Exploring the Bounds of Fair Use: Graham v. Prince

In December 2015, professional photographer Donald Graham filed a lawsuit  in the U.S. District Court for the Southern District of New York against well-known “appropriation artist” Richard Prince for copyright infringement based on Prince’s incorporation of one of Graham’s photographs into his artwork without permission.

Graham’s work, titled Rastafarian Smoking a Joint, was a black and white photo taken while Graham was in Jamaica “to depict ‘the Rastafarian people in their surrounding environment.’” Prince’s piece, Untitled (Portrait) (“Untitled”), depicted a screenshot of Graham’s photo in an Instagram post. In addition to the photo, Untitled included both the Instagram user’s caption for the photo, along with a new comment created by Prince and “other elements of the Instagram graphic interface: rastajay92’s username and comment, the number of ‘likes’ rastajay92’s post had received . . . and the number of weeks that elapsed between rastajay92’s post and Prince’s screenshot.”

Prince, who’s no stranger to defending against copyright infringement suits, claimed that Untitled was so transformative that use of Graham’s photo was allowed under the fair use doctrine. Prince filed a motion to dismiss Graham’s complaint arguing that all four fair use factors of the fair use test weighed in his favor. The Court however, denied Prince’s motion, finding that all four factors weighed in Graham’s favor and against fair use.

Why did Prince’s fair use defense fail?

  1. Untitled is not transformative, but is merely a screenshot with insubstantial aesthetic alterations.

Prince argued that Untitled was transformative due to the potential messages it conveyed, such as “a commentary on the power of social media to broadly disseminate others’ work” or a “condemnation of the vanity of social media”, which were distinct from Graham’s attempt to “capture the spirit and gravitas of the Rastafarian people.” The Court disagreed with Prince, finding instead that Untitled was not “so aesthetically different from the original[]” to pass the “reasonable viewer” test despite the different messages that were portrayed. The Court further reasoned that “a [reasonable] observer must conclude that Prince’s Untitled does not so ‘heavily obscure[] and alter[]’ Graham’s Rastafarian Smoking a Joint that it renders the original photograph ‘barely recognizable.’” (emphasis added).

The Court noted that “the primary image in both works” was Graham’s original photograph which was “not materially altered” by Prince in any way. Prince’s addition of “de minimis cropping” and a “cryptic comment” still resulted in Graham’s original photograph and consisted of “alterations” that were “materially less significant than those that were found to be insufficiently transformative.”

Because Prince’s “alteration” did not amount to “significant aesthetic alterations” which would help qualify Untitled as transformative, the Court could not find that the first fair use factor weighed in Prince’s favor.

  1. The remaining fair use factors weighed against Prince.

The Court found that the other three fair use factors also weighed against Prince’s fair use defense. Regarding the second factor, which focuses on the nature of the original work, the Court noted that “‘expressive or creative’ and ‘published’ [works] are ‘closer to the core of intended copyright protection that others”, thereby making it harder to establish fair use when works possessing these characteristics are copied. Because Graham’s work was both creative and published, which defendants did not dispute, the Court found this factor weighed in favor of Graham.

With regard to the third factor, examining the amount and substantiality of the portion used, the Court noted that “verbatim copying of an entire copyright work militates against a finding of fair use” unless it’s needed “to effectuate a transformative purpose.” The Court found that Untitled “reproduce[d] [Graham’s work] in its entirety, in a size that enable[d] the original to retain its full aesthetic appeal” without establishing a transformative purpose. The Court also found that Untitled’s use of Graham’s work wasn’t “reasonable in relation to the purpose of copying.”  As a result, the Court concluded that the third factor also favored Graham.

Finally, with regard to the fourth factor — the effect of Untitled on Graham’s potential market — the Court found that the market and audience for both Graham’s and Prince’s work were the same, and that Prince’s work could potentially serve as a substitute for Graham’s own work, despite Prince’s “alterations”. As the Court stated, “Untitled . . . can serve as [a] substitute[] because [it] present[s] the entirety of Graham’s photograph in the same sizes in which the photograph is sold by Graham, without obstructing or distorting it in any physical sense.” Thus, because both Untitled’s “target audience and the nature of the infringing content [was] the same as” Graham’s work, it was reasonable to assume a potential “usurpation” of the Graham’s primary market, thereby disallowing the fourth factor from weighing in Prince’s favor.

Key takeaways:

  • “Verbatim copying of an entire copyrighted work militates against a finding of fair use,” but may be necessary to “effectuate a transformative purpose.”
  • A court will find an effect on the potential market for the copyrighted work “when an accused infringer’s ‘target audience and the nature of the infringing content is the same as the original.’”

Since 2013 the Copyright Alliance has partnered with New York based Cravath, Swaine and Moore LLP to assist in finding potential clients for an externship program at Columbia Law School to provide pro bono legal representation to individuals and small businesses in lawsuits involving cutting edge copyright issues. This case was one of the cases selected through that program. 

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