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Second Circuit Clarifies Transformativeness Standard for Copyright Fair Use
Practical Law Legal Update 7-526-6345 (Approx. 4 pages)
Second Circuit Clarifies Transformativeness Standard for Copyright Fair Use
by PLC Intellectual Property & Technology
| Published on 26 Apr 2013 • USA (National/Federal) |
In Cariou v. Prince, the US Court of Appeals for the Second Circuit held that the district court imposed an incorrect legal standard when it concluded that for a secondary work to qualify as a fair use, it must comment on the original artist, the original works or popular culture. The Second Circuit reversed the district court's grant of summary judgment to the plaintiff, and held that as a matter of law 25 of the defendant's works were protected as a fair use and remanded to the district court to determine whether five other works are entitled to a fair use defense.
Key Litigated Issue
In Cariou v. Prince, the key litigated issue before the US Court of Appeals for the Second Circuit was whether the US District Court for the Southern District in a copyright infringement case erred in denying the defendants' motion for summary judgement based on a fair use defense, granting the plaintiff's motion for summary judgment and issuing an injunction. In particular, the Second Circuit decided whether the district court applied an incorrect legal standard in concluding that for a use of a copyrighted work to be considered transformative and a fair use, the second work must comment on the original artist, the artist's work or an aspect of culture associated with either.
Background
In 2000 the plaintiff, photographer Patrick Cariou, published a book of photographs entitled Yes Rasta, featuring portraits and landscapes taken while he lived and worked among Rastafarians. A few years later, artist Richard Prince altered and incorporated several of Cariou’s Yes Rasta photographs into a series of paintings and collages called Canal Zone that was exhibited at the Gagosian Gallery. The gallery also published and sold an exhibition catalog with reproductions of Prince’s paintings.
In 2008, Cariou sued Prince, the Gagosian Gallery and the gallery's owner, alleging that Prince’s Canal Zone works and the exhibition catalog infringed his copyrights. The defendants raised a fair use defense. After the parties cross-moved for summary judgment, the US District Court for the Southern District of New York granted Cariou’s motion, denied the defendants’ motion and entered a permanent injunction. The court based its ruling on its conclusions that:
- For use of a copyrighted work in a new work to be considered transformative and qualify as a fair use, the new work must comment on or critically refer to the original work or relate to its historical context.
- Prince did not intend his works to comment on Cariou, the photos or aspects of popular culture associated with either.
The defendants appealed.
Outcome
In its April 25, 2013 opinion, the Second Circuit held that the district court applied the incorrect legal standard on whether a work is transformative. The court reasoned that:
- There is no legal requirement that for a work to be transformative it must comment on the original or its author.
- A second use can have a different purpose than those set out in the preamble of section 107 of the Copyright Act and still be considered a fair use.
Instead, the Second Circuit stated the proper standard to be that a new work's use of an existing work generally can qualify as a fair use if it provides new expression, meaning or message. The court then went on to find that all but five of the works at issue made fair uses of Cariou’s copyrighted photographs as a matter of law. The court remanded the case for the district court to determine whether the remaining five works were fair uses or infringing, applying the proper standard.
Purpose and Character of the Use
25 Works Held Transformative as a Matter of Law
For 25 of the works, the Second Circuit found the purpose and character of the use to weigh heavily in favor of fair use, concluding that they are transformative as a matter of law.
To assess whether the works are transformative, the court looked to how the works may be reasonably perceived. Adopting the Court of Appeals for the Seventh Circuit's approach in Brownmark Films, LLC v. Comedy Partners, the Second Circuit looked at Prince's and Cariou's works side-by-side and concluded that 25 of the new works:
- Have a different character.
- Give the originals new expression.
- Employ new aesthetics with creative and communicative results distinct from the originals.
Specifically, the court found that these works had a different and new aesthetic, composition, presentation, scale, and color palette as compared to Cariou's photographs.
The court noted the commercial nature of Prince's works but found it to have little significance because of their transformative nature.
Five Remanded Works
The Second Circuit found that five of Prince's works were not sufficiently different from the Cariou's photographs for it to determine whether they are transformative as a matter of law, and remanded the case for the district court to make that determination. The Second Circuit noted key differences in each of these works as compared to the original photographs. However, the court noted that they also shared key similarities.
Effect on the Potential Market for the Copyrighted Work
The Second Circuit also found the fourth statutory factor, the effect on the potential market for the copyrighted work, to weigh in favor of fair use.
The court found that the district court had erroneously focused on the market for derivative uses of Cariou's works, and that the proper inquiry is whether the secondary use usurps the original work's market. The court emphasized that the market includes only potential derivative uses that the original works' creator would in general develop or license others to develop. The Second Circuit concluded that Prince's works and the show of his works did not usurp the market for Cariou's photographs because:
- Prince’s audience is very different from Cariou’s.
- None of the evidence suggested that Cariou would ever develop or license secondary uses of his work in the vein of Prince’s artworks.
Nature of the Copyrighted Work
The Second Circuit found this factor to weigh against a finding of fair use because the works are indisputably creative and published, but gave it limited weight given the transformative nature of Prince's works.
Amount and Substantiality of the Portion Used
The Second Circuit found that Prince had used key portions of certain of Cariou’s photographs but that, because in 25 of his works, Prince transformed Cariou's photographs into something new and different, this factor weighed heavily in Prince’s favor.
The Second Circuit rejected the district court's finding that Prince’s taking was substantially greater than necessary, clarifying that the law does not require that the secondary artist take no more than is necessary.
Practical Implications
By clarifying the legal standard for transformativeness, the Second Circuit's decision provides some guidance for both artists considering reliance on fair use and copyright owners evaluating whether to sue for infringement. However, its decision to remand five of the works for determination by the district court also underscores the fact-specific nature of fair use analyses. Therefore, while this decision can be seen as a clear win for Cariou, it does not create any bright line rules and artists should carefully consider all specific facts before deciding to rely on fair use.
The Second Circuit's decision on 25 of the works as a matter of law is also notable. The dissent points out that in the typical fair use case the court should remand for reconsideration after correcting an erroneous legal standard.