Cariou v. Prince

Filing 51

MOTION, to dismiss, on behalf of Appellee Patrick Cariou, FILED. Service date 05/19/2011 by CM/ECF. [294588] [11-1197]

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
Thurgood Marshall U.S. Courthouse 40 Foley Square, New York, NY 10007 Telephone: [phone]
MOTION INFORMATION STATEMENT
Docket Number(s):
Motion for:

I I - I 19 -/

Caption Fuse short title

Carioil

dismissal of appeal

V.

Prince

Set tbrth below precise, complete statement of relief sought:

The appeal should be dismissed, without prejudice,
because any immediately appealable issues are moot.

MOVING PARTY: Plaintiff-Appellee
Defendant
J Plaintiff
Appellant/Petitioner
Appellee/Respondent

OPPOSING PARTY:

Defendants-Appellants

fl
fl

MOVING ATTORNEY:

OPPOSING ATTORNEY: Jonathan D. Schiller
[name of attorney, with firm, address, phone number and e-mail]

Daniel J. Brooks

Schnader HatTison Segal & Lewis LLP
140 Broadway, Suite 3100
New York, NY 10005
(2 12) 973-8000 dbrooks(schnader.com
Court-Judge/Agency appealed from:

Boies, Schiller & Flexner LLP
575 Lexington Avenue
New York, NY 10022
[phone] j sch i 1 ler(bsfl lp.com

et al.

S DN Y- Deborah A. Batts

Please check appropriate boxes:
Has movant notified opposing counsel (required by Local Rule 27. I):
Yes
No (explain):________________________________________

El

FOR EMERGENCY MOTIONS, MOTIONS FOR STAYS AND
INJUNCTIONS PENDING APPEAL:
Ilas request for relief been made below?
Yes
No
Yes[] No
I [as this relief been previously sought in this Court?
Requested return date and explanation of emergency:

fl

D

0

Opposing counsel’s position on motion:
Unopposed Dopposed
Don’t Know
Does opposing counsel intend to file a response:

0 Yes fl No 0Don’t Know
Is oral argument on motion requested?

E] Yes

Has argument date of appeal been set?

Yes

Date:

No (requests for oral argument will not necessarily be granted)

Fvj

5119/11

No If yes, enter date:

I-las service been effected?

Yes

No [Attach proof of service]

ORDER
IT IS HEREBY ORDERED THAT

the motion is

GRANTED DENIED.
FOR THE COURT:
CATHERINE O’HAGAN WOLFE, Clerk of Court

Date

Form T-1080

UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
------------------------------------------------------ x
:

PATRICK CARIOU,
Plaintiff-Appellee,

Docket No. 11-1197

:

S.D.N.Y. 1 :08-cv- 11327-DAB

:

DECLARATION OF
DANIEL J. BROOKS IN SUPPORT OF
MOTION TO DISMISS APPEAL

-againstRICHARD PRINCE, GAGOSIAN
GALLERY, INC. and LAWRENCE
GAGOSIAN,

:

Defendants-Appellants.
------------------------------------x
DANIEL J. BROOKS, under the penalty of perjury, states as follows:
1.

I am a member of the Bar of this Court and of Schnader Harrison Segal &

Lewis LLP, counsel of record for the plaintiff-appellee, Patrick Cariou. I submit this declaration,
based upon personal knowledge, in support of Cariou’s motion, pursuant to Federal Rule of
Appellate Procedure 27(a)( 1) and Local Rule of the United States Court of Appeals for the
Second Circuit 27. 1, for the dismissal, without prejudice, of this appeal on the grounds that the
issues sought to be raised on this interlocutory appeal are moot.
2.

This is an action for copyright infringement. This appeal is from a

Memorandum & Order dated March 18, 2011 (the "Decision") in which the district court (Hon.
Deborah A. Batts) granted Cariou’s motion for summary judgment, finding the defendantsappellants Richard Prince, Gagosian Gallery, Inc. and Lawrence Gagosian ("Appellants") liable
for copyright infringement and rejecting their affirmative defense of fair use. After analyzing the
fair use defense and finding that all four of the statutory factors enumerated in 17 U.S.C. § 107
weighed against fair use, the court entered a permanent injunction and two equitable orders, one

requiring the impoundment of the unsold infringing works and related materials and the other
requiring notification to the purchasers of the artworks that were sold that those works infringed
Cariou’s copyright and could not publicly be displayed.
3.
I (.101
I-

I

The Decision is attached hereto as Exhibit A. The three rulings are set

-M
e,
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 Photographs, or any other of Plaintiff’s works, in any manner,
and from reproducing, adapting, displaying, 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).
Ex. A, Cariou v. Prince, Case No. 08 Civ. 11327, Slip Op. at 3637 (S.D.N.Y. Mar. 18, 2011).

4.

The district court also scheduled a status conference for May 6, 2011

"regarding damages, profits, and Plaintiff’s costs and reasonable attorney’s fees." Id. at 37-38.

2

Shortly after the Decision, counsel for Appellants contacted me,
expressing concern that the infringing Paintings might be destroyed, which would cause
irreparable harm if the Decision were later reversed. At their urging, I agreed to enter into an
agreement (the "Stipulation"), dated March 24, 2011. The Stipulation, a copy of which is
attached hereto as Exhibit B, provides that, pending final determination of this appeal, the
Photographs, Paintings and other related materials are to be stored at a mutually agreeable
location, from which they may not be moved without written consent of all the parties. Ex. B, ¶
1. Although the Stipulation was not "So Ordered" by the district court, it may only be vacated
upon application, with written notice to all parties, to the district court. Id. ¶ 4.
6.

On May 10, 2011, I was notified by counsel for the Appellants that all of

the Paintings and other materials had been moved to a storage facility in Long Island City, from
which they may not be removed without my consent or by order of the district court. A copy of
that e-mail chain is attached hereto as Exhibit C.
7.

On March 28, 2011, counsel for Appellants wrote letters, as required by

the Decision, to each of the owners of the Paintings that were sold, advising them that, "in the
opinion of the [district court], the Paintings... ’infringe the copyright in the Photographs...,
were not lawfully made under the Copyright Act of 1976, and. . . cannot lawfully be displayed
under 17 U.S.C. § 109(e)’ in the public." A copy of one of these letters, redacted to remove the
name of the addressee, is attached hereto as Exhibit D.
8.

Appellants never sought a stay, either from the district court or this Court,

of the permanent injunction, order of impoundment or requirement that the owners of the
Paintings which had been sold be notified in accordance with the Decision.

9.

Although Appellants never sought a stay of those three orders, they did

seek a stay of the damages trial. On April 20, 2011, the district court denied the request for a
stay of the proceedings and reiterated that the parties were to appear before the court on May 6,
2011, as previously scheduled. A copy of this Order is attached hereto as Exhibit E.
10.

On April 25, 2011, this Court issued an order confirming that appellants’

opening brief is due by June 30, 2011. A copy of this order is attached hereto as Exhibit F.
11.

Thereafter, on May 4, 2011, the district court issued an order sua sponte

stating: "In light of the fact that Defendants have appealed this Court’s [Decision], and the fact
that briefing in the appeal is due on June 30, 2011, the conference previously set for May 6, 2011
is adjourned sine die. Parties are to notify the Court when the appeal in this matter has been
resolved." A copy of the May 4, 2011 order is attached hereto as Exhibit G.
12.

Cariou seeks the dismissal of the appeal on the grounds that the issues

sought to be raised by Appellants, two of which (the order of impoundment and the requirement
of notice to the owners of the Paintings) are not even immediately appealable, are moot; viz.
there is no need for a permanent injunction because, with the Paintings and other infringing
materials safely sequestered under the joint control of the parties, there is no cognizable danger
of a recurrent violation of Cariou’ s copyright; nor is there any risk that the Paintings will be
destroyed until after the final disposition of this appeal; and the letters to the owners of the
Paintings that were sold have already been sent.
13.

Simply put, the only issues arising from the Decision that are not moot are

the district court’s findings that the Appellants are liable for copyright infringement and that their
fair use defense is unavailing. Those findings are not, however, immediately appealable under

ri

28 U.S.C. § 1292(a)(1) and may only be raised after a final judgment has been rendered,
including a computation of Cariou’s damages and attorney’s fees.
Pursuant to 28 U.S.C. § 1746, I declare under the penalty of perjury under the
laws of the United States of America that the foregoing is true and correct.
Executed on May 19, 2011, at New York, New York.

V4
DANIEL J. BROOKS

5

EXHIBIT A

Case 1:08cv-11327-DAB Document 71 Filed 03/18/11 Page 1 of 38

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
------------

-

---------

x

PATRICK CARIOU,

USDC SDNY
DOCUMENT
ELEcTRONICALLY F[LED
DOC#:
_______
Z)///jf
DATE FILED:

Plaintiff,
-

against -

08 Civ. 11327 (DAB)
MEMORANDUM & ORDER

RICHARD
GAGOSIAN GALLERY, INC.,
LAWRENCE GAGOSIAN, and RIZZOLI
INTERNATIONAL PUBLICATIONS, INC.
I

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(l)-(4),
and that Plaintiff’s claim for conspiracy to violate his rights
under the Copyright Act is barred by law.’ Plaintiff seeks
summary judgment in his favor on the issue of liability for
copyright infringement.
For reasons detailed herein, the Court finds (1) that

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

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 2 of 38

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, 27980.2 Cariou spent
time with Rastafarians in Jamaica over the course of some six
years, gaining their trust and taking their portraits. PC Tr. 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 Celle, Lawrence Gagosian, and Alison McDonald,
respectively. Similarly, "RP. Aff." refers to the affidavit
filed by Richard Prince.
2

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 3 of 38

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. See e.g., PC Tr. 4966, 133-34, 137-38, 143-44, 152, 169. 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
Deci. 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. ¶ 3, 5. Defendant Gagosian
Gallery, Inc. (the "Gallery") is an art dealer and gallery which
represents Prince and markets the artworks he creates. LG Tr. 2225; RP Tr. 270, 294. Defendant Lawrence Gagosian ("Gagosian";
collectively with the Gallery, the "Gagosian Defendants") is the

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

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 4 of 38

President, founder, and owner of the Gagosian Gallery, Inc. LG
Tr. at 16.
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. Comp. 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 Deci. Comp. 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,

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

4

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 5 of 38

Rsta. 5 See RP Decl. Comp. Ex. A.

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.’ See RP Deci.
Comp. Ex. A (comparing Prince paintings with Cariou Photos used
therein); compare Brooks Decl. Ex. M (Canal Zone catalog) with
Brooks Deci.

Ex. L (Yes, Rasta book). In total, Prince admits

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

’The 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."
6 1n 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

Case I :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 6 of 38

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 Deci. 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 Canon 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 Chnistiane
Celle ("Celle"), 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 Tn. at 96-98; see CC Tr. 39-40, 42-44. Caniou
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.
Celle 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 Tn. 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. However, when

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 7 of 38

Celle 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. Celle 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

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 8 of 38

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. (citing Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 252 (1986)). While a court
must always "resolv[e] ambiguities and draw E 3 reasonable
inferences against the moving party," Knight v. U.S. Fire Ins.
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." Weinstock v. Columbia
Univ., 224 F.3d 33, 41 (2d Cir. 2000) (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

Case I :08-cv-1 1 327-DAB Document 71 Filed 03/18/11 Page 9 of 38

inferences against the party whose motion is under
consideration.’" Heublein, Inc. v. United States, 996 F.2d 1455,
1461 (2d Cir. 1993) (quoting Schwabeithauer 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. Serv. 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 "is not
only unoriginal, it is practically inevitable."). To be
"original," a copyrighted work must have been independently
created by the author and must possess "at least some minimal
degree of creativity," although "the requisite level of
creativity is extremely low; even a slight amount will suffice."
Id. at 345. "The vast majority of works make the grade quite
easily, as they possess some creative spark, ’no matter how
crude, humble or obvious’ it might be." Id. (citation omitted).
"[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) (citing Harper

Case I :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 10 of 38

& 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.’
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, eq.,
Burrow-Giles Lithographic Co. v. Sarony, ill U.S. 53, 60 (1884)

1 Defendant’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

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

Filed 03/18/11 Page 11 of 38

(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 expression"); 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.IJ.N.Y. 2005)
("Almost any photograph ’may claim the necessary originality to
support a copyright.") (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); 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
11

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 12 of 38

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,
ci. 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 Cir. 2006); see also Warner Bros. Entertainment Inc., v. RDR
Books, 575 F.Supp.2d 513,540 (S.D.N.Y. 2008) ("At stake in this
case are the incentive to create original works which copyright
12

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 13 of 38

protection fosters and the freedom to produce secondary works
which monopoly protection of copyright stiflesboth interests
benefit the public.") (quoting Pierre N. Leval, Toward a Fair Use
Standard, 103 Harv. L. Rev. 1105, 1109 (1990) (hereinafter
"Leval") (noting that although "the monopoly created by copyright
rewards the individual author in order to benefit the
public[,)" on the other hand "the 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(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

Case 1:08-cv11327-DAB Document 71

Filed 03/18/11 Page 14 of 38

(3) the amount and substantiality of the portion used
in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for
or value of the copyrighted work.
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."

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
message; it asks, in other words, whether and to what extent the
new work is ’transformative.’" Salincrer v. Colting, No. 09 Civ.
5095 (DAB), 641 F.Supp.2d 250, 256 (rev’d on other grounds 607

14

Case 1:08-cv-11327-DAB Document 71 Filed 03/18/11 Page 15 of 38

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."
(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
iI

Case 1 :08-cv-1 1 32T-DAB Document 71 Filed 03/18/11 Page

16 of 38

"derivative work" under 17 U.S.C. § 101, does not make the work
"transformative" 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 9 107 "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 , e.g., 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 (S.D.N.Y.
Mar. 15, 2009) (Batts, J.) (parody song which commented both on
16

Case 1:08-cv-11327-DAB Document 71 Filed 03/18/11 Page 17 of 38

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
transformative 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

fair use,

regardless of whether or not the new artwork in any way comments
17

Case 1 :08-cv-1 1 327DAB Document 71 Filed 03/18/1 1 Page 18 of 38

on the original works appropriated. 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 e.g.., RP Tr. at 338.
Prince testified that he doesn’t "really 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
e.g., 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, e.g., RP Tr. 7,
30, 207-08, 218, 232, 251-52. Prince intended to emphasize
themes of equality of the sexes; highlight "the 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

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page

19 of 38

which were taken from Yes, Rasta, Prince testified that his
message related to the fact that the men had become guitar
players. See, e.g., RP Tr. at 340 ("[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 "get as much fact into [his] work and reducef] 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 "plainly 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

Case I :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 20 of 38

Photos when he appropriated the Photos, and Price’s own testimony
shows that his intent was not transformative 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 [Plaintiff’s] original expression for its
inherent . . . aesthetic value," the "transformative character of
[that work] is diminished." Salinger v. Colting, 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 transformative character cuts "decisively in
[Defendant’s] 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

l.]

Case 1 :08-cv1 1 327DAB Document 71 Filed 03/18/11 Page 21 of 38

unaltered portraits taken from Yes, Rasta, there is vanishingly
little, if any, transformative element; in those where Cariou’s
Photos play a comparatively minor role, Defendant has a stronger
argument that his work is transformative of Cariou’s original
Photos. 8 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

8 Many of the Paintings which have the strongest claim to
transformative 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.

Case 1 :08-cv1 1327-DAB Document 71 Filed 03/18/11 Page 22 of 38

commerciality" 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 commerciality
loom 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
22

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

Filed 03/18/11 Page 23 of 38

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. Brooks Dec.
Ex. p ¶ 2 and Ex. A; LG Tr. at 48. 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 ¶ 3; LG Tr. at
136-37, 149-50. 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 § 107 factor weighs against a
finding of fair use.
23

Case 1 :08-cv-1 1327-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 subf actor 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

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 25 of 38

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
transformative 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
"The 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

25

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 26 of 38

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."
510 U.S. at 566. Consequently, this factor weighs
against a finding of fair use.

Case I :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 27 of 38

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 (quoting
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

F.2d 1313, 1325 (2d Cir. 1989) (citing 3 Nirnmer 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
27

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 28 of 38

Hand, who "cogently remarked, ’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
transformative 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
28

Case I :08-cv1 1 327DAB Document 71 Filed 03/18/11 Page 29 of 38

of fair use "because the licensing of derivatives is an important
economic incentive to the creation of originals." Id. at 593.
"Potential 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"is 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 "potential market" for the
copyrighted work and its derivatives must be examined, even if
the "author has disavowed any intention to publish them during
his lifetime," given that an author "has the right to change his
mind" and is "entitled 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 "has evidenced little if any interest in exploiting
this market for derivative works" because copyright law must
29

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 30 of 38

"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.
30

Case 1 :08-cv--1 1 327DAB Document 71 Filed 03/18/11 Page 31 of 38

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 C]
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.

B. 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
31

Case I :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 32 of 38

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. See Copyright
Act, 17 U.S.C. 9 106(1), (2), (3), and (5). The Court therefore
finds the Gagosian Defendants directly liable for copyright
infringement.
The Gagosian Defendants are also liable as vicarious and
contributory infringers.
"The concept of vicarious copyright infringement was
developed in the Second Circuit as an outgrowth of the agency
principles of respondiat superior." Faulkner v. Nat’l Geo. Soc.,
211 F.Supp2d 450, 472 (S.D.N.Y. 2002) (citations omitted).
"Vicarious 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." Id. (citations
omitted).
Here, the record establishes that Gagosian was "handling

32

Case I :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 33 of 38

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, e.g., 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 .
33

. . In other

Case I :08-cv-1

1327-DAB

Document

71

Filed

03/18/11

Page

34 of 38

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.

34

Case 1 :08-cv-1 1 327-DAB Document 71 Filed 03/18/11 Page 35 of 38

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 GinbH, 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 "[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

35

Case 1 :08-cv1 1 32T-DAB Document 71 Filed 03/18/11 Page 36 of 38

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,
L.i

Case 1:08-cv11327-DAB Document 71

Filed 03/18/11 Page 37 of 38

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,
37

Case 1 :08-cv-1 1327-DAB Document 71 Filed 03/18/11 Page 38 of 38

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

it,

2011
IOJdLPWQIIW

Deborah

1, &&

1

A.

Batts

United States District Judge

38

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
PATRICK CARIOT.J,
Plaintiff,
08 Civ 11327 (DAB)
-againstRICHARD PRINCE; GAGOSIAN GALLERY, INC,;
LAWRENCE GAQOSIAN and RIZZOLI
INTERNATIONAL PUBLICATIONS, INC.,

STIPULATION CR COUNSEL

Defendants.

Plaintiff and Defendants, by their counsel, hereby stipulate and agree as follows:
WHEREAS the Court by its decision of March 18, 2011 provided on page 37 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 Photographs and
other materials, the parties now agree us follows;
I.

Pending final determination of the Appeal, or any other final disposition or

resolution of this action, Plaintiff and Defendants shall maintain all 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, if any (excluding copies maintained by counsel for
Defendants for evidentiary purposes only) (hereinafter "Objects") at a location mutually
agreeable to the parties and none of the Objects shall be moved without written consent of all the
parties. The Objects may be inspected by any party, or its designated representative, upon prior

written notice to the other parties. Such Objects shall be moved to suoi location lqithin forty
_rr\J’vv\- C4,storage shall be muiiy borne by
five (45) days of the date of the Stipulation. The cost of sucl
Defendants If the Objects are not moved within forty-five (45) days, this Stipulation shall be
terminable in accordance with paragraph 4
2.

As soon as practicable, but in any event no more than seven (7) business days

following the date on which this Stipulation Is executed, the Defendants shall provide to Plaintiff
an accounting of each Painting that has been sold together with the date of each such sale and the
sales price paid for each Painting, This accounting shall be admissible in evidence in this notion.
3.

As soon as practicable, but in any event no more than sixty (60) days following

the date on which this Stipulation is executed, Defendants will cause a third party, mutually
agreeable to the parties, to undertake an inspection of each of the Paintings in storage for the
purpose of cataloguing each Painting and verifying its condition. A copy of the catalogue shall
be provided to each of the parties.
4,

Any party to this Stipulation may seek relief from the Court vacating the

Stipulation in whole or in part, on at least ten (10) days written notice to all parties.
S.

Signatures in counterpart are acceptable.

Dated: March 24, 2011
D ic 3, Brooks
Sci, }IAm1soN SEGAL & LEWIS LLP

140 Broadway Suite 3100
New York, NY 10005-1101
Ph 212.973.13150
Atorncys for Attorneys I? citri ck Carlou

2

’I

BoThs S KILLER & FLEXNIR LLP

575 Lexington Avenue, 7 lb Floor
New York, NY 10022
Ph: 212.446-2300
Aorncyfor Defendant Richard Prince

Hollis Gonerka Bert
WIThERs BERGMIN LLP
430 Perk Avenue 10th FL
New York, NY 10022
Ph; 212,8489808
Attorneys for Defendant Gagostan Gallery, Inc. &
Lawrence Gagoslan

\wpdoto3 I I O’StIpuliion

or Comioel 34. 141);

EXHIBIT C

Brooks, Daniel
From:
Sent:
To:
Cc:
Subject:
Attachments:

Josh Schiller [[e-mail] ]
Tuesday, May 10, 2011 6:16 PM
Brooks, Daniel; Boden, Eric A.
Jonathan Schiller; George Carpinello; ’[e-mail] ’; ’Hammerman, Dara’;
’Weinberg-Brodt, Chaya’
RE: Cariou v. Prince, et al. - 04-19-11 Letter from Daniel J. Brooks
Lawsuit storage Studio and Gagosian.pdf; Lawsuit Storage from Studio.pdf

Dan,
Attached please find two lists, one with the works of art sent from the studio and the other with the works of art
sent from Gagosian. They were shipped yesterday and are currently in storage with Elite Systematics. You
may contact Nancy Ruffero at Elite Systematics in order to set up a visitation. I have spoken with her today and
she is expecting to hear from you to arrange a visit. They request that you notify them in writing via email 48
hours before you would like to visit. Viewing Hours are Monday through Friday 1 O.3Oam to 4.00pm (Closed
between 12noon and 1.00pm).
The contact information is as follows:
Nancy Romero
Elite Systematic Arts, Inc
41-18 Berrian Blvd
Long Island City, NY 11105
718-274-9300-Tel
718-274-9303-Fax
nromero@elitesys’ternaticarts. corn
Additionally, Hollie Bart had suggested in an email to this group in March we use the same person to inspect
the works that they originally used to catalogue the unsold works. Their name is:
Gurr Johns
155 East 56th Street, 4th Floor
New York, NY 10022
[phone]
If you and Hollie agree that to use them again, then we are happy to engage them and schedule to have the
works inspected.
As we agreed, please kindly copy someone from our firm and the Withers Firm when you intend to visit Elite
Systematics so that we may have notice.
Best,
Josh

From: Brooks, Daniel [mailto: DBrooks'Schnader.com
Sent: Tuesday, May 10, 2011 10:13 AM

]

To: Josh Schiller; Boden, Eric A.
; ’Hammerman, Dara’; ’Weinberg-Brodt, Chaya’
Cc: Jonathan Schiller; George Carpinello; THollis.Bart'withers.us.com
Subject: RE: Cariou v. Prince, et al. - 04-19-11 Letter from Daniel J. Brooks

I assume you moved the paintings yesterday, as you stated you would in the e-mail below. Please confirm
that this was done and provide us with a complete list of all the paintings that are now located at Elite
Systematics.
I also need a copy of the paperwork establishing that the storage facility is in our joint control and that Elite

Systematics will respond to requests by us to view the paintings. And I need the contact information of the
person(s) I can contact in order to arrange an inspection, which I want to do this week.

Finally, pursuant to our March 24 stipulation, kindly advise as to the third party you propose to engage to
inspect the paintings and prepare a catalogue, which is to be done by May 23.
lR

From: Josh Schiller [mailto :]iSchiller'BSFLLP.com ]
Sent: Thursday, April 21, 2011 7:42 PM
To: Brooks, Daniel; Boden, Eric A.; Haeri, Sandy
Cc: Jonathan Schiller; George Carpinello; ’[e-mail] ; ’Hammerman, Dara’; Weinberg-Brodt, Chaya
Subject: RE: Cariou v. Prince, et al. - 04-19-11 Letter from Daniel J. Brooks

Dear Dan,
In response to your letter dated April 19, 2011, we propose moving the "Paintings and certain other items" to
Elite Systematics. Their address is:
Elite Systematic Arts.
41-18 Berrian Blvd.
Long Island City, NY 11105
Phone: [phone]
Fax: [phone]

By our calculation, 45 days after the March 24 stipulation was signed would be May 8 (which is a Sunday and
also Mothers Day) and we therefore propose to move the paintings on the next business day May 9. Please let
me know if that is acceptable.
Elite Systematics is a specialized storage facility where either party will be able to inspect all of the "Paintings
and certain other items." As I understand, if either party wishes to view the works they will set them up for
viewing upon request.
If you can confirm this location, then we will make the necessary arrangements and have them moved. I will
have to get back to you about the other questions raised in your letter ofApril 19.
Best,
Josh

From: Haeri, Sandy [mailto :SHaeri'Schnadercom]
Sent: Tuesday, April 19, 2011 3:35 PM
To: Jonathan Schiller; Josh Schiller; George Carpinello; ’[e-mail]
Cc: Brooks, Daniel; Boden, Eric A.
Subject: Cariou v. Prince, et al. - 04-19-11 Letter from Daniel J. Brooks
Dear Counsel:
I attach a copy of Mr. Brooks’ letter to you regarding the above matter.
Thank you.
Very truly yours,
Sandy Haeri, Secretary
Schnader Harrison Segal & Lewis LLP
140 Broadway, Suite 3100
New York, NY 10005-1101
Main: 212-973-8000
Direct: 212-973-8112
Fax: [phone]
This e-mail message is for the sole use of the intended recipients and may contain confidential and privileged information. Any unauthorized review, use, disclosure or
distribution is prohibited. If you are not the intended recipient, please contact the sender by reply e-mail and destroy all copies of the original message.

RS (t;irouhr ftO L)isokwure. T
i rlf O ffll VOLA

C

effachments)
fi

Cfl

it: not

C

intendd o: wi hen
v ra

,

’

I

I

II

Ill

000/up Ioiu

a

i:u

C

V

C,

flil

ng to fifi

fl;:fl,f’wi wron

yiu

(Cu )::))

with eny ieq iron CC tn imposed by the IRS, we
in P
r
i e
w dnc e
be uend, end connot be und lot the purnoso of (I) evoiding

corfltoflee

o

c{u;kpu,’p:

/ I
o fi) pmothd.
II

P

’incm,g ,m’l,,, gm .v

bV CU
11 1i , , :11
cung
’ v - n

cC1v

nm,

’i’. s.it

,m P

11151’ 1’"

’

’S

ot hoi

d’

’no

On ,mj

<PPSflP/

W Ii

1

’,

s,01

1/151 lm5 lIds/fl

I/UflI10

’vm, C I’
c’ mm

U

m,

/fIh.n,’rmo

’

S ’V

Ic

’

"

clmvI,)s’o,sCv mlnmaon
NC tm’ if O ie cadu
.
undo <Cut
, I

mn Cl an"

’II "
moe

01 ’1)111 "I "il P
1 ’lIl
soul 1 mc u

’m so s<

"II

fill, (111’

1",,

’Ii

011

S

"1

1’

1

1

11,1"

I’S

,,i ’ ,I

,

pw0 i

’S 1

"
’S

’1,111<1 lIlY I, 0

u’,

’I

I’

1’,

p 1/11 ,

’

In fllis

immmumei iics’o

i mull’s m

/

1’ I’S I

1 ’1< ’S

flY U/’.

111

,

.m’’ n
;’lm

’go

PPSU. ’’/0 i fi fimir. ’/’)fl t h at

PiPO C

1/
n1
f , ih/fl piy ’my ii

’1,0

II
’PlO’) P

flss

(A

III

1

’I

",I

’1<,

’

J’,

’’

,,

~s
)’’’i’’

,’ 1 u
’l,,

’,,<’’i",l(’iij

’I’,’,)’ sicy

’’P’l’m,l 101
i/S/mu

,

fin
iV

P1

’1

EXHIBIT D

CONFIDENTIAL
withers berg man LLP
March 28, 2011
Via Federal Express

430 Park Avenue 10th Floor, New York, New York 10022-3505
Telephone: [phone] Fax: [phone]

R ETED
Re: Cariou v. Prince, 08 Civ 11327 (DAB)

Dear
This firm is counsel to Gagosian Gallery and Larry Gagosian. At the direction of the Honorable
Deborah A. Batts, we are writing on behalf of Gagosian Gallery, Mr. Gagosian, and at the request of
Boies Schiller & Flexner, counsel to Richard Prince, to notify you as an owner of a Painting from the
Canal Zone series created by Richard Prince of the ruling In the Court’s Memorandum and Order
issued on March 18, 2011 (copy enclosed) that, in the opinion of the Court, the Paintings in the
Canal Zone series "infringe the copyright in the Photographs [as defined in the Memorandum], 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)" in the public.
Gagosian Gallery, Mr. Gagosian, and Mr. Prince respectfully disagree with the Court’s ruling, and on
Friday, March 25, 2011 filed with the United States Court of Appeals for the Second Circuit, the
enclosed Notice of Appeal confirming their intention to appeal the Court’s decision, including all
aspects of its Order pertaining to owners of the Paintings.
Sincerely,
Hollis Gonerka 8art
HGB\cl
Enclosures
cc: BY PDF (without enclosures)
Ralph Lerner, Esq.
Jonathan Schiller, Esq. - Counsel for Richard Prince
Joshua Schiller, Esq, - Counsel for Richard Prince

Withers Bergman ILP
Greenwich: [phone]
New Haven: [phone]

direct line: [phone]
direct fax: [phone]
e-mail: hollis.bart'withers,us.00m
admitted In New York and Texas
document number: 0N0041 810002-US-I 067771/1

document number: NY23802/0005-US-1 067944/1

Withers Lu,
London: [phone]
Geneva: [phone]
Studio Legale Associate con Withers v.p
Milan: [phone]
Withers stst
Hong Kong: [phone]
Withers uvi
British Virgin Islands: [phone]
www.witherswortdwide.com

Ims.111!Plum

Case 1 :08cv-1 1327-DAB Document 79 Filed 04/20/11 Paqe 1 of 1

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

---------------------x

USDC SDNY
DOCUMENT
ELECFRONCALLY ’FILED
DOCTh____________
DATE FILED: /2 )
;7

PATRICK CARIOU,

-

Plaintiff,
-against-

08 Civ. 11327 (DAB)
ORDER

RICHARD PRINCE, et al.
Defendants.
--------

- -----------

x

DEBORAH A. BATTS, United States District Judge.

The Court is in receipt of Defendants’ letters dated April
14, 2011 and April 15, 2011, and of Plaintiff’s letters dated
April 15, 2011 and April 18, 2011.
Defendants’ request for a stay of these proceedings is
DENIED, and Parties shall appear before this Court for the May 6,
2011 status conference as previously scheduled.

SO ORDERED.
Dated:

New York, New York
April

2011

Deborah A. Batts
United States District Judge

-p

UNITED STATES COURT OF APPEALS
for the
SECOND CIRCUIT

At a Stated Term of the United States Court of Appeals for the Second Circuit, held at
the Daniel Patrick Moynihan United States Courthouse, 500 Pearl Street, in the City of New
York, on the 25th day of April, two thousand and eleven,

Richard Prince,

ORDER
Docket Number: 11-1197

Defendant - Appellant,
Gagosian Gallery, Inc., Lawrence Gagosian,
Defendants - Cross - Defendants - Appellants,
V.

Patrick Cariou,
Plaintiff - Appellee.

APPELLANT, Gagosian Gallery, Inc., Lawrence Gagosian, & Richard Prince, have filed a
scheduling notification pursuant to the Court’s Local Rule 31.2, setting June 30th, 2011 as the
brief/joint appendix filing date.
The scheduling notification hereby is so ordered.

For The Court:
Catherine O’Hagan Wolfe,
Clerk of Court
SECOND

EXHIBIT G

Case 1:08-cv11327-DAB Document 81 Filed 05/04/11

Page 1 of 1

USDC SPNY
DOCUMENT
ELECrRONCALLY FILED

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

---------------------x
PATRICK CARIOU,

DATh FIDf,,!/

Plaintiff,
-

08 Civ. 11327 (DAB)
ORDER

against-

RICHARD PRINCE, et al.
Defendants.

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

In light of the fact that Defendants have appealed this
Court’s determination as set out in the Order dated March 18,
2011, and the fact that briefing in the appeal is due on June 30,
2011, the conference previously set for May 6, 2011 is adjourned
sine die. Parties are to notify the Court when the appeal in
this matter has been resolved.

SO ORDERED.
Dated:

New York, New York
May 4, 2011

Deborah A. Batts
United States District Judge