A Win For the Good Guys

Although I have been a lawyer for just shy of 40 years, by this time in my career it’s pretty unusual for me to get excited about judicial decisions and opinions. Well, the Honorable Deborah Batts, of the U.S. District Court for the Southern District of New York, recently issued an opinion that has me smiling and thinking “Way to go!” The case is Patrick Cariou vs. Richard Prince, Gagosian Gallery, Inc., Lawrence Gagosian, and Rizzoli International Publications, Inc. (the claim against Rizzoli was eventually dropped), and here is why I have just joined the Judge Batts Fan Club.

Patrick Cariou is a professional photographer who spent six years with the Rastafarians in Jamaica. During that time he got to know and be trusted by the Rastafarian community. He photographed them extensively and eventually published some of those photographs in a book called Yes, Rasta. Richard Prince is a well known and enormously successful “appropriation artist.” “Appropriation” is a euphemism for theft or infringement. What that means is that he takes images created by others and uses them for the basis of paintings and other works that he creates and sells for huge amounts of money. Often he simply takes an existing work and blows it up. For example, he recently took a photo of the Marlboro Man from an ad for Marlboro cigarettes, blew it up and sold it. He routinely does all of this without regard to the copyrights in the existing works, claiming that what he is doing is protected by “fair use.”

He has been able to get away with that—until now—because of the problems inherent in protecting copyrights: It is simply too expensive for most photographers and artists to sue, especially if they did not register their copyrights before the infringement. Another impediment is that often the copyright owner isn’t the photographer or artist because of work made for hire or copyright transfers to clients, and the owner simply does not have the same incentive to protect the copyrights that the creators have. For example, all of the photographs made for Marlboro ads are done as works made for hire, and the copyrights belong to Leo Burnett or Philip Morris, not to the photographers who created the images. Because of that, Mr. Prince has usually been able to get away with his infringements scot-free.

Then he made the mistake of ripping off a bunch of Patrick Cariou’s Rastafarian photographs. Among the uses he made was the creation of a collage of 35 of the photos on a wooden backboard, painting over some portions on some of the photos, using some of the photos in their entirety and some portions of others. He called the collage “Canal Zone.” It was shown at his gallery, used as part of a series of other artworks, and intended as the introduction to a screenplay. He then created the rest of the Canal Zone series, which consisted of 29 paintings, 28 of which included photos taken from Mr. Cariou’s book. All in all, he used at least 41 of Mr. Cariou’s photos in his paintings.

The gallery showed 22 of the paintings and printed and sold a catalog that included reproductions of many of the paintings as well as photographs of Mr. Cariou’s photographs in Mr. Prince’s studio. A gallery employee testified that she never asked about the source of the photographs or permission to use them.

At about the same time, Mr. Cariou was negotiating with a gallery owner for his own show, including a book signing and print sales of the Rastafarian photographs at prices to range from $3000 to $20,000 per print. However, when the gallery owner became aware of the Prince “Canal Zone” show, plans for the Cariou show were canceled because the Prince show had preempted the market for the images. She later testified that she did not want to exhibit work that had been “done already” at another gallery.

Mr. Cariou then sued Mr. Prince, Prince’s gallery, and the gallery owner. Prince moved to have his work declared by the court to be fair use, which is a defense to copyright infringement. A fair use determination is always done on a case-by-case basis and involves an analysis that considers at least four factors that are set forth in the fair use section of the Copyright Act (§107). These include the purpose and character of the infringing use, the nature of the copyrighted work, the amount and substantiality of the portion of the copyrighted work that is used, and the effect of the infringing use upon the potential market for or value of the copyrighted work. I will not bother you with a description of Judge Batts’ legal analysis, but the bottom line was that the Judge found that all four factors weighed in favor of Mr. Cariou, and against Mr. Prince.

The result was that Prince, the gallery, and the gallery owner were found to have infringed Mr. Cariou’s copyrights; the infringements were not protected by fair use; all of the infringing works were ordered to be turned over to Mr. Cariou; and there is to be a status conference on the question of how much money Mr. Cariou is entitled to for damages. Sometimes the good guys do win, and that makes me smile.

Victor S. Perlman is General Counsel to the American Society of Media Photographers, Inc. (ASMP). He has also served on the Boards of Directors of the Media Photographers Copyright Agency, Inc., the Copyright Clearance Center (CCC), and the Philadelphia Volunteer Lawyers for the Arts. Mr. Perlman has frequently appeared as an author in various publications, including Communication Arts and Popular Photography, and is co-author of Licensing Photography, published by Allworth Press. He has testified in Congressional hearings and proceedings held by the U.S. Copyright Office and the U.S. Patent and Trademark Office.