Cariou v. Prince

Filing 125

AMICUS BRIEF, on behalf of Amicus Curiae Art Museums and Association of Art Museum Directors, FILED. Service date 11/02/2011 by CM/ECF. [436315] [11-1197]--[Edited 11/02/2011 by HT]

11-1197-cv
United States Court of Appeals
for the

Second Circuit
PATRICK CARIOU,
– V. –
RICHARD PRINCE,

Plaintiff-Appellee,
Defendant-Appellant,

GAGOSIAN GALLERY, INC., LAWRENCE GAGOSIAN,
Defendants-Appellants.
––––––––––––––––––––––––––––––
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK

BRIEF FOR AMICI CURIAE THE ASSOCIATION OF ART MUSEUM
DIRECTORS, THE ART INSTITUTE OF CHICAGO, THE
INDIANAPOLIS MUSEUM OF ART, THE METROPOLITAN MUSEUM
OF ART, THE MUSEUM OF MODERN ART, MUSEUM ASSOCIATES,
DBA LOS ANGELES COUNTY MUSEUM OF ART, THE NEW MUSEUM,
THE SOLOMON R. GUGGENHEIM FOUNDATION, THE WALKER ART
CENTER, AND THE WHITNEY MUSEUM OF AMERICAN ART
IN SUPPORT OF APPELLANTS AND REVERSAL
CLIFFORD M. SLOAN
BRADLEY A. KLEIN
SKADDEN, ARPS, SLATE, MEAGHER
& FLOM LLP
1440 New York Avenue N.W.
Washington, DC 20005
[phone]
Attorneys for Amici Curiae

RULE 26.1 CORPORATE DISCLOSURE STATEMENT
Amici include nonprofit corporations, none of which has any parent
corporation nor stock held by any publicly held corporation.

ii

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................................................................iv
STATEMENT OF CONSENT TO FILE ................................................................1
STATEMENT OF THE IDENTITY AND INTEREST OF AMICI CURIAE..........1
STATEMENT OF ISSUES ADDRESSED BY AMICI CURIAE............................5
INTRODUCTION AND SUMMARY OF ARGUMENT.......................................5
ARGUMENT..........................................................................................................7
I.

APPROPRIATION ART HAS A LONG AND DISTINGUISHED
PEDIGREE...................................................................................................7

II.

THE DISTRICT COURT’S RULING ON LIABILITY THREATENS
TO FRUSTRATE THE EDUCATIONAL MISSION OF MUSEUMS
TO MAKE ART ACCESSIBLE TO THE PUBLIC. ..................................11
A.
B.

III.

The District Court’s Analysis Of Direct Liability Raises
Troubling Questions For Art Museums ...................................12
The District Court’s Analysis Of Secondary Liability
Raises Troubling Questions For Art Museums........................19

THE DISTRICT COURT’S EXTREME REMEDY WOULD
DEPRIVE THE PUBLIC OF EXPOSURE TO IMPORTANT
ARTISTIC WORKS ..................................................................................23

CONCLUSION ....................................................................................................27

iii

TABLE OF AUTHORITIES
FEDERAL CASES
Arista Records LLC v. Doe,
604 F.3d 110 (2d Cir. 2010)...........................................................................21
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006)................................................................15, 17-18
Bouchat v. Baltimore Ravens Ltd. P'ship,
619 F.3d 301 (4th Cir. 2010)..........................................................................18
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ...........................................................................12-13, 24
City of New York v. Mickalis Pawn Shop, LLC,
645 F.3d 114 (2d Cir. 2011)...........................................................................24
Davis v. The Gap, Inc.,
246 F.3d 152 (2d Cir. 2001)...........................................................................13
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) ......................................................................................24
Gershwin Publ’g Corp. v. Columbia Artists Mgmt, Inc.,
443 F.2d 1159 (2d Cir. 1971)....................................................................20-21
Lipton v. Nature Co.,
71 F.3d 464 (2d Cir. 1995)........................................................................24-25
MGM, Inc. v. Grokster, Ltd.,
545 U.S. 913 (2005) ......................................................................................20
New York Times Co., Inc. v. Tasini,
533 U.S. 483 (2001) .................................................................................24-25
NXIVM Corp. v. Ross Inst.,
364 F.3d 471 (2d Cir. 2004)...........................................................................14
Salinger v. Colting,
607 F.3d 68 (2d Cir. 2010).............................................................................24
Softel, Inc. v. Dragon Med. & Scientific Commc’ns.,
118 F.3d 955 (2d Cir. 1997)......................................................................20-21
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ......................................................................................20

iv

TVT Records v. Island Def Jam Music Grp.,
279 F. Supp. 2d 366 (S.D.N.Y. 2003), rev’d on other grounds,
412 F.3d 82 (2d Cir. 2005)........................................................................25-26

STATE CASE
Comedy III Productions, Inc. v. Gary Saderup, Inc.,
21 P.3d 797 (Cal. 2001) ............................................................................. 9-10

FEDERAL STATUTES AND LEGISLATIVE MATERIALS
17 U.S.C. § 107(1) ..........................................................................................13, 19
17 U.S.C. §§ 502-505 ...........................................................................................24
H.R. Rep. No. 94-1476 (1976) ..............................................................................25

OTHER AUTHORITY
E. Kenly Ames, Note: Beyond Rogers v. Koons: A Fair Use Standard for
Appropriation, 93 Colum. L. Rev. 1473 (Oct. 1993).................................... 8-9
Douglas Crimp, Pictures, 8 October 75 (Spring 1979), as reprinted in Art
After Modernism: Rethinking Representation (Brian Wallis ed., 1984)..........10
Douglas Eklund, The Pictures Generation, 1974-1984 (2009).........................10-11
William M. Landes, Copyright, Borrowed Images, and Appropriation Art:
An Economic Approach, 9 Geo. Mason L. Rev. 1 (2000)............................. 7-8
Ann Lee, Appropriation, A Very Short Introduction (2008) ..............................8, 10
Pierre N. Leval, Toward A Fair Use Standard, 103 Harv. L. Rev. 1105
(1990) .......................................................................................................14-15
David Nimmer, 4-14 Nimmer on Copyright § 14.06 (2011) .................................24
Abigail Solomon-Godeau, Photography After Art Photography, in Art After
Modernism: Rethinking Representation (Brian Wallis ed., 1984) ..................11

v

STATEMENT OF CONSENT TO FILE
All parties to this appeal have consented to the filing of this brief pursuant to
Federal Rule of Appellate Procedure 29(a).1
STATEMENT OF THE IDENTITY AND INTEREST OF AMICI CURIAE
Amici are art museums and an organization of art museum directors. The
mission of art museums is to provide artistic and educational experiences for the
public. The district court decision in this case threatens to undermine the ability of
art museums to fulfill their important role as exhibitors, curators, and custodians of
artworks held in public trust. If upheld, the district court decision could prevent art
museums from exercising their best professional judgment about the works of art
that they acquire and display. Such a result would have a distorting effect on
public access to art, and would harm the strong public interest in the free flow of
creative expression.
The Association of Art Museum Directors – The Association of Art Museum
Directors (“AAMD”) is a non-profit professional association organized under the

1

No party’s counsel authored this brief in whole or in part, no party or party’s
counsel contributed money that was intended to fund preparing or submitting
this brief, and no person, other than amici, their members and their counsel,
contributed money that was intended to fund preparing or submitting this brief.
Record references are to the Special Appendix (“SPA___”) attached to
Appellants’ Opening Brief (Docket No. 100).

laws of Washington, D.C. The AAMD’s general nature and purpose is to support
its members, consisting of approximately 200 directors of art museums located
throughout the United States, Canada, and Mexico, in the contribution of art
museums to society.
The Art Institute of Chicago – Founded in 1879, the Art Institute of Chicago
is one of the largest encyclopedic art museums in the country. Its mission is to
collect, preserve, and interpret works of art from the world’s diverse artistic
traditions for the inspiration and education of the public and for the advancement
of research in visual culture.
The Indianapolis Museum of Art – Founded in 1883, the Indianapolis
Museum of Art serves the creative interests of its communities by fostering
exploration of art, design, and the natural environment. The IMA promotes these
interests through the collection, presentation, interpretation, and conservation of its
artistic, historic, and environmental assets.
The Metropolitan Museum of Art – The Metropolitan Museum of Art was
founded in 1870 and is located in New York city. Its mission is to collect, preserve,
study, exhibit, and stimulate appreciation for and advance knowledge of works of
art that collectively represent the broadest spectrum of human achievement at the
highest level of quality, all in the service of the public and in accordance with the
highest professional standards.
2

The Museum of Modern Art – Founded in 1929 as an educational
institution, the Museum of Modern Art in New York is dedicated to being the
foremost museum of modern art in the world and manifests this commitment by
establishing, preserving, and documenting a permanent collection of the highest
order that reflects the vitality, complexity, and unfolding patterns of modern and
contemporary art; by presenting exhibitions and educational programs of
unparalleled significance; by sustaining a library, archives, and conservation
laboratory that are recognized as international centers of research; and by
supporting scholarship and publications of preeminent intellectual merit.
Museum Associates, dba Los Angeles County Museum of Art – The mission
of the Los Angeles County Museum of Art, founded in 1965, is to serve the public
through the collection, conservation, exhibition, and interpretation of significant
works of art from a broad range of cultures and historical periods, and through the
translation of these collections into meaningful educational, aesthetic, intellectual,
and cultural experiences for the widest array of audiences. Museum Associates is
a nonprofit public benefit corporation organized under the laws of California,
which operates the Los Angeles County Museum of Art.
The New Museum – Founded in 1977, the New Museum in New York is
exclusively devoted to contemporary art. With a mission of new art and new ideas,

3

the Museum has a global scope and exhibits a broad range of leading edge
contemporary art in diverse media.
The Solomon R. Guggenheim Foundation – The Solomon R. Guggenheim
Foundation, founded in 1937, is a non-profit education corporation chartered by
the New York State Board of Regents, which operates the Solomon R.
Guggenheim Museum in New York city, and maintains an international network of
museums comprised of the Peggy Guggenheim Collection in Venice, Italy, the
Guggenheim Museum Bilbao in Bilbao, Spain and the Deutsche Guggenheim in
Berlin, Germany.
The Walker Art Center – The Walker Art Center in Minneapolis, Minnesota
was founded in 1879 and is a catalyst for the creative expression of artists and the
active engagement of audiences that examines the questions that shape and inspire
us as individuals, cultures, and communities.
The Whitney Museum of American Art – The Whitney was incorporated in
1936, and is a New York not-for-profit educational corporation. The Whitney
collects, exhibits, preserves, researches, and interprets art of the United States in
the broadest global, historical, and interdisciplinary contexts.

4

STATEMENT OF ISSUES ADDRESSED BY AMICI CURIAE
Amici will address elements of the district court’s decision that are of great
concern because they threaten unwarranted interference with the ability of nonprofit art museums to make important works of art available to the public.
INTRODUCTION AND SUMMARY OF ARGUMENT
The goal of art museums is to serve the public by presenting wide-ranging
exhibitions of art and by obtaining significant works of art for public benefit.
Amici are concerned that the district court’s sweeping view of liability threatens to
inhibit the beneficial work of non-profit art museums, and that the district court’s
excessive remedy authorizes the unnecessary destruction of artworks.
Appropriation Art—the inclusion of pre-existing images and content in an
artwork— is well-recognized and widely appreciated. Its history includes the use
of existing objects by Pablo Picasso and Marcel Duchamp in the early twentieth
century. It evolved through Dadaism after World War I and the work of Andy
Warhol and “Pop” artists in the 1960s, and it continues to be a prominent
component of the art that museums display and acquire today.
The district court’s decision holds an artist and the gallery displaying and
selling his works liable for copyright infringement based on the artist’s practice of
incorporating parts of copyrighted photographs into one-of-a-kind artistic works.
The district court’s analysis—replete with errors such as failing to conduct a work5

by-work analysis, failing to consider adequately all fair use factors, and failing to
apply correct standards regarding whether the works are transformative—itself
raises serious concern among art museums as custodians of Appropriation Art,
particularly because the district court relies heavily on the perceived failure of the
artist, working in a non-verbal medium, to articulate and explicate the precise
“message” and “comment” of his creative work.

The district court’s ruling,

however, goes much further in its reach and raises especially troubling issues for
art museums.
The district court holds the art gallery directly and vicariously liable for the
artist’s use of copyrighted material based on the gallery’s failure to ensure that the
artist obtained permission to use these materials; on the gallery’s asserted
knowledge of the artist’s reputation for incorporating copyrighted materials into
his works; on the gallery’s reproduction of the artist’s work in brochures and
exhibition catalogues; and on the gallery’s control of its holdings and exhibits. If
broadly applied, these liability standards could threaten non-profit art museums
that hold or display works of Appropriation Art.

Basing liability simply on an

artist’s reputation, or the failure to inquire about the materials used in an artwork,
would place a severe burden on art museums and could deter them from displaying
or acquiring an important body of art. Such a result contravenes both Second
Circuit precedent and the public policy interests served by the Copyright Act. It
6

could punish cultural institutions and censure educational activities that pose no
threat to the original copyright holder, and it could harm the public by limiting
access to significant creative works.
The district court, moreover, imposed an extreme, destructive remedy,
ordering that the artworks at issue be impounded or destroyed at plaintiff’s option.
Amici oppose the destruction of any original artworks, particularly where less
extreme remedies are readily available. At a minimum, a district court should
consider more moderate alternatives before imposing the ultimate remedy of
impoundment or destruction.
ARGUMENT
I.

APPROPRIATION ART HAS A LONG AND DISTINGUISHED
PEDIGREE.
In order to understand the implications of the district court’s decision for art

museums, it is helpful to understand the origin, development, and significant
contributions of Appropriation Art.
The term “Appropriation Art” generally refers to any form of art, regardless
of medium, that “borrows images from popular culture, advertising, the mass
media, other artists and elsewhere, and incorporates them into new works of art.
Often, the artist’s technical skills are less important than his [or her] conceptual
ability to place images in different settings and, thereby, change their meaning.”

7

William M. Landes, Copyright, Borrowed Images, and Appropriation Art: An
Economic Approach, 9 Geo. Mason L. Rev. 1, 1 (2000). Appropriation Art has
been important and influential in the development of modern and post-modern art.
Ann Lee, Appropriation, A Very Short Introduction 1 (2008).
Although Appropriation Art is commonly associated with contemporary
artists and relatively new media, it actually has a much longer pedigree. Indeed,
one commentator has observed that “[t]he most far-reaching account would have it
that the practice of art, as an activity that requires copying from models and
imitating prototypes, has incorporated appropriation from its inception. . . . An
example could be made of the studio, where students of art develop their art
through copying a sketch by an old master.” Id. at 3. Well-known examples of
appropriation include paintings by Edouard Manet, which often contained
provocative presentations of figures and motifs from past art. See id. at 4-5; E.
Kenly Ames, Note: Beyond Rogers v. Koons: A Fair Use Standard for
Appropriation, 93 Colum. L. Rev. 1473, 1478 (Oct. 1993).
Appropriative techniques can be seen in the early collages of Pablo Picasso.
In 1912, Picasso began combining found objects—including newspaper clippings,
fragments of musical scores, bottle labels, and discarded drawings—with
schematic line drawings and other original elements. Ames, supra, at 1478-80.

8

After World War I, Dadaists adopted collage techniques and used photomontages
to critique various social and political trends in Europe. Id.
Some of the most influential examples of early twentieth-century
Appropriation Art were created by Marcel Duchamp.

In one famous piece,

Duchamp drew a moustache and goatee on a postcard-sized reproduction of
Leonardo da Vinci’s Mona Lisa and wrote the initials L.H.O.O.Q. along the
bottom border.

Ames, supra, at 1483-84. Duchamp’s playful and subversive

works differed from Manet’s and Picasso’s in that they consciously eschewed
aesthetic appeal in favor of conceptual insight and perspective.

They sought

primarily to provide a new context and meaning for a pre-existing object or image.
Appropriation Art gained new visibility in American culture with the
emergence of Andy Warhol and “Pop Art” in the 1960s.

Warhol offered a

perspective on the mass market economy and American pop culture by
reproducing existing images of celebrities and mass-produced products such as
Campbell’s Soup cans and Coca-Cola bottles. As the Supreme Court of California
observed:
The silkscreens of Andy Warhol . . . have as their subjects the images
of such celebrities as Marilyn Monroe, Elizabeth Taylor, and Elvis
Presley. Through distortion and the careful manipulation of context,
Warhol was able to convey a message that went beyond the
commercial exploitation of celebrity images and became a form of
ironic social comment on the dehumanization of celebrity itself.

9

Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 811 (Cal. 2001).
Warhol’s use of pop culture images to celebrate and critique American consumer
culture set the stage for the more comprehensive critique of representation that
characterized postmodernism. See Lee, supra, at 6.
Pop Art served as a major influence for a group of young artists that
emerged in New York in the late 1970s and came to be known as the “Pictures
Generation.” The first generation of artists “born into the media culture of postwar America,” the Pictures Generation “created seminal and influential works
whose overarching subject was imagery itself—how pictures of all kinds not only
depict but also shape reality. These artists’ achievements have contributed to
photography’s central position as the defining medium of contemporary art.”
Thomas P. Campbell, “Foreword” in Douglas Eklund, The Pictures Generation,
1974-1984 6 (2009).
The Pictures Generation derived its name and much of its fame from a
groundbreaking 1977 exhibition of works by several artists at Artists Space and a
companion essay titled “Pictures” by critic Douglas Crimp. See Douglas Crimp,
Pictures, 8 October 75, 75-88 (Spring 1979), as reprinted in Art After Modernism:
Rethinking Representation 175, 185 (Brian Wallis ed., 1984). Influenced by the
academic cultural criticism of the period, as well as the works of prior
Appropriation Artists, the Pictures Generation sought to explore and expose the
10

ways in which culture and identity were constructed and subverted by massproduced images in advertising, movies, and other elements of pop culture.
Eklund, supra, at 17-18.
Some of these artists expanded upon prior uses of existing photography by
producing works through “re-photography,” or taking pictures of photographs
created by others, often with limited modification. See Abigail Solomon-Godeau,
Photography After Art Photography, in Art After Modernism: Rethinking
Representation 80 (Brian Wallis ed., 1984). In 2009, a Metropolitan Museum of
Art exhibition book described the Pictures movement as “the last movement in
contemporary art to date.” Eklund, supra, at 18.
In short, while evaluations of the artistic merit of individual works and
artists can and do differ, Appropriation Art has a distinguished history, and its
importance as a means of creative expression is widely understood and accepted.

II.

THE DISTRICT COURT’S RULING ON LIABILITY THREATENS
TO FRUSTRATE THE EDUCATIONAL MISSION OF MUSEUMS
TO MAKE ART ACCESSIBLE TO THE PUBLIC.
The district court’s broad ruling on liability threatens to frustrate the

educational mission of museums to make art accessible to the public, and to
undermine the purpose of the Copyright Act to stimulate creativity. Among the
most disturbing aspects of the district court’s decision is that it bases direct liability
11

of the art gallery on such factors as its purported “bad faith” because of the
gallery’s knowledge of the artist’s works; likewise, the district court bases
secondary liability on such factors as the gallery’s failure to conduct what the court
viewed as an adequate “inquiry” into the artist’s creative process. While non-profit
art museums differ from commercial art galleries in important respects, the district
court’s analysis threatens, at the very least, harmful confusion for art museums as
they seek to perform their core mission.2
A.

The District Court’s Analysis Of Direct Liability Raises Troubling
Questions For Art Museums.

Just as robust protection of intellectual property is vitally important to the
copyright regime provided by statute and the Constitution, so too fair use is an
essential element of that regime as well. The Supreme Court has emphasized that,
“[f]rom the infancy of copyright protection, some opportunity for fair use of
copyrighted materials has been thought necessary to fulfill copyright’s very
purpose, ‘[t]o promote the Progress of Science and useful Arts . . . .’” Campbell v.

2

Amici believe that the district court’s opinion is erroneous and troubling on
many grounds, including its unfounded conclusion that the artist must articulate
the way in which his or her work comments on the appropriated work, and the
district court’s failure to examine each work individually and evaluate the
extent to which each work makes transformative use of the original photographs.
Because art museums serve as custodians of art (rather than creators of art),
amici focus in this brief on elements of the district court’s decision that directly
apply to those who curate art collections and present art to the public.
12

Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const. art. I, sec. 8,
cl. 8). The first of the four fair use factors delineated in the Copyright Act is the
“purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes,” 17 U.S.C. § 107(1). This factor
embodies the goal of stimulating creativity and is at “[t]he heart of the fair use
inquiry.” Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d Cir. 2001).
In a deeply troubling analysis, the district court rested its conclusion that the
first fair use factor supports liability for the art gallery in this case on the gallery’s
perceived “bad faith,” as well as on the gallery’s publication of a catalogue and
exhibition invitations and its display of the artworks.
The district court concluded that the Gagosian Defendants acted in bad faith
because they “were aware that Prince is an habitual user of other artists’
copyrighted work, without permission, and because . . . the Gagosian Defendants
neither inquired into whether Prince had obtained permission to use the Photos
contained in the Canal Zone Paintings nor ceased their commercial exploitation of
the Paintings after receiving Cariou’s cease-and-desist notice.” SPA-25. Based in
part on this finding of bad faith, the court concluded that the first fair use factor
weighed “heavily in favor of Plaintiff,” id., and that defendants were “not entitled
to the defense of fair use,” id. at 31. The district court then concluded that the
Gagosian Defendants violated Cariou’s rights when they exhibited Prince’s
13

paintings, published the Canal Zone exhibition catalog, created invitation cards,
and sold the artwork. Id. at 31-32. If allowed to stand, the district court's ruling
would raise the specter that museums might feel obligated to presume that all
works of Appropriation Art violate the Copyright Act—and restrict their
exhibitions accordingly—at least until an authoritative ruling is made regarding the
application of a fair use analysis. Such a rule would place an onerous, harmful,
and unwarranted burden on museums that display and own works of Appropriation
Art.
This ruling contravenes established precedent and poses a serious potential
threat to non-profit art museums that acquire or display Appropriation Art. As a
threshold matter, it is not clear that the district court’s focus on the question of bad
faith itself was appropriate. This Court has discounted the importance of bad faith
in the fair use analysis, stating that “a finding of bad faith is not to be weighed very
heavily within the first fair use factor and cannot be made central to fair use
analysis.” NXIVM Corp. v. Ross Inst., 364 F.3d 471, 479 n.2 (2d Cir. 2004); see
also id. at 483 (Jacobs, J., concurring) (rejecting bad faith subfactor and explaining
that “[c]opyright itself would be distorted if its contours were made to depend on
the morality and good behavior of secondary users”). In his seminal article on fair
use, Judge Leval observed that “[n]o justification exists for adding a morality test”
to the fair use analysis, which should focus only “on whether [the] creation
14

claiming the benefits of the doctrine is of the type that should receive those
benefits.” Pierre N. Leval, Toward A Fair Use Standard, 103 Harv. L. Rev. 1105,
1126 (1990). Copyright is “not a reward for goodness but a protection for the
profits of activity that is useful to the public education.” Id. The district court
gave inappropriate weight to its determination that the gallery defendants had acted
in bad faith.
More fundamentally, even if the court’s focus on bad faith were appropriate,
the district court made an error of law when it premised its bad faith finding on the
Gagosian Defendants’ failure to “inquire[] into whether Prince had obtained
permission” to use Cariou’s photographs. SPA-25. In Blanch v. Koons, this Court
stated that “[w]e are aware of no controlling authority to the effect that the failure
to seek permission for copying, in itself, constitutes bad faith,” 467 F.3d 244, 256
(2d Cir. 2006); see also id. (noting that “‘[i]f the use is otherwise fair, then no
permission need be sought or granted’” (quoting Campell, 510 U.S. at 585 n.18)).
Thus, Prince’s failure to obtain permission for his use of the subject photographs
should have been largely irrelevant to the fair use analysis. But the district court’s
opinion went even further, holding that the Gagosian Defendants, as gallery
owners who displayed and marketed Prince’s works, had acted in bad faith due to
their failure to inquire whether another party—Prince—had obtained permission to
use the photographs. SPA-25.
15

This expansive ruling not only lacks foundation in Second Circuit precedent;
it also opens troubling new vistas of possible liability for non-profit museums and
other custodians of Appropriation Art.

To avoid potential liability under the

district court’s standard, before displaying any work in their collection, museums
might first have to identify whether a given piece of art appropriates another work
outside the public domain, assess whether the new artwork constitutes fair use (and
perhaps secure a legal opinion to that effect), and finally determine whether
permission was obtained by the artists to use the original work in the new piece.
The district court’s opinion thus may establish a rule that museums must presume
every work of Appropriation Art is infringing by its very nature, and that they have
an absolute duty to investigate each such work in their collections. 3 Yet the district
court’s opinion offers no guidance regarding how permission is to be verified or
what type of proof of permission must be obtained. If affirmed, this rule of law
would impose an onerous and unwarranted burden on art museums. This new
burden would interfere with the educational mission of non-profit museums in
presenting art based on an evaluation of artistic merit; it is not required or
envisioned by the Copyright Act; and it often would be difficult, if not impossible,

3

The district court evidently employed the same sweeping presumption that
Appropriation Art generally is non-transformative and violates the Copyright
Act, as it refused to evaluate each of the disputed works individually.
16

to meet. Indeed, such a rule would fall most heavily on museums and other art
custodians with large, broad collections encompassing many artists from different
countries and time periods, where obtaining confirmation of the artist’s activities
regarding each piece may be especially difficult if not impossible.
The inherent uncertainty and enormous problems in applying the district
court’s fair use analysis to selected artworks, which often involves fine legal
distinctions, could effectively deter museums from obtaining or displaying
Appropriation Art, even though the curators’ professional judgment of artistic
value and educational significance would lead to a different conclusion. Such a
result is contrary to the fundamental goal of the Copyright Act to stimulate creative
expression and the dissemination of creative works.
Equally troubling is the district court’s imposition of direct liability on the
Gagosian Defendants for, among other things, exhibiting paintings, publishing the
Canal Zone works in an exhibition catalog, and creating invitation cards. SPA-31
to 32.

Even if expansive imposition of liability on this basis could in some

circumstances be appropriate for companies that sell artworks commercially (and
the record in this case presents no apparent basis for reliance on such exceptional
circumstances), amici submit that imposition of liability on this ground plainly
would not be appropriate for non-profit museums that serve important public
educational functions. As this Court has noted, “[n]otwithstanding the fact that
17

artists are sometimes paid and museums sometimes earn money, the public
exhibition of art is widely and we think properly considered to have value that
benefits the broader public interest.” Blanch, 467 F.3d at 254 (internal quotation
marks omitted).
The display of art at art museums itself is transformative, and warrants fair
use protection. The Fourth Circuit, for example, has held that placing an otherwise
infringing logo for the Baltimore Ravens football team in the lobby of the team’s
corporate headquarters “in a museum-like setting” to document the history of the
franchise is “consistent with the fair use display of copyrighted material in a
museum.” Bouchat v. Baltimore Ravens Ltd. P'ship, 619 F.3d 301, 314 (4th Cir.
2010). The court explained that the display of the logo “‘adds something new’ to
its original purpose as a symbol identifying the Ravens.” Id. The court thus
determined that use of the commercial logo was protected fair use when displayed
in a museum-like setting, even though use of the same logo in highlight films sold
by the NFL and played during football games constituted copyright infringement.
Id. at 317. The case for fair use is especially compelling when art museums
display art selected by curators for its merit and contextualized for public
educational purposes, not simply in “a museum-like setting,” but in actual
museums—institutions that are devoted to furthering public understanding of a
wide range of genres and methods.
18

A non-profit museum’s exhibition of art selected for its artistic significance,
moreover, fits comfortably and unambiguously in the category of “nonprofit
educational purposes” that are afforded explicit protection under the first fair use
factor of the Copyright Act, 17 U.S.C. § 107(1).

Providing educational

experiences for the public is a central goal, and a daily activity, for art museums.
If applied broadly, however, the district court’s opinion could suggest that any
institution’s distribution of exhibition catalogues and invitation cards containing
images of works found to be infringing, or its exhibition of works found to be
infringing, might be a sufficient basis to trigger direct liability. The district court’s
opinion would unjustifiably interfere with socially beneficial activities by art
museums. Amici respectfully submit that this Court should reject the district
court’s sweeping imposition of direct liability, and, at the very least, clarify that the
district court’s analysis cannot apply to the display of artworks for educational
purposes by museums.
B.

The District Court’s Analysis Of Secondary Liability Raises
Troubling Questions For Art Museums.

The district court’s analysis of secondary liability is at least as troubling as
its analysis of direct liability.
The district court found the Gagosian Defendants vicariously liable because
they had the “right and ability to supervise Prince’s work, or at the very least the

19

right and ability (and perhaps responsibility) to ensure that Prince obtained licenses
to use the Photos” and derived financial benefit from the infringing use. SPA-33.
The district court also held the Gagosian Defendants liable for contributory
infringement because they knew of “Prince’s reputation as an appropriation artist
who rejects the constricts of copyright law, but they never inquired into the
propriety of Prince’s use of the Photos.” Id. at 34. Like the ruling on direct
liability, the district court’s imposition of secondary liability would create serious
burdens and risks for art museums and reflects an erroneous interpretation of
important copyright principles.
Although “the Copyright Act does not expressly render anyone liable for
infringement committed by another,” Sony Corp. of Am. v. Universal City Studios,
Inc., 464 U.S. 417, 434 (1984), it is settled that vicarious and contributory liability
may lie.

This Court has explained that, for vicarious liability to attach, the

secondary infringer must have a “right and ability to supervise that coalesce[s]
with an obvious and direct financial interest in the exploitation of copyrighted
materials.” Softel, Inc. v. Dragon Med. & Scientific Commc’ns., 118 F.3d 955, 971
(2d Cir. 1997) (alterations omitted); see also MGM, Inc. v. Grokster, Ltd., 545 U.S.
913, 930 (2005).

Although vicarious liability has its origins in the agency

principles of respondeat superior, an employer-employee relationship is not
required. Gershwin Publ’g Corp. v. Columbia Artists Mgmt, Inc., 443 F.2d 1159,
20

1162 (2d Cir. 1971).

Similarly, “one who, with knowledge of the infringing

activity, induces, causes or materially contributes to the infringing conduct of
another, may be held liable as a contributory infringer.” Arista Records LLC v.
Doe, 604 F.3d 110, 117 (2d Cir. 2010) (alterations and quotation marks omitted).
“The knowledge standard is an objective one; contributory infringement liability is
imposed on persons who know or have reason to know of the direct infringement.”
Id. at 118 (alterations and quotation marks omitted).
The district court’s decision on secondary liability would have serious
adverse consequences if applied to non-profit art museums.

Rather than

commissioning works, museums generally purchase (or borrow) works for public
display and thus neither have a “right and ability to supervise” the work of
appropriation artists, Softel, 118 F.3d at 971, nor “induce[], cause[] or materially
contribute[] to the infringing conduct” of an artist on any particular piece, Arista
Records, 604 F.3d at 117 (alterations omitted). Even when museums commission
particular works, they generally have limited influence over the creative process.
And while non-profit museums ordinarily may receive incidental monetary
benefits from displaying works of art (through the sale of admission tickets,
catalogues, brochures, postcards, and other retail items), they lack the “obvious and
direct financial interest in the exploitation of copyrighted materials” required for
secondary liability. Softel, 118 F.3d at 971. Yet, by its terms, the district court’s
21

opinion may threaten liability for any institution that has the “right and ability . . .
to ensure that [an artist] obtained licenses to use” appropriated material, or that is
aware of an artist’s “reputation as an appropriation artist who rejects the constricts
of copyright law” and fails to ensure that the artist’s appropriation is permissible.
SPA-33 to 34. Almost any institution that displays Appropriation Art potentially
could be snared by these expansive standards.
Read broadly, the district court’s ruling implies that art museums displaying
Appropriation Art might be presumptively liable for vicarious or contributory
infringement simply due to the nature of Appropriation Art and the reputation of its
artists. Under this approach, prior to displaying any works of Appropriation Art in
current or future collections or exhibitions, museums might have to conduct
significant due diligence, including seeking documentation that permission was
obtained, requesting indemnification from the artist, seeking expensive legal
opinions, or purchasing liability insurance. Rather than judging and acquiring
works on their perceived artistic merit, museums might be forced to limit their
offerings if they cannot determine a work’s precise legal status under the
Copyright Act, particularly under the sweeping and ill-defined standard in the
district court’s approach. The specter of legal liability might well compromise
museums’ missions of preserving and promoting the arts. Correlatively, artists

22

aspiring to have their works displayed in museums might engage in self-censorship,
further chilling artistic expression in this important contemporary movement.
Museums should not be punished for exercising their professional judgment
about the merit of art. For the reasons set forth above, the district court's analysis
is contrary to law and would have harmful effects. Amici respectfully submit that,
if it finds it necessary to reach the issue, this Court should make clear that the
factors emphasized by the district court in this case are not sufficient to justify
secondary liability.

III.

THE DISTRICT COURT’S EXTREME REMEDY WOULD DEPRIVE
THE PUBLIC OF EXPOSURE TO IMPORTANT ARTISTIC WORKS.
The district court’s remedy—the prompt impoundment and possible

destruction of the artworks in question—is, from amici’s perspective, truly
shocking. The district court ordered that Prince and the Gagosian Defendants,
within ten days of the date of the Order:
deliver up for impounding, destruction, or other disposition, as
Plaintiff determines, all infringing copies of [Cariou’s photographs],
including the Paintings and unsold copies of the Canal Zone
exhibition book, in their possession, custody, or control and all
transparencies, plates, masters, tapes, film negatives, discs, and other
articles for making such infringing copies.
SPA-37. The district court also ordered that the Defendants notify in writing
current or future owners of the Paintings that they infringe and that they cannot be
23

lawfully displayed. Id. This draconian remedy transforms “copyright into an
engine of suppression, in contravention of its goal to promote the progress of
science and threatening to encroach on First Amendment values.” David Nimmer,
4-14 Nimmer on Copyright § 14.06 (2011).
Although the Copyright Act provides for various forms of relief, including
actual and statutory damages, injunctive relief, and the impoundment or
destruction of infringing articles, see 17 U.S.C. §§ 502-505, remedies must be
narrowly tailored and consistent with the goals of the Act. The Supreme Court has
emphasized that injunctive relief does not automatically follow a finding of
copyright infringement, and that courts have the equitable discretion to fashion
appropriate remedies. See, e.g., New York Times Co., Inc. v. Tasini, 533 U.S. 483,
504-05 (2001); Campbell, 510 U.S. at 578 n.10; see also eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391-94 (2006); Salinger v. Colting, 607 F.3d
68, 78 (2d Cir. 2010).
This Court similarly has instructed that, as a general matter, “injunctive
relief should be narrowly tailored to fit specific legal violations, and . . . the court
must mould each decree to the necessities of the particular case.” City of New York
v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 144 (2d Cir. 2011) (internal quotation
marks and citations omitted). In the copyright context, this Court has further
explained that a “court’s authority to issue an injunction . . . should be limited in
24

scope to that part of the work that is protectible.” Lipton v. Nature Co., 71 F.3d
464, 475 (2d Cir. 1995). This approach is consistent with the legislative history of
the Copyright Act, in which Congress explained that the Act’s provisions
governing remedies would give courts the flexibility to order “the infringing
articles sold, delivered to the plaintiff, or disposed of in some other way that would
avoid needless waste and best serve the ends of justice.” H.R. Rep. No. 94-1476,
at 160 (1976) (emphasis added).
Amici strongly oppose the needless destruction of art, even when a court has
found copyright infringement.

In the present case, less extreme remedies are

readily available (if there is a conclusion of infringement at all, see note 2, supra).
The district court, for example, could have explored the possibility of the parties
negotiating a licensing arrangement, as contemplated by the Supreme Court in New
York Times Co. v. Tasini. See 533 U.S. at 504-05 (“The parties (Authors and
Publishers) may enter into an agreement allowing continued electronic
reproduction of the Authors’ works; they, and if necessary the courts and Congress,
may draw on numerous models for distributing copyrighted works and
remunerating authors for their distribution.”). Cf. TVT Records v. Island Def Jam
Music Grp., 279 F. Supp. 2d 366, 408 (S.D.N.Y. 2003) (refusing to order the
destruction of CDs containing both infringing and non-infringing songs and
recognizing that the artists “obviously expended their own time and energy in
25

creating these works, and the impact of recall and destruction warrants some
consideration insofar as it may affect them”), rev’d on other grounds, 412 F.3d 82
(2d Cir. 2005). A wide range of other equitable remedies also is possible. It does
not appear that the district court even considered such alternatives.4
The district court’s drastic remedy is unnecessary and would cause
irreparable harm, chilling artistic expression and depriving the public of socially
valuable artworks, both now and in the future. This consequence would be a great
disservice to the artistic community and to the public at large.

*

*

*

*

*

Amici recognize that the artistic merit of Appropriation Art may be subject
to vigorous debate and disagreement. That is as it should be. Such an exchange of
views and criticism is at the core of amici’s mission of stimulating public reflection,
discourse, and education. What should not happen, however, is for inappropriately
expansive theories of direct and secondary copyright liability to cause art curators
and custodians to ignore or steer clear of this important body of art. What also
should not happen is for a judicial finding of infringement in a part of a work (or

4

The district court’s ruling on remedy is excessive in other respects as well. For
example, the district court applied a blanket notice-of-illegality requirement to
all current and future owners, regardless of whether an owner is a museum or
other educational institution. SPA-37.
26

some works) to become an automatic order wresting the artwork from public
access and ordering its impoundment or destruction. Far from compelling these
adverse results, sound principles of copyright law lead instead to an approach that
appropriately safeguards the rights of art museums, curators, custodians, and artists,
and the public interest in robust creative expression.
CONCLUSION
Amici respectfully submit that the district court’s Order should be reversed.

Dated: November 2, 2011

Respectfully submitted,
By: /s/ Clifford M. Sloan
Clifford M. Sloan
Bradley A. Klein
Skadden, Arps, Slate, Meagher & Flom LLP
1440 New York Avenue N.W.
Washington, DC 20005
Phone: [phone]
[e-mail]
Attorneys for Amici Curiae The Association
of Art Museum Directors, The Art Institute of
Chicago, The Indianapolis Museum of Art,
The Metropolitan Museum of Art, The
Museum of Modern Art, Museum Associates,
dba Los Angeles County Museum of Art, The
New Museum, The Solomon R. Guggenheim
Foundation, The Walker Art Center, and The
Whitney Museum of American Art

27

Federal Rules of Appellate Procedure Form 6. Certificate of Compliance
With Rule 32(a)
Certificate of Compliance With Type-Volume Limitation,
Typeface Requirements and Type Style Requirements
1.

This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) because:
■

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2.

this brief contains 6,137 words, excluding the parts of the brief
exempted by Fed. R. App. P. 32(a)(7)(B)(iii), or
this brief uses a monospaced typeface and contains _____________
[state the number of] lines of text, excluding the parts of the brief
exempted by Fed. R. App. P. 32(a)(7)(B)(iii).

This brief complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because:
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this brief has been prepared in a proportionally spaced typeface using
Microsoft Word 2003 in 14-point Times New Roman; or

□

this brief has been prepared in a monospaced typeface using _______
[state name and version of word processing program] with ________
[state number of characters per inch and name of type style].

Dated: November 2, 2011

/s/ Clifford M. Sloan
Clifford M. Sloan
Bradley A. Klein
Skadden, Arps, Slate, Meagher & Flom LLP
1440 New York Avenue N.W.
Washington, DC 20005
Phone: [phone]
[e-mail]
Attorneys for Amici Curiae

STATE OF NEW YORK
COUNTY OF NEW YORK

)
)
)

ss.:

AFFIDAVIT OF
CM/ECF SERVICE

I, Natasha S. Johnson, being duly sworn, depose and say that deponent is not a
party to the action, is over 18 years of age.
On November 2, 2011

deponent served the within: Brief For Amici Curiae The Association Of Art
Museum Directors, The Art Institute Of Chicago, The Indianapolis Museum Of Art,
The Metropolitan Museum Of Art, The Museum Of Modern Art, Museum
Associates, Dba Los Angeles County Museum Of Art, The New Museum, The
Solomon R. Guggenheim Foundation, The Walker Art Center, And The Whitney
Museum Of American Art In Support Of Appellants And Reversal
upon:
Jonathan D. Schiller
George F. Carpinello
Joshua I. Schiller
Boies, Schiller & Flexner LLP
Attorneys for Defendant-Appellant Richard Prince
575 Lexington Avenue, 7th Floor
New York, New York 10022
[phone]
via the CM/ECF Case Filing System. All counsel of record in this case are registered
CM/ECF users. Filing and service were performed by direction of counsel.
Sworn to before me on November 2, 2011

MARIA MAISONET
Notary Public State of New York
No. 01MA6204360
Qualified in Bronx County
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