Graham v. Prince

Background

Donald Graham and Eric McNatt separately sued Richard Prince and several art galleries under the Copyright Act. Graham alleged that Prince used Graham’s photograph Rastafarian Smoking a Joint in Portrait of Rastajay92 and in related exhibition materials, a billboard, and a Twitter compilation. McNatt alleged that Prince used McNatt’s photograph Kim Gordon I in an Instagram post, Portrait of Kim Gordon, and a gallery book. The defendants asserted fair use, a copyright defense that can protect certain unauthorized uses for purposes such as criticism, commentary, teaching, or research.

Prince created the New Portraits series by taking screenshots of Instagram content, cropping the images, adding Instagram framing and comments, and printing the results on large canvases. The defendants moved for summary judgment, asking the court to rule in their favor without a trial because they claimed no genuine dispute of material fact existed. Graham and McNatt opposed the motions and also sought summary judgment on fair use in their favor.

Fair-use analysis

The court examined the four statutory fair-use factors: the purpose and character of the use, the nature of the copyrighted work, the amount used, and the effect on the work’s market or value.

For the first factor, the court held that Portrait of Rastajay92 and Portrait of Kim Gordon were not transformative as a matter of law. Although Prince cropped the photographs, enlarged them, added an Instagram frame, and included his own comments, the original photographs remained unobstructed and dominant. The court concluded that these changes did not create a sufficiently different expression, meaning, message, or aesthetic. It also rejected Prince’s argument that the works were parodies or satire of the photographs. The court found that Prince’s stated purposes varied and that his comments about social media did not show that either photograph itself was the target of the commentary.

The court also found that the two portraits were commercial works. The photographs were creative and published, so the second factor favored Graham and McNatt. Because the portraits were not transformative and used nearly all of the photographs, the third factor also favored the photographers. The fourth factor was more mixed: the court found that the original photographs and Prince’s portraits appealed to different types of collectors and that the evidence did not show that Prince’s works had displaced the photographers’ primary markets. But the court also found that Prince had not shown that permitting similar uncompensated uses would not harm a potential market for licensing photographs as the basis for derivative art. Overall, three factors weighed firmly against fair use, while the fourth weighed slightly in the defendants’ favor.

Other works and defenses

The court rejected the defendants’ argument that the billboard’s use of Graham’s photograph was too trivial to matter under the de minimis doctrine. The billboard was large and publicly displayed, and it showed a significant portion of the photograph. The court also held that the gallery book, gallery pamphlet, and billboard could not receive summary judgment based on fair use because they included the disputed portraits in their entirety and factual disputes remained about their possible effect on the market.

The court agreed that the Twitter compilation made only a trivial use of Graham’s photograph under the de minimis doctrine. However, it did not grant summary judgment on that claim because Prince’s conflicting testimony created a genuine factual dispute about the purpose of the tweet and whether that purpose was transformative. For the Instagram post containing McNatt’s photograph, the court found that defendants had not met their burden of proving fair use, in part because arguments about the large canvas and changed medium did not apply to the post and the record did not establish the post’s market effect.

The court also rejected Prince’s argument that Graham’s public Facebook posting created an implied nonexclusive license. Although Facebook’s terms allowed Facebook to use publicly posted content and allowed others to access and use information posted publicly, the court found no evidence of a meeting of the minds between Graham and Prince concerning Prince’s use of the photograph.

Disposition

Judge Sidney H. Stein denied both defendants’ motions for summary judgment. The opinion concluded that defendants had not established fair use for the principal portraits, but the denial of summary judgment was not a final ruling that every alleged use infringed copyright. The opinion left factual issues for further proceedings, including issues concerning the Twitter compilation and the market effects of some related materials.