Graham v. Prince

Background

Donald Graham alleged that Richard Prince infringed Graham’s copyright in a photograph titled "Rastafarian Smoking a Joint" by creating and selling a work titled Untitled (Portrait of Rastajay92), or "Rastajay92." Graham also sued Lawrence Gagosian and Gagosian Gallery, Inc. based on their purchase, display, sale, and promotion of Rastajay92.

The Gagosian Defendants moved for partial summary judgment on two categories of claimed profits. First, Graham sought indirect profits—profits from sales of other works that allegedly resulted from using Rastajay92 to promote Prince’s New Portraits series. Second, Graham sought "unrealized profits" based on the possible future resale of Rastajay92 by Lawrence Gagosian. The motion did not seek a ruling on every issue in the case.

Indirect Profits from Other Works

Under Section 504 of the Copyright Act, a copyright owner may seek an infringer’s profits that are attributable to the infringement. The court explained that the copyright owner must first show a causal connection between the infringement and the claimed revenue. Only after that showing does the burden shift to the alleged infringer to prove expenses and profits attributable to other factors.

The court held that Rastajay92 was not part of the other New Portraits works. Each work was sold separately, and Rastajay92 had its own price and separately identifiable profits. Therefore, profits from the other works were indirect rather than profits from selling a product containing the allegedly infringing work.

The court found that no reasonable jury could find a sufficient causal connection between Rastajay92 and the Gagosian Defendants’ profits from the other works. Rastajay92 was only one of 77 works involved in the Original Works, Secondary Works, and Specialty Works. The evidence showed that relatively little promotion of the series included Rastajay92, and none of that promotion featured it prominently. Much of the sales activity occurred before the limited publicity containing Rastajay92.

The court also noted that Graham did not show that buyers saw Rastajay92 and then decided to purchase another New Portrait. Other possible reasons for the purchases included interest in Richard Prince, prior connections with the Gallery or Prince, the images used in the individual works, the social-media interface included in some works, and the buyers’ views of the works’ artistic messages. The court therefore granted summary judgment in favor of the Gagosian Defendants on Graham’s claim for profits from sales of New Portraits works other than Rastajay92.

The court separately stated that it also dismissed Graham’s claim for financial benefits allegedly resulting from publicity and notoriety that the Gagosian Defendants received from the exhibition. The court cited Graham’s failure to respond to that argument and the absence of supporting evidence.

Unrealized Profits

Lawrence Gagosian had not sold or offered Rastajay92 for sale after purchasing it. Graham argued that he could recover profits that Gagosian might realize if he later sold the work at an increased value.

The court rejected that theory as a matter of law. It held that an infringer’s profits require evidence of revenue reasonably related to the infringement, and Graham had not shown that Gagosian had earned revenue from owning Rastajay92. The court declined to extend several older cases involving allegedly infringing architectural plans and property that had not yet been sold. Those cases did not establish a right to recover hypothetical resale profits for an artwork that had not been resold.

The opinion noted that the Gagosian Defendants did not appear to dispute that Graham could seek the $21,600 in realized profits that Gagosian paid Prince for Rastajay92 if the work were ultimately found to be infringing. The ruling instead concerned profits from a hypothetical future resale.

Disposition

The Gagosian Defendants’ motion for partial summary judgment was granted. Graham may recover neither the Gagosian Defendants’ profits from sales of the other New Portraits works nor unrealized profits from a hypothetical resale arising from Lawrence Gagosian’s ownership of Rastajay92.