Appropriation Of Photos: Where To Draw The Line – Part 2 (Law360)

05/04/2012

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Law360, New York (May 04, 2012, 1:31 PM ET) -- In the first part of this article, I described the golden age of just a few years back, when photographers and other providers of content never worried about whether the general public would copy and distribute their works without paying for them. Technology protected their output, as did the copyright law, which provided a relatively narrow exception for fair use — the right to "borrow" from the work of others for limited purposes. Then came the electronic revolution, appropriation art came into vogue, and due in part to both, there appeared some new, relaxed and potentially disruptive thinking about fair use.
 

Appropriation or Inappropriate?
 

Most important in the context of appropriation of works of visual art is the first fair use factor of Section 107 of the Copyright Act. According to Judge Pierre N. Leval, the first factor

…raises the question of justification. Does the use fulfill the object of copyright law to simulate creativity for public illumination? ...

I believe the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative.[1]

Transformative is a big word, backed by a big concept — one that appears to create a daunting requirement. Essentially, the new cannot continue forward from the old but take it in a different, typically unforeseen direction:

The first fair use factor calls for a careful evaluation of whether the particular quotation is of the transformative type that advances knowledge and the progress of the arts or whether it merely repackages, free riding on another's creations. If a quotation of a copyrighted matter reveals no transformative purpose, fair use should perhaps be rejected without further inquiry into the other factors. Factor One is the soul of fair use. A finding of justification under this factor seems indispensable to a fair use defense.[2]

As already noted, courts view it as almost obligatory to review all four statutory factors, and it has been held that "a transformative use is not strictly required for the Defendant to establish the defense of fair use."[3] But in the decades that have followed Judge Leval's piece, even though it is not a given that a defendant is sure to lose if his work does not transform the expression in the primary work, if he has done so, and he can more or less hold his own in the application of the other factors, he has a good chance of prevailing. It is largely for that reason that transformativeness has become so important, particularly in the Second Circuit, where the following cases were decided.

The New York-based artist Jeff Koons has been as influential in the development of the law of fair use, however unintentionally, as he has been in the development of contemporary art. Much of the art that made Koons famous relies heavily on his role as a commentator on the banality of everyday life. The commentary belongs to him, but he makes a point of subcontracting the job of actually creating art to others, which is considered acceptable under contemporary standards about what is art and who is credited with its making.[4]

With so much banality and other byproducts of modernity out there to use as source material, the temptation appears overwhelming to Koons and others to appropriate from existing works rather than to prop a blank canvas onto the easel and see what comes. There is precedent for that. Andy Warhol used existing news photographs, which he silkscreened and tinted, as the bases of many of his iconic works, including portraits of Jacqueline Onassis and Elizabeth Taylor, his gruesome image of an electric chair, and a series of tinted images of wrecked automobiles. And Warhol's reputation — and the value of his works, have continued to climb since his death in 1987.

Koons, whose appropriation esthetic is championed by the copy left, traded fire with the proponents of copyright in two important cases, and scored 50 percent. He lost in Rogers v. Koons et al.[5] The work at issue, his sculpture called "String of Puppies"; it consisted of a seated man and woman holding a total of eight German shepherd puppies. Other than the fact that the puppies are blue, the piece looks quite realistic in a deliberately cute manner.[6]

The source of the work was a photograph by a relatively obscure but respected photographer named Art Rogers. He had photographed a neighbor and his wife holding the puppies and made various uses of the image, including as an illustration on a note card, which is where Jeff Koons found it. Koons directed people who make his art to follow the photograph, which was in black and white, the key variation being the portrayal of the puppies in blue.

The court went through the four statutory factors to determine if there was fair use, and it concluded that the Koons sculpture infringed upon the Rogers photograph. It did not help his case that Koons tried raising the defense of parody — that he was claiming to be playing a visual joke on the original. The court easily dismissed that claim with a firm but gracious rebuke: "The circumstances of this case indicate that Koons' copying of the photograph 'Puppies' was done in bad faith, primarily for profit-making motives, and did not constitute a parody of the original work."[7]

In the autumn of the year 2000, I chanced upon an exhibition of mural-sized paintings by Jeff Koons at the Guggenheim Museum in Berlin. I could hardly have known that I was seeing the public debut of a copyright controversy. One of the works, "Niagara," consists of four pairs of female legs and feet dangling above a sort of safety net of junk food. It turned out that the source for one set of these celestial appendages was a photograph created for a Gucci advertisement for sandals. Koons had someone copy the feet, change their orientation, remove the background and change the medium from magazine photograph to oil on canvas.

The photographer, Andrea Blanch, sued Koons and the museum, and this time Koons won. Stated the court: "The test for whether 'Niagara's' use of 'Silk Sandals' is 'transformative,' then, is whether it 'merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or a different character, altering the first with new expression, meaning, or message.'"[8]

The feet and sandals Blanch photographed were the core of her expression, which was to advertise and sell Gucci sandals. In the Koons painting, even though they were obviously the same feet and sandals, they comprise an important but still relatively small portion of the total image. As intended, that new visual presentation succeeded in delivering an entirely different message.

A potentially significant case, now on appeal, involves the artist Richard Prince, the man who perhaps more than anyone else opened the door for the appropriators of the photography of others to become famous and seriously rich. His quest began in earnest when he "rephotographed," whole and unaltered, a 1975 photograph of a nude and underage Brooke Shields taken by Garry Gross, a respected but relatively obscure photographer (Do we see a pattern here?), and displayed it as his own under the title "Spiritual America."

Prince got away with it that time (there was no lawsuit for copyright infringement), but when he appropriated and displayed images by Patrick Cariou, the photographer sued Prince, his gallery, and the gallery owner.[9] By then, Prince had under his belt a solo show in the spiral rotunda of the Guggenheim flagship museum in New York, and his gallerist was Larry Gagosian, considered by many the most influential of our time on the prices commanded by contemporary art.

Cariou had spent about six years with Rastafarians in Jamaica; he had gained their trust and made a series of photographs of them published in a book titled "Yes, Rasta." Prince took 29 of the pictures in whole or part, painted bits of color on them and made other alterations, put guitars into the hands of the Rastafarians, and made an exhibition of it titled "Canal Zone" (2008) that grossed nearly $10.5 million in cash and another $6 million to $8 million in trade.[10] Cariou had an exhibition lined up at a New York gallery, only to see it canceled following the announcement of the exhibition of the work of Prince.[11]

In response to Cariou's motion for summary judgment, Prince had the nerve to contend that the Cariou photographs were not creative enough to deserve copyright protection. Coming from the master of photographic appropriation, that defense was little more than hubris, something that federal courts, like the gods, are wont to punish. After the court brushed aside the lack of requisite creativity defense, it moved on to the defense of fair use.

Stated the court, "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."[12] And infringing they indeed were, held the court, finding against Prince on not only the first factor but on all three others, and ordering the confiscation and destruction of the valuable works of art and related materials still in the defendants' possession, custody or control.[13] The case is on appeal to the Second Circuit Court of Appeals, and it will be interesting to see if the appellate court agrees that the works at issue needed to comment on the primary works.

My fourth case is the one that never was, at least in the case reports on fair use. The artist Shepard Fairey created a poster called "Obama Hope" to help support then-Sen. Barack Obama during his 2008 presidential campaign. After some confusion, it was determined that the photographer Mannie Garcia of the Associated Press made the underlying work used by Fairey to make the poster.[14] The AP was preparing to sue, but Fairey got the drop on it with a declaratory judgment action in the Southern District of New York.

The case became an appropriation art cause celebre. Shortly after the case was filed, Fairey appeared at the New York Public Library with his then-counsel, Lawrence Lessig, the law professor, now at Harvard, who is generally considered the intellectual leader of the American copy left. It was a triumphal night for counsel and client, at least in the court of public opinion. The crowd that packed the large auditorium appeared all too willing to reach out to Fairey and kiss the ends of his robes.

The gallery owner James Danziger, meanwhile proved on his blog that Fairey had used not merely a photograph by Mannie Garcia but a very particular one; a portrait of the future president, with the American flag in the background. Fairey had been claiming all along that he used a different image from the same series: a double portrait of Barack Obama and George Clooney, the implication being that, because one does not lightly leave George Clooney on the cutting room floor, his excision was evidence of transformation.

It turned out that Fairey not only had lied but he had altered evidence, causing Lessig to resign (but not before leaving Fairey in the hands of skilled counsel). The case was ultimately settled, and I think that it is just as well. As I have earlier written, I was not happy with the facts of the Fairey case, independent from those surrounding his behavior as a litigant.

And this is why: Although I could not find much literature on the topic, a question about transformation and method of perception needs to be raised: Do you look at the primary and the secondary work in the manner in which each is most likely to be perceived or in the manner in which each is intended to be perceived in its own optimum form? Almost always, the best way to see a photograph is as a professionally made photographic print. The truest way to see a political poster such as the one Fairey made is as a printed placard.

When James Danziger and I stood in his gallery and saw a photographic print of the Mannie Garcia image hanging near to an original "Obama Hope" poster, I had to go back and forth several times between the two works to satisfy myself that the latter was based on the former. Fairey had isolated the image of the future president, had added a lot of color to it and gave it a look different from that of a photograph.

However, when you see the two works side by side on a website, they appear more similar, in part because the differences in the medium of optimal presentation for each are not considered when they are posted together on an electronic screen. When you see the two works in black and white, which, admittedly, is not how either of them was intended to be shown, the similarity becomes obvious and the case for infringement more compelling. So, which should it be?
 

When Art Becomes Commentary
 

One of the problems with appropriation art is that lawyers and judges are asked to look at fair use in connection with appropriation in an "art versus art" paradigm. But appropriation art is more about art as commentary than it is about ars gratia artis or any other traditional artistic intention.[15] To the extent that appropriation art can be considered art, you can argue that it must be placed within the category of artistic commentary about art, to be examined for purposes of fair use as commentary first and as art second (perhaps a very distant second).

By that analysis, art by appropriation artists should therefore be seen as works of commentary and criticism in nonliterary form. That raises a related problem: Commentary and criticism are types of expression intended for protection from liability for infringement under the first factor of Section 107.

So whenever an appropriation artist is challenged to explain what he thought he was doing by putting the works of others on a wall and calling it his own or otherwise "borrowing" from those works, his best answer, if he could support it, would be that he was making commentary — whether by way of commentary on the primary works he has appropriated or their subjects, or commentary on the very nature of what is or can be ownership of a work.[16] If his lawyers could turn that into a successful legal argument, would the artist of the secondary work win under the first fair use factor? Fortunately the argument for the per se fair use by appropriation art has bounced off the judicial wall against which it has been thrown.[17]

Is it true, just the same, that there must be at least some kind of commentary at work for a fair use claim to have a chance?[18] That does not explain the victory by Jeff Koons in the Blanch Gucci sandals case, and I will submit that the commentary requirement, if it truly exists as a requirement, will face dilution as more and more people appropriate or steal (as you prefer) more works by others, particularly those found electronically. Because you can hardly work as a photographer these days without putting your work online, professional photographers have to contend with infringement as surely as store owners have to contend with shoplifting.[19]

I offer the foregoing reflections as a caution in my role as a lawyer. As a photographer, I am mindful that fair use is often useful for what we do, and for that reason, we should take care not to show unnecessary disdain for it. That is particularly true for photojournalists, street photographers and others who find their inspiration in the ready-made world. I recall a photograph I made of Jeff Koons in 1991 at an opening at the Sonnabend Gallery, in New York. It shows the artist camping it up for photographers in front of one of his works, which is shown in its entirety in my black-and-white photograph, save for the parts obscured by Koons himself.

The subject of the Koons work, which is in color, is the artist in flagrante delicto with his then-wife. Putting aside the implied consent by Koons to the making of my photograph, I believe that the use of his work within mine would be deemed fair use; key reasons would be that, under the first factor, (1) my image is transformative, and (2) it comments on the Koons work (and Koons himself). Moving forward from there, I would like to offer the following experiment:

By following the links below (Series 1 – Polo and Series 2 – Watchmaker), you can find two journeyman-caliber photographs I made in the course of my work as a photojournalist. Each was published in a separate issue of Haute Living magazine. One is pure sports photography: a game of polo played on a frozen lake in St. Moritz, Switzerland. The other photograph, also from Switzerland, shows a watchmaker at work in a watch factory outside Geneva. I am the creator of both works and the holder of the copyrights in them. I have asked an accomplished graphic artist to appropriate my photographs and then make five successive variations of each, using Photoshop.[20]

Along the progression of each of those five variations, more and more changes were made. The intention was to alter not only the appearance of each image but its purpose, meaning, and visual effect. Are the results in any way commentary on my originals, and does that even matter? The bigger question is, for each, at which point along the way from version one through five does the secondary work cease to be a derivative (for which I would have the right to require a license of my underlying work) and become transformative under the first fair use factor of Section 107 (giving me no rights related to the secondary work except perhaps for the polite request of some attribution)?[21]

My own view is that, in the golden age, I would probably have challenged any of the uses shown here. Working under the new thinking on fair use that the times have forced upon us, I am not sure that the lawyer in me would advise the photographer in me to do that in all cases, even though I continue to believe that I should win in both my capacities.

Does the new thinking really mean that, at the very least, the final version of each series would now be considered fair use, even if, just a few years ago, the defense would likely have been rejected or is something more still needed, such as authentic commentary on the original? I invite readers to submit their views to me at abehr@phillipsnizer.

--By Alan Behr, Phillips Nizer LLP

Alan Behr is a partner in Phillips Nizer's New York office.

The author would like to acknowledge the assistance of Dr. Jan Philipp Oppermann, a graduate of the Universitaet Bonn and Universitaet Wien; Andre Buchholtz, a law student at the Freie Universitaet Berlin; and Christopher Harke, a law student at the Humboldt Universitaet zu Berlin.

The opinions expressed are those of the author and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev., 1105, 1107, 1111 (1990).
[2] Leval, Supra, 1105, Id. at 1116.
[3] Salinger v. Colting, 641 F. Supp. 2d 250 (S.D.N.Y. 2009) (rev'd on other grounds 607 F.3d 68 (2d Cir. 2010).
[4] The actual making of the art is called fabrication, and the people who do it are consigned to the role of craftsman, as opposed to that of the artist, who may have not even touched the piece before its completion. Contrast that with photography: the last I looked, the general rule was, whatever the amount of post-production may be involved, in order to be deemed the artist, your finger must have been the one that pushed the shutter release.
[5] 960 F.2d 301 (2nd Cir. 1992).
[6] As a critic, I can say that I have found much fun and cleverness in works by Koons, but in this one, looking at it as art and not infringement for the moment, he has gone a bit too far: the charm of the commonplace (that is, the banal) is rendered foolish by a thin but durable application of contempt.
[7] Id. at 310. Consider that, back in 1841, Justice Joseph Story expressly removed any consideration of "bad intentions" by the defendant in copying the letters of President Washington but still found there was no fair use. Folsom, 9 Fed. Cas. at 349.
[8] Blanch v. Koons et al., 467 F.3d 244, 253 (2nd Cir. 2006) (citing Campbell v. Acufff-Rose Music Inc. 510 US 569, 579 (1993)).
[9] Another defendant, Rizzoli International Publications Inc., was voluntarily dismissed from the action.
[10] Cariou v. Prince, 784 F. Supp. 2d 337, 350 (S.D.N.Y. 2011).
[11] Said the court on the dilemma faced by Christiana Cella, Cariou's gallerist: "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. She also planned to have Yes, Rasta reprinted for a book signing to be held during the show at her gallery. However, when Celle became aware of the Canal Zone exhibition at the Gagosian Gallery, she cancelled the show she and Cariou had discussed. 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, and because she did not want to exhibit work which had been 'done already' at another gallery." Cariou v. Prince et al. 784 F. Supp. 2d,337, 343 (S.D.N.Y. 2011). What the court did not cite, because it may not be on the record, is that, here again, the subtleties of class among artists has come into play. The first version of "Canal Zone" was shown not at a gallery but at the Eden Rock, one of the great resort hotels of the world, perched over a bay on the exclusive Caribbean island of Saint Barthelemy. In order to launch "Yes, Rasta" as a book, Cariou went to a Brooklyn-based publisher known for requiring its artists to subsidize publication.
[12] Id. at 349. I am troubled by the statement that the Prince works are transformed if they do more than "merely recast, transform or adopt," which I read to be a circular test for transformation.
[13] Richard Prince will do just fine regardless, but fame as an appropriation artist has its own burdens. I once saw Prince at a bookstore in East Hampton, another exclusive seaside resort. He sat before a line of people who brought up to him postcards of all kinds to sign, thereby turning whatever ordinary art they have in their hands into something of the nature of work by Prince. To the extent that doing so created value, it went entirely to the owners. There sat Prince, like a penitent schoolboy, signing his name dozens of times over — Sisyphus with a marker pen. When it came my turn in line, I told him I had nothing for him to sign, that I was a critic who had recently written about him, and that I just wanted to shake his hand. He offered a hearty smile of relief, and we shook hands.
[14] Why Fairey, who lists his profession as artist, would not just draw his own picture of Obama is a question that, by the etiquette of appropriation art, one simply does not ask.
[15] Generations have passed since artists routinely declared "beauty" as their primary goal. When beauty is shown now, it is often as ironic commentary.
[16] Alan Behr, Copyright Law vs. Art and the Papal Censor of the Kissing Nun, Culturekiosque (Apr. 18, 2008), http://www.culturekiosque.com/art/artmrkt/copyright_law_photography173.html]
[17] Rogers, 960 F.2d at 310, Cariou, 784 F. Supp. 2d. at 349.
[18] See LaChapelle v. Fenty, 101 U.S.P.Q.2d 1283 (S.D.N.Y. 2011)
[19] Travis Marshall, Unfair Use, American Photo, March/April 2012, at 50, 77.
[20] The changes in Photoshop are by the talented Michael-Rene Prince of Alston & Bird LLP, to whom I offer my thanks.
[21] For the purpose of this analysis, I will stipulate for now that, in the imaginary lawsuit involving the images, it is a dead heat on the other three factors.

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Appropriation Of Photos (Part 1)