3 August 2015
Notorious appropriation artist Richard Prince is back in the news, but this time, he is not the only one getting attention for his art. In his recent series titled New Portraits, Prince created "rephotographs" of Instagram "selfies" from famous and Internet-famous people: ink jet images of Instagram posts, printed on six-foot by four-foot canvases. As an art critic explained: "Prince finds an image he likes, comments on it, makes a screen-grab with his iPhone, and sends the file—via email—to an assistant. From here, the file is cropped, printed as is, stretched, and presto: It's art."1 These works have reportedly been sold for up to $100,000 a piece.2
The New Portraits have ignited controversy both with individual Instagram users whose photos were used for the portraits3 and with art commentators, arguing that perhaps this was a case of appropriation art going too far,4 such that Prince cannot rely on fair use to avoid copyright infringement claims (as he has done in the past).5 In an interesting twist, one of Prince's subjects has given Prince a taste of his own medicine. Rather than pursue legal action, a group of alternative pin-up models known as the SuicideGirls (led by founder Serena Mooney) released their own blown-up prints of the Prince works based on their Instagram photos, and sold them for $90 a piece.6 While it is unlikely that Prince (or his gallery) would seek to assert copyright infringement against the SuicideGirls based on their use of his work (which was, after all, based on their work), it does raise an interesting question as to whether the SuicideGirls prints themselves constitute fair use under copyright law. The Prince/SuicideGirls controversy also highlights other complex issues regarding ownership and control of intellectual property assets in the social media context, such as whether Mooney's posting of the photos on Instagram might have equipped Prince with a license or another defense to copyright infringement.
Fair Use of User-Generated Content
The fair use doctrine, which provides an exception to the basic copyright infringement principles, recognizes that allowing individuals to creatively express themselves with reference to the works of others is critical to achieving the purpose of copyright law, which is '"[t]o promote the Progress of Science and useful Arts."7 The fair use doctrine is codified in §107 of the Copyright Act, which lists several examples of fair use, such as criticism, comment, news reporting, teaching, scholarship, and research, and sets forth four factors that courts must consider in determining whether a particular use of a copyrighted work is fair use: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.8
As courts have recognized, "the fair use determination is an open-ended and context-sensitive inquiry."9 "The ultimate test of fair use … is whether the copyright law's goal of promoting the Progress of Science and useful Arts … would be better served by allowing the use than by preventing it."10 In many cases, this test boils down to the question (usually posed in connection with the first statutory factor) of whether the new work is "transformative"—in other words, "whether the new work merely 'supersedes the objects' of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message."11
Richard Prince is no stranger to legal controversy concerning his art. In Cariou v. Prince, 784 F. Supp. 2d 337, 347-353 (S.D.N.Y. 2011), judgment rev'd in part, vacated in part, 714 F.3d 694 (2d Cir. 2013), photographer Patrick Cariou sued Prince for copyright infringement based on Prince's use of Cariou's photographs in Prince's collage paintings. The court considered whether fair use protected a set of paintings in which Prince added colored orbs and other collage elements to Cariou's black and white photographs of Rastafarians and Jamaican landscapes. The district court found that every factor weighed against a finding of fair use, for all of the works at issue, and granted summary judgment on Cariou's copyright infringement claim.12 On appeal, the Second Circuit reversed with respect to 25 of the 30 Prince works at issue, holding that the 25 works were transformative as a matter of law, and, as such, they constituted fair use of the Cariou photographs.13 The Second Circuit observed that the "composition, presentation, scale, color palette, and media," as well as the expressive nature of those works were "fundamentally different and new compared to [Cariou's] photographs."14 "Prince ha[d] not presented the same material as Cariou in a different manner, but instead had '"add[ed] something new' and presented images with a fundamentally different aesthetic."15
The court cautioned, however, that its "conclusion should not be taken to suggest … that any cosmetic changes to the photographs would necessarily constitute fair use," as "[a] secondary work may modify the original without being transformative."16 "For instance," the court continued, "a derivative work that merely presents the same material but in a new form, such as a book of synopses of televisions shows, is not transformative."17 Under this standard, the court was unable to determine whether Prince's changes to the remaining five works—including, for example, adding a blue tint, softening the focus on the background, painting shapes over the subject's eyes and mouth, enlarging the subject's hands, and pasting an electric guitar onto the canvas—added the requisite "new expression, meaning or message" to Cariou's photographs to constitute transformative use. Accordingly, the court remanded to the district court for reconsideration of the fair use analysis with respect to the remaining five Prince works (the parties settled before the court could do so).
Like Cariou v. Prince, the recent SuicideGirls/Prince controversy involves Prince's unauthorized use of someone else's photographs in his artwork. However, Prince's modifications to the Instagram photos—adding a comment to the captions, enlarging the screenshots, and printing the photographs on canvasses—might be considered a far cry from the transformative changes that he had made to Cariou's photographs (which created a "fundamentally different aesthetic," id. at 708), and are much less substantial than even the "minimal" changes that Prince made to the five outlier works in Cariou. It appears that Prince has "merely presented the same material  in a new form," which is generally "not transformative."18 Indeed, in Rogers v. Koons,19 the court ruled that appropriation artist Jeff Koons' creation of a three-dimensional sculpture replica of a photograph of a string of puppies was not a discernible parody on the original photograph, and therefore not sufficiently transformative to constitute fair use. On the other hand, Prince might argue that he "transformed" the social media content into entirely new content by placing it in a different context and with a different perspective—and that the comments that he added to the screen shot captions created a new message.20 A court may well agree.
What about Mooney's use of Prince's prints? If a court were to find Prince's artwork to constitute fair use, Prince's works would be entitled to copyright protection in their own right. In that event, Mooney would need to establish fair use in order to avoid liability for copyright infringement of the Prince works, and it is possible that Mooney's works would not satisfy the Cariou standard for fair use—a bizarre result given the minimal extent to which Prince contributed to the underlying content owned by Mooney. Mooney's modifications are even less substantial than Prince's; although she, like Prince, added comments to the captions, she did not modify the size or the medium of the works. If Prince's comments satisfy the fair use standard, however, Mooney's would too. Additionally, Mooney's works are arguably satires intended to draw attention to and comment on the practice of appropriation art, and specifically on Prince's resale of other artists' works for large sums of money. Mooney's use of Prince's works has, in fact, drawn attention to this practice; it probably also increased the value of the Prince works. Mooney's use of Prince's works has also raised the question of the extent to which a defendant's ownership of the original underlying works would tilt the scale toward a finding of fair use. Because the fair use inquiry is fact-specific, a court would likely give significant weight to the facts of peculiar situations like this—and in this case, likely reach the conclusion that the fair use doctrine protects Mooney.21
Ownership, Control in Social Media Context
Still, courts are not likely to take an overly expansive view of the license to use others' social media content. In Agence France Presse v. Morel, for example, AFP copied photos off a photographer's Twitter feed and distributed the photos via Getty Images to Getty's licensees.24 AFP argued that it was a third-party beneficiary of the license agreement between the photographer and Twitter (embodied in the Twitter terms of service),25 which encouraged and permitted broad re-use of content. The court rejected this argument and concluded that "[c]onstruing the Twitter TOS to provide an unrestrained, third-party license to remove content from Twitter and commercially license that content would be a gross expansion of the terms of the Twitter TOS."26
It is unclear whether a court would take a similarly limited view of the Instagram terms of service license here, and whether even a more limited construction of those terms might protect Prince's works. Whereas the defendant in AFP took the photos out of the Twitter context and distributed them broadly to licensee news outlets to use in their own articles, Prince has used the Instagram posts largely consistently with the way they are meant to be used: for comment and display.
The broad dissemination of content via social media platforms will continue to create new and complex issues for the fair use analysis of copyright infringement claims. As the Richard Prince/Suicide Girls controversy demonstrates, it may also encourage new and creative responses to appropriation of social media content. In a Twitter post, Mooney asked "Do we have Mr. Prince's permission to sell these prints? We have the same permission from him that he had from us ;)" Naturally, Prince re-tweeted that post.
1. Jerry Saltz, "Richard Prince's Instagram Paintings Are Genius Trolling," New York Magazine (September 2014).
2. Saltz interview, CNN (May 27, 2015).
3. Jennifer Schuessler, "A New Copyright Complaint Against Richard Prince," New York Times (Feb. 16, 2015)
4. See, e.g., Erica Tempesta, "Artist uses other people's Instagram photos in an exhibition without their permission—then sells prints for $100,000 each," at http://www.dailymail.co.uk/femail/article-3097994/Artist-fire-using-people-s-Instagram-photos-exhibition-without-permission-selling-prints-borrowed-images-100-000-EACH.html (May 29, 2015).
5. See Cariou v. Prince, 784 F. Supp. 2d 337, 347-353 (S.D.N.Y. 2011), judgment rev'd in part, vacated in part, 714 F.3d 694 (2d Cir. 2013) (discussed further below).
6. See http://www.vogue.com/13263885/suicidegirls-richard-prince/ (May 28, 2015).
7. Cariou, 714 F.3d at 705 (quoting U.S. Const., Art. 1, §8, cl. 8).
8. 17 U.S.C. §107.
9. Campbell v. Acuff-Rose Music, 510 U.S. 569, 577-78 (1994).
10. Cariou, 714 F.3d at 705 (citations and quotation marks omitted).
11. Id. (quoting Campbell v. Acuff-Rose Music, 510 U.S. 569, 579 (1994)).
12. Id. at 355-56.
13. Cariou, 714 F.3d at 698.
14. Id. at 706.
15. Id. at 708.
19. 960 F.2d 301 (2d Cir. 1992).
20. This is a purely hypothetical argument in Prince's defense; it seems unlikely that Prince would actually make such an argument. He had hampered his own defense in Cariou by testifying under oath that his works based on Mr. Cariou's were not intended "to create anything with a new meaning or a new message." Cariou v. Prince, 714 F. 3d at 707 (citing the district court opinion based in part on Prince's testimony). For insight into Prince's intentions behind the New Portraits, one can consult the press release issued by the Gagosian gallery, available at http://www.gagosian.com/exhibitions/richard-prince--june-12-2015.
21. To add another layer to the "meta-" nature of the Prince works, many visitors to the Prince exhibition at the Gagosian Gallery have taken their own "selfies" with Prince's portraits, in turn posting them to Instagram. Fair use likely protects these photos as well.
22. Saltz interview, CNN (May 27, 2015).
23. See https://help.instagram.com/155833707900388/. Instagram also cautions that "[b]y authorizing a third-party website to access posted content, or linking through Instagram to another site or service, an Instagram user may be licensing content to that third-party subject to the terms and policies of that website."
24. Agence France Presse v. Morel, 934 F. Supp. 2d 547 (S.D.N.Y. Jan. 14, 2013), reconsideration granted in part, 934 F. Supp. 2d 584 (S.D.N.Y. 2013).
25. Id. at 561.
26. Id. at 562.
Reprinted with permission from the August 3, 2015 edition of The New York Law Journal © 2015 ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited.