The exclusive legal right, given to an originator or an assignee to print, publish, perform, film, or record literary, artistic, or musical material, and to authorize others to do the same.

In a recent decision, the Ninth Circuit Court of Appeals adopted a utility-based standard for determining when a work of art is deemed “applied art” and therefore not entitled to protection under the Visual Artists Rights Act (“VARA”).1  VARA was enacted in 1990 as an amendment to the Copyright Act, and incorporated the concept of droit moral to prohibit the “intentional distortion, mutilation or other modification” of a work of visual art, rather than a work of “applied art.”2  In Cheffins v. Stewart,3 the appeals court held that the appropriate standard for determining whether a work of art is ineligible for protection under VARA as “applied art” is whether the work “was – and continues to be – utilitarian in nature.”4

This ruling poses substantial obstacles for works that contain a utilitarian function to receive protection under VARA.  Despite the court’s attempt to clarify the difference between “applied art” and “visual art,” its analysis also may create more uncertainty for artists who seek to bring a VARA claim, since many art works contain utilitarian aspects, and it is unclear when a retained utilitarian function becomes significant enough to result in a work being deemed “applied art.”

The appeal arose from a dispute between the owners of La Contessa, a former school bus transformed into a replica of a 16th century Spanish galleon, and the defendant, who had purchased a plot of land on which the owners stored La Contessa.  For years, La Contessa transported attendees at the Burning Man Festival in Nevada, but the festival ultimately banned it as unsafe for transportation.  At that point, La Contessa moved to a plot of land that the defendant subsequently purchased; he then burned the wooden galleon enhancements in order to sell the underlying bus to a scrap metal dealer.  The owners of La Contessa sued the defendant on the basis that his destruction of La Contessa violated VARA because he intentionally damaged the work.  The defendant argued La Contessa was not protected by VARA because it fell under the category of “applied art,” not “visual art.”  The District Court agreed, ruling for the defendant on summary judgment.

The Ninth Circuit affirmed the District Court’s judgment, ruling that “La Contessa plainly was ‘applied art’” not protected by VARA given the school bus’s original utilitarian purpose and its fundamentally utilitarian nature after embellishment by the artists.5  Recognizing that VARA does not define “visual art” or “applied art,” the appellate court adopted a standard where “the focus of [the] inquiry should be on whether the object in question originally was – and continues to be – utilitarian in nature.”6  If the object retains a significant utilitarian purpose, then it constitutes “applied art” unprotected by VARA.  In adopting this test, the court hoped to avoid the need for courts to critique art or weigh the importance of artistic qualities when analyzing whether a work is protected by VARA.

Applying this test to the facts, the majority noted that La Contessa began as “a simple school bus – an object which unquestionably served the utilitarian function of transportation,” and while the creators adorned the bus with various “elaborative decorative elements” that had “many artistic qualities,” the primary function of La Contessa remained utilitarian.7  The work was used for transportation at the Burning Man festival and also served as a stage for performances and shows.8  As such, La Contessa “continued to serve a significant utilitarian function upon its completion” and therefore constituted “applied art.”9

Judge McKeown, writing in concurrence, disagreed with the majority’s “utilitarian” test and instead proposed a more nuanced, flexible approach in determining the nature of works so as not to “unduly narrow the protections of artists under [VARA].”10  Judge McKeown stated that the appropriate question to ask when determining whether a work of art constitutes applied art is whether “the primary purpose of the work as a whole is to serve a practical, useful function, and whether the aesthetic elements are subservient to that utilitarian purpose.”11  To highlight the flaws she perceived in the majority’s ruling, Judge McKeown described numerous historic works of art that would not be protected as visual art, including the Caryatids of the Acropolis and the monumental carvings of Ramses at the temple of Karnak, as these works retained a significant utilitarian function as they “are in fact columns that provided buildings with structural integrity.”12

Although the Court of Appeals hoped to avoid a need for “line drawing” when defining applied art,13 the test the majority adopted may not provide the clarity and objectivity for which it hoped.  Lower courts will still need to determine when a retained utilitarian purpose is “significant,” which may draw them into a quagmire of artistic analysis.  For example, when weighing the “significance” of the utilitarian purpose, should a court look to the artist’s intent for the work, or a subsequent owner’s actual use?  Will a work’s artistic merit inherently reduce its utilitarian significance?  Does the significance of the utilitarian function change over time, as advances in design and technology render the utilitarian function obsolete?  Further, by articulating such a stringent standard, the Ninth Circuit increased the likelihood that lower courts will classify any work that contains a subsidiary utilitarian element as “applied art.”  This will significantly narrow the reach of VARA and deter artists from bringing claims with respect to destruction of works that may incorporate utilitarian elements, thusly undermining one of VARA’s main goals.  Judge McKeown hoped to avoid such a scenario by arguing that the court’s focus should be on the “primary purpose” of a work, which acknowledges the possibility that both a utilitarian and visual purpose may co-exist in a work, and would ultimately provide greater protection to artists and their works.

1. This standard largely conforms to those promulgated by the Second Circuit in Carter v. Helmsley-Spear, Inc., 71 F.3d 77 (2d Cir. 1995) (holding that a sculpture constructed of portions of a school bus and affixed to a wall in a building lobby was not “applied art”) and Pollara v. Seymour, 344 F.3d 265 (2d Cir. 2003) (holding that “VARA may protect a sculpture that looks like a piece of furniture, but it does not protect a piece of utilitarian furniture, whether or not it could arguably be called a sculpture.”).
2. See 17 U.S.C. § 106A(a).
3. No. 12-16913 (9th Cir. June 8, 2016).
4. See id. at 10.
5. Id. at 13.
6. Id. at 10.
7. Id. at 13.
8. Id.
9. Id.
10. Id. at 18.
11. Id. at 19 (emphasis added).
12. Id. at 24.
13. Id. at 11.




Above: Donald Graham’s photograph, left, and Richard Prince’s “new portrait,” right.

Appropriation artist Richard Prince’s Motion to Dismiss is now fully briefed in Graham v. Prince et al., teeing up for Judge Stein of the Southern District of New York key questions regarding the scope of the fair use defense in the context of contemporary art.1

New Portraits, New Expression

As background:  In 2014, the Gagosian Gallery held Prince’s “New Portraits” exhibition, comprising a series of works that Prince created by copying and magnifying posts from the social media website Instagram (complete with elements of the Instagram graphic user interface such as “likes” and user “comments”), each featuring a “comment” of Prince’s own toward the bottom of the frame.  Included in the exhibit was the work at issue, Untitled (Portrait) (“Untitled”), for which Prince used as “raw material” an Instagram post depicting a mildly cropped version of plaintiff Donald Graham’s fine-art photograph Rastafarian Smoking a Joint (“Rastafarian”).2   In December 2015, Graham sued Prince, the Gagosian Gallery, and Larry Gagosian for copyright infringement.

Prince is no stranger to the courtroom.  An earlier series of his work was the subject of the Second Circuit’s 2013 Cariou v. Prince decision, which ruled as a matter of law that Prince had made fair use of certain of plaintiff Patrick Cariou’s photographs, and which was widely hailed as a victory for appropriation art generally.3   Cariou hinged on the court’s finding that 25 out of Prince’s 30 “crude and jarring” collage-like works – which used Cariou’s “serene” photographs as raw material but also variously incorporated paint, digital effects and images from other sources – infused the original works with “a new expression” and “a fundamentally different aesthetic” and therefore were “transformative.”4   The decision provided future courts with little concrete guidance, however, as to the proper test for assessing whether a given secondary use is transformative.  Graham squarely presents Judge Stein with the daunting task of deciding how Cariou is to be applied to an artistic project, such as New Portraits, in which the purported “transformation” is primarily conceptual rather than visual.

Contrasting Views of Cariou’s Reach

In his motion-to-dismiss papers in Graham, Prince takes the aggressive position that Cariou “control[s] and disposes of this case,” going so far as to pronounce that Graham “reflects an attempt to essentially re-litigate Cariou.”5   Prince’s argument then focuses on the two fair use factors to which courts tend to give most weight:  the purpose and character of the secondary use and the effect of the secondary use on the potential market for the copyrighted work.  Regarding the purpose and character of his use, Prince argues that Untitled is transformative of Rastafarian, in that whereas Graham’s photograph focuses on the “spirit and gravitas” of its human subject, Prince’s work is focused “no longer on the photograph itself, but on the fact that it has been used in a social media post.”6   Regarding market effect, Prince argues that Untitled does not and could not usurp the market for Rastafarian, not only because Graham has stated that he does not intend to license his fine art photography, but also because the audiences for the works are not the same:  No consumer seeking a fine art print conveying “the spirit and gravitas of the Rastafarian people” such as Rastafarian would accept as a substitute a “commentary on social media” such as Untitled.7

In his opposition papers, Graham draws sharp contrasts with Cariou on the same two factors.  Graham argues that no reasonable observer could find Prince’s Untitled transformative of Rastafarian, and that the comparison to Cariou does not hold:  In creating the works at issue in Cariou, Prince made significant visual modifications to the underlying works and incorporated imagery other than the underlying works; here, Graham argues, Prince’s work “merely depicts an exact copy of [Rastafarian],” which Prince has not modified other than to add a single line of text at the bottom of the frame.8   Graham observes that Untitled thus embodies less “transformation” than the five works at issue in Cariou which the Second Circuit expressly declined to deem transformative as a matter of law.9   Regarding the market effect factor, Graham argues that (i) while he has not yet licensed Rastafarian, the law protects the right of “the copyright owner who has not availed himself of a market . . . to change his mind,” and (ii) unlike Patrick Cariou, he does share the same audience as Prince – namely, museums, galleries and collectors of fine art.10   Graham supports this latter claim by asserting that the Gagosian Gallery exhibits and sells fine-art portraiture similar to Rastafarian alongside appropriation art such as Prince’s, and that the original Rastafarian work was in fact purchased by a prominent fine-art collector, Henry Buhl.11

Another Peril of Too Much “Social Media”?

One line of inquiry not raised in the briefing is whether Prince’s primary argument – that Untitled is transformative because its subject is properly understood as social media, not a smoking Rastafarian – might open him to a charge that his use of this particular copyrighted image therefore lacks “justification” under the Supreme Court’s 1994 decision Campbell v. Acuff-Rose Music, Inc.12  In that decision, while contrasting parody and satire, Justice Souter noted that while the former “needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination,” the latter “can stand on its own two feet and so requires justification for the very act of borrowing.”13   He further suggested that where a secondary work does not engage with “the substance or style of the original composition, which the alleged infringer merely uses to get attention . . . , [then] the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.”14   While the Second Circuit in Cariou expressly rejected the trial court’s reading of Campbell as requiring that a secondary use “comment” on or “critically refer back to” the underlying work in order to be deemed fair, in that case Prince’s visual alterations to and manipulation of Cariou’s original photographs demonstrated that – “commentary” or not – the secondary works at issue were in an aesthetic dialogue with the specific underlying works used, which could justify Prince’s use of them.15   Here, in contrast, where Prince’s legal position underscores the relative lack of such dialogue (at least on the visual level), Prince may expose himself to a Campbell-based argument that factors other than transformativeness – such as commercialism – should be given greater weight than they otherwise would be.16   Such an argument would be of little consequence, however, to the extent that Judge Stein were to read Cariou broadly, not only to reject a “commentary” requirement but also to foreclose any Campbell-based argument that an otherwise transformative use need be “justified” at all.

In sum, Prince’s motion presents the opportunity for Judge Stein to determine, among other things, (i) whether a secondary artwork that recontextualizes an underlying work without materially altering its visual content may be deemed transformative, and (ii) the appropriate level of granularity with which to define the “audience” that is relevant to the market-effect inquiry (e.g., “fine art collectors” or “fine art collectors seeking to purchase a piece of appropriation art”).  It will be particularly interesting to see how Judge Stein resolves the motion if he finds, as is certainly plausible, that the “purpose and character” factor weighs in favor of Graham, while the “market effect” factor weighs in favor of Prince – or vice versa.

1.  Case No. 15-cv-10160 (S.D.N.Y. filed Dec. 30, 2015).
2.  The Instagram post depicting Rastafarian had been posted without Graham’s permission by a third party not involved in the lawsuit.
3.  714 F.3d 694 (2d Cir. 2013).
4.  Id. at 707–08; see also id. at 706 (“Prince’s composition, presentation, scale, color palette, and media are fundamentally different and new compared to [Cariou’s] photographs . . . .”).
5.  Memorandum of Law in Support of Defendants’ Motion to Dismiss Plaintiffs’ Corrected Amended Complaint (ECF 34) at 1, 2.  This blog post focuses on the parties’ positions regarding whether Prince made fair use of Rastafarian; the parties’ briefs also address the appropriate measure of damages if Prince’s use is ultimately found not to have been fair.
6.  Id. at 3.
7.  Id. at 15, 21.
8.  Plaintiff’s Memorandum of Law in Opposition to Motion to Dismiss (ECF 39) at 8–9.
9.  Id. at 11.
10.  Id. at 17, 21.
11.  Id. at 17.
12.  510 U.S. 569 (1994).
13.  Id. at 580–81.
14.  Id.
15.  Cariou, 714 F.3d at 706 (discussing Cariou v. Prince, 784 F. Supp. 2d 337, 348 (S.D.N.Y. 2011)).
16.  See Campbell, 510 U.S. at 580.