Cariou v. Prince

Filing 2

DISTRICT COURT MEMORANDUM AND ORDER, dated 03/18/2011, RECEIVED.[248066] [11-1197]

Case 1:08-cv-11327-DAB Document 71

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USDCSDNY
DOCUME1't~

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

------------------------------------X

PATRICK CARIOU,

ELECfRONlCALLY mED
DOC#:
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DATE FI:=":LS:::::::D:-:...... ;y-,/....,../-Ij-.
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Plaintiff,
-against-against­

08 Civ. 11327 (DAB)
MEMORANDUM & ORDER

RICHARD PRINCE, GAGOSIAN GALLERY, INC.,
LAWRENCE GAGOSIAN, and RIZZOLI
INTERNATIONAL PUBLICATIONS, INC.
Defendants.

------------------------------------x
DEBORAH A. BATTS, United States District Judge.

This matter is now before the Court on cross-motions for
summary judgment.

Defendants Richard Prince, Gagosian Gallery,

Inc., and Lawrence Gagosian seek a determination that their use
of Plaintiff's copyrighted photographs was a fair use under the
relevant section of the Copyright Act, 17 U.S.C.

§§

107(1)-(4),

and that Plaintiff's claim for conspiracy to violate his rights
under the Copyright Act is barred by law. 1

Plaintiff seeks

summary judgment in his favor on the issue of liability for
copyright infringement.
For reasons detailed herein, the Court finds

(1) that

lNamed Defendant Rizzoli International Publications, Inc.
was voluntarily dismissed from this action by stipulation of
dismissal entered by the Court on February 5, 2010.
1

I I

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Defendants' infringing use of Plaintiff's copyrighted photographs
was not fair use under the Copyright Act; and (2) that
Plaintiff's conspiracy claim is barred by law.

Accordingly,

Defendants' Motion is GRANTED in part, and Plaintiff's Motion is
GRANTED in its entirety.

I. BACKGROUND
Familiarity with the affidavits, declarations, deposition
transcripts, and other evidence before the Court is assumed, and
the undisputed facts are set forth here only briefly.
Plaintiff Patrick Cariou ("Plaintiff" or "Cariou") is a
professional photographer. PC Tr. 45-46, 279-80. 2 Cariou spent
time with Rastafarians in Jamaica over the course of some six
years, gaining their trust and taking their portraits. PC Tr. 34­
3448.

In 2000, Cariou published a book of photographs which were

taken during his time in Jamaica. Brooks Decl. Ex. L. The book,
titled Yes, Rasta and released by PowerHouse Books ("Yes,
Rasta"), contained both portraits of Rastafarian individuals (and
others) in Jamaica and landscape photos taken by Cariou in

2"PC. Tr.," used herein, refers to the transcript of Patrick
Cariou's deposition testimony. "RP Tr.," "CC Tr.," "LG Tr." and
"AM Tr." refer to the deposition transcripts of Richard Prince,
Christiane CelIe, Lawrence Gagosian, and Alison McDonald,
respectively.
Similarly, "RP. Aff." refers to the affidavit
filed by Richard Prince.
2

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Jamaica. 3 Id.
Cariou testified at length about the creative choices he
made in determining which equipment to use in taking his photos,
the staging choices he made when composing and taking individual
photos, and the techniques and processes he used (and directed
others to use) when developing the photos.
66, 133-34, 137-38, 143-44, 152, 169.

~,

PC Tr. 49­
49-

Cariou also testified that

he was heavily involved in the layout, editing, and printing of
the Yes, Rasta book. Id.; PC Tr. at 180-208. According to the
colophon page included in Yes, Rasta, Cariou is the sole
copyright holder in the images that appear in Yes, Rasta. Brooks
Decl. Ex. L.
Defendant Richard Prince ("Prince") is a well-known
"appropriation artist" who has shown at numerous museums and
other institutions, including a solo show at the Guggenheim
Museum in New York City. RP Aff.
Gallery, Inc.

~~

3, 5.

Defendant Gagosian

(the "Gallery") is an art dealer and gallery which

represents Prince and markets the artworks he creates. LG Tr. 22­
2225; RP Tr. 270, 294.

Defendant Lawrence Gagosian ("Gagosian";

collectively with the Gallery, the "Gagosian Defendants") is the

3The portraits and landscape photographs Cariou published in
Yes, Rasta are collectively referred to herein as the "Photos,"
"Cariou's Photos," or the "Yes, Rasta Photos."
3

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President, founder, and owner of the Gagosian Gallery, Inc.

LG

Tr. at 16. 4
In or about December 2007 through February 2008, Prince
showed artwork at the Eden Rock hotel in St. Barts. See RP Tr. at
187-88.

Among the works shown was a collage entitled Canal Zone

(2007), which consisted of 35 photographs torn from Yes, Rasta

and attached to a wooden backer board. See RP Decl. Compo Ex. A.
at 20-24; see also RP Tr. at 179-80.

Prince painted over some

portions of the 35 photographs, and used only portions of some of
the photos, while others were used in their entirety or nearly
so. See generally RP Decl. Compo Ex. A at 20-24.

Though Canal

Zone (2007) was not sold, Prince sold other artworks at that show
through Gagosian. RP Tr. 187-88, 197-98.

Portions of Canal Zone

(2007) were reproduced in a magazine article about Prince's Canal

Zone show at the Gagosian Gallery. RP Tr. at 198-201. Prince
intended that Canal Zone (2007) serve as an introduction to the
characters he intended to use in a screenplay and in a planned
series of artworks, also to be entitled Canal Zone. RP Aff.

~

48.

Prince ultimately completed 29 paintings in his contemplated
Canal Zone series, 28 of which included images taken from Yes,

4Gagosian testified that he "may have given" "a small piece"
of the Gallery to his sister. LG Tr. at 17.
4

I

I

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Rasta. 5 See RP Decl. Compo Ex. A.

Filed 03/18/11 Page 5 of 38

Some of the paintings, like

"Graduation (2008)" and "Canal Zone (2008)," consist almost
entirely of images taken from Yes, Rasta, albeit collaged,
enlarged, cropped, tinted, and/or over-painted, while others,
like "lIe de France (2008)" use portions of Yes, Rasta Photos as
collage elements and also include appropriated photos from other
sources and more substantial original painting. 6 See RP Decl.
Compo Ex. A (comparing Prince paintings with Cariou Photos used
therein); compare Brooks Decl. Ex. M (Canal Zone catalog) with
Brooks Decl. Ex. L (Yes, Rasta book).

In total, Prince admits

using at least 41 Photos from Yes, Rasta as elements of Canal
Zone Paintings. RP Decl.

~

24.

The Gallery showed 22 of the 29 Canal Zone paintings at one
of its Manhattan locations from November 8, 2008 to December 20,
2008. Brooks Decl. Ex. M at 1; LG Tr. at 25, 50; RP Aff. at Ex.

A.

The Gallery also published and sold an exhibition catalog

from that show, similarly entitled Canal Zone, which contained

5The allegedly infringing works in the Canal Zone series,
together with Canal Zone (2007), are referred to collectively
herein as the ~Paintings," "Prince's Paintings," or the "Canal
Zone Paintings."
GIn reaching its determination herein, the Court has
examined fully the exhibits and reproductions provided by the
Parties and has compared the 29 Canal Zone paintings with the
Yes, Rasta Photos. The Court sees no need to describe each work
in great detail.
5

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reproductions of many of the Canal Zone Paintings (including some
Paintings which were not shown at the Gallery) and photographs of
Yes, Rasta Photos in Prince's studio. See Brooks Decl. Ex. M
(Canal Zone exhibition catalog).

The Gagosian employee who was

the Managing Editor of the catalog testified that she never

inquired as to the source of the Rastafarian photographs
contained therein.

AC Tr. at 42.

Other than by private sale to individuals Cariou knew and
liked, the Photos have never been sold or licensed for use other
than in the Yes, Rasta book. PC Tr. 86-94. However, Cariou
testified that he was negotiating with gallery owner Christiane
CelIe ("CelIe"), who planned to show and sell prints of the Yes,
Rasta Photos at her Manhattan gallery, prior to the Canal Zone
show's opening. PC Tr. at 96-98; see CC Tr. 39-40, 42-44.

Cariou

also testified that he intended in the future to issue artists'

editions of the Photos, which would be offered for sale to
collectors. PC Tr. 92-94; 97-98.
CelIe originally planned to exhibit between 30 and 40 of the
Photos at her gallery, with multiple prints of each to be sold at
prices ranging from $3,000.00 to $20,000.00, depending on size.
CC Tr. at 40-42, 46, 66-68, 127-28, 153-55.

She also planned to

have Yes, Rasta reprinted for a book signing to be held during
the show at her gallery. CC Tr. at 87-88, 155-56.
6

However, when

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CelIe became aware of the Canal Zone exhibition at the Gagosian
Gallery, she cancelled the show she and Cariou had discussed. PC
Tr. at 98; CC Tr. 63-64, 71. CelIe testified that she decided to
cancel the show because she did not want to seem to be
capitalizing on Prince's success and notoriety, CC Tr. at 89,
105-06, and because she did not want to exhibit work which had
been "done already" at another gallery, CC Tr. 89, 91, 105.

II. DISCUSSION
A. Summary Judgment
A district court should grant summary judgment when there is
"no genuine issue as to any material fact," and the moving party
is entitled to judgment as a matter of law.

Fed. R. Civ. P.

56{c); see also Hermes Int'l v. Lederer de Paris Fifth Ave.,
Inc. , 219 F.3d 104, 107 (2d Cir. 2000). Genuine issues of
material fact cannot be created by mere conclusory allegations;
summary judgment is appropriate only when, "after drawing all
reasonable inferences in favor of a non-movant, no reasonable
trier of fact could find in favor of that party." Heublein v.
United States, 996 F.2d 1455, 1461 (2d Cir. 1993)

{citing

Matsushita Elec. Industr. Co. v. Zenith Radio Corp., 475 U.S.
574, 587-88 (1986».
In assessing when summary judgment should be granted, "there
7

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must be more than a 'scintilla of evidence' in the non-movant's
favor; there must be evidence upon which a fact-finder could
reasonably find for the non-movant." Id.
Liberty Lobby, Inc., 477 U.S. 242, 252

(citing Anderson v.

(1986». While a court

must always "resolv[e] ambiguities and draw [ ] reasonable
inferences against the moving party," Knight v. U.S. Fire Ins.
Co., 804 F.2d 9,11 (2d Cir. 1986)

(citing Anderson, 477 U.S. at

252), the non-movant may not rely upon "mere speculation or
conjecture as to the true nature of the facts to overcome a
motion for summary judgment." Id. at 12. Instead, when the moving
party has documented particular facts in the record, "the
opposing party must set forth specific facts showing that there
is a genuine issue for trial."

Williams v. Smith, 781 F.2d 319,

323 (2d Cir. 1986) (quotation omitted). Establishing such facts
requires going beyond the allegations of the pleadings, as the
moment has arrived "to put up or shut up."
Univ., 224 F.3d 33, 41 (2d Cir. 2000)

Weinstock v. Columbia

(citation omitted).

Unsupported allegations in the pleadings thus cannot create a
material issue of fact. Id.
A court faced with cross-motions for summary judgment need
not "grant judgment as a matter of law for one side or the
other," but "'must evaluate each party's motion on its own
merits, taking care in each instance to draw all reasonable
8

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inferences against the party whose motion is under
consideration.'" Heublein, Inc. v. united States, 996 F.2d 1455,
1461 (2d Cir. 1993)

(guoting Schwabenbauer v. Bd. of Educ. of

Olean, 667 F.2d 305, 313-14

(2d Cir. 1981)}.

To prevail on a copyright infringement claim, two elements
must be proven:

(1) ownership of a valid copyright, and (2)

copying of constituent elements of the work that are original.
See Harper & Row, 471 u.S. at 548; Feist Publ'ns., Inc. v. Rural
Tel. Servo Co., Inc., 499 US at 348, 363

(1991)

(holding that

alphabetical arrangement of names in telephone directory was not
protected by copyright, since alphabetical arrangement uis not
only unoriginal, it is practically inevitable."). To be
Uoriginal," a copyrighted work must have been independently
created by the author and must possess Uat least some minimal
degree of creativity," although Uthe requisite level of
creativity is extremely low; even a slight amount will suffice."
Id. at 345. uThe vast majority of works make the grade quite
easily, as they possess some creative spark,
crude, humble or obvious' it might be." Id.

'no matter how
(citation omitted).

U[T]he applicability of [the fair use defense to copyright
infringement] presents mixed questions of law and fact," Arista
Records, LLC v. Doe 3, 604 F.3d 110 (2d Cir. 2010)

9

(citing Harper

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& Row Pubs., Inc. v. Nation Enters., 471 U.S. 539, 560 (1985}),
but may nevertheless be determined on a motion for summary
judgment where the record contains facts sufficient to evaluate
each of the statutory factors, Harper & Row at 560.

B. Copyright in the Photos
Cariou's ownership of a valid copyright in the Photos is
undisputed. However, Defendants assert that Cariou's Photos are
mere compilations of facts concerning Rastafarians and the
Jamaican landscape, arranged with minimum creativity in a manner
typical of their genre, and that the Photos are therefore not
protectable as a matter of law, despite Plaintiff's extensive
testimony about the creative choices he made in taking,
processing, developing, and selecting them.7
Unfortunately for Defendants, it has been a matter of
settled law for well over one hundred years that creative
photographs are worthy of copyright protection even when they
depict real people and natural environments.

See,~,

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60 {1884}

7Defendant's arguments concerning whether ideas can be
protected by copyright are irrelevant to this case: Plaintiff
seeks recourse for Prince's use of his original creative works,
not for any use of or infringement on the ideas they portray.
10

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(photographic portrait of Oscar Wilde was original creative work,
since photographer posed the subject, selected his clothing,
background, light and shade, and "suggest[ed] and evok[ed] the
desired expressionfl)i Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.
1992)

{"Elements of originality in a photograph may include

posing the subjects, lighting, angle, selection of film and
camera, evoking the desired expression, and almost any other
variant involved."}, cert. denied, 506 U.S. 934 (1992); Mannion
v. Coors Brewing Co., 377 F. Supp. 2d 444,450 (S.D.N.Y. 2005)
("Almost any photograph 'may claim the necessary originality to
support a copyright.'fl)

(citation omitted); Eastern Am. Trio

Prods., Inc. v. Tang Elec. Corp., 97 F. Supp. 2d 395, 417
(S.D.N.Y. 2000)

(photographs of "common industrial items" were

protectable)i Monster Comm.'s, Inc. v. Turner Broad. Sys. Inc.,
935 F. Supp. 490, 494 (S.D.N.Y. 1996)

("photographic images of

actual people, places and events may be as creative and deserving
of protection as purely fanciful creations").
Accordingly, Cariou's Photos are worthy of copyright
protection.

C. Fair Use
From the infancy of copyright protection, some opportunity
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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. Acuff-Rose Music,
Inc., 510 U.S. 569, 575 (1994)

(quoting U.S. Const., Art. I,

§

8,

cl. 8). At the Constitutional level, while the "Copyright Clause
and the First Amendment [are] intuitively in conflict,

[they]

were drafted to work together to prevent censorship" such that
"the balance between the First Amendment and copyright is
preserved, in part, by the idea/expression dichotomy and the
doctrine of fair use." Suntrust Bank, 268 F.3d at 1263 (citing
Eldred v. Reno, 239 F.3d 372, 375 (D.C. Cir. 2001)

(quoting

Harper & Row, 471 U.S. at 560».
"Copyright law thus must address the inevitable tension
between the property rights it establishes in creative works,
which must be protected up to a point, and the ability of
authors, artists, and the rest of us to express them- or
ourselves by reference to the works of others, which must be
protected up to a point. The fair-use doctrine mediates between
the two sets of interests, determining where each set of
interests ceases to control." Blanch v. Koons, 467 F.3d 244, 250
(2d eire 2006); see also Warner Bros. Entertainment Inc.,
Books, 575 F.Supp.2d 513,540 (S.D.N.Y. 2008)

V.

RDR

{"At stake in this

case are the incentive to create original works which copyright
12

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protection fosters and the freedom to produce secondary works
which monopoly protection of copyright stifles-both interests
benefit the public.")

(quoting Pierre N. Leval, Toward a Fair Use

Standard, 103 Harv. L. Rev. 1105, 1109 (1990)
ULeval")

(hereinafter

(noting that although uthe monopoly created by copyright

... rewards the individual author in order to benefit the
public[,]" on the other hand Uthe monopoly protection of
intellectual property that impeded referential analysis and the
development of new ideas out of old would strangle the creative
process.")
The doctrine of Fair Use was codified in Section 107 of the
1976 Copyright Act. Section 107 calls for a four-factor test:
Limitations on exclusive rights: Fair use:

Notwithstanding the provisions of sections 106 and
106A, the fair use of a copyrighted work, including
such use by reproduction in copies or phonorecords or
by any other means specified by that section, for
purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use),
scholarship, or research, is not an infringement of
copyright. In determining whether the use made of a
work in any particular case is a fair use the factors
to be considered shall include­
include(1) the purpose and character of the use, including
whether such use is of a commercial nature or is for
nonprofit educational purposes;
(2) the nature of the copyrighted work;
13

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(3) the amount and substantiality of the portion used
in relation to the copyrighted work as a wholei and
(4) the effect of the use upon the potential market for
or value of the copyrighted work.
17 U.S.C.

§

107.

In applying the fair use doctrine, "[t]he task is not to be
simplified with bright-line rules, for the statute, like the
doctrine it recognizes, calls for case-by-case analysis."
Campbell, 510 U.S. at 577-78. In conducting that analysis, "all
[of the four factors]

are to be explored, and the results weighed

together in light of the purposes of copyright." Id.

D. Applying the Four-Factor Analysis
1. The Purpose and Character of Prince's Use of the Photos
i. Transformative Use
"The central purpose of the inquiry into the first factor is
to determine, in Justice Story's words, whether the new work
merely supersede[s] the objects of the original creation or
instead adds something new, with a further purpose or different
character, altering the first with new expression, meaning, or
messagei it asks, in other words, whether and to what extent the
new work is 'transformative.'Y Salinger v. Co1ting, No. 09 Civ.
5095

(DAB), 641 F.Supp.2d 250, 256 (rev'd on other grounds 607

14

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F.3d 68 (2d Cir. 2010); Campbell, 510 U.s. at 579 (internal
quotations and citations omitted). Although a transformative use
is not strictly required for the Defendant to establish the
defense of fair use, "the goal of copyright, to promote science
and the arts, is generally furthered by the creation of
transformative works. Such works thus lie at the heart of the
fair use doctrine's guarantee of breathing space

within the

confines of copyright, and the more transformative the new work,
the less will be the significance of other factors, like
commercialism, that may weigh against a finding of fair use." Id.
(citing Sony Corp. of America v. Universal City Studios, Inc.,
464 U.S. 417, 478-80 (U.S. 1984)

(Blackmun, J., dissenting).

The inquiry into the first factor of the fair use test,
"'the purpose and character of the use,' may be guided by
the examples given in the preamble to

§

107, looking to whether

the use is for criticism, or comment, or news reporting, and the
like." Campbell, 510 U.S. at 578-79 (citing 17 U.S.C.

§

107)

(identifying parody as a use akin to the illustrative uses
identified in the preamble) .
As the Second Circuit clearly noted in Castle Rock, the fact
that a work "recast[s], transform[s], or adapt [s] an original
work into a new mode of presentation," thus making it a
15

I

i

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"derivative work" under 17 U.S.C.

§

Filed 03/18/11 Page 16 of 38

101, does not make the work

"trans formative" in the sense of the first fair use factor.
Castle Rock, 150 F.3d at 143.

Nevertheless, Defendants invite

this Court to find that use of copyrighted materials as raw
materials in creating "appropriation art" which does not comment
on the copyrighted original is a fair use akin to those
identified in the preamble to

§

107.

The cases Defendants cite for the proposition that use of
copyrighted materials as "raw ingredients" in the creation of new
works is per se fair use do not support their position, and the
Court is aware of no precedent holding that such use is fair
absent transformative comment on the original.

To the contrary,

the illustrative fair uses listed in the preamble to

§

107 ­

"criticism, comment, news reporting, teaching [ ... ], scholarship,
[and] research" - all have at their core a focus on the original
works or their historical context, and all of the precedent this
Court can identify imposes a requirement that the new work in
some way comment on, relate to the historical context of, or
critically refer back to the original works. See,

~,

Campbell,

510 U.S. at 579 (transformative use is use that "alter[s] the
first with new expression, meaning, or message"); Bourne v.
Twentieth Century Fox Film Corp., 602 F.Supp.2d 499
Mar. 15, 2009) (Batts, J.)

(S.D.N.Y.

(parody song which commented both on
16

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the copyrighted original and on famous person associated with
original was transformative); Blanch v. Koons, 467 F.3d at 252-53
(use of copyrighted fashion advertisement as "raw material" was
trans formative because artist used it to comment on the role such
advertisements play in our culture and on the attitudes the
original and other advertisements like it promote); Liebowitz v.
Paramount Pictures Corp., 137 F.3d 109, 114 (2d Cir. 1998)
(superimposition of Leslie Nielsen's face on photo of body
intended to resemble pregnant Demi Moore commented on original
photo of Moore by holding its pretentiousness up to ridicule).
C.f. Rogers v. Koons, 960 F.2d 301, 310 (2d Cir. 1992), cert.
denied, 506

u.s.

934 (1992)

(sculpture drawn from copyrighted

photograph was not fair use because while the sculpture was a
"satirical critique of our materialistic society, it is difficult
to discern any parody of [or comment on] the photograph
itself.")
"If an infringement of copyrightable expression could be
justified as fair use solely on the basis of the infringer's
claim to a higher or different artistic use .

.

. there would be

no practicable boundary to the fair use defense." Rogers v.
Koons, 960 F.2d at 310. The Court therefore declines Defendants'
invitation to find that appropriation art is per se fair use,
regardless of whether or not the new artwork in any way comments
17

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on the original works appropriated.

Filed 03/18/11 Page 18 of 38

Accordingly, Prince's

Paintings are transformative only to the extent that they comment
on the Photos; to the extent they merely recast, transform, or
adapt the Photos, Prince's Paintings are instead infringing
derivative works. See Castle Rock, 150 F.3d at 143.
Prince testified that he has no interest in the original
meaning of the photographs he uses. See

~,

RP Tr. at 338.

Prince testified that he doesn't Ureally have a message" he
attempts to communicate when making art.

RP Tr. at 45-46.

In

creating the Paintings, Prince did not intend to comment on any
aspects of the original works or on the broader culture. See
~,

RP Tr. at 357-60; 362-64.

Prince's intent in creating the

Canal Zone paintings was to pay homage or tribute to other
painters, including Picasso, Cezanne, Warhol, and de Kooning, see
RP Tr. at 164-67, 300-01, and to create beautiful artworks which
related to musical themes and to a post-apocalyptic screenplay he
was writing which featured a reggae band, see,
30, 207-08 1

218, 232, 251-52.

~,

RP Tr. 7,

Prince intended to emphasize

themes of equality of the sexes; highlight uthe three
relationships in the world, which are men and women, men and men,
and women and women"; and portray a contemporary take on the
music scene.

RP Tr. 338-39. with regard to the paintings in

which Prince collaged guitars onto portraits of Rastafarian men
18

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which were taken from Yes, Rasta, Prince testified that his
message related to the fact that the men had become guitar
players.

See,~,

RP Tr. at 340 (n[H]e's playing the guitar

now, it looks like he's playing the guitar, it looks as if he's
always played the guitar, that's what my message was."); see also
RP Tr. 166-68, 279.
Prince also testified that his purpose in appropriating
other people's originals for use in his artwork is that doing so
helps him nget as much fact into [his] work and reducer] the
amount of speculation." RP Tr. at 44.

That is, he chooses the

photographs he appropriates for what he perceives to be their
truth - suggesting that his purpose in using Cariou's Rastafarian
portraits was the same as Cariou's original purpose in taking
them: a desire to communicate to the viewer core truths about
Rastafarians and their culture.

See Bill Graham Archives v.

Dorling Kindersley Ltd., 448 F.3d 605, 609 (2d Cir. 2006)
(considering, in weighing transformativeness, whether the new
purpose in using an original work was nplainly different from the
original purpose for which it was created.")
On the facts before the Court, it is apparent that Prince
did not intend to comment on Cariou, on Cariou's Photos, or on
aspects of popular culture closely associated with Cariou or the

19

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Photos when he appropriated the Photos, and Price's own testimony
shows that his intent was not trans formative within the meaning
of Section 107, though Prince intended his overall work to be
creative and new.
As this Court and others in this jurisdiction have found,
where a work is not "consistently transformative," and "lacks
restraint in using [P1aintiff 1s] original expression for its
inherent • . . aesthetic value," the "trans formative character of
[that work] is diminished." Salinger v. Co1ting, No. 09 Civ. 5095
(DAB), 641 F.Supp.2d 250, 262 (rev'd on other grounds 607 F.3d 68
(2d Cir. 2010»; Warner Bros. Enter. Inc. v. RDR Books 575
F.Supp.2d 513, 544 (S.D.N.Y. 2008)

(citing Bill Graham Archives

v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006). See
Suntrust Bank, 268 F.3d at 1280 (Marcus, J., concurring)

(finding

that issue of trans formative character cuts "decisively in
[Defendant1s] favor" where the ratio of "the borrowed and the new
elements" is "very low, and the incongruity between them wide") .
Accordingly, while there may be some minimal transformative
element intended in Prince's use of the Photos, the overall
transformativeness varies from work to work depending on the
amount of copying. In the works most heavily drawn from Cariou's
Photos, such as those in which Prince uses entire photographs or

20

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unaltered portraits taken from Yes, Rasta, there is vanishingly
little, if any, transformative element; in those where Cariou's
Photos playa comparatively minor role, Defendant has a stronger
argument that his work is transformative of Cariou's original
Photos. S Overall, because the transformative content of Prince's
paintings is minimal at best, and because that element is not
consistent throughout the 28 paintings in which Prince used the
Photos, the "transformative use" prong of the first

§

107 factor

weighs heavily against a finding of fair use.

ii. Commerciality
The second prong of the first factor of the

§

107 test asks

whether the otherwise infringing work "serves a commercial
purpose or nonprofit educational purpose." Suntrust Bank, 268
F.3d at 1269 (citing

§

107(1».

The less transformative a work,

the more importance should be attached to "the extent of its

8Many of the Paintings which have the strongest claim to
trans formative use are also those in which the amount and
substantiality of the Photos used is least reasonable: those
which feature, as their central elements, strikingly original
Rastafarian portraits taken from Yes, Rasta Photos.
See
discussion of third Section 107 factor, infra. For that reason,
even the most transformative Paintings have only a weak claim to
fair use, since the four § 107 factors must be "weighed together
in light of the purposes of copyright." Campbell, 510 U.S. at
577-78.
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commercia1ity" in determining whether the first factor favors a
finding of fair use. Campbell, 510 U.S. at 580-81 (if "the
commentary has no critical bearing on the substance or style of
the original composition .

the claim to fairness in borrowing

from another's work diminishes accordingly (if it does not
vanish), and other factors, like the extent of its commercia1ity
100m larger."); see American Geophysical Union v. Texaco Inc., 60
F.3d 913, 922

(2d Cir. 1995)

("The greater the private economic

rewards reaped by the secondary user (to the exclusion of broader
public benefits), the more likely the first factor will favor the
copyright holder and the less likely the use will be considered
fair.") "[C]ourts are more willing to find a secondary use fair
when it produces a value that benefits the broader public
interest." Blanch v. Koons, 467 F.3d 244, 253-54.
"Notwithstanding the fact that artists are sometimes paid and
museums sometimes earn money, the public exhibition of art is
widely .

.

. considered to have value that benefits the wider

public interest." Id.

(citations and internal quotations

omitted) •
The Canal Zone show at the Gagosian Gallery was advertised

in seven different newspapers, five of which included
reproductions of Cariou's Photos as altered by Prince. AM Tr. at
42-50; LG Tr. at 36. The Gagosian Defendants sent some 7,500
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invitation cards, featuring a reproduction of a Prince work
containing a Cariou Photo, to clients of the Gallery,

LG Tr. at

35, AM Tr. at 29-33, and sold the leftover invitations to a
poster company, AM Tr. at 55-59. As a result of these and other
marketing efforts, Gagosian Gallery sold eight of the Canal Zone
Paintings for a total of $10,480,000.00, 60% of which went to
Prince and 40% of which went to Gagosian Gallery.
Ex. P

~

2 and Ex. A; LG Tr. at 48.

Brooks Dec.

Seven other Canal Zone

Paintings were exchanged for art with an estimated value between
$6,000,000.00 and $8,000,000.00. Brooks Dec. Ex P
136-37, 149-50.

~

3; LG Tr. at

Gagosian Gallery sold $6,784.00 worth of Canal

Zone exhibition catalogs. Brooks Dec. Ex. P

~

4.

The facts

before the Court do not establish whether any of the Paintings
have ever been made available for public viewing other than when
they were offered for sale at the Gallery.
This Court recognizes the inherent public interest and
cultural value of public exhibition of art and of an overall
increase in public access to artwork.

However, the facts before

the Court show that Defendants' use and exploitation of the
Photos was also substantially commercial, especially where the
Gagosian Defendants are concerned.

Accordingly, given the

overall low transformative content of Prince's Paintings, the
commerciality prong of the first

§

finding of fair use.
23

107 factor weighs against a

Case 1:08-cv-11327-DAB Document 71

Filed 03/18/11 Page 24 of 38

iii. Bad Faith
The first

§

107 factor requires the Court to consider "the

propriety of a defendant's conduct," which is an integral part of
the Court's analysis of the character of the use. NXIVM Corp. v.
Ross Inst., 364 F.3d 471, 478 (2d Cir. 2004)

(citations omitted).

Though not in itself determinative, "it has been considered
relevant within this subfactor that a defendant could have
acquired the copyrighted [material] legitimately." Id.
Here, Prince testified that he does not have a different
standard or weigh different considerations when appropriating
works with a disclosed author than he does when using materials
that are in the public domain; to Prince, the question of whether
an image is appropriate for his use is "just a question of
whether [he] like[s] the image." RP Tr. at 100.

Prince's

employee contacted the publisher of Yes, Rasta to purchase
additional copies of the book, but apparently neither Prince nor
his employee ever asked the publisher about licensing or
otherwise sought permission to use Yes, Rasta or the Photos
contained therein legitimately. RP Tr. 236-41, 183.

Nor did

Prince attempt to contact Cariou by email and inquire about usage
rights to the Photos, even though Yes, Rasta clearly identified
Cariou as the sole copyright holder and even though Cariou's
publicly-accessible website includes an email address at which he

24

I I

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may be reached. See PC Tr. 238-40, 254, 260. Under these
circumstances, Prince's bad faith is evident.

Moreover, since

the record establishes that the Gagosian Defendants were aware
that Prince is an habitual user of other artists' copyrighted
work, without permission, and because the record is equally clear
that 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, the
bad faith of the Gagosian Defendants is equally clear.

Because Prince's use was at most only minimally
trans formative of Cariou's Photos, because the use was
substantially though not exclusively commercial, and because
Prince and the Gagosian Defendants acted in bad faith, the first
factor in the fair use analysis weighs heavily in favor of
Plaintiff.

2. The Nature of the Copyrighted Work
UThe more the copyrighted matter is at the center of the
protected concerns of the copyright law, the more the other
factors, including justification, must favor the secondary user

2S

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in order to earn a fair use finding." Leval at 1122. "The
statutory articulation of this factor derives from Justice
Story's mention ... of the 'value of the materials used.'
Justice Story's word choice is more communicative than our
statute's 'nature of,' as it suggests that some protected matter
is more 'valued' under copyright that others. This should not be
seen as an invitation to judges to pass on [artistic] quality,
but rather to consider whether the protected [work] is of the
creative or instructive type that the copyright laws value and
seek to foster." Id. at 1117. A key distinction that has emerged
"in the decisions evaluating the second factor [is] whether the
work is expressive or creative, such as a work of fiction, or
more factual, with a greater leeway being allowed to a claim of
fair use where the work is factual or informational." 2 Abrams,
The Law of Copyright,

§

15:52

(2006).

Here, the Court finds that Cariou's Photos are highly
original and creative artistic works and that they constitute
"creative expression for public dissemination" and thus "fall[]
within the core of the copyright's protective purposes."
Campbell, 510 U.S. at 586. Consequently, this factor weighs

against a finding of fair use.

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3. The Amount and Substantiality of the Portion Used
The "amount and substantiality of the portion of the
copyrighted work used [] must be examined in context [and] the
inquiry must focus on whether the extent of [the] copying is
consistent with or more than necessary to further the purpose and
character of the use." Castle Rock, 150 F.3d at 144 (guoting
Campbell, 510 U.S. at 586-87)

(internal quotations omitted). The

Court must examine not only "the quantity of the materials used,
but their quality and importance too." Warner Bros. Enter., Inc.,
575 F.Supp. at 546 (quoting Campbell 510 U.S. at 587).
"[W]hatever the use, generally it may not constitute a fair
use if the entire work is reproduced." Weissmann v. Freeman, 868
weissmann
F.2d 1313, 1325 (2d Cir. 1989)

(citing 3 Nimmer on Copyright

§

13.05[A] at 13-80). Moreover, the amount and substantiality
factor weighs in favor of the copyright holder "where the portion
used was essentially the heart of the copyrighted work." Wright
v. Warner Books, Inc., 953 F.2d 731, 738 (2d Cir. 1991) (quoting
Harper & Row, 471 U.S. at 565)

(internal quotations omitted).

"As the statutory language indicates, a taking may not be
excused merely because it is insUbstantial with respect to the
infringing work." Harper & Row v. Nation Enters., 471 U.S. at 565
(citation
omitted) (emphasis in original) (quoting Judge Learned
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Hand, who "cogently remarked,

Filed 03/18/11 Page 28 of 38

'no plagiarist can excuse the wrong

by showing how much of his work he did not pirate.'")
In a number of his Paintings, Prince appropriated entire
Photos, and in the majority of his Paintings, Prince appropriated
the central figures depicted in portraits taken by Cariou and
published in Yes, Rasta.

Those central figures are of

overwhelming quality and importance to Cariou's Photos, going to
the very heart of his work.

Accordingly, the amount of Prince's

taking was substantially greater than necessary, given the slight
trans formative value of his secondary use, and the third factor
weighs heavily against a finding of fair use.

4. The Effect of the Use Upon the Potential Market for or Value
of the Copyrighted Work

The fourth fair use factor requires courts "to consider not
only the extent of market harm caused by the particular actions
of the alleged infringer, but also whether unrestricted and
widespread conduct of the sort engaged in by the defendant would
result in a substantially adverse impact on the potential market
for the original." Campbell, 510 U.S. at 590 (internal quotations
omitted). The inquiry "must take account not only of harm to the
original but also of harm to the market for derivative works."
Harm to the market for derivatives weighs against a finding
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of fair use nbecause the licensing of derivatives is an important
economic incentive to the creation of originals."

at 593.

nPotential derivative uses include only those that creators of
original works would in general develop or license others to
develop." Warner Bros. Enter., Inc., 575 F.Supp. at 549 (quoting
Campbell, 510 U.S. at 592)

(internal quotation marks omitted).

See also id. at 550-51 (finding that where Defendant's derivative
work nis only marginally transformative,

[it] is likely to

supplant the market for [Plaintiff's derivative work]")

(citing

Campbell, 510 U.S. at 591).
Defendants' protestations that Cariou has not marketed his
Photos more aggressively (or, indeed, as aggressively as Prince
has marketed his Paintings) are unavailing.

As the Second

Circuit has previously emphasized, the npotential market" for the
copyrighted work and its derivatives must be examined, even if
the Uauthor has disavowed any intention to publish them during
his lifetime," given that an author nhas the right to change his
mind" and is Uentitled to protect his opportunity to sell his
[works]." J.D. Salinger v. Random House, Inc., 811 F.2d 90, 99
(2d Cir. 1987)

(emphasis omitted); see Castle Rock, 150 F.3d at

145-46 (finding the fourth factor to favor Plaintiff even where
Plaintiff nhas evidenced little if any interest in exploiting
this market for derivative works" because copyright law must
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"respect that creative and economic choice"). The fact that
Plaintiff has not marketed his work more aggressively is
therefore irrelevant.
Here, it is undisputed that a gallery owner discontinued
plans to show the Yes, Rasta Photos, and to offer them for sale
to collectors, because she did not want to appear to be
capitalizing on Prince's Paintings and did not want to show work
which had been "done already" at the nearby Gagosian Gallery. CC
Tr. 89, 91, 105.

It is therefore clear that the market for

Cariou's Photos was usurped by Defendants.

Moreover, licensing

original works for secondary use by other artists is the kind of
derivative use "that creators of original works would in general
develop," Warner Bros. Enter., Inc., 575 F.Supp. at 549, and
widespread unlicensed use in new artworks would destroy the
market for such licenses, see Campbell, 510 U.S. at 590.
Accordingly, the Court finds that Prince has 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.
Because Defendants' secondary use has unfairly damaged the
original market for the Photos and, if widespread, would likely
destroy an identifiable derivative market for the Photos, the
fourth

§

107 factor weighs against a finding of fair use.
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5. Aggregate Analysis
The Court has considered the four factors set forth in
107, and found that none favors a finding of fair use.

§

Moreover,

"the monopoly created by copyright" does not unduly "impede[]
referential analysis [or] the development of new ideas out of
old" when copyright law is enforced under circumstances like
those presented here. Leval at 1109.

Accordingly, the purposes

of copyright are best served by extending protection to Cariou's
Photos.
Having conducted a case-specific analysis of the four
factors laid out in 17 U.S.C.

§

107 in light of the purposes of

copyright, the Court finds that Defendants are not entitled to
the defense of fair use.

E. Liability of the Gagosian Defendants
Copyright infringement has two elements: "(1) ownership of a
valid copyright, and (2) copying of constituent elements of the
work which are original." Feist, 499 U.S. at 361.
Here, it is uncontroverted that the Gagosian Defendants
copied original constituent elements of Cariou's copyrighted
Photos when they published the Canal Zone exhibition catalog,
created and distributed invitation cards featuring reproductions
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of Cariou's Photos, and otherwise distributed reproductions of
Cariou's work as appropriated by Prince.

Moreover, by exhibiting

and selling Prince's unauthorized works, the Gagosian Defendants
infringed Cariou's exclusive rights, as copyright owner of the
Photos, to reproduce, prepare derivative works based upon,
distribute, sell, and display the Photographs.
Act, 17 U.S.C.

§

106(1),

(2),

(3), and (5).

See Copyright

The Court therefore

finds the Gagosian Defendants directly liable for copyright
infringement.
The Gagosian Defendants are also liable as vicarious and
contributory infringers.
UThe concept of vicarious copyright infringement was
developed in the Second Circuit as an outgrowth of the agency
principles of respondiat superior.n Faulkner v. Nat'l Geo. Soc.,
211 F.Supp.2d 450, 472 (S.D.N.Y. 2002) (citations omitted).
uVicarious liability extends beyond an employer/employee
relationship to cases in which a defendant has the right and
ability to supervise the infringing activity and also has a
direct financial interest in such activities. Benefit and control
are the signposts of vicarious liability."

(citations

omitted} .
Here, the record establishes that Gagosian was uhandling

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everything" to do with the marketing of the Canal Zone Paintings
beginning at the time Price first showed Canal Zone (2007), which
Prince thought of as a "preview" of the characters he would use
in the Canal Zone Paintings, in December, 2007. See,

~,

RP Tr.

at 185-87 (describing Gagosian's role in the Eden Rock show and
describing Gagosian's home as an "off-off-off Broadway" location
where previously unseen paintings could be shown and sold). The
Court therefore finds that the Gagosian Defendants had the right
and ability to supervise Price's work, or at the very least the
right and ability (and perhaps even responsibility) to ensure
that Prince obtained licenses to use the Photos before they made
Prince's Paintings available for sale.

The financial benefit of

the infringing use to the Gagosian Defendants is self-evident.
Accordingly, the Gagosian Defendants are liable as vicarious
infringers.
"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." Faulkner, 211 F.Supp.2d at 473 (citations and
quotations omitted) In other words, "the standard for
contributory infringement has two prongs, the 'knowledge' prong
and the 'material contribution' prong." Id. "Knowledge of the
infringing activity may be actual or constructive • . . In other
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words, this prong is satisfied if the defendant knew or should
have known of the infringing activity at the time of its material
contribution."

Id. at 474 (citations and quotations omitted).

"Advertising or otherwise promoting an infringing product or
service may be sufficient to satisfy the material contribution
prong." Id. at 473-74.
Here, the Gagosian Defendants were well aware of (and
capitalized on) 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.

The

Court concludes that the Gagosian Defendants knew or should have
known of the infringement at the time that they reproduced,
advertised, marketed, and otherwise promoted the Paintings.
Accordingly, the Court finds that the Gagosian Defendants are
liable as contributory infringers.
Because Plaintiff has established a prima facie case of
copyright infringement as against all Defendants, and because the
defense of fair use does not apply, Plaintiff's Motion for
Summary Judgment on the issue of liability is GRANTED in its
entirety.

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F. Plaintiff's Claim for Conspiracy Under the Copyright Act
Defendants argue that Plaintiff's fifth claim for relief,
which charges conspiracy to violate his rights under the
Copyright Act, must be dismissed as failing to state a claim on
which relief may be granted.
No Party has called the Court's attention to any Second
Circuit or Supreme Court authority which provides that a cause of
action for conspiracy to violate the Copyright Act may lie under
New York or Federal law.

Nor is conspiracy proscribed by the

Copyright Act itself. See generally Copyright Act, 17 U.S.C.

§

501 et seg.; Calloway v. Marvel Entertainment Group, No. 82 Civ.
8697 (RWS),

1983 WL 1152, at *5 (S.D.N.Y. 1983).

In the absence of contrary authority, the Court finds Judge
Sweet's reasoning in Irwin v. ZDF Enterprises GmbH, No. 04 CIV.
8027 (RWS), 2006 WL 374960 (S.D.N.Y. February 16, 2006)
persuasive.

In Irwin, Judge Sweet considered whether the

Copyright Act foreclosed a common law conspiracy claim based on
copyright infringement and determined that n[b]ecause copyright
law already recognizes the concepts of contributory infringement
and vicarious copyright infringement .

which extend joint and

several liability to those who participate in the copyright
infringement . .

[a] civil conspiracy claim does not add

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substantively to the underlying federal copyright claim

"

Irwin at *4 (citations and quotations omitted) .
The Court therefore finds that Plaintiff's Fifth Cause of
Action must be dismissed.

III. CONCLUSION

For reasons stated herein, the Court GRANTS Plaintiff's
Motion for Summary Judgment on the issues of copyright
infringement, fair use, and liability.

The Court DENIES

Defendants' Motion for Summary Judgment except as pertains to
Plaintiff's Fifth Cause of Action, for conspiracy, which is
DISMISSED.

It is further ORDERED:
That, pursuant to 17 U.S.C.

§

502, Defendants, their

directors, officers, agents, servants, employees, and attorneys,
and all persons in active concert or participation with them, are
hereby enjoined and restrained permanently from infringing the
copyright in the Photographs, or any other of Plaintiff's works,
in any manner, and from reproducing, adapting, displaying,
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publishing, advertising, promoting, selling, offering for sale,
marketing, distributing, or otherwise disposing of the
Photographs or any copies of the Photographs, or any other of
Plaintiff's works, and from participating or assisting in or
authorizing such conduct in any way.
That Defendants shall within ten days of the date of this
Order deliver up for impounding, destruction, or other
disposition, as Plaintiff determines, all infringing copies of
the 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.
That Defendants shall notify in writing any current or
future owners of the Paintings of whom they are or become aware
that the Paintings infringe the copyright in the Photographs,
that the Paintings were not lawfully made under the Copyright Act
of 1976, and that the Paintings cannot lawfully be displayed
under 17 U.S.C.

§

109(c).

That the Parties shall appear before this Court on May 6,
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2011 at 11:00am for a status conference regarding damages,
profits, and Plaintiff's costs and reasonable attorney's fees.

SO ORDERED.
Dated:

New York, New York
March

iL,

2011

Deborah A. Batts
united States District Judge

38