n February of this year, the U.S. District Court for the Central District of California ruled that appropriation artist Thierry Guetta infringed photographer Dennis Morris’s copyright in a photograph of Sex Pistols singer Sid Vicious when he created seven works of art based on Morris’s black and white photograph. In its order granting Morris’s motion for summary judgment, the Court relied on previous Second Circuit precedent, and found that Guetta’s use of the photograph was neither transformative nor justified, rejecting the argument that “appropriation art per se” should be protected by fair use. Guetta has recently filed a motion for reconsideration, asking the judge to reconsider its ruling in light of the Second Circuit’s April 25, 2013 reversal of the district court’s holding in another similar appropriation art case, Cariou v Prince, one of the cases the judge cited in its decision. In his motion papers, Guetta argues that the district court applied the incorrect standard in holding that his works did not qualify as fair use, and that under Cariou, the works at issue are transformative. Morris filed an opposition to that motion, arguing, among other points that the Second Circuit’s decision is not binding precedent and there has been no material change in law. While Morris hopes the district court stands its ground and re-affirms its decision, if he loses this motion for reconsideration, he will likely have the Second Circuit to blame.
Background of Guetta Case
In 1977, Dennis Morris photographed Sid Vicious, the lead singer of the Sex Pistols, a popular 70’s punk rock band. The black and white photograph depicts Sid Vicious in what came to be known as his signature pose, tilting his head to the right and winking. The photograph was published in Morris’s 1998 book titled “Destroy: The Sex Pistols 1977”, for which Morris has a copyright registration. Guetta, a well-known appropriation artist who goes by the pseudonym Mr. Brainwash, created 7 works of art, all of which use and incorporate Morris’s photo. Some of the works added elements such as splashes of brightly colored paint or accessories such as a wig and sunglasses. One is a mural, while another was made out of broken vinyl records. Morris sued Guetta for copyright infringement based on Guetta’s use, distribution and sale of the artwork featuring the photo. Both parties filed motions for summary judgment, with Guetta contending there was no genuine issue of material fact that the works constituted a fair use of the photo, and Morris contending there was no issue of material fact that Guetta infringed his copyright. The Court granted Morris’s motion and found that Guetta’s works were an infringement as a matter of law.
The Court applied the traditional 4 factor fair use analysis and considered: (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.
In considering the first factor, the court looked to the Second Circuit’s decisions in previous art appropriation cases, including Blanch v. Koons, and Rogers v. Koons, as well as the district court’s ruling in Cariou v. Prince, to guide its analysis as to whether Guetta’s works were sufficiently transformative.
Overview of previous art appropriation cases
In Blanch v. Koons, the Second Circuit court of appeals affirmed the trial court’s determination that Jeff Koons’s collage painting, Niagara, did not infringe upon photographer Andrea Blanch’s copyrighted photograph, Silk Sandals, because Koons’s use of the photo was sufficiently transformative and constituted fair use. The collage depicted four pairs of women’s legs (one of which was taken from Blanch’s photo) with the feet pointing downwards superimposed over images of baked goods. In determining Koons made a transformative use of the photo, the Court found that Koons altered the meaning, purpose, and expression of the copyrighted photograph when he rotated and re-scaled a portion of the image, made some changes to its color, added a missing part of a heel and overlaid the restructured photo into the collage. In addition, the Second Circuit was satisfied with Koons’s explanation as to why he used an existing image instead of creating his own. Koons stated that he wanted to use an actual magazine advertisement because it was an authentic image of the subject matter of his commentary—one directed to the culture and attitudes promoted by such magazine advertisements through fashion photography. The court gave deference to Koons’s artistic purpose when it concluded that “Whether or not Koons could have created ‘Niagara’ without reference to ‘Silk Sandals,’ we have been given no reason to question his statement that the use of an existing image advanced his artistic purposes.”
In Rogers v. Koons, the court held just the opposite, and determined that Koons did not make a fair use of a black and white photo of a couple holding an armful of puppies when he commissioned a sculpture based on the photograph. Despite the sculpture’s vivid colors and change of medium, not to mention Koons’s proffered explanation of how his work commented on the original by parodying the photo and justification as to why the particular photo advanced his artistic purpose -to critique our materialistic society- the court held Koons’ fair use defense failed because his sculpture did not directly parody the original work, but rather was a comment of society at large. The court also found that the sculpture was made primarily for Koons’ commercial benefit and would damage the market of the copyrighted photograph.
In Cariou v. Prince, photographer Patrick Cariou published a series of photographs depicting Rastafarian culture in Jamaica in a book titled Yes Rasta. The defendant, appropriation artist Richard Prince, took a substantial number of photographs from Cariou’s book and used them as the raw material for thirty paintings and collages, which were then exhibited and sold at art galleries, and reproduced in an exhibition catalog. Among other uses, Cariou pasted blue “lozenges” over the subject’s facial features and used only portions of some images. Cariou sued Prince for copyright infringement and the district court granted Cariou’s motion on summary judgment, finding that Prince’s works did not constitute fair use. In considering whether Prince’s use of the original Cariou photos were transformative, the court gave great weight to Prince’s deposition testimony, in which he acknowledged that he had not intended to comment upon or criticize Cariou’s photographs, or any subject matter commonly associated with Cariou. Relying on a traditional fair use requirement that the new work in some way comment on or critically refer back to the original work in order to qualify as fair use, the district court found Prince’s testimony to be a clear admission that his works were not transformative, and rejected the contention that appropriation art is per se fair use.
With these cases in mind, the Court reviewed Guetta’s works. The Court looked to the standard for transformativeness set forth in Blanch v. Koons, and reviewed Guetta’s works in light of two inquiries: 1) whether the work comments on the original or 2) if the work does not comment on the original, whether there sufficient justification for using another’s copyrighted material to affect the artist’s vision.
The Court found that Guetta failed on both counts. First, the Court held that Guetta’s uses of the Morris photograph were not sufficiently transformative because the works did not add anything new so as to give the Morris photograph sufficient new expression, meaning or message. Second, the Court found that Guetta’s use was not justified. Guetta had argued that his works were intended to comment on Sid Vicious’s persona, and on the nature of celebrity in general. But the judge, endorsing the district Court’s holding in Cariou v Prince, disagreed, finding that Guetta’s rationale was akin to arguing that any use of copyrighted material in appropriation art is fair use, “the precise argument that the Cariou court rejected.”
The court found the second and third factors- the nature of the copyrighted work and the amount and substantiality of the portion of the original work that was used –also weighed against Guetta, concluding that the Morris photograph was at least a marginally creative portrait, not just a “recitation” of a fact and that Guetta used most of Morris’s copyrightable elements.
As is common when a Court determines at the outset that a work is transformative, the Court gave little weight to the last factor- the effect the Guetta images had on the market for Morris’s image – “because a lack of harm (to Morris’s market for his image) would not change the determination of an unjustified use under the first factor.”
Second Circuit’s Reversal of Cariou Decision
On April 25, 2013, the Second Circuit reversed the lower court’s ruling in Cariou v Prince, and found that all but 5 of Prince’s works were fair use. In a complete about-face from traditional transformative use analyses, the majority held that a defendant’s work does not need to comment upon or criticize the plaintiff’s work in order to be deemed transformative. Instead, a new work could be transformative so long as it “alters the original with new expression, meaning or message.” The Court found that district court placed too much weight on Prince’s testimony admitting that he did not intend for his works to be transformative, because “what is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work.” In short, the works were found to be transformative because they “manifest an entirely different aesthetic from Cariou’s photographs.” Relying on this new standard, Guetta asked the district court to reconsider its decision granting summary judgment in favor of Morris, and that under the new standard set forth in Prince, the works were transformative. Morris opposed this motion, arguing that the Second Circuit was not binding precedent and that Cariou was not a significant source of authority in the judge’s decision. Morris also reminded the court that the decision did not apply to all of the Prince works: five works in which only minimal changes were made were remanded to the lower court because the court of appeals could not determine whether they “transformed Cariou’s work enough to render it transformative,” and those works were more akin to Guetta’s works.
Prince has painted an uncertain future for infringement lawsuits based on appropriation of art. The Second Circuit’s new, looser standard for determining whether a work is transformative is a shift from its usual conservatism and serves as an invitation for infringement. Requiring that a work merely alter the original so it presents a “different aesthetic” with no regard for whether it comments on or criticizes the original relieves infringers of the burden of having to explain how their use comments on or criticizes the original work, or concoct post hoc rationalizations as to why the use is justified. While the court was quick to explain that their conclusion “should not be taken to suggest that any cosmetic changes to the photographs would necessarily constitute fair use,” it provides no real guidance as to how to draw the distinction between a change that would qualify as fair use alteration versus a change that would render a work an infringing derivative work. If anything, under the “reasonable observer” standard, determining whether a work is transformative seems to ask only whether two works look sufficiently different from the other. Judge Wallace voiced this concern in his dissent over the majority’s decision to remand only five works to the lower court, stating, “while I admit freely that I am not an art critic or expert, I fail to see how the majority in its appellate role can ‘confidently’ draw a distinction between the twenty-five works that it has identified as constituting fair use and the five works that do not readily lend themselves to a fair use determination.” As the right to authorize a derivative work is one of the exclusive rights of a copyright owner under Section 106 of the Copyright Act, this looser standard seems to eviscerate this right when it come to appropriation work where the court makes no clear distinction between an infringing derivative work and a transformative fair use based on the reaction of the viewer.
While Morris’s opposition papers argued that Second Circuit’s decision in Prince should have no bearing on the California District Court’s decision because it is not binding, it is hard to ignore the Second Circuit’s substantial influence on the other circuits, particularly with respect to fair use cases, and particularly given the district court’s reliance on cases from that circuit to guide its original decision. Hopefully, the strongly worded dissent in Cariou will have some influence over the California district judge when it reviews Guetta’s motion papers, (and given that he dissent was written by Judge Wallace, a 9th Circuit judge sitting by designation, his opinion may very well have some sway.)
Whatever happens in Guetta, the Second Circuit has expanded the meaning of transformative use in the area of appropriation art so greatly that it essentially gives one artist permission to use even a substantial body of another artist’s work as in Cariou, merely for convenience. Whether appropriation artists need this looser standard is not clear, nor mentioned in the cases. If subject matter is the only purpose for using another’s work, there are many licensing options available to acquire derivative rights in a photograph that compensates the underlying artist and shows respect to the other artist. The Second Circuit could not determine if five of Cariou’s works were infringing or not and does not even give clear guidance to artists who may not be as well heeled as Prince and who may what to know when permission is required and when it is not. It is important that we do not enter a world where the more famous you are, the more transformative your work is deemed to be.