IP Law Daily, COPYRIGHT—S.D.N.Y.: An appropriation artist takes another hit over his Instagram series, (May 15, 2023)

By Matthew Hersh, J.D.

An artist who mounted social media posts on canvas and sold them through art galleries could be liable for copyright infringement.

A celebrated artist who has built his career on openly appropriating the works of others could not rely on the fair use defense to justify a series of artworks in which he took the Instagram posts of others and blew them up to museum display size, the federal court for Manhattan has ruled. The length decision handed down by one of the nation’s most prominent copyright courts, which appeared to follow directly from precedents of the Second Circuit in recent cases involving similar facts, may be one of the last significant cases to address the subject before the Supreme Court issues a long-awaited ruling on the fair use doctrine in the case of Warhol v. Goldsmith (Graham v. Prince, May 11, 2023, Stein, S.).

The lawsuit is one of many controversies to arise out of the New Portraits series, an Instagram-themed collection that contemporary appropriation artist Richard Prince created in 2014. The artist created the series by randomly mining Instagram for posts that he found interesting. He would then blow those posts up to a canvas-like size, add some comments of his own below the post, do some modest cropping of the post, and then shape the entire result to give it the appearance of an over-sized iPhone. The series created immediate backlash from the subjects of those works, who complained that intimate details of their lives had been shared to the world or that their celebrity had been used to further the artist’s work without their consent. Criticism of the series also came from the photographers who had originally captured the images that Prince appropriated without their permission.

Two of the artists who sued Prince for the latter conduct were Donald Graham and Eric McGatt. In the case of Graham, the work used by Prince was a photograph entitled Rastafarian Smoking a Joint. Graham took that photograph in rural Jamaica in 1996 and markets prints of it through his studio as well as a Paris gallery. In the case of McNatt, Prince borrowed a photograph he had taken of Kim Gordon, a member of the alternative rock band Sonic Youth. McNatt has licensed that photograph to two publications, Paper and Vogue.

The defendants moved for summary judgment, leading to this opinion.

Transformative use. The court, in a lengthy and scholarly opinion, denied the artist’s summary judgment motion. As always in fair use cases, the question of transformative use was central to the case. Under existing Supreme Court precedent—which is of course subject to possible change as soon as the highly anticipated decision in Warhol v. Goldsmith (Dkt. No. 21-869) is handed down—the transformative use doctrine requires courts to ask, “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.” The artist’s Instagram series did not meet this standard, the court held.

The Instagram series did not constitute transformative use of the photographs at issue, the court found, because the artist’s alterations were “materially less significant” than those found to be transformative in Second Circuit precedents. Circuit cases had found, the court noted, that an artist transformed a photo of a woman’s when he used a snippet of it as part of a larger collage. Similarly, another case found, an artist transformed a photo series by altering the subjects to add musical instruments, covering their eyes with lozenges to make them anonymous, and endowing them with “cartoonish appendages.” But that was nothing like the case at hand, the court found. Here, the court noted, essentially all that the artist did was to add the Instagram frame and his own verbal comments below the photographer’s images. That was not nearly enough, the court reasoned.

Nor could the Instagram series be plausibly seen as a parody of the underlying photographs, the court held. The argument failed, once again, in light of clear circuit precedents. Under those precedents, the court noted, a work could not be protected as parody simply because it was intended as a satirical comment about some aspect of society at large. Instead, the court emphasized, a parody must actually comment in some recognizable way on the underlying work itself. But that was clearly not the case here. Indeed, the artist himself acknowledged as much, the court noted, by admitting that he could have used many other Instagram photos for his series and it “would have had the same visual impact or value.” The Instagram series could not be considered transformational of the underlying photographs as a result.

Effect on market. The court also dwelt to some extent on the fourth fair use factor, the effect on the market. Although it was not enough to tip the overall balance in favor of fair use, the court noted, the Instagram series did not appear to have a considerable effect on the market for the originals. The works did not directly compete, the court noted, as the evidence in the record showed that the original photographs appealed to “an entirely different sort of collector” than the Prince works—perhaps to some extent because of Prince’s own name recognition. Moreover, the court noted, while the artist’s use of the photographs for his Instagram series could hypothetically have cut into the derivative use market for the originals, it did not appear to in fact have done so here. Thus, this factor weighed “slightly in favor” of the artist.

Other factors. As is usual in a case involving an alleged transformative use, the other two fair use factors played little role—but to the extent they did, they also weighed in favor of the photographers. The underlying photographers had been published and were of course of a highly creative nature, thus tilting the second factor against fair use. And the artist appropriated essentially all of the photographs in his series, thus tilting factor three against fair use. On balance, the court found, fair use was plainly excluded here.

Other acts of alleged infringement. Although the case focused mainly on the Instagram series itself, the photographers also sued various other entities who used the Instagram series—including their photographs—in follow-on publications. To the extent that an art gallery and its related collaborators put out published works containing the Instagram series as part of a gallery book and pamphlet as well as a series of billboards, those were also not protected by the fair use doctrine for similar reasons. On the other hand, the court found, to the extent that the artist put out a “blurry, cropped” version of one of the photographs, juxtaposed with another blurry image, that was simply to “de minimis” to constitute infringement.

Implied license. Finally, the court easily rejected the artist’s argument that he had free access to the works because the photographers themselves had posted them on Instagram and Facebook. To be sure, the court noted, in posting the works on social medial the photographers certainly gave a license to Instagram and Facebook to display their works. But nothing in those agreements, the court reasoned, could be read to suggest an agreement that any third party could appropriate those works.

The Case is No. 1:15-cv-10160-SHS and No. 1:16-cv-8896-SHS.

Attorneys: David James Kappos (Cravath, Swaine & Moore LLP) for Donald Graham. Richard Aframe Edlin (Greenberg Traurig, P.A.) for Richard Prince.

Companies: Gagosian Gallery, Inc.; Blum & Poe, LLC; Blum & Poe New York, LLC

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