Cariou v. Prince

Filing 194

REPLY BRIEF, on behalf of Appellant Richard Prince, Lawrence Gagosian and Gagosian Gallery, Inc., FILED. Service date 02/22/2012 by CM/ECF, US mail. [532661] [11-1197]--[Edited 02/23/2012 by HT]

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

Second Circuit
PATRICK CARIOU,
Plaintiff-Appellee,
– V. –
RICHARD PRINCE,
Defendant-Appellant,
GAGOSIAN GALLERY, INC., LAWRENCE GAGOSIAN,
Defendants-Appellants.
––––––––––––––––––––––––––––––
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK

JOINT REPLY BRIEF FOR DEFENDANTS-APPELLANTS

HOLLIS ANNE GONERKA BART
CHAYA WEINBERG-BRODT
DARA G. HAMMERMAN
AZMINA N. JASANI
WITHERS BERGMAN LLP
430 Park Avenue, 10th Floor
New York, New York 10022
[phone]
Attorneys for Defendants-Appellants
Gagosian Gallery, Inc. and
Lawrence Gagosian

JONATHAN D. SCHILLER
JOSHUA I. SCHILLER
BOIES, SCHILLER & FLEXNER LLP
575 Lexington Avenue, 7th Floor
New York, New York 10022
[phone]
– and –
GEORGE F. CARPINELLO
BOIES, SCHILLER & FLEXNER LLP
10 North Pearl Street, 4th Floor
Albany, New York 12207
[phone]
Attorneys for Defendant-Appellant
Richard Prince

TABLE OF CONTENTS
PRELIMINARY STATEMENT ...............................................................................1
ARGUMENT .............................................................................................................6
I.

Cariou Misstates the Standard For Fair Use .........................................6

II.

Prince’s Statements About Motivation Are Not Determinative
of Whether There is Fair Use in This Case ...........................................9
A.

The Objective Indicia of Fair Use Far Outweigh the
Relevance of Statements of Intent ............................................10

B.

Cariou Misstates Prince’s Testimony .......................................14

III.

Cariou Confuses Derivative Works With Fair Use.............................16

IV.

Cariou’s Attempt To Buttress The District Court’s Erroneous
Factual Finding On Market Effect Fails..............................................18

V.

Appellants Did Not Waive Their Argument That The District
Court Erred by Failing To Examine Each Painting Individually........22

VI.

The Gagosian Defendants Are Not Liable For Contributory or
Vicarious Infringement .......................................................................24
A.

There Was No Contributory Infringement................................24

B.

There Was No Vicarious Infringement.....................................25

VII. Reversal is Required Because The District Court Failed To
Follow This Court’s Previous Directive To Apply The Ebay
Test ......................................................................................................26
CONCLUSION........................................................................................................27

i

TABLE OF AUTHORITIES
Page(s)

CASES
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006) ........................................................................passim
Bleistein v. Donaldson Lithographing Co.,
188 U.S. 239 (1903)..............................................................................................9
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994) ..........................passim
Castle Rock Entm’t Inc. v. Carol Publ’g Group. Inc.,
150 F.3d 132 ................................................................................................passim
eBay, Inc. v. MercExchange,
547 U.S. 388 (2006)........................................................................................5, 26
Eldred v. Ashcroft,
537 U.S. 186 (2003)..............................................................................................2
Elvis Presley Enters., Inc. v. Passport Video,
349 F.3d 622 (9th Cir. 2003) ..............................................................................17
Faulkner v. Nat’l Geographic Soc.,
211 F. Supp. 2d 450 (S.D.N.Y. 2002) ................................................................24
Gaylord v. United States,
595 F.3d 1364 (Fed. Cir. 2010) ..........................................................................17
Golan v. Holder,
132 S. Ct. 873 (2012)............................................................................................2
Harper & Row Publishers, Inc. v. Nation Enterprises,
471 U.S. 539 (1985)............................................................................................20
Heliotrope Gen., Inc. v. Ford Motor Co.,
189 F.3d 971 (9th Cir. 1999) ..............................................................................12

ii

Hotel Employees & Restaurant Employees Union v. City of New York Dep’t
of Parks & Recreation,
311 F.3d 534 (2d Cir. 2002) ...............................................................................12
In re Indian Palms Assocs.,
61 F.3d 197 (3d Cir. 1995) .................................................................................12
In re Merrill Lynch & Co Research Reports Sec. Litig.,
273 F. Supp. 2d 351 (S.D.N.Y. 2003) ................................................................12
Mattel, Inc. v. Walking Mountain Prods.,
353 F.3d 792 (9th Cir. 2003) ................................................................................9
Nihon Keizai Shinbun, Inc. v. Comline Business Data, Inc.,
166 F.3d 65 (2d Cir. 1999) .................................................................................24
On Davis v. The Gap, Inc.,
246 F.3d 152 (2d Cir. 2001) .................................................................................7
Ringold v. Black Entm’t Television, Inc.,
126 F.3d 70 (2d Cir. 1977) .................................................................................17
Rogers v. Koons,
960 F.2d 301 (2d Cir. 1992) .............................................................................6, 7
Salinger v. Colting,
607 F.3d 68 (2d Cir. 2010) .............................................................................5, 26
Shapiro, Bernstein & Co., Inc. v. H.L. Green Co., Inc.,
316 F.2d 304 (2d Cir. 1963) ...............................................................................25
Von Saher v. Norton Simon Museum of Art at Pasadena,
592 F.3d 954 (9th Cir. 2010) .............................................................................12
Wainwright Securities, Inc. v. Wall Street Transcript Corp.,
558 F.2d 91 (2d Cir. 1977) .................................................................................23
Yankee Publ’g Inc. v. News Am. Publ’g, Inc.,
809 F.Supp. 267 (S.D.N.Y. 1992) ......................................................................11
STATUTES
17 U.S.C.A. § 106A ...................................................................................................5
iii

Copyright Act, 17 U.S.C. § 101...............................................................................16
OTHER AUTHORITIES
D. Eklund, The Pictures Generation (2009)..............................................................8
J. Halperin, “Is Prince v. Cariou Already Having a Chilling Effect?
Contemporary Artists Speak.” ARTINFO, Feb. 1,..............................................5

iv

PRELIMINARY STATEMENT
Appellee Patrick Cariou (“Cariou”) makes little attempt to defend the
reasoning of the District Court because he recognizes that the Court erred in at
least three critical respects.
First, the District Court made the critical holding that Prince’s paintings are
“transformative only to the extent that they comment on the Photos.” (SPA-18.)
Recognizing that this was an error, Cariou concedes “appellants are correct that a
second work need not invariably comment on or criticize the original work in order
to constitute fair use.” (Opp. 46.) Indeed, the settled law, which the District Court
failed to apply and which Cariou ignores, is articulated in Blanch v. Koons, 467
F.3d 244, 251 (2d Cir. 2006) applying Campbell v. Acuff-Rose Music, Inc., 510
U.S. 569 (1994). In determining whether a second work is transformative and fair
use, a court examines whether the second work “adds something new, with a
further purpose and different character, altering the first with new expression,
meaning or message”, and whether the second work “usurps the market of the
original work.” Blanch, 467 F.3d at 253, 258 (internal quotations omitted). This is
the limiting principle which distinguishes use that is fair use from use that
infringes.
The Campbell / Blanch test is consistent with the underlying purpose of the
Copyright Act because it protects the original creator’s incentive to produce, while

1

encouraging the creation of new works; it provides the right balance between the
original and second creator. See Golan v. Holder, 132 S. Ct. 873 (2012) (fair use is
a necessary balance against the monopoly grant of copyright); see also Eldred v.
Ashcroft, 537 U.S. 186, 212 (2003) (same).
Because Prince’s paintings have a different purpose and character than
Cariou’s photographs and do not in any way diminish Cariou’s economic incentive
to produce works, Prince’s paintings are transformative and not infringing under
the Campbell / Blanch test. Both Cariou and the District Court recognize that
Prince’s goal was to create something creative and new (SPA-20; Opp. 20.)1
Cariou also concedes that Prince’s paintings “may have had different potential endusers” (Opp. 63) and there was no evidence that Prince’s paintings “usurped the
market” for Cariou’s photographs.
Recognizing that the District Court’s comment or criticism test is wrong,
Cariou expressly disavows the Blanch test (Opp. 2) and tries to erect a new test
requiring some additional “justification” for using Cariou’s works and concluding
that there is no such justification here because (1) Prince did not ask Cariou for

1

In this brief, “Opp.” Refers to the Brief for Plaintiff-Appellee; “Br.” Refers to the Brief for
Defendants-Appellants; “Photographer Br.” Refers to the Brief of Amici Curiae American
Society of Media Photographers, Inc. et al.; “Google Br.” Refers to the Brief of Amicus Curiae
Google, Inc.; “Museum Br.” Refers to the Brief for Amici Curiae the Association of Art Museum
Directors et al.; and “Warhol Br.” Refers to the brief of Amicus Curiae Andy Warhol Foundation
for the Visual Arts.
2

permission; and (2) Prince could have acquired equivalent royalty-free
photographs from the Internet. (Opp. 1, 2.)
Not surprisingly, Cariou cites no authority for his additional “justification”
test. The case law is clear that failure to seek permission is not a factor to be
considered in a fair use analysis. Further, as this Court explained in Blanch, the
issue is not whether Prince should have used someone else’s photographs or
whether he had a message about Cariou’s works. Instead the test is whether he had
a “genuine creative rationale” for using Cariou’s photographs and that such use
“advanced his artistic purposes.” 467 F.3d at 255.
Cariou erroneously argues that “justification” must come from Prince’s
testimony and that Prince’s purported refusal to describe a particular motivation for
his works is fatal to a finding of fair use. This statement is both factually and
legally wrong. Factually, Cariou misrepresents Prince’s testimony, where in detail
Prince explains how his purpose in creating paintings was different from the
purpose of Cariou’s photographs. Legally, as this Court explained in Blanch and
the Supreme Court explained in Campbell, the author of the second work “need not
label” his work nor is it necessary for the author to “state the obvious.” See Blanch
at 467 F.3d at 255 n.5; Campbell at 583 n.17. The most reliable indicia of the
different character and purpose of the two works are the objective ones, i.e., the
works themselves and how they are perceived by the public. Again, the District
3

Court ignored this objective evidence, relied only on Prince’s statements taken out
of context, construing all the evidence in favor of Cariou.
Second, the District Court, without factual support, without a trial, and after
drawing all inferences in favor of Cariou rather than Prince, found that “the market
for Cariou’s Photos was usurped by Defendants.” (SPA-30.) Athough this factual
finding was critical to the District Court’s decision, Cariou, however, does not try
to defend this finding either. To the contrary, he concedes, as he must, that
Prince’s paintings “may have had different potential end-users” (Opp. 63). As
Appellants initial brief showed, the objective market facts in the record
demonstrate that the paintings and photographs appealed to and were marketed to
entirely different markets. At the very least, it was error for the court to conclude
the contrary as a matter of law without a trial.
Recognizing that the District Court’s factual finding on the market factor
was unsupportable, Cariou attempts to set up an entirely new standard arguing that
there was harm in the “intermediate market,” i.e., the galleries. (Opp. 63.) That
concept has no precedent in copyright law and makes no economic sense. It is not
the channel through which the works travel to reach the marketplace that is
relevant, it is the market demand that the particular work is intended to satisfy. If
the second work does not usurp the market for the works of the original creator,
then there is no basis to find a copyright violation.
4

Third, Cariou concedes that the District Court failed to do a proper analysis
under eBay. Without any analysis or even reference to eBay or this Court’s
decision in Salinger, the District Court enjoined the “displaying, publishing,
advertising, promoting, selling, offering for sale, marketing, distributing or
otherwise disposing of” any of the paintings and ordered defendants to “deliver
up” all of Prince’s paintings (not merely the allegedly infringing portions) for
“impounding, destruction or other disposition, as Plaintiff determines.” (SPA-37.)
This Draconian order illustrates, better than any legal brief, the First Amendment
consequences of the District Court’s decision.2 Destroying valuable works of art by
court order cannot be in the public interest. See 17 U.S.C.A. § 106A (West)
(Congress passed the Visual Artists Rights Act for the express purpose to “prevent
any destruction of a work of recognized stature”). Nor is there any legal or factual
justification for the court to permit Cariou to sell Prince’s paintings and pocket the
proceeds.
Finally, the Court also should reject Cariou’s view that, without additional
“justification”, transformative works are nothing more than derivative works which
only the copyright owner may exploit.
2

Again, Cariou misstates the law.

The District Court’s summary judgment decision, if not reversed, will have a dramatic chilling
effect on contemporary art. Indeed, the chilling has already begun. J. Halperin, “Is Prince v.
Cariou Already Having a Chilling Effect? Contemporary Artists Speak.” ARTINFO, Feb. 1,
2012.
http://artinfo.com/news/story/758352/is-prince-v-cariou-already-having-a-chilling-effectcontemporary-artists-speak
5

Derivative works are not “transformative,” as that term is used in Campbell and
Blanch. Derivative works are nothing more than the original work in a different
form, such as a translation or an adaptation. A fair use, in contrast, has a different
character and purpose and does not usurp the copyright holder’s reasonably
expected markets. The market that Prince exploited was never the market that
Cariou occupied, nor was it one that, under any objective standard, could be
considered to be part of the “traditional” or “reasonable” markets occupied by
derivative works. Castle Rock Entm’t Inc. v. Carol Publ’g Group. Inc., 150 F.3d
132, 145 n.11.

Again, whether Prince’s paintings are “derivative” or

“transformative” is at least a question of fact that would preclude summary
judgment for Cariou.

ARGUMENT
Cariou Misstates the Standard For Fair Use

I.

Cariou concedes that “appellants are correct that a second work need not
invariably comment on or criticize the original work in order to constitute fair
use.” (Opp. 46.3) This error alone requires reversal and remand.4

3

See also Warhol Br.26-34; Google Br.4-9.
In this regard, Cariou’s reliance on the pre-Campbell decision in Rogers v. Koons, 960 F.2d 301
(2d Cir. 1992) is clearly misplaced. Cariou reads the Rogers decision inconsistently with Blanch
and Campbell. To the extent there is any inconsistency, obviously Blanch and Campbell control.
Moreover, in Rogers the Court did not view Koons sculpture as “adding something new with a
4

6

Although conceding as he must under Blanch and Campbell that the second
work need not “comment on or criticize” the original work, Cariou attempts to
nullify the holding in Blanch and Campbell by arguing that the second work is
justified only if a second work conveys some message relating to the original
work. (Opp. 41; 69-70.5)
Cariou’s argument is directly contrary to Blanch and Campbell (and contrary
to the policies and intentions underlying the Copyright Act and fair use). As this
Court emphasized in Blanch, a second artist’s “justification for the very act of his
borrowing” was satisfied by the second artist’s “statement that the use of an
existing image advanced his artistic purposes.” 467 F.3d at 255 (internal brackets
omitted). Cariou accepts, as did the District Court below, that Prince’s purpose
was for the “overall work to be creative and new.” (SPA-20.)
Like Koons in Blanch (Id. at 255), Prince appears to have had a “genuine
creative rationale” for using Cariou’s photographs and such use advanced his
artistic purpose:
• In creating the paintings, Prince took “images that fit into [his] artistic
vision” for each work. (A-750 ¶ 25.)6

further purpose and different character”, but merely as a copy of Rogers photo of the same nice
puppies.
5
Similarly, Photographer Amici make the same assertion.
6
As one commentator wrote in 2009:
In 1980, [Prince] described his working method as a kind of “playing” of
photography as “8-track,” meaning that as with a mixing board he could move
7

• In the Canal Zone series, Prince looked at “pre-existing images of all
types” to make something new, distinctive and beautiful as found in the
work by the viewer. (A-753-54 ¶ 13.)
•

“Absent from this painting is any architecture or buildings to create a
sense that nothing has survived after the apocalypse, except this man and
his guitar and music.” (A-753-54 ¶ 34.)

• Prince used images of Rastas from Yes Rasta because they looked “like
the type of man that might appear in [his] post-apocalyptic screenplay.”
(A-750 ¶ 23.)
• In making the Canal Zone series, Prince sought to make a new work of
art using what he called “ingredients.” (A-751 ¶ 26.)
It is sufficient to find fair use that Prince have a “genuine creative rationale”
for his work, that the work has a “new expression, meaning or message” and that
Prince’s work does not “usurp the market” (i.e., a substitution) for Cariou’s work.
This standard as enunciated by this Court, provides artists with a “practical”
boundary. Prince meets that standard. In any event, any suggestion that the artist
must seek the court’s approval of his motives as sufficient justification adds a
dangerous and unprecedented value judgment to the fair use determination. That is
a judgment that the courts are ill-equipped to make.
Cariou also claims that this court should not find fair use because Prince
should have substituted other images for the ones he used in creating this work.
from effect to effect, from “original copy, “ to “cropped copy,” “out-of-focus
copy,” and so on.
D. Eklund, The Pictures Generation, 1974-84 (2009).
8

The Ninth Circuit directly rejected a claim that the defendant could have used
another image to make his point.

The Court explained, “We do not make

judgments about what objects an artist should choose for their art.” Mattel, Inc. v.
Walking Mountain Prods., 353 F.3d 792, 802 n.7 (9th Cir. 2003). Indeed, as this
Court said in Blanch, “It is not, of course, our job to judge the merits of ‘Niagara,’
or of Koons's approach to art.” Blanch at 2557; see also Campbell at 582 (“It
would be a dangerous undertaking for persons trained only to the law to constitute
themselves final judges of the worth of pictorial illustrations, outside of the
narrowest

and

most

obvious

limits.”

(quoting Bleistein

v.

Donaldson

Lithographing Co., 188 U.S. 239, 25 (1903))
Prince’s Statements About Motivation Are Not Determinative of
Whether There is Fair Use in This Case

II.

Cariou argues that Prince’s paintings are not fair use of Cariou’s images
because Prince admitted he had no “message” he wanted to convey and could have
utilized stock photographs on the Internet.

Cariou’s

assertions

are

factually

incorrect because they are based upon a misrepresentation of Prince’s testimony.
They are also legally wrong both because, as discussed above, it is not necessary
for Prince to be seeking to convey a “message” concerning Cariou’s work and in

7

In describing the legs he used in Blanch, Koons admitted, “Images almost identical to them can
be found in almost any glossy magazine, as well as other media.” 467 F.3d at 255.
9

any event transformative purpose and character do not need to be articulated by the
artist.
A. The Objective Indicia of Fair Use Far Outweigh the
Relevance of Statements of Intent
The question of whether a work is transformative depends on an objective

investigation of the work itself, not on an artist’s ability to speak about the work or
verbalize its meaning. Cariou’s assertion that it would be unprecedented to take
this objective approach when an artist purportedly disavowed a transformative
purpose is flatly contradicted by the Supreme Court in Campbell.
Moreover, this Court emphasized in Blanch that an artist’s articulation of his
reasons for a work is not the “sine qua non for finding of fair use – as to satire or
more generally.” Id. At 255 n.5 (emphasis added). While an artist’s statements of
subjective purpose may assist a court in evaluating the nature of the new work, the
ultimate and most reliable test is what can “reasonably be perceived” in the work
itself (Campbell at 582) and how it is perceived in the relevant market.
This objective approach is well founded. Prince is a visual artist, not an artist
whose medium is words. In evaluating his expression, a Court should consider first
and foremost the actual speech that is on trial—in this case, his paintings, not his
testimony. To foreclose a finding of fair use based on a visual artist’s inability to
sufficiently verbalize the transformative character of his paintings in response to a
lawyer’s confusing questions, especially when that transformative character is so
10

readily apparent, would be a perversion of the policies underlying fair use. As the
Supreme Court reminded us in Campbell, quoting Judge Leval: “First Amendment
protections do not apply only to those who speak clearly.” Campbell at 583,
quoting Yankee Publ’g Inc. v. News Am.Publ’g, Inc., 809 F.Supp. 267, 280
(S.D.N.Y. 1992).
If Cariou’s standard were adopted, fair use would be determined solely by
how carefully an artist was counseled by his lawyers before he revealed his work
to the public, or even began his creative effort, rather than by how the
transformative nature of the work was “reasonably perceived.” (See Warhol Br. 38
(“Artists should not need to hire lawyers to make art”).) How, for example, under
Cariou’s test, would museums and galleries protect themselves from copyright
infringement? Should they interview artists about their “purpose” before showing
their work?
Here, it is undisputed that the works themselves make a very different
statement to the viewer. Cariou’s Yes Rasta goal was to make the “ultimate”
photography book depicting Rastafarians in their native habitat. (Opp. 8.) In
contrast, in Canal Zone, Prince transforms Cariou’s idealized photographs,
plunging them into his vision of a post-apocalyptic realm of fantasy. Prince is not
“interested in what’s actually there.” (A-165 at 358:14-15.)

11

Moreover, there is overwhelming objective evidence in the record – which
the District Court ignored – and much more that could be established at trial, to
show that the works were perceived in the marketplace as being very different.8
(Br. 8-23, 29-37, 70-71.) Given these facts, Prince’s purported refusal to ascribe
any particular message to these works cannot possibly be determinative. At the
very least, there was sufficient market evidence to at least create a question of fact
as to whether Prince’s works were transformative.
The Photographer Amici argue, contrary to Blanch and Campbell, that an
objective standard based on how the works are perceived in the marketplace would
8

Recognizing the significance of the public reaction to Prince’s works, Cariou seeks to exclude
these public reactions from the Court’s consideration arguing that they are not part of the record
below; that they are hearsay; and that they are expert testimony that should have been introduced
below. (Opp. 64-69.) Cariou is wrong on all three points. First, the statements made in the
public record about Prince’s work are not hearsay. The statements are not being introduced for
the truth of the statements, but because the statements were made. Second, they are not expert
testimony subject to cross-examination. The issue is not whether numerous art critics are
“correct” in their appraisal of Prince, but whether the appraisals represent public reaction to
Prince’s work. The public statements stand, in and of themselves, as evidence of how the public
has reacted to Prince’s work. Finally, this Court can take judicial notice of statements made in
the public record at any time, including on appeal. Hotel Employees & Restaurant Employees
Union v. City of New York Dep’t of Parks & Recreation, 311 F.3d 534, 540 n.1 (2d Cir. 2002)
(taking notice of facts presented for the first time on appeal); In re Indian Palms Assocs., 61 F.3d
197, 205 (3d Cir. 1995) (noting that a court may judicially notice facts at any stage of the
proceeding).
Indeed, courts often take judicial notice of information and statements in the public realm
where, as here, those statements are not offered for their truth but instead simply as evidence of
existence of the statements. See Von Saher v. Norton Simon Museum of Art at Pasadena, 592
F.3d 954, 960 (9th Cir. 2010) (Ninth Circuit expressly took judicial notice of “various
newspapers, magazines, and books” that were introduced to “indicate what was in the public
realm at the time, not whether the contents of those articles were in fact true”); Heliotrope Gen.,
Inc. v. Ford Motor Co., 189 F.3d 971, 981 n.18 (9th Cir. 1999) (taking judicial notice of news
articles that demonstrated market knowledge of certain information); In re Merrill Lynch & Co
Research Reports Sec. Litig., 273 F. Supp. 2d 351, 383, n.3 (S.D.N.Y. 2003) (taking judicial
notice, on a motion to dismiss, of newspaper articles for the fact of their publication).
12

require surveys or expert testimony concerning the public perception of the work.
(Photographer Br. 4.) But this case amply illustrates that such surveys and expert
evidence are unnecessary because readily available public sources evidence market
perceptions of Prince’s work. (See, e.g.,Br. 12, 15, 29, 31, 46, 50.) This is not to
suggest, as the Photographer Amici do (Photographer Br. 5), that Prince believes
that Cariou’s work is of “lesser importance” than Prince’s. That is not the issue at
all. Such value judgments are beyond the concerns of the Copyright Act or of this
Court. The question is whether Prince’s works are reasonably perceived as adding
“something new, with a further purpose and different character, altering the first
with new expression, meaning or message”.
It is ironic that the Photographer Amici rely so heavily on Campbell to assert
that the “justification” for the fair use must come from the mouth of the artist, as
opposed to the reaction from the market. (Photographer Br. 14-15.) A reading of
Campbell demonstrates that the Court based its decision upon the fact that the 2
Live Crew recording, by its very nature, could be reasonably perceived to be a
parody of the Roy Orbison original, and that the Court did not rely upon the selfserving statements in the defendants’ affidavit about the purported purpose of the
song. See Campbell at 581-83.
Finally, Cariou suggests that it is necessary that the justification for fair use
come from testimony of the artist “in order to prevent post hoc rationalizations of
13

the type attempted on this appeal.” (Opp. 72.) This argument is also ironic
because in every case that Cariou cites, in which the artist attempts to provide an
articulation on this purpose, that articulation is always post hoc, either in the form
of affidavits or deposition testimony. What is not post hoc is the work itself.
B. Cariou Misstates Prince’s Testimony
Like the District Court, Cariou takes Prince’s statements out of context to
create a false impression of Prince’s intentions in creating his paintings. For
example, Cariou suggests that Prince took his images solely because he did not
want to take his own Rastafarian photos. (Opp. 9.) But this distorts Prince’s
artistic philosophy and the artistic genre of which he is a prime example. As
shown above and in Appellants’ main brief (Br. 8-20, 61-63.), Prince’s feels that
an essential feature of his art is using existing images to which he gives new
meaning and expression.
Furthermore, the District Court ignored Prince’s clear statements indicating
that he did have a transformative purpose in using Cariou’s imagery. For example,
the District Court relied heavily on its conclusion that Prince had “no interest in the
original meaning of the photographs he uses.” (SPA-18.) But in fact, Prince
repeatedly spoke of how ignoring the original artist’s intent was part of his strategy
of transforming the work: “there’s many interpretations about any particular image.
But this just happens to be mine. I know that that’s not the original intent of the

14

image, but I don’t have any-I don’t have any really interest in what the original
intent is because my-because what I do is I completely try to change it into
something that’s completely different.”

(A-496 at 337:24-338:8.)

Taken in

context, Prince’s statement becomes evidence that his reuse of the original images
“adds something new, with a further purpose or different character, altering the
first with a new expression, meaning, or message.” Campbell at 579.9
Cariou also denigrates Prince’s work by quoting out of context statements
that the paintings were done very quickly. It is certainly true that Prince executes
his works quickly, and that he believes that results in a superior product. (A-15051 at 273:20-274:10.) But Prince had been thinking about the work for at least
three years. The “starting point” for the paintings was Prince’s idea for the Eden
Rock screenplay and a 2005 visit that Prince took to Panama. (A-747 ¶ 16, 748 ¶
19.)

Thereafter, as Prince testified, he experimented with different items

concerning the Rastafarians for two or three years. (A-129 at 150:25-151:13; A748 ¶ 18.)

9

Cariou urges that Prince “admitted that he could have instead have used royalty-free stock
photos.” (Opp. 12.) That misrepresent’s Prince’s testimony. In fact, Prince was asked whether
he was aware that royalty-free stock photos were on the Internet, and he testified that he was not.
Cariou’s attorney asked, over Defendants’ attorney’s objections as speculative, whether he would
have used them if he was aware of them, and he simply said, it was “possible.” (A-154 at 286:210; A-155 at 290:13-292:9.) But, in any event, as noted above, Prince does not have to “justify”
using Cariou’s photographs rather than someone else’s photographs as long as he “adds
something new, with a further purpose and different character, altering the first with new
expression, meaning or message”.
15

III.

Cariou Confuses Derivative Works With Fair Use
Cariou seeks to equate transformative works with derivative works and then

to argue that because the first artist has the exclusive right to exploit all derivative
works subsequent transformative works do not constitute fair use. This argument
obviously proves too much, because it would, if followed, logically eliminate
transformative works as a category of fair use. Moreover, Cariou’s argument, like
the error of the District Court (Opp. 45 (quoting SPA-15-16)) misinterprets this
Court’s holding in Castle Rock Entertainment, Inc. v. Carol Publishing Group,
Inc., 150 F.3d 132 (2d Cir. 1998). In Castle Rock, this Court explained that the
term “transformed” in the definition of a derivative work in the Copyright Act, 17
U.S.C. § 101 means something very different from the term “transformative” when
applied to fair use. As this Court explained:
Although derivative works that are subject to the author’s
copyright transform an original work into a new mode of
presentation, such works – unlike works of fair use – take
expression for purposes that are not “transformative.”
Id. at 143. As the examples given in the Copyright Act demonstrate, a derivative
work is one that replaces the original work using a new mode of presentation such
as a translation, dramatization, fictionalization or motion picture. See 17 U.S.C. §
101 (noting that works “consisting of editorial revisions [and] annotations” are
derivative works). The derivative work serves the same purpose and the same
market as the original work, but in a different form. For such works, the copyright
16

holder is entitled to a license because those derivative works constitute the
“traditional, reasonable, or likely to be developed markets” that would be expected
to belong to the copyright holder.

Castle Rock at 145 n.11.

In contrast, a

copyright holder is not entitled to demand a license for those works that constitute
something new, with a different character and purpose.
In Castle Rock, the trivia book based upon the show Seinfeld was clearly a
derivative work and not fair use because its purpose was to “satiate” the exact
same market as the Seinfeld television program. The defendant claimed that his
work was designed to critique, expose and comment on the Seinfeld show. But
that rationale was rejected by this Court because the work, on its face, fulfilled the
same function as the original show, i.e., to entertain aficionados of the Seinfeld
program. Id. at 144. Here, in contrast, the works appeal to entirely different
markets and artistic tastes.10
Finally, Cariou and the Photographer Amici argue that Prince deprived
Cariou of a derivative-works royalty. But this Court expressly warned against this
circular reasoning; in every fair use case, the original creator is deprived of a
theoretical royalty from the second creator. Castle Rock at 145, n.11. Thus, the
test for fair use and the boundary line between fair use and derivative works is a
10

For this same reason, the other precedents Carious relies on are also inapposite. In each of
these cases, the court found that the second use was not transformative because the work was not
used for a different purpose or character. See Ringold v. Black Entm’t Television, Inc., 126 F.3d
70 (2d Cir. 1977); Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622 (9th Cir. 2003);
Gaylord v. United States, 595 F.3d 1364, 1374 (Fed. Cir. 2010).
17

practical one: is the second work occupying the market that would be one that’s
“traditional, reasonable or likely to be developed” by the original work? Id. If not,
there is no actionable damage suffered by the original creator.
IV.

Cariou’s Attempt To Buttress The District Court’s Erroneous
Factual Finding On Market Effect Fails
The District Court, ignoring substantial objective evidence in the record (Br.
at 8-23, 29-37 and 70-71) and relying upon the post hac rationale of one gallery
owner, concluded that Prince’s paintings “unfairly damaged both the actual and
potential markets for Cariou’s original work and the potential market for derivative
use licenses for Cariou’s original work.” (SPA-30.) The Court made this finding
of fact construing all the evidence in favor of Cariou and without a trial. This
finding is clearly erroneous as to both the actual and the potential markets for
Cariou’s work. At the very least, there was sufficient evidence in the record for the
issue of market usurpation to go to trial. Id.
As this Court enunciated in Blanch, in determining fair use, the court looks
at whether the second work “usurps the market of the original work.” Blanch at
258 (quoting NXIVM Corp. at 481-82). Abandoning any attempt to defend the
District Court’s market effect finding, Cariou expressly concedes that his work and
Prince’s work appeal to different markets. (Opp. 63.) He argues, however, that
there was market harm here because there was harm in the “intermediate market,”
i.e., art galleries. (Id.) But the criteria for determining fair use has never been
18

based upon whether the two works occupy the same channel of distribution.
Unequivocally, 2 Live Crew’s parody and Orbison’s song both were available for
sale in record stores and, undoubtedly, are both available on the Internet through
online music services. Yet, like Koons’s and Blanch’s images, they clearly fill
different market niches; one does not “usurp” demand, or provide a substitute, for
the other.
Cariou concedes as much when he acknowledges that the two works may
have “different potential end-users.” (Opp. 63). Indeed, even if they had the same
end users, they would still serve different markets. Prince’s paintings did not
supplant Cariou’s photographs. (Br. 8-23, 29-37, 70-71.) Cariou sold only four
reprints, to friends for €1,500 – €2,000 each depending on size (A-583. at 158:819), and his book was out of print at the time Prince’s paintings came on the
market. (Br. 20-21.) Prince’s paintings commanded immediate attention and
substantial purchase prices. (Br. 31, 37, 70-71.) The two works simply were not
competing in the same market and did not effect each others’ value.
The District Court and Cariou rest their entire position on the testimony of
one person – Christiane Celle, whose testimony is contradictory and inconclusive
and therefore certainly not enough to find no material question of fact on the
market usurpation prong. Even if Celle is to be entirely believed, her testimony
shows nothing more than the fact that she, one soon-to-open gallery proprietor, for
19

some period of time, had some interest in showing Cariou’s work, and she felt
uncomfortable doing so when she learned about Prince’s show at a Gagosian
Gallery. Celle and Cariou had never agreed to have a show, nor did either of them
devote any significant effort to developing a show. Cariou did not even bother to
return her communications until well after he commenced this litigation and
needed Celle as a witness. Indeed, although Celle had expressed interest in doing a
show of Cariou’s work other than Yes, Rasta, neither she nor Cariou ever followed
through and no such show was done. (Br. 21-23, 68-70.)
Such subjective testimony in which Celle describes her own motivations for
her actions is highly unreliable, especially given her hostility towards Prince.
More reliable evidence is the objective market evidence. Would the result in
Campbell have been different if Roy Orbison produced the testimony of someone
who asserted that she chose not to book Orbison for a concert because of the
release of the 2 Live Crew parody? Of course not. The basic difference between
the two works and their obviously different markets render such individual
subjective testimony irrelevant. Yet, the testimony of one person is all that the
District Court relied on to grant summary judgment on the market usurpation
factor.
Cariou’s reliance (Opp. 63.) on Harper & Row Publishers, Inc. v. Nation
Enterprises, 471 U.S. 539 at 542-43, 567 (1985) is entirely misplaced. There,
20

President Ford suffered direct and immediate market harm because the Nation’s
premature publication of excerpts of his memoirs led to Time magazine’s
cancellation of its agreement to serialize his book.

Ford suffered actual,

demonstrable harm. 471 U.S. at 566-68. Here, in contrast, Cariou shows no
impact on actual sales, which had ceased, before Prince’s paintings entered the
market.
At best, from Cariou’s standpoint, there is a “silent record” (Campbell at
594) – of any economic effect on Cariou’s potential market for derivative use
licenses.

The District Court draws its conclusion of adverse impact on this

potential market out of whole cloth. (SPA-30.) As the Supreme Court found in
Campbell, “there was no evidence that a potential rap market was harmed in any
way by 2 Live Crew’s parody” (id. at 593-94), and it rejected the Sixth Circuit’s
presumption of any such harm. The Supreme Court noted that “a silent record on
an important factor bearing on fair use disentitled the proponent of the defense, 2
Live Crew, to summary judgment.” Id. at 594. The Supreme Court therefore
remanded the matter for an evidentiary determination on this important issue.
Similarly here, there is nothing in the record to show that Prince’s works in any
way affected Cariou’s potential market for derivative use licenses.

21

Appellants Did Not Waive Their Argument That The District
Court Erred by Failing To Examine Each Painting Individually.

V.

Cariou argues that Appellants waived their argument that the District Court
should have examined Prince’s works individually simply because they crossmoved for summary judgment, seeking a determination that all the works were fair
use. But such a position is clearly not inconsistent with the argument that the
Court should have made that determination, at a minimum, after examining
Prince’s actual works on a painting-by-painting basis. Indeed, Prince offered in
evidence his view of the purpose and effect of each of the individual Paintings,
through a 66-paragraph affidavit and composite exhibit, as well as a supplementalparagraph affidavit, which described the creation of each of Prince’s individual
Paintings in detail and compared each Prince painting with the Cariou photograph
from which it was borrowed. (A-773-811, 933-36.)
In addition, Appellants’ counsel offered to have the Court view each of the
individual Paintings, but the District Court declined that invitation. The District
Court’s refusal to view the actual paintings, some of which are massive in size,11 in
which Prince collaged various images, painted over and around others, and
superimposed images over images, deprived the court the ability to reasonably
perceive—as a jury will at trial—each of the paintings’ transformative nature.
11

For example, “Cheese and Crackers” (A-781) is over 7 ½ feet high and almost 12 feet wide.
“Mr. Jones” (A-782) is over 7 feet high and more than 10 feet wide and “Zipping the System”
(A-786) is almost 6 feet high and almost 10 feet wide.
22

Cariou paradoxically argues that it makes no difference whether the Court
applied the fair use test to each of the Paintings individually because “appellants
would be liable for copyright infringement if even one of the Paintings infringes
Cariou’s copyright and is not fair use.”

(Opp. 73.)

It obviously makes a

tremendous difference; if this Court finds that only a small subset of the Paintings
are actual infringements, the District Court’s enjoining of the sale, distribution or
display of all the works and its order that all the Paintings to be rendered up for
destruction are clearly erroneous.
Finally, Cariou is simply wrong when he asserts that “in this Circuit,
multiple similar acts of copying are viewed in the aggregate and a separate
discussion of each infringing act is not necessary.” The cases he cites simply do
not support that proposition and are factually inapt. For example, Carious cites this
Court’s discussion in Castle Rock, that dealt with the issue of substantial similarity
for determining infringement, not fair use. Moreover, the issue in Castle Rock was
whether one quiz book infringed on all the Seinfeld episodes. In Wainwright
Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91 (2d Cir. 1977), the
issue was whether a news service that consistently abstracted the plaintiff’s
analysts’ reports was copyright infringement. There was no argument that the
abstracts should have been reviewed individually because it was undisputed that
each abstract summarized all salient facts in the plaintiff’s analytical reports. The
23

same was true in Nihon Keizai Shinbun, Inc. v. Comline Business Data, Inc., 166
F.3d 65 (2d Cir. 1999).
VI.

The Gagosian Defendants Are Not Liable For Contributory or
Vicarious Infringement
A. There Was No Contributory Infringement
Cariou concedes that the Gagosian Defendants cannot be found liable for
contributory infringement absent knowledge of Prince’s (alleged) infringing
activity. Thus, Cariou does not even try to defend the District Court’s incorrect
holding that Prince’s mere reputation as an appropriation artist was a valid basis
for finding contributory infringement. Instead, Cariou argues that Gagosian should
have learned about the infringement soon after December 11, 2008, when Cariou
sent a cease and desist letter to Gagosian.

(Opp. 77.)

Cariou’s theory of

contributory infringement is likewise invalid.
Mere receipt of a cease and desist letter is insufficient to create “knowledge”
of a primary infringement, especially where the art in question is, or might be, a
fair use.

Cf. Faulkner v. Nat’l Geographic Soc., 211 F. Supp. 2d 450, 475

(S.D.N.Y. 2002) aff'd, 409 F.3d 26 (2d Cir. 2005) (no knowledge can be imputed,
where question of infringement by primary defendant turned on “complex analysis
of contractual arrangements”.) Otherwise, copyright holders would have absolute
power to shut down any art show merely by alleging that a work is infringing.
While galleries are commercial establishments, they serve an important public
24

purpose, because they are a critical channel for displaying and introducing new
works. Holding a gallery liable because it incorrectly predicted the outcome of a
fair use analysis would create an undue chilling effect on the creation of new art.
B. There Was No Vicarious Infringement.
Cariou tacitly concedes that there can be no vicarious infringement absent a
respondeat superior relationship, akin to employer/employee or principal/agent.
Indeed, Cariou relies on Shapiro, Bernstein & Co., Inc. v. H.L. Green Co., Inc.,
316 F.2d 304, 307-08 (2d Cir. 1963), a piracy case, where the relationship between
the parties was found to be similar to an employer/employee model. Id. at 308.
Specifically, in Shapiro, the vicarious infringer (a store owner) had an express
contractual right to supervise all activities of the primary infringer (a
concessionaire), impose a code of conduct on it, and terminate its employees “in its
unreviewable discretion.” Id. at 306.
No such facts exist in this record. The uncontroverted record instead shows
that Prince operated and created his art outside Gagosian’s contractual or practical
supervision or control.

Cariou’s unsubstantiated argument that Gagosian

nevertheless had a free-floating obligation to “police infringing conduct” (Opp.
76), even outside a respondeat superior relationship, finds no support in existing
case law. From a practical perspective, it is unworkable, especially in a case
involving original artwork and a credible argument of fair use, where it puts an

25

inappropriate burden on gallery owners, who have no control over the creation of
works, to act as censors after a work is created, based solely on a possibility that a
piece of art might later be found to be infringing.
VII.

Reversal is Required Because The District Court Failed To Follow
This Court’s Previous Directive To Apply The Ebay Test
In Salinger v. Colting, 607 F.3d 68, 77-78 (2d Cir. 2010), this Court

reversed and remanded this District Court’s decision granting an injunction
because the District Court did not follow the directives of the Supreme Court in
eBay, Inc. v. MercExchange, 547 U.S. 388, 391 (2006). Appellants respectfully
submit that, the District Court did not follow the Salinger directive in the present
case as well.

Indeed, the District Court gave so little consideration to the

injunction that it applied the injunction to a painting that does not use any of
Cariou’s work. It also gave no consideration to the de minimus copying in several
other paintings.
Careful consideration of the eBay factors is particularly important here,
where the public has amply demonstrated its interest in, and the value it places on,
Prince’s paintings. Cariou cannot show imminent and irreparable harm, because
his works have been in the marketplace for years and his book has been out of print
for years. See Warhol Br. at 45-46. Ordering Prince’s paintings delivered for
destruction serves, and can serve, no purpose.

It provides no benefit to the

Plaintiff-Appellee, and it is clearly not in the public interest.
26

Cariou inexplicably states that, without an injunction, “appellants will be
free to sell the 21 unsold Paintings for millions of dollars without compensating
Cariou.” (Opp. 78.) This statement is inexplicable because, if infringement is
found, the Copyright Act clearly provides Cariou with a monetary remedy, either
in the form of statutory damages or compensation for that portion of the value of
the paintings contributed by Cariou, an amount to be determined at trial. (If
Prince’s works were found after trial not to be transformative and fair use, Cariou
might be awarded the amount of a hypothetical reasonable royalty license. See On
Davis v. The Gap, Inc., 246 F.3d 152, 172 (2d Cir. 2001). Such an award would
clearly provide Cariou with more benefit than a bonfire of the paintings. There is
also no justification for permitting Cariou to sell Prince’s creations and pocket the
proceeds.

CONCLUSION
For all the foregoing reasons, the Decision and Order below should be
vacated.

Dated:

New York, NY
February 22, 2012

27

Respectfully submitted,

\s\ Hollis Gonerka Bart
Hollis Gonerka Bart
Chaya Weinberg-Brodt
Dara Hammerman
Azmina N. Jasani
WITHERS BERGMAN LLP
430 Park Avenue, 10th Floor
New York, NY 10022
[phone]

/s/ Jonathan D. Schiller
Jonathan D. Schiller
Joshua I. Schiller
BOIES, SCHILLER & FLEXNER LLP
575 Lexington Avenue, 7th Floor
New York, NY 10022
[phone]
-andGeorge F. Carpinello
BOIES, SCHILLER & FLEXNER LLP
10 North Pearl Street, 4th Floor
Albany, NY 12207
[phone]

Attorneys for Appellants
Gagosian Gallery, Inc. and
Lawrence Gagosian

Attorneys for Appellant
Richard Prince

28

CERTIFICATE OF COMPLIANCE

Pursuant to Fed. R. App. P. 32(a)(7)(C), I hereby certify that this brief was
produced in Times New Roman (a proportionately spaced typeface), 14-point type
and contains 6,852 words (as calculated by the Microsoft Word word processing
system’s word count function).

Dated:

February 22, 2011
New York, NY

\s\ Hollis Gonerka Bart

/s/ Jonathan D. Schiller

Hollis Gonerka Bart
Chaya Weinberg-Brodt
Dara Hammerman
Azmina N. Jasani
WITHERS BERGMAN LLP
430 Park Avenue, 10th Floor
New York, NY 10022
[phone]

Jonathan D. Schiller
Joshua I. Schiller
BOIES, SCHILLER & FLEXNER LLP
575 Lexington Avenue, 7th Floor
New York, NY 10022
[phone]
-andGeorge F. Carpinello
BOIES, SCHILLER & FLEXNER LLP
10 North Pearl Street, 4th Floor
Albany, NY 12207
[phone]

Attorneys for Appellants
Gagosian Gallery, Inc. and
Lawrence Gagosian

Attorneys for Appellant
Richard Prince

29

STATE OF NEW YORK
COUNTY OF NEW YORK

)
)
)

ss.:

AFFIDAVIT OF SERVICE
BY OVERNIGHT EXPRESS
MAIL

I,
, being duly sworn, depose and say that deponent is not a
party to the action, is over 18 years of age and resides at the address shown above or at
On February 22, 2012
deponent served the within: Joint Reply Brief for Defendants-Appellants
upon:
Daniel J. Brooks
Eric A. Boden
Schnader Harrison Segal & Lewis, LLP
Attorneys for Plaintiff-Appellee
140 Broadway, Suite 3100
New York, New York 10005
[phone]

the address(es) designated by said attorney(s) for that purpose by depositing 2 true
copy(ies) of same, enclosed in a postpaid properly addressed wrapper in a Post Office
Official Overnight Express Mail Depository, under the exclusive custody and care of the
United States Postal Service, within the State of New York.
This document was also submitted 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 February 22, 2012

Maryna Sapyelkina
Notary Public State of New York
No. 01SA6177490
Qualified in Kings County
Commission Expires Nov. 13, 2015
Job # 240641