Richard Prince, the contemporary appropriation artist, has been sued again by a photographer whose pictures Prince reframed, cropped and commented upon for Prince’s own gallery show called “Untitled” at the famed Gagosian Gallery in New York City. Mahita Gajanan, Controversial Artist Richard Prince Sued for Copyright Infringement, The Guardian (Jan. 4, 2016), https://www.theguardian.com/artanddesign /2016/ jan/ 04/ richard-prince-sued-copyright-infringement-rastafarian-instagram. Plaintiff Donald Graham, the creator of the reused photograph at issue, called “Rastafarian Smoking a Joint,” originally made the photo in 1996 and published it in 1998 in magazines and through an art gallery. Eileen Kinsella, Outraged Photographer Sues Gagosian Gallery and Richard Prince for Copyright Infringement, ArtNet News (Jan. 4, 2016), https://news.artnet.com/market/donald-graham-sues-gagosian-richard-prince-401498. Graham’s photograph made it onto Instagram without his permission and that is where Prince found it. Id. In addition to cropping the Instagram photograph and putting his own caption on it, blowing it up and framing it for a gallery show, Prince also copied and used the photo on Twitter in a more altered aesthetic compilation and on a promotional internet billboard for his gallery show.

Copyright law prevents the reproduction and distribution of copyrighted material unless there is a statutory exception, such as fair use. Id. Prince moved to dismiss the copyright complaint to avoid costly and time-consuming discovery and summary judgment motions, because he believed fair use covered his reuse of Graham’s photographs. Laura Gilbert, Motion to Dismiss Denied in Copyright Sue Against Richard Prince and Gagosian, The Art Newspaper (July 19, 2017), http://theartnewspaper.com/news/motion-to-dismiss-denied-in-copyright-suit-against-richard-prince-and-gagosian/. Prince may have reasonably believed his reuse was fair because he largely prevailed in an earlier suit with another photographer for a similar kind of reuse on summary judgment. See generally Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013). Interestingly, that suit Cariou v. Prince, concerned documentary photographs of Rastafarians as well. Id. There, the appeals court held as a matter of law Prince’s reuse of a substantial portion of the photographs was sufficiently transformative to exempt the requirement for permission under the copyright act. Id. The Court of Appeals for the Second Circuit held that Prince changed the aesthetics and meaning of the underlying art enough to make his use fair and in furtherance of copyright law’s goals (to promote progress of science through creation and distribution of creative works). Id. (Five of Prince’s re-uses were found to require a trial on the merits of fair use and for those, the court remanded. Settlement followed.)

The District Court in the current suit, however, was faced with a different situation and because of it ruled against Prince. Prince v. Graham, 15-CV-10160, 2017 WL 3037535 (S.D.N.Y. July 18, 2017). First, Prince moved to dismiss under the 12(b)(6) standard, not on summary judgment. Id. at *12. Second, the alterations to the underlying works were less obvious in this recent case. Id. at *22. Taking the facts alleged as true, the four fair use factors do not favor Prince as a matter of law. Factors two and three – the nature of the work and the amount taken – weigh in plaintiff’s favor because the original photographs are not factual works and Prince took the whole photograph without obscuring any portion of it in his reuse. Id. at *29-31. The fourth factor concerning market harm is disputed here; the plaintiff alleged he has a market for licensing his work, which would be injured if other artists or publishers reused his work in verbatim copies without permission or payment, as Prince did here with his gallery show. Id. at *31-2. Plaintiff’s allegations stand on a motion to dismiss and will be tested in discovery.

The rub lies with the first fair use factor. The first factor concerns transformative re-use and the commercial nature of the re-use, and both favor this plaintiff on a motion to dismiss. The district court emphasized that transformativeness is based on the “reasonable viewer.” Id. at *22. Does that viewer recognize Prince’s use of Graham’s work as simply “raw material” to convey a new message, in which case it may be transformative? Or is Prince’s use merely a repeat of the original work in a new context, in which case the “predominant aesthetic feature” of Prince’s reuse remains Graham’s original work and the use is not transformative? The district court held under this Second Circuit “reasonable observer” test that Prince cannot win as a matter of law on a motion to dismiss. Prince v. Graham, 2017 WL 3037535.

Motions to dismiss are critical to stem costs of abusive or wrong-headed litigation. And copyright litigation with its enormous statutory damages can be both abusive and wrong-headed with very high stakes for free speech, creative expression, and the livelihoods of struggling writers, artists, filmmakers and musicians. But the Court was correct in this case to hold that Prince’s uses – especially the gallery show uses — are not fair as a matter of law. (Whether Prince’s Twitter uses commenting on the fair use standard is such an easy case remains unclear. The Court short-cuts it analysis of this more reuse, and I wish it didn’t as I see more merit to this use as fair.)

So Richard Prince will remain a defendant a while longer. In fact, given his penchant for disruption and critique, it is hard to imagine this is his last lawsuit. And although he remains on the losing side of this one, and likely paid out a settlement on the previous one despite a victory on a significant portion of his reuses (the settlement was confidential), he is a world-renown artist whose work sells for hundreds of thousands of dollars. He can afford to be a defendant and if that is the choice he makes to continue to make his art, all the while clarifying the morass of copyright fair use law for the rest of us, we are grateful to him.