A new year, a new Richard Prince appropriation and fair use dispute.  Readers will recall both the controversial 2013 Second Circuit decision on Prince’s dispute with Patrick Cariou over the latter’s Yes, Rasta photographs that Prince altered, defaced, and otherwise rearranged for his Canal Zone series.  Last year Prince raised the profile of this provocative exploration of the bounds of copyright with the high profile “Instagram” show in which he enlarged Instagram posts and sold them for north of $90,000 each.  Prince has now been sued for copyright infringement by photographer Donald Graham, whose image was used in one of those works.  Will this be more of the same, or will Prince suffer a reversal of fortune?  Even adopting a liberal interpretation of the 2013 opinion, it looks from here like he may have a problem, but the final word will almost certainly not come for quite some time.

To recap how we got here: in 2011, Cariou sued Prince and won a permanent injunction and an order that Prince’s works be impounded and destroyed.  In 2013 the Second Circuit reversed, focusing on the “purpose and character” factor of § 107 of the Copyright Act (17 U.S.C. § 107), or what has become known as the transformativeness test, particularly with respect to visual art.  The Second Circuit found as a matter of law that twenty five of the works by Prince were clearly transformative.  They contrast “crude and jarring” appearance with Cariou’s “serene” photographs of “natural beauty”, as well as palette, scale, and media differences.

Last year, a show that began in 2014 gained notoriety.  Prince staged an exhibition of Instagram posts, blown up, often with comments that included Prince’s own.  Most of the attention (including our own analysis here) focused on what looked like incorporation of original Instagram posts and photos.  Prince’s overall intent seemed to be one of defiance; relying on the Second Circuit victory, he was taking that logic to its extension, namely, the disavowal of any particular artistic reason for the transformation.  Reactions ranged from bemused to grateful to subversive; the Suicide Girls started selling for $90 what Prince was offering for $90,000.

Graham has now called Prince to account for this effort.  In a strongly-worded Complaint filed last week in New York federal court, Graham alleges that one of the Instagram works used his (Graham’s) photograph without permission.  From the Complaint:

In May of 1996, Mr. Graham, at his own direction and expense, spent approximately two weeks trekking through the villages and mountains of Jamaica, carrying with him his photography equipment and mobile studio, in order to capture photographs of the Rastafarian people in their surrounding environment. Mr. Graham worked fervently to convince the Rastafarians that became the subjects of his photographs that his purposes were artistic and to overcome an inherent distrust due to his “outsider” status. Mr. Graham’s efforts culminated in a series of photographic works including the Copyrighted Photograph.

Graham notes that the version of the photograph that he offered for sale was large scale, roughly 4’ by 5’.  It is this photograph that Prince incorporated into the Instagram show, the Complaint alleges, with only minor modifications of cropping and framing, and slight re-sizing.  Graham alleges that Prince started from someone else’s unauthorized Instagram post of his photo.  It is not clear if Graham has taken issue with that person.  Acknowledging Prince’s success in the Cariou case, the Complaint noted that the substantiality and amount of copying in that case varied widely, drawing an implicit distinction to Graham’s work.  Gagosian Gallery, Larry Gagosian personally were also sued.

Is this fair use?  I think it’s a much harder case to make than in the Cariou dispute.  The copying is much more straightforward and the alterations are far fewer.  Where Cariou’s images were literally ripped into pieces, or defaced, or plastered with pornography, Graham’s is copied wholesale and just framed with a new element.  The deciding point may well turn on whether that is somehow transformative, but again, if that is enough, where would one draw the line with posting Instagram images of copyrighted material?

Graham has also taken care to take a wider view of the four fair use factors.  The 2013 opinion was criticized for privileging Prince’s clientele who, the Second Circuit seemed to think, differed from Cariou’s and therefore posed no threat to the market for Cariou’s work.  Given the Second Circuit’s recent Google Books decision and its renewed focus on (or at least balancing with) that fourth factor (the effect on the market for the copyrighted work), Graham has framed the Complaint carefully in terms of the kinds of gallery shows he would host, for which the Instagram work could be a substitute.

Having watched Prince’s years-long effort to push these boundaries, this battle will presumably continue for quite a while, and someone will probably end up taking this case to the Second Circuit.  Prince’s prior victory does not guarantee a result here, Jeff Koons can attest (though favorably in his case) that appropriation cases are not all the same and sometimes the tide turns.

Finally, though the Complaint makes no mention of it, there is another theory about what Prince has done.  The Instagram Terms of Use state (bold added):

Rights

5.       The Service contains content owned or licensed by Instagram (“Instagram Content”). Instagram Content is protected by copyright, trademark, patent, trade secret and other laws, and, as between you and Instagram, Instagram owns and retains all rights in the Instagram Content and the Service. You will not remove, alter or conceal any copyright, trademark, service mark or other proprietary rights notices incorporated in or accompanying the Instagram Content and you will not reproduce, modify, adapt, prepare derivative works based on, perform, display, publish, distribute, transmit, broadcast, sell, license or otherwise exploit the Instagram Content.

Could Graham argue that he is the intended third party beneficiary of that agreement (by which Prince would presumably be bound by using Instagram)?  It certainly seems colorable, but it is not on the table yet.