the purposes specifically listed discussion of these points, except to question whether its in 17 U.S.C. § 107. Here, where Koons’ use is not for one conclusions are compelled by precedent. If and when I of the archetypal purposes specifically contemplated by encounter a case that requires me to do so, I may well Congress and such a presumption does not apply, it is adopt them. I merely believe that this is not such a case, uncertain whether we have license to “discount” its and so I do not now join what I regard as dicta as applied commercial nature, as opposed to balancing that to these facts. consideration against the use’s transformativeness and other countervailing concerns—particularly because This is our Circuit’s second encounter with Koons’ work. consideration of a use’s commercial nature (unlike its His work, like that of other appropriation artists, “transformativeness”) is explicitly part of our statutory inherently raises difficult questions about the proper mandate. See 17 U.S.C. § 107(1). scope of copyright protection and the fair-use doctrine. I would continue to answer those questions as necessary to Rather than reaching this question, I would simply apply decide particular cases, mindful that the fair-use inquiry is our established analysis for weighing commercialism, see a fact-specific one that is “not to be simplified with Am. Geophysical Union v. Texaco, Inc., 60 F.3d 913, bright-line rules.” Campbell, 510 U.S. at 577, 114 S.Ct. 922–23 (2d Cir.1994). As in Am. Geophysical Union, “the 1164. link between [the defendant’s] commercial gain and [the defendant’s] copying is somewhat attenuated,” in that the copying of Blanch’s work was simply one small part of what made Koons’ work so valuable rather than the heart All Citations of the enterprise. See 60 F.3d at 922. 467 F.3d 244, 2006 Copr.L.Dec. P 29,269, 80 U.S.P.Q.2d Similarly, there seems to be no need to rely so heavily on 1545 what the majority acknowledges is a sentence of dictum in a footnote in Campbell v. Acuff–Rose Music, Inc., 510

Footnotes

* The Honorable J. Garvan Murtha of the United States District Court for the District of Vermont, sitting by designation.

1 See E. Kenly Ames, Note, Beyond Rogers v. Koons: A Fair Use Standard for Appropriation, 93 Colum. L.Rev. 1473, 1477–80 (1993).

2 Guggenheim’s figures for catalogue and postcard sales include sales at the Deutsche Guggenheim Berlin. It is possible, therefore, that those sales are double-counted in Deutsche Bank’s and Guggenheim’s earnings calculations.

3 As the Supreme Court noted in Campbell, however, a finding of transformativeness “is not absolutely necessary for a finding of fair use.” Campbell, 510 U.S. at 579, 114 S.Ct. 1164 (citing Sony Corp. of Am. v. Universal Studios, Inc., 464 U.S. 417, 455 n. 40, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984)); see also 17 U.S.C. § 107 (listing “multiple copies for classroom use” as among the categories of potentially fair uses); Rebecca Tushnet, Copy This Essay: How Fair Use Doctrine Harms Free Speech and How Copying Serves It, 114 Yale L.J. 535, 555 (2004) (noting that historically some forms of “pure copying” were “at the core of fair use”). Nor is transformativeness necessarily the only important factor. See Campbell, 510 U.S. at 578, 114 S.Ct. 1164 (“[T]he four statutory factors ... [a]re all to be explored, and the results © 2016 Thomson Reuters. No claim to original U.S. Government Works. 13

Blanch v. Koons, 467 F.3d 244 (2006) 2006 Copr.L.Dec. P 29,269, 80 U.S.P.Q.2d 1545

weighed together, in light of the purposes of copyright.”).

4 It has been suggested that the exploitation of new, complementary markets is the hallmark of fair use. See Ty, Inc. v. Publ’ns Int’l, 292 F.3d 512, 517 (7th Cir.2002) (“[C]opying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is fair use, but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs or screws), or for derivative works from the copyrighted work, is not fair use.” (citation omitted)); see also 4–13 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.05[B][1] (2006) (“[I]f ... the defendant’s work, although containing substantially similar material, performs a different function than that of the plaintiff’s, the defense of fair use may be invoked.”). But as the Seventh Circuit recognized, this reasoning is in tension with the Copyright Act’s express grant to copyright holders of rights over derivative works. See Ty, Inc., 292 F.3d at 518 (“Were control of derivative works not part of a copyright owner’s bundle of rights, it would be clear that [defendant’s] books fell on the complement side of the divide and so were sheltered by the fair-use defense.”). A derivative use can certainly be complementary to, or fulfill a different function from, the original.

5 Koons’s clear conception of his reasons for using “Silk Sandals,” and his ability to articulate those reasons, ease our analysis in this case. We do not mean to suggest, however, that either is a sine qua non for a finding of fair use—as to satire or more generally.

6 We have said that when “ ‘the copyrighted [material is] unpublished, the second [fair-use] factor weighs heavily in favor’ ” of the plaintiff. New Era Publ’ns Int’l, ApS v. Henry Holt and Co., Inc., 873 F.2d 576, 583 (2d Cir.1989) (quoting Salinger v. Random House, Inc., 811 F.2d 90, 97 (2d Cir.), cert. denied, 484 U.S. 890, 108 S.Ct. 213, 98 L.Ed.2d 177 (1987)), cert. denied, 493 U.S. 1094, 110 S.Ct. 1168, 107 L.Ed.2d 1071 (1990). “In 1992, however, Congress amended § 107 to state that: ‘The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.’ ” Sundeman v. Seajay Soc’y, Inc., 142 F.3d 194, 204 (4th Cir.1998) (quoting 17 U.S.C. § 107). We have not had occasion to address the published/unpublished distinction since that amendment. But see NXIVM Corp., 364 F.3d at 480 (the parties did not dispute that because the copyrighted work was unpublished, the second fair-use factor favored the plaintiffs).

7 The district court did not actually say that Blanch’s photograph was banal, but rather that the elements of the photograph copied by Koons were banal. We think that the expressiveness of the copied elements is better considered as part of the third fair-use factor, the amount and substantiality of the portion used.

8 The Supreme Court has recently retreated from its earlier cases suggesting that the fourth statutory factor is the most important element of fair use, see Harper & Row, 471 U.S. at 566, 105 S.Ct. 2218, recognizing instead that “all [factors] are to be explored, and the results weighed together, in light of the purposes of copyright,” Campbell, 510 U.S. at 578, 114 S.Ct. 1164 .... Castle Rock Entm’t, 150 F.3d at 145.

9 We have sometimes found that the fourth factor favors the plaintiff even in the absence of evidence that the plaintiff has tapped, or even intends to tap, a derivative market. See, e.g., Castle Rock Entm’t, 150 F.3d at 145–46 (“Although Castle Rock has evidenced little if any interest in exploiting this market for derivative works ... the copyright law must respect that creative and economic choice.”). But nothing in the record here suggests that there was a derivative market for Blanch to tap into that is in any way related to Koons’s use of her work, even if she dearly wanted to. And it is of course circular to assert simply that if we were to hold in her favor she could then charge Koons for his further use of “Silk Sandals.” See Am. Geophysical Union, 60 F.3d at 929 n. 17 (“ ‘By definition every fair use involves some loss of royalty revenue because the secondary user has not paid royalties.’ ” (quoting Leval, supra, 103 Harv. L.Rev. at 1124)).

Exhibit 3

Cariou v. Prince, 714 F.3d 694 (2013) 2013 Copr.L.Dec. P 30,416, 106 U.S.P.Q.2d 1497

KeyCite Yellow Flag - Negative Treatment West Headnotes (20) Called into Doubt by Kienitz v. Sconnie Nation LLC, 7th Cir.(Wis.), September 15, 2014 714 F.3d 694 [1] Federal Courts United States Court of Appeals, Summary judgment Second Circuit. Court of appeals reviews a grant of summary Patrick CARIOU, Plaintiff–Appellee, judgment de novo. v. Richard PRINCE, Defendant–Appellant, Gagosian Gallery, Inc., Lawrence Gagosian, 2 Cases that cite this headnote Defendants–Cross–Defendants–Appellants.

Docket No. 11–1197–cv. | Argued: May 21, 2012. [2] Copyrights and Intellectual Property | Nature of statutory copyright Decided: April 25, 2013. The copyright is not an inevitable, divine, or natural right that confers on authors the absolute Synopsis ownership of their creations; it is designed rather Background: Photographer brought copyright to stimulate activity and progress in the arts for infringement action against well-known appropriation the intellectual enrichment of the public. artist, gallery, and gallery owner based on the artist’s use of photographer’s copyrighted photographs of 1 Cases that cite this headnote Rastafarians and Jamaican landscape in paintings that were marketed and sold by gallery and owner. The United States District Court for the Southern District of New York, Batts, J., 784 F.Supp.2d 337, granted photographer’s motion for summary judgment and [3] Copyrights and Intellectual Property entered a permanent injunction. Defendants appealed. Fair use and other permitted uses in general

Because excessively broad copyright protection would stifle, rather than advance, the law’s Holdings: The Court of Appeals, Barrington D. Parker, objective, the fair use doctrine mediates between Circuit Judge, held that: the property rights that copyright law establishes

in creative works, which must be protected up to [1] to qualify as fair use, a new work generally must alter a point, and the ability of authors, artists, and the the original with new expression, meaning, or message, rest of us to express them—or ourselves—by and reference to the works of others, which must be

protected up to a point. 17 U.S.C.A. § 107. [2] 25 of artist’s 30 paintings were transformative as a matter of law and thus constituted fair use of the copyrighted photographs. Cases that cite this headnote

Reversed in part, vacated in part, and remanded.

Wallace, J., Senior Circuit Judge, filed an opinion [4] Copyrights and Intellectual Property concurring in part and dissenting in part. Fair use and other permitted uses in general

Cariou v. Prince, 714 F.3d 694 (2013) 2013 Copr.L.Dec. P 30,416, 106 U.S.P.Q.2d 1497

is an open-ended and context-sensitive inquiry. 17 U.S.C.A. § 107. [8] Copyrights and Intellectual Property Fair use and other permitted uses in general Cases that cite this headnote If the secondary use adds value to the original, if the original work is used as raw material, transformed in the creation of new information,

[5] new aesthetics, new insights and understandings, Copyrights and Intellectual Property this is the very type of activity that copyright Fair use and other permitted uses in general law’s fair use doctrine intends to protect for the enrichment of society. 17 U.S.C.A. § 107. The ultimate test of fair use is whether the copyright law’s goal of promoting the Progress of Science and useful Arts would be better 3 Cases that cite this headnote served by allowing the use than by preventing it. 17 U.S.C.A. § 107.

2 Cases that cite this headnote [9] Copyrights and Intellectual Property Fair use and other permitted uses in general

For a use to be fair under the copyright law, it

[6] must be productive and must employ the quoted Copyrights and Intellectual Property matter in a different manner or for a different Fair use and other permitted uses in general purpose from the original. 17 U.S.C.A. § 107.

The first statutory factor to consider, which addresses the manner in which the copied work Cases that cite this headnote is used, is the heart of the fair use inquiry under copyright law; a court asks whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different [10] Copyrights and Intellectual Property character, altering the first with new expression, Fair use and other permitted uses in general meaning, or message, in other words, whether and to what extent the new work is To qualify as a fair use under copyright law, a transformative. 17 U.S.C.A. § 107. new work generally must alter the original with new expression, meaning, or message. 10 Cases that cite this headnote 4 Cases that cite this headnote

[7] Copyrights and Intellectual Property Fair use and other permitted uses in general [11] Copyrights and Intellectual Property Fair use and other permitted uses in general Transformative works lie at the heart of the copyright law’s fair use doctrine’s guarantee of A secondary work may constitute a fair use breathing space. 17 U.S.C.A. § 107. under copyright law even if it serves some purpose other than those identified in the preamble to the fair use statute. 17 U.S.C.A. § 2 Cases that cite this headnote 107.

Cariou v. Prince, 714 F.3d 694 (2013) 2013 Copr.L.Dec. P 30,416, 106 U.S.P.Q.2d 1497

Fair use and other permitted uses in general 5 Cases that cite this headnote The first fair use factor under copyright law, the purpose and character of the use, requires that courts consider whether the allegedly infringing work has a commercial or nonprofit educational [12] Copyrights and Intellectual Property purpose; the commercial/nonprofit dichotomy Pictorial, graphic, and sculptural works concerns the unfairness that arises when a secondary user makes unauthorized use of Twenty-five of artist’s 30 paintings copyrighted material to capture significant incorporating copyrighted photographs of revenues as a direct consequence of copying the Rastafarians and Jamaican landscape were original work. 17 U.S.C.A. § 107. transformative as a matter of law and thus constituted fair use of the copyrighted photographs; while the photographs consisted of 2 Cases that cite this headnote serene and deliberately composed portraits and landscape photographs depicting the natural beauty of Rastafarians and their surrounding environs, the paintings, on the other hand, were crude and jarring works, which were hectic and [15] Copyrights and Intellectual Property provocative, the photographs were also Fair use and other permitted uses in general black-and-white and printed in a 9 1/2″ x 12″ book, while the paintings were collages on The more transformative a new work, the less canvas that incorporated color, featured will be the significance of other factors, like distorted human and other forms and settings, commercialism, that may weigh against a and measured between ten and nearly a hundred finding of fair use under copyright law. times the size of the photographs, and the paintings’ composition, presentation, scale, color palette, and media were fundamentally 4 Cases that cite this headnote different and new compared to the photographs. 17 U.S.C.A. § 107.

[16] 2 Cases that cite this headnote Copyrights and Intellectual Property Fair use and other permitted uses in general

In the context of the fourth statutory fair use factor under copyright law, the effect of the [13] Copyrights and Intellectual Property secondary use upon the potential market for the Fair use and other permitted uses in general value of the copyrighted work, the market for potential derivative uses includes only those that A secondary work may modify the original creators of original works would in general without being transformative, such that it is not develop or license others to develop. 17 a fair use under copyright law; for instance, a U.S.C.A. § 107. derivative work that merely presents the same material but in a new form, such as a book of synopses of televisions shows, is not 3 Cases that cite this headnote transformative. 17 U.S.C.A. § 107.

5 Cases that cite this headnote [17] Copyrights and Intellectual Property Fair use and other permitted uses in general

The fair use factor relating to the nature of the [14] Copyrights and Intellectual Property copyrighted work calls for recognition that some © 2016 Thomson Reuters. No claim to original U.S. Government Works. 3

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works are closer to the core of intended Fair use and other permitted uses in general copyright protection than others, with the consequence that fair use is more difficult to For purposes of a fair use analysis under establish when the former works are copied; copyright law, the secondary use must be courts consider (1) whether the work is permitted to conjure up at least enough of the expressive or creative, with a greater leeway original to fulfill its transformative purpose. 17 being allowed to a claim of fair use where the U.S.C.A. § 107. work is factual or informational, and (2) whether the work is published or unpublished, with the scope for fair use involving unpublished works Cases that cite this headnote being considerably narrower. 17 U.S.C.A. § 107.

7 Cases that cite this headnote Attorneys and Law Firms

*697 Joshua I. Schiller (Jonathan D. Schiller, George F. Carpinello, on the brief), Boies, Schiller & Flexner LLP, [18] Copyrights and Intellectual Property New York, NY, for Defendant–Appellant Richard Prince. Fair use and other permitted uses in general Hollis Anne Gonerka Bart, Chaya Weinberg–Brodt, Dara In considering the amount and substantiality of G. Hammerman, Azmina N. Jasani, Withers Bergman the portion used in relation to the copyright LLP, New York, NY, for Defendants–Appellants work as a whole as a factor in the fair use Gagosian Gallery, Inc. and Lawrence Gagosian. analysis, a court asks whether the quantity and Daniel J. Brooks (Seth E. Spitzer, Eric A. Boden, on the value of the materials used are reasonable in brief), Schnader Harrison Segal & Lewis LLP, New York, relation to the purpose of the copying; in other NY, for Plaintiff–Appellee Patrick Cariou. words, courts consider the proportion of the original work used, and not how much of the Anthony T. Falzone, Julie A. Ahrens, Daniel K. Nazer, secondary work comprises the original. 17 Stanford Law School Center for Internet and Society, U.S.C.A. § 107. Stanford, CA; Virginia Rutledge, New York, NY; Zachary J. Alinder, John A. Polito, Bingham McCutchen 4 Cases that cite this headnote LLP, San Francisco, CA, *698 for Amicus The Andy Warhol Foundation for the Visual Arts.

Joseph C. Gratz, Durie Tangri, LLP, San Francisco, CA; Oliver Metzger, Google Inc., Mountain View, CA, for [19] Copyrights and Intellectual Property Amicus Google Inc. Fair use and other permitted uses in general Clifford M. Sloan, Bradley A. Klein, Skadden, Arps,

Slate, Meagher & Flom LLP, Washington, DC, for Amici The inquiry into the third fair use factor, the The Association of Art Museum Directors, The Art amount and substantiality of the portion used in Institute of Chicago, The Indianapolis Museum of Art, relation to the copyrighted work as a whole, The Metropolitan Museum of Art, The Museum of must take into account that the extent of Modern Art, Museum Associates d.b.a. Los Angeles permissible copying varies with the purpose and County Museum of Art, The New Museum, The Solomon character of the use. 17 U.S.C.A. § 107. R. Guggenheim Foundation, The Walker Art Center, and The Whitney Museum of American Art. 1 Cases that cite this headnote Michael Williams, Dale M. Cendali, Claudia Ray, Kirkland & Ellis LLP, Washington, DC, for Amici American Society of Media Photographers, Inc., and Picture Archive Council of America. [20] Copyrights and Intellectual Property © 2016 Thomson Reuters. No claim to original U.S. Government Works. 4

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Before: B.D. PARKER, HALL, and WALLACE,* Circuit we remand to the district court, applying the proper Judges. standard, to consider in the first instance whether Prince is entitled to a fair use defense.2 Opinion

BACKGROUND B.D. PARKER, J., delivered the opinion of the Court, in which HALL, J., joined. WALLACE, J., filed an opinion The relevant facts, drawn primarily from the parties’ concurring in part and dissenting in part. submissions in connection with their cross-motions for summary judgment, are undisputed. Cariou is a professional photographer who, over the course of six BARRINGTON D. PARKER, Circuit Judge: years in the mid–1990s, lived and worked among Rastafarians in Jamaica. The relationships that Cariou

developed with them allowed him to take a series of In 2000, Patrick Cariou published Yes Rasta, a book of portraits and landscape photographs that Cariou published classical portraits and landscape photographs that he took in 2000 in a book titled Yes Rasta. As Cariou testified, over the course of six years spent living among Yes Rasta is “extreme classical photography [and] Rastafarians in Jamaica. Richard Prince altered and portraiture,” and he did not “want that book to look pop incorporated several of Cariou’s Yes Rasta photographs culture at all.” Cariou Dep. 187:8–15, Jan. 12, 2010. into a series of paintings and collages, called Canal Zone,

that he exhibited in 2007 and 2008, first at the Eden Rock Cariou’s publisher, PowerHouse Books, Inc., printed hotel in Saint Barthélemy (“St. Barth’s”) and later at New 7,000 copies of Yes Rasta, in a single printing. Like many, York’s Gagosian Gallery.1 In addition, Gagosian if not most, such works, the book enjoyed limited published and sold an exhibition catalog that contained commercial success. The book is currently out of print. reproductions of Prince’s paintings and images from As of January 2010, PowerHouse had sold 5,791 copies, Prince’s workshop. over sixty percent of which sold below the suggested

retail price of sixty dollars. PowerHouse has paid Cariou, Cariou sued Prince and Gagosian, alleging that Prince’s who holds the copyrights to the Yes Rasta photographs, Canal Zone works and exhibition catalog infringed on just over $8,000 from sales of the book. Except for a Cariou’s copyrights in the incorporated Yes Rasta handful of private sales to personal acquaintances, he has photographs. The defendants raised a fair use defense. never sold or licensed the individual photographs. After the parties cross-moved for summary judgment, the

United States District Court for the Southern District of Prince is a well-known appropriation artist. The Tate New York (Batts, J.) granted Cariou’s motion, denied the Gallery has defined appropriation art as “the more or less defendants’, and entered a permanent injunction. It direct taking over into a work of art a real object or even compelled the defendants to deliver to Cariou all an existing work of art.” J.A. 446. Prince’s work, going infringing works that had not yet been sold, for him to back to the mid–1970s, has involved taking photographs destroy, sell, or otherwise dispose of. and other images that others have produced and

incorporating them into paintings and collages that he Prince and Gagosian principally contend on appeal that then presents, in a different context, as his own. He is a Prince’s work is transformative and constitutes fair use of leading exponent of this genre and his work has been Cariou’s copyrighted photographs, and that the district displayed in museums around the world, including New court imposed an incorrect legal standard when it York’s Solomon R. Guggenheim Museum and Whitney concluded that, in order to qualify for a fair use defense, Museum, San Francisco’s Museum of Modern Art, Prince’s work must “comment on Cariou, on Cariou’s Rotterdam’s Museum Boijmans van Beuningen, and Photos, or on aspects of popular culture closely associated Basel’s Museum fur Gegenwartskunst. As Prince has with Cariou or the Photos.” Cariou v. Prince, 784 described his work, he “completely tr[ies] to change F.Supp.2d 337, 349 (S.D.N.Y.2011). We agree with [another artist’s work] into something that’s completely Appellants that the law does not require that a secondary different.” Prince Dep. 338:4–8, Oct. 6, 2009. use comment on the original artist or work, or popular culture, and we conclude that twenty-five of Prince’s Prince first came across a copy of Yes Rasta in a artworks do make fair use Cariou’s copyrighted *699 bookstore in St. Barth’s in 2005. Between December 2007 photographs. With regard to the remaining five artworks, and February 2008, Prince had a show at the Eden Rock © 2016 Thomson Reuters. No claim to original U.S. Government Works. 5

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hotel in St. Barth’s that included a collage, titled Canal Zone (2007), comprising 35 photographs torn out of Yes Rasta and pinned to a piece of plywood. Prince altered those photographs significantly, by among other things painting “lozenges” over their subjects’ facial features and using only portions of some of the images. In June 2008, Prince purchased three additional copies of Yes Rasta. He went on to create thirty additional artworks in the Canal Zone series, twenty-nine of which incorporated partial or whole images from Yes Rasta.3 The portions of Yes Rasta *700 photographs used, and the amount of each artwork that they constitute, vary significantly from piece to piece. In certain works, such as James Brown Disco Ball, Prince affixed headshots from Yes Rasta onto other appropriated images, all of which Prince placed on a canvas that he had painted. In these, Cariou’s work is almost entirely obscured. The Prince artworks also incorporate photographs that have been enlarged or tinted, *701 In other works, such as Graduation, Cariou’s and incorporate photographs appropriated from artists original work is readily apparent: Prince did little more other than Cariou as well. Yes Rasta is a book of than paint blue lozenges over the subject’s eyes and photographs measuring approximately 9.5″ x 12″. mouth, and paste a picture of a guitar over the subject’s Prince’s artworks, in contrast, comprise inkjet printing body. and acrylic paint, as well as pasted-on elements, and are several times that size. For instance, Graduation measures 72 3/4″ x 52 1/2″ and James Brown Disco Ball 100 1/2″ x 104 1/2″. The smallest of the Prince artworks measures 40″ x 30″, or approximately ten times as large as each page of Yes Rasta.

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At some point during the Canal Zone show at Gagosian, Celle learned that Cariou’s photographs were “in the show with Richard Prince.” Celle then phoned Cariou and, when he did not respond, Celle mistakenly concluded that he was “doing something with Richard Prince.... [Maybe] he’s not pursuing me because he’s doing something better, bigger with this person.... [H]e didn’t want to tell the French girl I’m not doing it with you, you know, because we had started a relation and that would have been bad.” Celle Dep. 88:15–89:7, Jan. 26, 2010. At that point, Celle decided that she would not put on a “Rasta show” because it had been “done already,” and that any future Cariou exhibition she put on would be of photographs from Surfers. Celle remained interested in exhibiting prints from Surfers, but Cariou never followed through.

According to Cariou, he learned about the Gagosian Canal Zone show from Celle in December 2008. On December 30, 2008, he sued Prince, the Gagosian Gallery, and Lawrence Gagosian, raising claims of copyright infringement. See 17 U.S.C. §§ 106, 501. The defendants asserted a fair use defense, arguing that Prince’s artworks are transformative of Cariou’s photographs and, accordingly, do not violate Cariou’s copyrights. See, e.g., Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 578–79, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Ruling on the parties’ subsequently-filed cross-motions for summary judgment, the district court (Batts, J.) “impose[d] a requirement that the new work in *703 Between November 8 and December 20, 2008, the some way comment on, relate to the historical context of, Gallery put on a show featuring twenty-two of Prince’s or critically refer back to the original works” in order to Canal Zone artworks, and also published and sold an be qualify as fair use, and stated that “Prince’s Paintings exhibition catalog from the show. The catalog included all are transformative only to the extent that they comment of the Canal Zone artworks (including those not in the on the Photos.” Cariou v. Prince, 784 F.Supp.2d 337, Gagosian show) except for one, as well as, among other 348–49 (S.D.N.Y.2011). The court concluded that “Prince things, photographs showing Yes Rasta photographs in did not intend to comment on Cariou, on Cariou’s Photos, Prince’s studio. Prince never sought or received permission from Cariou to use his photographs. or on aspects of popular culture closely associated with Cariou or the Photos when he appropriated the Photos,”

id. at 349, and for that reason rejected the defendants’ fair Prior to the Gagosian show, in late August, 2008, a gallery owner named Cristiane Celle contacted Cariou use defense and granted summary judgment to Cariou. The district court also granted sweeping injunctive relief, and asked if he would be interested in discussing the ordering the defendants to “deliver up for impounding, possibility of an exhibit in New York City. Celle did not mention Yes Rasta, but did express interest in destruction, or other disposition, as [Cariou] determines, all infringing copies of the Photographs, including the photographs Cariou took of surfers, which he published in Paintings and unsold copies of the Canal Zone exhibition 1998 in the aptly titled Surfers. Cariou responded that 4 Surfers would be republished in 2008, and inquired book, in their possession.” Id. at 355. This appeal followed. whether Celle might also be interested in a book Cariou

had recently completed on gypsies. The two subsequently

met and discussed Cariou’s exhibiting work in Celle’s gallery, including prints from Yes Rasta. They did not select a date or photographs to exhibit, nor *704 did they DISCUSSION finalize any other details about the possible future show.

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I. whether such use is of a commercial nature or is for nonprofit educational purposes; [1] We review a grant of summary judgment de novo. See Blanch v. Koons, 467 F.3d 244, 249–50 (2d Cir.2006). (2) the nature of the copyrighted work; The well known standards for summary judgment set forth in Rule 56(c) apply. See Fed.R.Civ.P. 56. “Although (3) the amount and substantiality of the portion used fair use is a mixed question of law and fact, this court has in relation to the copyrighted work as a whole; and on numerous occasions resolved fair use determinations at the summary judgment stage where ... there are no (4) the effect of the use upon the potential market for genuine issues of material fact.” Blanch, 467 F.3d at 250 or value of the copyrighted work. (quotation marks and brackets omitted); see also Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 17 U.S.C. § 107. As the statute indicates, and as the 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985); Castle Rock Supreme Court and our court have recognized, the fair use Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 137 determination is an open-ended and context-sensitive (2d Cir.1998). This case lends itself to that approach. inquiry. Campbell, 510 U.S. at 577–78, 114 S.Ct. 1164; Blanch, 467 F.3d at 251. The statute “employs the terms ‘including’ and ‘such as’ in the preamble paragraph to indicate the illustrative and not limitative function of the examples given, which thus provide only general *705 II. guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses.” [2] [3] The purpose of the copyright law is “[t]o promote Campbell, 510 U.S. at 577–78, 114 S.Ct. 1164 (quotation the Progress of Science and useful Arts....” U.S. Const., marks and citation omitted). The “ultimate test of fair use Art. I, § 8, cl. 8. As Judge Pierre Leval of this court has ... is whether the copyright law’s goal of ‘promoting the explained, “[t]he copyright is not an inevitable, divine, or Progress of Science and useful Arts’ ... would be better natural right that confers on authors the absolute served by allowing the use than by preventing it.” Castle ownership of their creations. It is designed rather to Rock, 150 F.3d at 141 (brackets and citation omitted). stimulate activity and progress in the arts for the intellectual enrichment of the public.” Pierre N. Leval, [6] [7] [8] [9] The first statutory factor to consider, which Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, addresses the manner in which the copied work is used, is 1107 (1990) (hereinafter “Leval”). Fair use is “necessary “[t]he heart of the fair use inquiry.” Blanch, 467 F.3d at to fulfill [that] very purpose.” Campbell, 510 U.S. at 575, 251. We ask 114 S.Ct. 1164. Because “ ‘excessively broad protection would stifle, rather than advance, the law’s objective,’ ” whether the new work merely fair use doctrine “mediates between” “the property rights ‘supersedes the objects’ of the [copyright law] establishes in creative works, which must original creation, or instead adds be protected up to a point, and the ability of authors, something new, with a further artists, and the rest of us to express them—or ourselves by purpose or different character, reference to the works of others, which must be protected altering the first with new up to a point.” Blanch, 467 F.3d at 250 (brackets omitted) expression, meaning, or message [,] (quoting Leval at 1109). ... in other words, whether and to what extent the new work is [4] [5] The doctrine was codified in the Copyright Act of transformative.... [T]ransformative 1976, which lists four non-exclusive factors that must be works ... lie at the heart of *706 the considered in determining fair use. Under the statute, fair use doctrine’s guarantee of breathing space.... [T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching Campbell, 510 U.S. at 579, 114 S.Ct. 1164 (citations and (including multiple copies for classroom use), some quotation marks omitted) (quoting Folsom v. scholarship, or research, is not an infringement of Marsh, 9 F.Cas. 342, 348 *No. 4,901) (C.C.D.Mass.1841) copyright. In determining whether the use made of a (Story, J.). “If ‘the secondary use adds value to the work in any particular case is a fair use the factors to be original—if [the original work] is used as raw material, considered shall include— transformed in the creation of new information, new aesthetics, new insights and understandings—this is the (1) the purpose and character of the use, including very type of activity that the fair use doctrine intends to © 2016 Thomson Reuters. No claim to original U.S. Government Works. 8

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protect for the enrichment of society.’ ” Castle Rock, 150 are fundamentally different and new compared to the F.3d at 142 (quoting Leval 1111). For a use to be fair, it photographs, as is the expressive nature of Prince’s work. “must be productive and must employ the quoted matter See Campbell, 510 U.S. at 579, 114 S.Ct. 1164. in a different manner or for a different purpose from the original.” Leval at 1111. Prince’s deposition testimony further demonstrates his drastically different approach and aesthetic from Cariou’s. [10] [11] The district court imposed a requirement that, to Prince testified that he “[doesn’t] have any really interest qualify for a fair use defense, a secondary use must in what [another artist’s] *707 original intent is because ... “comment on, relate to the historical context of, or what I do is I completely try to change it into something critically refer back to the original works.” Cariou, 784 that’s completely different.... I’m trying to make a kind of F.Supp.2d at 348. Certainly, many types of fair use, such fantastic, absolutely hip, up to date, contemporary take on as satire and parody, invariably comment on an original the music scene.” Prince Dep. 338:4–339:3, Oct. 6, 2009. work and/or on popular culture. For example, the rap As the district court determined, Prince’s Canal Zone group 2 Live Crew’s parody of Roy Orbison’s “Oh, Pretty artworks relate to a “post-apocalyptic screenplay” Prince Woman” “was clearly intended to ridicule the white-bread had planned, and “emphasize themes [of Prince’s planned original.” Campbell, 510 U.S. at 582, 114 S.Ct. 1164 screenplay] of equality of the sexes; highlight ‘the three (quotation marks omitted). Much of Andy Warhol’s work, relationships in the world, which are men and women, including work incorporating appropriated images of men and men, and women and women’; and portray a Campbell’s soup cans or of Marilyn Monroe, comments contemporary take on the music scene.” Cariou, 784 on consumer culture and explores the relationship F.Supp.2d at 349; see Prince Dep. 339:3–7, Oct. 6, 2009. between celebrity culture and advertising. As even Cariou concedes, however, the district court’s legal premise was The district court based its conclusion that Prince’s work not correct. The law imposes no requirement that a work is not transformative in large part on Prince’s deposition comment on the original or its author in order to be testimony that he “do [es]n’t really have a message,” that considered transformative, and a secondary work may he was not “trying to create anything with a new meaning constitute a fair use even if it serves some purpose other or a new message,” and that he “do[es]n’t have any ... than those (criticism, comment, news reporting, teaching, interest in [Cariou’s] original intent.” Cariou, 784 scholarship, and research) identified in the preamble to F.Supp.2d at 349; see Prince Dep. 45:25–46:2, 338:5–6, the statute. Id. at 577, 114 S.Ct. 1164; Harper & Row, 360:18–20, Oct. 6, 2009. On appeal, Cariou argues that 471 U.S. at 561, 105 S.Ct. 2218. Instead, as the Supreme we must hold Prince to his testimony and that we are not Court as well as decisions from our court have to consider how Prince’s works may reasonably be emphasized, to qualify as a fair use, a new work generally perceived unless Prince claims that they were satire or must alter the original with “new expression, meaning, or parody. No such rule exists, and we do not analyze satire message.” Campbell, 510 U.S. at 579, 114 S.Ct. 1164; see or parody differently from any other transformative use. also Blanch, 467 F.3d at 253 (original must be employed “in the creation of new information, new aesthetics, new It is not surprising that, when transformative use is at insights and understandings” (quotation marks omitted)); issue, the alleged infringer would go to great lengths to Castle Rock, 150 F.3d at 142. explain and defend his use as transformative. Prince did not do so here. However, the fact that Prince did not [12] Here, our observation of Prince’s artworks themselves provide those sorts of explanations in his convinces us of the transformative nature of all but five, deposition—which might have lent strong support to his which we discuss separately below. These twenty-five of defense—is not dispositive. What is critical is how the Prince’s artworks manifest an entirely different aesthetic work in question appears to the reasonable observer, not from Cariou’s photographs. Where Cariou’s serene and simply what an artist might say about a particular piece or deliberately composed portraits and landscape body of work. Prince’s work could be transformative even photographs depict the natural beauty of Rastafarians and without commenting on Cariou’s work or on culture, and their surrounding environs, Prince’s crude and jarring even without Prince’s stated intention to do so. Rather works, on the other hand, are hectic and provocative. than confining our inquiry to Prince’s explanations of his Cariou’s black-and-white photographs were printed in a 9 artworks, we instead examine how the artworks may 1/2″ x 12″ book. Prince has created collages on canvas “reasonably be perceived” in order to assess their that incorporate color, feature distorted human and other transformative nature. Campbell, 510 U.S. at 582, 114 forms and settings, and measure between ten and nearly a S.Ct. 1164; Leibovitz v. Paramount Pictures Corp., 137 hundred times the size of the photographs. Prince’s F.3d 109, 113–14 (2d Cir.1998) (evaluating parodic composition, presentation, scale, color palette, and media nature of advertisement in light of how it “may

Cariou v. Prince, 714 F.3d 694 (2013) 2013 Copr.L.Dec. P 30,416, 106 U.S.P.Q.2d 1497 reasonably be perceived”). The focus of our infringement the unfairness that arises when a secondary user makes analysis is primarily on the Prince artworks themselves, unauthorized use of copyrighted material to capture and we see twenty-five of them as transformative as a significant revenues as a direct consequence of copying matter of law. the original work.” Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 922 (2d Cir.1994). This factor must be In this respect, the Seventh Circuit’s recent decision in applied with caution because, as the Supreme Court has Brownmark Films, LLC v. Comedy Partners, 682 F.3d recognized, Congress “could not have intended” a rule 687 (7th Cir.2012), is instructive. There, the court rejected that commercial uses are presumptively unfair. Campbell, the appellant’s argument that copyright infringement 510 U.S. at 584, 114 S.Ct. 1164 Instead, “[t]he more claims cannot be disposed of at the motion-to-dismiss transformative the new work, the less will be the stage, and affirmed the district court’s dismissal of such a significance of other factors, like commercialism, that claim under Fed.R.Civ.P. 12(b)(6). Brownmark Films, may weigh against a finding of fair use.” Id. at 579, 114 682 F.3d at 690. Considering whether an episode of the S.Ct. 1164. Although there is no question that Prince’s animated television show South Park presented a parody artworks are commercial, we do not place much (and therefore a protected fair use) of a viral internet significance on that fact due to the transformative nature video titled “What What (In The Butt),” the court of the work. concluded that “[w]hen the two works ... are viewed side-by-side, the South Park episode is clearly a parody of We turn next to the fourth statutory factor, the effect of the original ... video.” Id. at 692. For that reason, “the the secondary use upon the potential market for the value only two pieces of evidence needed to decide the question of the copyrighted work, because such discussion further of fair use in [Brownmark were] the original version of demonstrates the significant differences between Prince’s [the video] and the episode at issue.” Id. at 690. work, generally, and Cariou’s. Much of the district court’s conclusion that Prince and Gagosian infringed on [13] Here, looking at the artworks and the photographs Cariou’s copyrights was apparently driven by the fact that side-by-side, we conclude *708 that Prince’s images, Celle decided not to host a Yes Rasta show at her gallery except for those we discuss separately below, have a once she learned of the Gagosian Canal Zone show. The different character, give Cariou’s photographs a new district court determined that this factor weighs against expression, and employ new aesthetics with creative and Prince because he “has unfairly damaged both the actual communicative results distinct from Cariou’s. Our and potential markets for Cariou’s original work and the conclusion should not be taken to suggest, however, that potential market for derivative use licenses for Cariou’s any cosmetic changes to the photographs would original work.” Cariou, 784 F.Supp.2d at 353. necessarily constitute fair use. A secondary work may modify the original without being transformative. For [16] Contrary to the district court’s conclusion, the instance, a derivative work that merely presents the same application of this factor does not focus principally on the material but in a new form, such as a book of synopses of question of damage to Cariou’s derivative market. We televisions shows, is not transformative. See Castle Rock, have made clear that “our concern is not whether the 150 F.3d at 143; Twin Peaks Prods., Inc. v. Publ’ns Int’l, secondary use suppresses or even destroys the market for Ltd., 996 F.2d 1366, 1378 (2d Cir.1993). In twenty-five of the original work or its potential derivatives, but whether his artworks, Prince has not presented the same material the secondary use usurps the market of the original as Cariou in a different manner, but instead has “add[ed] work.” Blanch, 467 F.3d at 258 (quotation marks omitted) something new” and presented images with a (emphasis added); NXIVM Corp. v. Ross Inst., 364 F.3d fundamentally different aesthetic. Leibovitz, 137 F.3d at 471, 481–82 (2d Cir.2004). “The market for potential 114. derivative uses *709 includes only those that creators of original works would in general develop or license others [14] [15] The first fair use factor—the purpose and character to develop.” Campbell, 510 U.S. at 592, 114 S.Ct. 1164. of the use—also requires that we consider whether the Our court has concluded that an accused infringer has allegedly infringing work has a commercial or nonprofit usurped the market for copyrighted works, including the educational purpose. See, e.g., Blanch, 467 F.3d at 253. derivative market, where the infringer’s target audience That being said, “nearly all of the illustrative uses listed in and the nature of the infringing content is the same as the the preamble paragraph of § 107, including news original. For instance, a book of trivia about the television reporting, comment, criticism, teaching, scholarship, and show Seinfeld usurped the show’s market because the research ... are generally conducted for profit.” Campbell, trivia book “substitute[d] for a derivative market that a 510 U.S. at 584, 114 S.Ct. 1164 (quotation marks television program copyright owner ... would in general omitted). “The commercial/nonprofit dichotomy concerns develop or license others to develop.” Castle Rock, 150

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F.3d at 145 (quotation marks omitted). Conducting this protection than others, with the consequence that fair use analysis, we are mindful that “[t]he more transformative is more difficult to establish when the former works are the secondary use, the less likelihood that the secondary copied.” Campbell, 510 U.S. at 586, 114 S.Ct. 1164. We use substitutes for the original,” even though “the fair use, consider “ ‘(1) whether the work is expressive or creative, being transformative, might well harm, or even destroy, ... with a greater leeway being allowed to a claim of fair the market for the original.” Id. use where the work is factual or informational, *710 and (2) whether the work is published or unpublished, with As discussed above, Celle did not decide against putting the scope for fair use involving unpublished works being on a Yes Rasta show because it had already been done at considerably narrower.’ ” Blanch, 467 F.3d at 256 Gagosian, but rather because she mistakenly believed that (quoting 2 Howard B. Abrams, The Law of Copyright, § Cariou had collaborated with Prince on the Gagosian 15:52 (2006)). show. Although certain of Prince’s artworks contain significant portions of certain of Cariou’s photographs, Here, there is no dispute that Cariou’s work is creative neither Prince nor the Canal Zone show usurped the and published. Accordingly, this factor weighs against a market for those photographs. Prince’s audience is very fair use determination. However, just as with the different from Cariou’s, and there is no evidence that commercial character of Prince’s work, this factor “may Prince’s work ever touched—much less usurped—either be of limited usefulness where,” as here, “the creative the primary or derivative market for Cariou’s work. There work of art is being used for a transformative purpose.” is nothing in the record to suggest that Cariou would ever Bill Graham Archives v. Dorling Kindersley Ltd., 448 develop or license secondary uses of his work in the vein F.3d 605, 612 (2d Cir.2006). of Prince’s artworks. Nor does anything in the record suggest that Prince’s artworks had any impact on the [18] The final factor that we consider in our fair use inquiry marketing of the photographs. Indeed, Cariou has not is “the amount and substantiality of the portion used in aggressively marketed his work, and has earned just over relation to the copyrighted work as a whole.” 17 U.S.C. § $8,000 in royalties from Yes Rasta since its publication. 107(3). We ask “whether the quantity and value of the He has sold four prints from the book, and only to materials used[ ] are reasonable in relation to the purpose personal acquaintances. of the copying.” Blanch, 467 F.3d at 257 (quotation marks omitted). In other words, we consider the proportion of Prince’s work appeals to an entirely different sort of the original work used, and not how much of the collector than Cariou’s. Certain of the Canal Zone secondary work comprises the original. artworks have sold for two million or more dollars. The invitation list for a dinner that Gagosian hosted in [19] Many of Prince’s works use Cariou’s photographs, in conjunction with the opening of the Canal Zone show particular the portrait of the dreadlocked Rastafarian at included a number of the wealthy and famous such as the page 118 of Yes Rasta, the Rastafarian on a burro at pages musicians Jay–Z and Beyonce Knowles, artists Damien 83 to 84, and the dreadlocked and bearded Rastafarian at Hirst and Jeff Koons, professional football player Tom page 108, in whole or substantial part. In some works, Brady, model Gisele Bundchen, Vanity Fair editor such as Charlie Company, Prince did not alter the source Graydon Carter, Vogue editor Anna Wintour, authors photograph very much at all. In others, such as Djuana Jonathan Franzen and Candace Bushnell, and actors Barnes, Natalie Barney, Renee Vivien and Romaine Robert DeNiro, Angelina Jolie, and Brad Pitt. Prince sold Brooks take over the Guanahani, the entire source eight artworks for a total of $10,480,000, and exchanged photograph is used but is also heavily obscured and seven others for works by painter Larry Rivers and by altered to the point that Cariou’s original is barely sculptor Richard Serra. Cariou on the other hand has not recognizable. Although “[n]either our court nor any of our actively marketed his work or sold work for significant sister circuits has ever ruled that the copying of an entire sums, and nothing in the record suggests that anyone will work favors fair use[,].... courts have concluded that such not now purchase Cariou’s work, or derivative copying does not necessarily weigh against fair use non-transformative works (whether Cariou’s own or because copying the entirety of a work is sometimes licensed by him) as a result of the market space that necessary to make a fair use of the image.” Bill Graham, Prince’s work has taken up. This fair use factor therefore 448 F.3d at 613. “[T]he third-factor inquiry must take into weighs in Prince’s favor. account that the extent of permissible copying varies with the purpose and character of the use.” Id. (internal [17] The next statutory factor that we consider, the nature quotation marks omitted). of the copyrighted work, “calls for recognition that some works are closer to the core of intended copyright [20] The district court determined that Prince’s “taking was

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substantially greater than necessary.” Cariou, 784 of those artworks differs from, but is still similar in key F.Supp.2d at 352. We are not clear as to how the district aesthetic ways, to Cariou’s photographs. In Meditation, court could arrive at such a conclusion. In any event, the Prince again added lozenges and a guitar to the same law does not require that the secondary artist may take no photograph that he incorporated into Graduation, this more than is necessary. See Campbell, 510 U.S. at 588, time cutting the subject out of his background, switching 114 S.Ct. 1164; Leibovitz, 137 F.3d at 114. We consider the direction he is facing, and taping that image onto a not only the quantity of the materials taken but also “their blank canvas. In Canal Zone (2007), Prince created a quality and importance” to the original work. Campbell, gridded collage using 31 different photographs of 510 U.S. at 587, 114 S.Ct. 1164. The secondary use “must Cariou’s, many of them in whole or significant part, with be [permitted] to ‘conjure up’ at least enough of the alterations of some of those photographs limited to original” to fulfill its transformative purpose. Id. at 588, lozenges or cartoonish appendages painted or drawn on. 114 S.Ct. 1164 (emphasis added); Leibovitz, 137 F.3d at Canal Zone (2008) incorporates six photographs of 114. Prince used key portions of certain of Cariou’s Cariou’s in whole or in part, including the same subject as photographs. In doing that, however, we determine that in Meditation and Graduation. Prince placed the subject, twenty-five of his artworks, Prince transformed those with lozenges and guitar, on a background comprising photographs into something new and different and, as a components of various landscape photographs, taped result, this factor weighs heavily in Prince’s favor. together. The cumulative effect is of the subject in a habitat replete with lush greenery, not dissimilar from As indicated above, there are five artworks that, upon our many of Cariou’s Yes Rasta photographs. And Charlie review, present closer questions. Specifically, Company prominently displays four copies of Cariou’s Graduation, Meditation, Canal Zone (2008), Canal Zone photograph of a Rastafarian riding a donkey, substantially (2007), and Charlie Company do not sufficiently differ unaltered, as well as two copies of a seated nude woman from the photographs of Cariou’s that they incorporate for with lozenges covering all six faces. Like the other works us confidently to make a determination about their *711 just discussed, Charlie Company is aesthetically similar to transformative nature as a matter of law. Although the Cariou’s original work because it maintains the pastoral minimal alterations that Prince made in those instances background and individual focal point of the original moved the work in a different direction from Cariou’s photograph—in this case, the man on the burro. While the classical portraiture and landscape photos, we can not say lozenges, repetition of the images, and addition of the with certainty at this point whether those artworks present nude female unarguably change the tenor of the piece, it a “new expression, meaning, or message.” Campbell, 510 is unclear whether these alterations amount to a sufficient U.S. at 579, 114 S.Ct. 1164. transformation of the original work of art such that the new work is transformative. Certainly, there are key differences in those artworks compared to the photographs they incorporate. We believe the district court is best situated to determine, Graduation, for instance, is tinted blue, and the jungle in the first instance, whether such relatively minimal background is in softer focus than in Cariou’s original. alterations render Graduation, Meditation, Canal Zone Lozenges painted over the subject’s eyes and mouth—an (2007), Canal Zone (2008), and Charlie Company fair alteration that appears frequently throughout the Canal uses (including whether the artworks are transformative) Zone artworks—make the subject appear anonymous, or whether any impermissibly infringes on Cariou’s rather than as the strong individual who appears in the copyrights in his original photographs. We remand for original. Along with the enlarged hands and electric guitar that determination. that Prince pasted onto his canvas, those alterations create the impression that the subject is not quite human. Cariou’s photograph, on the other hand, presents a human being in his natural habitat, looking intently ahead. Where the photograph presents someone comfortably at home in *712 III. nature, Graduation combines divergent elements to create a sense of discomfort. However, we cannot say for sure In addition to its conclusion that Prince is liable for whether Graduation constitutes fair use or whether Prince infringing on Cariou’s copyrights, the district court has transformed Cariou’s work enough to render it determined that the Gagosian defendants are liable as transformative. vicarious and contributory infringers. Cariou, 784 F.Supp.2d at 354. With regard to the twenty-five of We have the same concerns with Meditation, Canal Zone Prince’s artworks, which, as we have held, do not infringe (2007), Canal Zone (2008), and Charlie Company. Each on Cariou’s copyrights, neither Lawrence Gagosian nor the Gallery may be liable as a vicarious or contributory © 2016 Thomson Reuters. No claim to original U.S. Government Works. 12

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infringer. See Faulkner v. Nat’l Geographic Enters., Inc., this time-tested search for a just result under the law. I 409 F.3d 26, 40 (2d Cir.2005). If the district court would not apply the shortcut but would set aside the concludes on remand that Prince is liable as a direct summary judgment, remand the entire case to the district infringer with regard to any of the remaining five works, court, and allow the district court to analyze *713 material the district court should determine whether the Gagosian evidence under the proper standard. defendants should be held liable, directly or secondarily, as a consequence of their actions with regard to those Unlike the majority, I would allow the district court to works. See Copyright Act, 17 U.S.C. § 106(1), (2), (3), consider Prince’s statements in reviewing fair use. While (5). not the sine qua non of fair use, see Blanch v. Koons, 467 F.3d 244, 255 n. 5 (2d Cir.2006), I see no reason to discount Prince’s statements as the majority does. While it may seem intuitive to assume that a defendant claiming fair use would typically give self-serving ex post facto CONCLUSION testimony to support a defense, this Court has nevertheless relied on such statements when making this For the reasons discussed, we hold that all except five inquiry—even if just to confirm its own analysis. See id. (Graduation, Meditation, Canal Zone (2007), Canal Zone at 252–53, 255; see also Castle Rock Entm’t, Inc. v. Carol (2008), and Charlie Company ) of Prince’s artworks make Publ’g Grp., Inc., 150 F.3d 132, 142 (2d Cir.1998) fair use of Cariou’s photographs. We express no view as (looking to statements of the allegedly infringing work’s to whether the five are also entitled to a fair use defense. creators when analyzing the purpose and character of the We REMAND with respect to those five so that the secondary work). Thus, I view Prince’s district court, applying the proper standard, can determine statements—which, as Prince acknowledges, consist of in the first instance whether any of them infringes on “his view of the purpose and effect of each of the Cariou’s copyrights or whether Prince is entitled to a fair individual [p]aintings”—as relevant to the use defense with regard to those artworks as well. The transformativeness analysis. judgment of the district court is REVERSED in part and 5 VACATED in part. The case is REMANDED for The majority relies on the Seventh Circuit’s decision in further proceedings consistent with this opinion. Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir.2012), for the proposition that all the Court needs to do here to determine transformativeness is view the original work and the secondary work and, apparently, WALLACE, J., Senior Circuit Judge, concurring in part employ its own artistic judgment. In my view, and dissenting in part: Brownmark cannot be extended so far. Brownmark arose under an unusual procedural posture: a motion to dismiss I agree with the bulk of the majority decision as to the based on a non-pleaded fair use affirmative defense law, including the majority’s determination that the converted into a motion for summary judgment on appeal. district court incorrectly imposed a requirement that the See id. The court in Brownmark determined that it needed allegedly infringing works comment on the original works only to review the allegedly infringing video against the to be entitled to a fair use defense. See Cariou v. Prince, original to determine that the secondary work was 784 F.Supp.2d 337, 348–49 (S.D.N.Y.2011). I permissible parody. Id. at 692–93. It appears to me, nevertheless part company with the majority. however, that Brownmark left open the possibility that additional evidence could be relevant to the fair use While we may, as an appellate court, determine that inquiry in a different procedural context. See id. at 692 n. secondary works are fair use in certain instances, see 2 (identifying that the defendant could have put forth Harper & Row, Publishers, Inc. v. Nation Enters., 471 additional evidence to bolster its fair use defense if the U.S. 539, 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985), in case arose from a typical summary judgment motion); id. the usual case, after correcting an erroneous legal at 692 (stating that the district court was only required to standard employed by the district court, we would remand consider the original and secondary videos, “especially in for reconsideration. This standard, I suggest, should apply light of [the plaintiff’s] failure to make any concrete here where factual determinations must be contention” as to the secondary video’s potential market reevaluated—and perhaps new evidence or expert impact). opinions will be deemed necessary by the fact finder—after which a new decision can be made under the Further, Brownmark apparently arose in the context of a corrected legal analysis. But the majority short-circuits clear case of parody—so obvious that the appeals court

Cariou v. Prince, 714 F.3d 694 (2013) 2013 Copr.L.Dec. P 30,416, 106 U.S.P.Q.2d 1497

affirmed the district court’s conclusion that fair use was would be extremely uncomfortable for me to do so in my evident from even a “fleeting glance” at the original and appellate capacity, let alone my limited art experience. secondary works. Id. at 689–90. I do not believe that the transformativeness of Prince’s works—which have not In my view, because the district court takes the primary been presented as parody or satire—can be so readily role in determining the facts and applying the law to the determined. Because this case arises after extensive facts in fair use cases, after which we exercise our discovery and argument by the parties, I disagree that we appellate review if called upon to do so, I conclude that as must limit our inquiry to our own artistic perceptions of to each painting, “the district court is best situated to the original and secondary works. determine, in the first instance,” whether Prince is entitled to a fair use defense in light of the correct legal standard. Indeed, while I admit freely that I am not an art critic or See majority opinion at 711–12. I mean no disrespect to expert, I fail to see how the majority in its appellate role the majority, but I, for one, do not believe that I am in a can “confidently” draw a distinction between the position to make these fact- and opinion-intensive twenty-five works that it has identified as constituting fair decisions on the twenty-five works that passed the use and the five works that do not readily lend themselves majority’s judicial observation. I do not know what to a fair use determination. This, mind you, is done on a additional facts will become relevant under the corrected summary judgment review with no understanding of what rule of law, nor am I trained to make art opinions ab additional evidence may be presented on remand. I also initio. fail to see a principled reason for remanding to the district court only the five works the majority identifies as close I would thus remand the entire case—all thirty of Prince’s calls, although I agree that they must be sent back to the paintings—for further proceedings in the district court on trial court. If the district *714 court is in the best position an open record to take such additional testimony as to determine fair use as to some paintings, why is the needed and apply the correct legal standard. On this basis, same not true as to all paintings? Certainly we are not therefore, I respectfully dissent. merely to use our personal art views to make the new legal application to the facts of this case. Cf. Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 582, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (“ ‘[I]t would be a All Citations dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a 714 F.3d 694, 2013 Copr.L.Dec. P 30,416, 106 work], outside of the narrowest and most obvious limits’ U.S.P.Q.2d 1497 ”), quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460 (1903). It

Footnotes

* The Honorable J. Clifford Wallace, United States Circuit Judge of the United States Court of Appeals for the Ninth Circuit, sitting by designation.

1 We refer to Gagosian Gallery and its owner Lawrence Gagosian collectively as “Gagosian” or the “Gallery.”

2 The district court’s opinion indicated that there are twenty-nine artworks at issue in this case. See Cariou, 784 F.Supp.2d at 344 nn. 5, 6. There are actually thirty.

3 Images of the Prince artworks, along with the Yes Rasta photographs incorporated therein, appear in the Appendix to this opinion. The Appendix is available at http://www.ca2.uscourts.gov/11–1197apx.htm.

4 At oral argument, counsel for Cariou indicated that he opposes the destruction of any of the works of art that are the subject of this litigation.

5 Because we reverse the district court with regard to the twenty-five of the artworks, and leave open the question of fair use with regard to the remaining five, we vacate the district court’s injunction. In the event that Prince and Gagosian are ultimately held liable for copyright infringement, and in light of all parties’ agreement at oral argument that the destruction of Prince’s artwork would be improper and against the public interest, a position with which we agree, the district court should revisit what injunctive relief, if any, is appropriate. See eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006); Salinger v. Colting, 607 F.3d 68, 77 (2d Cir.2010).

Cariou v. Prince, 714 F.3d 694 (2013) 2013 Copr.L.Dec. P 30,416, 106 U.S.P.Q.2d 1497

Exhibit 4

Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (2014) 2014 Copr.L.Dec. P 30,659, 111 U.S.P.Q.2d 2086, 42 Media L. Rep. 2312

work. 17 U.S.C.A. § 107. 766 F.3d 756 United States Court of Appeals, Seventh Circuit. 5 Cases that cite this headnote

Michael KIENITZ, Plaintiff–Appellant, v. SCONNIE NATION LLC and Underground [2] Printing–Wisconsin, L.L.C., Copyrights and Intellectual Property Defendants–Appellees. Pictorial, graphic, and sculptural works

No. 13–3004. Allegedly infringing use of copyrighted | photograph of mayor on t-shirt was fair use, and Argued Jan. 24, 2014. thus companies that developed and sold t-shirt | were not liable for infringement; noncopyrighted Decided Sept. 15, 2014. alternatives were available to companies, but | photographer did not contend that use of Rehearing and Rehearing En Banc Denied Oct. 14, photograph on t-shirt reduced demand for his 2014. original work, companies removed so much of original photograph for use on t-shirt that only mayor’s smile and non-copyrightable outline of his face remained, and while companies hoped Synopsis to make profit from t-shirt sales, they used Background: Photographer brought action against mayor’s image as political commentary. 17 companies that developed and sold apparel products, U.S.C.A. § 107. alleging use of photograph on t-shirt violated his copyright. Parties filed cross-motions for summary judgment. The United States District Court for the 1 Cases that cite this headnote Western District of Wisconsin, Stephen L. Crocker, United States Magistrate Judge, 965 F.Supp.2d 1042, granted summary judgment to companies. Photographer appealed. [3] Copyrights and Intellectual Property Fair use and other permitted uses in general

[Holding:] The Court of Appeals, Easterbrook, Circuit Fair-use statutory defense to copyright Judge, held that use of photograph was fair use. infringement is not designed to protect lazy appropriators; its goal instead is to facilitate a class of uses that would not be possible if users Affirmed. always had to negotiate with copyright

proprietors. 17 U.S.C.A. § 107.

2 Cases that cite this headnote West Headnotes (3)

[1] Copyrights and Intellectual Property Fair use and other permitted uses in general Attorneys and Law Firms Most important statutory factory in determining whether an allegedly infringing work makes fair *757 Jennifer L. Gregor, James D. Peterson, for use of a copyrighted work usually is the market Plaintiff–Appellant. effect of the allegedly infringing use upon the potential market for or value of the copyrighted Eric J. Hatchell, Jeffrey A. Simmons, Naikang Tsao, for © 2016 Thomson Reuters. No claim to original U.S. Government Works. 1

Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (2014) 2014 Copr.L.Dec. P 30,659, 111 U.S.P.Q.2d 2086, 42 Media L. Rep. 2312

Defendants–Appellees. court to consider. 17 U.S.C. § 107. The district court and the parties have debated whether the t-shirts are a Before BAUER, EASTERBROOK, and WILLIAMS, “transformative use” of the photo—and, if so, just how Circuit Judges. “transformative” the use must be. That’s not one of the statutory factors, though the Supreme Court mentioned it Opinion in Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 579, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). The Second EASTERBROOK, Circuit Judge. Circuit has run with the suggestion and concluded that “transformative use” is enough to bring a modified copy

within the scope of § 107. See, e.g., Cariou v. Prince, 714 While a student at the University of Wisconsin in 1969, F.3d 694, 706 (2d Cir.2013). Cariou applied this to an Paul Soglin attended the first Mifflin Street Block Party, example of “appropriation art,” in which some of the whose theme (according to Soglin) was “taking a sharp supposed value comes from the very fact that the work stick and poking it in the eye of authority.” Now in his was created by someone else. seventh term as Mayor of Madison, Wisconsin, Soglin does not appreciate being on the pointy end. He wants to We’re skeptical of Cariou’s approach, because asking shut down the annual event. For the 2012 Block Party, exclusively whether something is “transformative” not Sconnie Nation made some t-shirts and tank tops only replaces the list in § 107 but also could override 17 displaying an image of Soglin’s face and the phrase U.S.C. § 106(2), which protects derivative works. To say “Sorry for Partying.” The 54 sales, on which Sconnie that a new use transforms the work is precisely to say that Nation cleared a small profit, led to this suit, in which it is derivative and thus, one might suppose, protected photographer Michael Kienitz accuses Sconnie Nation under § 106(2). Cariou and its predecessors in the Second and its vendor of copyright infringement. Circuit do no explain how every “transformative use” can

be “fair use” without extinguishing the author’s rights Sconnie Nation concedes starting with a photograph that under § 106(2). Kienitz took at Soglin’s inauguration in 2011. Soglin

(with Kienitz’s permission) had posted it on the City’s [1] [2] We think it best to stick with the statutory list, of website, from which Sconnie Nation downloaded a copy. which the most important usually is the fourth (market The photograph was posterized, the background was effect). We have asked whether the contested use is a removed, and Soglin’s face was turned lime green and complement to the protected work (allowed) rather than a surrounded by multi-colored writing. Here are the original substitute for it (prohibited). See Ty, Inc. v. Publications and the revision: International Ltd., 292 F.3d 512 (7th Cir.2002); Chicago

Board of Education v. *759 Substance, Inc., 354 F.3d 624

(7th Cir.2003). A t-shirt or tank top is no substitute for the original photograph. Nor does Kienitz say that defendants disrupted a plan to license this work for apparel. Kienitz does not argue that defendants’ products have reduced the demand for the original work or any use of it that he is contemplating.

Here is the list in § 107:

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 nonprofit educational purposes; *758 A magistrate judge, serving by consent under 28 U.S.C. § 636(c), granted summary judgment for the (2) the nature of the copyrighted work; defendants, holding that Sconnie Nation had made fair use of the photo. 965 F.Supp.2d 1042 (W.D.Wis.2013). (3) the amount and substantiality of the portion used Fair use is a statutory defense to infringement. The in relation to the copyrighted work as a whole; and Copyright Act sets out four non-exclusive factors for a

Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (2014) 2014 Copr.L.Dec. P 30,659, 111 U.S.P.Q.2d 2086, 42 Media L. Rep. 2312

(4) the effect of the use upon the potential market for copyrighted efforts as the starting point in their lampoon, or value of the copyrighted work. when so many noncopyrighted alternatives (including snapshots they could have taken themselves) were Other than factor (4), which we have discussed already, available. The fair-use privilege under § 107 is not only (3)—the amount taken in relation to the copyrighted designed to protect lazy appropriators. Its goal instead is work as a whole—has much bite in this litigation. to facilitate a class of uses that would not be possible if Defendants removed so much of the original that, as with users always had to negotiate with copyright proprietors. the Cheshire Cat, only the smile remains. Defendants (Many copyright owners would block all parodies, for started with a low-resolution version posted on the City’s example, and the administrative costs of finding and website, so much of the original’s detail never had a obtaining consent from copyright holders would frustrate chance to reach the copy; the original’s background is many academic uses.) gone; its colors and shading are gone; the expression in Soglin’s eyes can no longer be read; after the Second, this use may injure Kienitz’s long-range posterization (and reproduction by silk-screening), the commercial opportunities, even though it does not reduce effect of the lighting in the original is almost the value he derives from this particular picture. He extinguished. What is left, besides a hint of Soglin’s promises his subjects that the photos will be licensed only smile, is the outline of his face, which can’t be for dignified uses. Fewer people will hire or cooperate copyrighted. Defendants could have achieved the same with Kienitz if they think that the high quality of his work effect by starting with a snap-shot taken on the street. will make the photos more effective *760 when used against them! But Kienitz does not present an argument The other statutory factors don’t do much in this case. along these lines, and the consideration in the preceding Consider (1), for example. Defendants sold their products paragraph is not enough to offset the fact that, by the time in the hope of profit, and made a small one, but they defendants were done, almost none of the copyrighted chose the design as a form of political commentary. work remained. The district court thus reached the right Factor (2) is unilluminating, and as we have mentioned conclusion. Kienitz does not argue that defendants’ acts have reduced the value of this photograph, which he licensed to Soglin AFFIRMED at no royalty and which is posted on a public website for viewing and downloading without cost.

[3] Two things can be said for Kienitz. First, defendants All Citations did not need to use the copyrighted work. They wanted to mock the Mayor, not to comment on Kienitz’s skills as a 766 F.3d 756, 2014 Copr.L.Dec. P 30,659, 111 photographer or his artistry in producing this particular U.S.P.Q.2d 2086, 42 Media L. Rep. 2312 photograph. There’s no good reason why defendants should be allowed to appropriate someone else’s End of Document © 2016 Thomson Reuters. No claim to original U.S. Government Works.