Cariou v Prince and the Gagosian Gallery: Fair use of photographs in artworks

Further to this post, the Gagosian, in association with Richard Prince, is in more trouble this month following a decision of the US District Court of the Southern District of New York which has made headlines around the world.

The claim was brought by professional photographer Patrick Cariou who had published a book of numerous photographs that he had taken of Rastafarians and landscape in Jamaica over a six year period. The defendants were Richard Prince, the well known so-called “appropriation artist”, as well as the Gagosian Gallery, the art dealer and gallery which inter alia represents Price and markets the artworks he creates.

The action concerned a series of paintings by Prince entitled Canal Zone, which included photographs from Carious’s book, Yes, Rasta. Prince had painted over some parts of certain photographs, used only portions of other photos, while some were used in their entirety or nearly so. Indeed, in total, Prince admitted using at least 41 photos from Yes, Rasta as elements of Canal Zone works. For its part, the Gagosian had displayed 22 of the 29 Canal Zone paintings at one of its Manhattan locations at the end of 2008. It had also published and sold an exhibition catalogue for the show, similarly entitled Canal Zone, which contained reproductions of many of the Canal Zone paintings (including some paintings which were not shown at the Gallery) as well as photographs of Cariou's photos in Prince's studio. Accordingly, Cariou brought his claim for copyright infringement and sought summary judgment.

One of Prince's Canal Zone works - which uses Cariou's photos

The defendants did not dispute that Cariou owned a valid copyright in the photos. However, they asserted that his photos were mere compilations of facts concerning Rastafarians and the Jamaican landscape, which were arranged with minimum creativity in a manner typical of their genre, and therefore not protectable by law. The Court rejected this argument noting that it was a matter of long settled law for that creative photographs were worthy of copyright protection even when they depicted real people and natural environments. Therefore, Cariou’s photos were protected by copyright.

The defendants’ next argument was that their use of Cariou’s photos was allowed under the doctrine of Fair Use (as codified in Section 107 of the 1976 US Copyright Act). The Court considered each of the factors relevant in a finding of fair use and found that none favoured the Defendants for the following reasons:

1. Purpose and character of the use of the copyright work

The defendants’ claimed, the photos were merely the “raw materials” which they had used in the creation of new transformative works. The Court refused to accept that appropriation was per se fair use, and found that Prince’s works were only transformative to the extent that they comment on the photos, and so, to the extent that Prince’s works merely recast, transformed, or adapted Cariou’s photos, they were infringing derivative works. Further, the Court said, since, on the facts Prince did not intend to comment on Cariou’s photos when he appropriated them, the transformative character of his works was minimal. Indeed, the Court found that in the works which most heavily drew on Cariou's photos, such as those in which Prince used entire photos from Yes, Rasta, there was vanishingly little, if any, transformative element.

The Court then looked at whether the infringing works nevertheless served a commercial purpose of nonprofit educational purpose. While, the Court recognised the inherent public interest and cultural value of public exhibition of art and of an overall increase in public access to artwork, on the facts it held that the defendants' use and exploitation of the photos was substantially commercial, especially where the Gagosian was concerned. In this respect, the Court noted that the Gagosian had sold eight of the Canal Zone paintings for a total of US$10,4 million, and seven other Canal Zone paintings had been exchanged for art with an estimated value between US$6 million and US$8 million.

The Court was also considered the proprietary of the defendants’ conduct. The background facts showed that Prince's employee had contacted the publisher of Yes, Rasta to purchase additional copies of the book, but neither Prince nor his employee had ever asked the publisher about licensing or otherwise sought permission to legitimately use Yes, Rasta or the photos contained therein. Nor had Prince attempted to contact Cariou by email to enquire about usage rights to the photos, even though Yes, Rasta clearly identified Cariou as the sole copyright holder and even though Cariou's website displayed an email address at which he can be reached. Under these circumstances, the Court said, Prince had acted in bad faith. Moreover, since the record established that the Gagosian was aware that Prince is an habitual user of other artists' copyrighted work, without permission, and because it was equally clear that the Gagosian neither enquired into whether Prince had obtained permission to use the photos contained in the Canal Zone paintings nor ceased their commercial exploitation of the paintings after receiving Cariou's cease-and-desist notice, the Gagosian had also shown bad faith.

2. Nature of the copyright work

The Court found Cariou's photos to be highly original and creative artistic works constituting "creative expression for public dissemination" and "within the core of the copyright's protective purposes."

3. Amount and Substantiality of the portion used in relation to the copyright work as a whole

The Court noted that Prince had appropriated entire photos in a number of his paintings, and the central figures depicted in portraits taken by Cariou and published in Yes, Rasta in the majority of his paintings. Since those central figures were of overwhelming quality and importance to Cariou's photos, going to the very heart of his work, the amount of Prince's taking was substantially greater than necessary.

4. Effect of use upon the potential market for or value of the copyright work

It was clear that the market for Cariou's Photos was usurped by defendants since it was undisputed that a gallery owner had discontinued plans to show the Yes, Rasta photos, and to offer them for sale to collectors, because she did not want to appear to be capitalising on Prince's works and did not want to show work which had been "done already" at the Gagosian. Further, since it had been recognised that licensing original works for secondary use by other artists is the kind of derivative use that creators of original works do in general develop, and so the widespread unlicensed use in new artworks would destroy the market for such licenses, Prince had unfairly damaged both the actual and potential markets for Cariou's original work and the potential market for derivative use licenses for Cariou's original work.

Since none of these factors weighed in favour of the defendants, the Court held that they could not rely on Fair Use and, accordingly, the defendants were both found directly liable for copyright infringement of Cariou’s photos and the Court granted Cariou’s motion for summary judgment in its entirety.

In addition to restraining the defendants from infringing the copyright in the Cariou’s photos, or any other of his works, the Court ordered that they deliver up for impounding, destruction, or other disposition, as Cariou may determine, all infringing copies of the photographs, including Prince’s paintings and unsold copies of the Canal Zone exhibition book, in their possession, and other articles for making such infringing copies.

Damages remained to be assessed, but with Prince and the Gagosian having made millions of dollars from sale of the Canal Zone works, at this stage it looks like Cariou can expect a large pay day.


To read the whole decision see here.

Louis Vuitton Attempts to Ban Darfurnica

Darfurnica

This story begins in 2008 when Nadia Plesner, a Danish artist began selling t-shirts in aid of the campaign in Darfur.  She was concerned “about how the media works and why there are so many reports about big stars and totally no coverage of a situation like that in Darfur... The bag was there as a status symbol… It was just a way of showing the child off as a bit of a celebrity.”

Unfortunately, Louis Vuitton thought differently. Whilst it “considered the campaign for Darfur praiseworthy in itself, it is opposed the unauthorised use made by Plesner of its intellectual property rights”.

In order to stop this “unauthorised use,” Louis Vuitton applied to the Tribunal de Grande Instance in Paris on 25 March 2008. The Paris court imposed an (ex parte) injunction and awarded damages of a symbolic 1 Euro with the threat of a 5,000 Euro fine for each day of non-compliance with the injunction. The judgment was primarily awarded on the basis of Community Registered Design number 000084223-0001. In June 2008, after what appears to have been extensive negotiation, all Louis Vuitton products were removed from Nadia Plesner’s website and she stopped selling the t-shirts. Louis Vuitton clearly thought that was the end of the story but Nadia Plesner had other ideas.

Extract from Louis Vuitton's Design Registration

Plesner’s art has continued to focus on Darfur and she has more recently created a larger painting after Picasso’s Guernica entitled Darfurnica. The African boy with Louis Vuitton “Audra” handbag is again visible but this time the bag is a small part of a much larger artistic work which contains a variety of famous figures, trade marks and other fashion accessories. Louis Vuitton was not amused and it once again made an ex parte application, this time to a court in The Hague.

There are two fascinating aspects about this ex parte application.  Firstly, LV suggests that Plesner may have a defence under freedom of expression but immediately dismisses this argument on the basis that it “holds no water” and that “there is no necessity to use the intellectual property rights of Louis Vuitton [as] There are numerous other means to get this message across.”  Secondly, the reliance on design right as opposed to copyright, particularly as there is no fair dealing defence to design right infringement.

Louis Vuitton is understandably concerned about the negative association that Plesner has created between its product and the war in Darfur. LV’s Dutch pleadings, as translated by Plesner’s lawyers, raised an additional concern that “the picture with the Audra Bag of Louis Vuitton is being used as an “eye-catcher” for [Plesner’s] exhibition, where, as said, many other works of art of Plesner are offered for sale besides the painting with the Audra Bag”.

Plesner’s lawyer Jens van den Brink reportedly says Louis Vuitton has abused “a procedure that is designed to stop the marketing of containers full of shoes with faked brand names.” Plesner and her lawyer are seeking an injunction to overturn the previous court order banning Darfurnica. They are basing their defence on freedom of opinion. The case is due to be heard on 30 March.

The Darfurnica painting can be seen at the Heart Museum in Denmark.

Picasso's Guernica - Darfurnica is reportedly the same size and shape

Star Wars Sculptures?

As this blog noted here, the UK Supreme Court was last week considering whether the Star Wars Stormtroopers’ helmets are sculptures and therefore protected by copyright law.

For a helpful summary of the three day hearing before the five justices of the Supreme Court see Hugo Cox’s recent post on the 1709 blog here.

Protecting Aboriginal Art

It was recently announced that the Australian government has added an old ochre mine to the Australian National Heritage List. The National Heritage List sets out the places which are considered to be of outstanding heritage value to Australia and includes places such as Uluru and Kakadu National Park. These places are protected under the Australian Government's national environment law — the Environment Protection and Biodiversity Conservation Act 1999 (EPBC Act).

The mine in question, the Wilgie Mia ochre mine in Western Australia is the largest and deepest underground Aboriginal ochre mine in Australia. Ochre of different colours has long been used by Aboriginal people throughout Australia in Aboriginal art, as well as in Aboriginal law, traditional ceremony and healing rituals. The mine has provided red, yellow and green ochre to Aborigines for thousands of years and is regarded by some as the best ochre in Australia. It has all the features found in traditional Aboriginal mines: large open-cut pits, excavated caverns and underground galleries that follow ochre seams, and there is reportedly a considerable amount of rock art in the vicinity.

Sample piece - Ochre on Canvas
Rainmaker Wandjina by Lily Mindindil Karadada, 2006

The listing will help protect the historic site from encroaching iron ore developments. By law, no one will be able to take an action that is likely to have a significant impact on the national heritage values of the mine without approval. There are penalties for those who do. An action includes a project, development, undertaking, an activity or series of activities. Accordingly, any proposed activities will have to be referred to the Australian environment minister.


Source: The Australian, 8 March 2011

Ansel Adams Print Battle Concludes

Genuine?

A trade mark dispute which has raged for almost a year between Ansel Adams’ Trust and Rick Norsigian has finally settled.

Last year, Norsigian sold 65 different prints online that he claimed were made from original Ansel Adams glass plates he purchased at a garage sale 10 years ago. The late photographer’s Trust claimed that the plates were not genuine and launched trade mark infringement proceedings against Norsigian in August 2010. According to the Bay Citizen, the Trust asserted “trade mark infringement, trade mark dilution, false advertising and false endorsement, among other charges.”

Even after the legal action commenced, Norsigian continued to sell the prints for between $1,500 and $7,500 under the Ansel Adams name.

Fake?

As part of their claim, the Adams Trust reportedly claimed that even if the prints are genuine, Norsigian was still unable to sell the prints using Adams’ name. The Trust’s lawyer reportedly said that "[the images] are not made by Ansel Adams, even if they were, they are negatives and [Norsigian] would not have the right to use [Adams'] name on any of the prints."

Perhaps a better argument would have been that making prints from the negative without owning the copyright would constitute copyright infringement – however, this would involve accepting that the prints are genuine Adams, a position that the Trust was surprisingly reluctant to accept.
The potential copyright infringement claim is particularly interesting considering that there is currently only one Adams mark on the USPTO register for ANSEL ADAMS ANSEL ADAMS GALLERY. Two marks for ANSEL ADAMS were filed on 23 August 2010 (after the suit was reportedly filed). The Trust reportedly claimed that they expected something like these allegedly fake Adams images to arise but only took registration action when it actually did.

In order to spice up the legal shenanigans, or possibly provide a bargaining chip toward negotiation, in December, Norsigian launched defamation proceedings against the Trust claiming that the “trust slandered him and engaged in a civil conspiracy that has hurt his efforts.” According to the Bay Citizen, Norsigian’s case arose from comments made by Bill Turnage, the Adams Trust’s managing trustee, who told CNN that the efforts made to authenticate the plates was the work of “a bunch of crooks” and likened it to Goebbels’ “Big Lie” technique.

Thankfully, the issue has now been amicably resolved. According to a joint statement, “Norsigian … may continue to sell negatives, prints, posters and other merchandise associated with negatives, subject to a disclaimer approved by The Trust, and provided they do so in a manner consistent with state and federal law.” Details about the settlement are confidential, however, no money appears to have exchanged hands. The legal costs of each side's litigation were absorbed by the individual parties.

Presumably Norsigian has a certain amount of time to comply with the settlement agreement – the website still contains several references to Ansel Adams, is titled the “lost negatives” and contains no obvious disclaimer.

The Innocent Art Sale Test

Above: "The Innocent Eye Test", a comment on the art world?

Late last week, an art collector, Robert Wylde, filed a lawsuit against the Gagosian Gallery in New York. The lawsuit has it roots in 2009, when Mr Wylde purchased a Mark Tansey painting called ‘The Innocent Eye Test’ from the gallery for US$2.5 million. Mr Wylde claims that the Gagosian did not tell him at the time that the Metropolitan Museum in New York already owned 31% of the work and had been promised the painting would eventually be gifted to the museum in full.

Wylde still has possession of the painting and is reportedly seeking several million dollars in damages.  The suit also contends that the gallery had agreed to sell Mr Wylde a Richard Prince painting for $2.2 million in 2009 but cancelled the sale when it got a higher offer.

According to the New York Times, the Gagosian has stated that owner, Charles Cowles, "represented that he had clear title to the painting, which was viewed for sale in his apartment, and the gallery acted in good faith at all times in selling the painting."

When Cowles was contacted by the New York Times, he admitted that the mix-up was his fault: "One day I saw it on the wall and thought, 'Hey, I could use money,' and so I decided to sell it… And now it's a big mess."

Has Run DMC been Brainwashed?

Friedman's original mid-eighties photograph

Thierry Guetta (AKA Mr Brainwash), rushed to fame thanks to Banksy’s Oscar nominated Exit Through the Gift Shop. Rumours abounded at the time as to whether or not he was a real artist or a Banksy hoax. Such rumours have now largely been quashed and Mr Brainwash has been established as a prominent street artist in his own right.

In fact, one of best claims to Mr Brainwash being a real person is that he has recently been sued by Glen Friedman, the photographer behind a mid eighties Run DMC photograph which Mr Brainwash uses in several of his works.

Black and white brainwashing - fair use?

Full colour stencilled brainwashing - is this use fair?

Friedman is reportedly claiming a share of “indirect profits” from a 2008 exhibition in addition to unspecified damages for, amongst other things, loss of business and dilution of the value of the copyrights.

Mr Brainwash doesn’t deny use of the photograph but claims that the use falls within US federal law’s “fair use” exception to copyright infringement claims. This exception apparently allows for the limited reproduction of copyrighted works for creative ends.

As street art becomes both more lucrative and more mainstream it is likely that such copyright cases will increase, particularly as this is an area where the detachment from traditional art has arguably led to a more infringement orientated creative approach where sampling parts of previous works is prevalent.

Sitters' Rights Reprised

Posing for Freud 

As promised, last night London law firm Collyer Bristow opened the doors to its gallery for an evening of wine, nibbles and a very interesting talk from Martin Gayford on being the subject of a Lucian Freud painting.

It was fascinating to hear how this portrait of Gayford has been transformed into “Man with a Blue Scarf” and now hangs somewhere in California completely disconnected from the original sitter. Gayford explained that unless you are the Queen or a fellow artist, your Lucian Freud portrait will, in most cases, receive an anonymous title such as the man with the blue scarf. Freud is of the opinion that you don’t need to know anything about the sitter in order to appreciate a portrait as a work of art. Apparently sitter’s rights don’t exist but they do provide the sitter with a good subject for a book.

A number of points about Freud’s technique and method were of particular interest:

Freud self portrait with the excess paint providing the background

When Freud finishes with some paint, the excess is plastered onto the wall in order to avoid it going on the carpet. This creates a dappled and textured effect which features in at least one Freud self-portrait.

His method is to start at one point in the painting and work outwards – although he will sketch out the underlying drawing on the canvas before starting work on the pupil of the eye (or some similarly small point on what will be the final painting).

Freud' method as seen in an unfinished Francis Bacon portrait

He is painstaking in his attention to detail and requires his sitter to be there at all times (even if he’s simply adding an apparently nondescript background in the top right hand corner). Each stroke is carefully pondered and considered before it is committed with the result that as much time can be spent in contemplation as in the application of paint to the canvas.

When Gayford accidentally turned up with a slightly different shade of blue scarf, Freud was sufficiently off put by the change of colour that he was unable to paint the scarf on that particular day. Although no blue paint had been added to the image before that day, Gayford surmised that all the other colours had been chosen on the basis of that particular blue and the slight change in shade was so noticeable to the artist’s eye that he was unable to continue.

Whatever time of day is chosen for the painting must be consistent (for Gayford he was there from around 6:30pm to 9:30pm for approximately six months).

The Law Society Art Group runs monthly events. They do not appear to have a website, but if you hear of any events, please let us know and we will add them to the blog.

Collyer Bristow’s gallery is open for viewing by appointment only during office hours. Its current collection is called Restless Nature and includes, amongst other things, a sphere of mouse skulls.

Sir Anthony Caro asserts moral rights over “mutilated” work

Sir Anthony Caro, an internationally acclaimed sculptor and one of the leading figures on the English abstract art scene, has reportedly objected to the description by Bonhams of one of his sculptures as his work in their catalogue. Instead, he claims, the work been altered in such a way as to misrepresent his original work and, furthermore, infringes his moral rights. Explains The Guardian:

“The five-metre, rusted and varnished steel sculpture entitled Lagoon is part of the 20th Century British Art sale on Wednesday, has had a catalogue estimate of between £100,000-£150,000.

Caro, who was awarded a lifetime achievement award in 1997, said: "It's been mutilated. It had legs welded on to it and it is nothing like the original. It stands several feel higher than the original. It is going on show on public exhibition as a sculpture of mine and it's not.

"I sold it to Peterborough Sculpture Trust, who I understood to be trustees for sculpture to keep for future generations. I didn't know they would use it as something to speculate with. That doesn't make me very happy."

A spokesman for Bonhams said: "The sculpture was commissioned from Sir Anthony by the Peterborough Sculpture Trust, which is now selling the work through Bonhams in order to raise funds for its other activities. The work was commissioned to stand on outside has legs for support. During its long period of exposure to the elements the sculpture has become weathered and at some time was unfortunately spray painted in some areas by vandals. The spray paint has been removed with only minor traces remaining.

"Sir Anthony contends that the legs on which the sculpture stands are not his work although that is not the recollection of the trust's staff who dealt with the installation of the piece on site many years ago. Whether Sir Anthony was responsible for the legs or not they have no impact on the artistic integrity of the piece. They are invisible when the piece is placed in the ground outside as originally intended."

Sir Caro has apparently offered to buy back Lagoon, which he sold to the trust in 1984, but the parties have been unable to agree terms. Neverthless, Caro retains his moral right to object to derogatory treatment of the work – which includes: distortion or mutilation of the work or treatment that is otherwise prejudicial to the honour or reputation of the author. If Sir Caro was not aware of the alterations to his work, the addition of metal legs, the graffiti as well as the deterioration in the general condition of the work due to lack of care, may well be considered sufficiently prejudicial to his honour and reputation, if not to mutilation of the work. Accordingly, he could have a good claim for infringement of his moral rights.

The work in question - Lagoon - in its present state

Source: The Guardian, 8 March 201

Supreme Courts address questions of artistic copyright

While the UK Supreme Court is this week considering whether the Star Wars Imperial Stormtrooper helmets are works of art covered by copyright law, on the other side of the pond the US Supreme Court has agreed to review a decision of the 10th Circuit Court that Section 514 of the 1994 Uruguay Round Agreements Act, which restored copyright protection to various foreign works of art that were previously in the public domain in the US, is not contrary to the First Amendment.

By way of background, the US enacted the URAA after signing trade agreements in the Uruguay Round General Agreement on Tariffs and Trade in April 1994. The aim of the URAA was to enable the US to comply with its international obligations in the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), which requires that its signatories comply with the Berne Convention for the Protection of Literary and Artistic Works, and extend copyright protection to all works of foreign origin whose term of protection has not expired. Section 514 of the URAA implemented Article 18 of the Berne Convention and restored copyright in foreign works and thus removed them from the public domain in the US/

In Golan, Lawrence, et al v Holder, Att’y Gen., et al (United States Court of Appeals for the Tenth Circuit, Case Nos.:09-1234, 09-1261, June 21, 2010), the plaintiffs were orchestra conductors, educators, performers, publishers, film archivists, and motion picture distributors who have relied on artistic works in the public domain for their livelihoods. They performed, distributed, and sold public domain works. Accordingly, when the URAA came into force, the plaintiffs objected since they were either prevented from using such works or were required to pay licensing fees to the copyright holder. Therefore, the plaintiffs filed an action challenging the constitutionality of the extension of the copyright in these works.

The district court initially granted plaintiffs’ motion for summary judgment, concluding that Section 514 of the URAA violated plaintiffs’ freedom of expression under the First Amendment. This was reversed by the 10th Circuit Court in June 2010 which held that the district court had erred in ruling that Section 514 violated plaintiffs’ freedom of expression because Section 514 advanced a substantial government interest, and did not burden substantially more speech than necessary to advance that interest, and was therefore consistent with the First Amendment.

Now, however, the Supreme Court has granted the petition for a writ of certiorari. In other words, it has agreed to review the decision.

It is not clear when the decisions of either of the Supreme Courts will be handed down, but both will be extremely important to resolving questions of artistic copyright.

Trade mark experts as artists

The 2nd Annual International Trademark Association (INTA) Art Show takes place in San Francisco this May, following the warm reception given to the INTA Art Show that was held during the organisation's 132nd Annual Meeting in Boston last year.  According to the INTA

"The 2011 INTA Art Show will be hosted at Moscone Center West during our 133rd Annual Meeting in San Francisco. Participation is open to all registered attendees and registered guests of the Annual Meeting [that's expected to be over 8,000 people]; immediate family members and colleagues of registered attendees may also submit artwork but need not be present at the Annual Meeting. The INTA Art Show will be located on the second floor of the convention center, where it will enhance the attendee experience and provide a medium to display the unexpected and unknown artistic talents of INTA members and staff. 

If you have artwork that you would like to display, you are encouraged to submit your work through a special online Art Show registration, which will allow you to apply and upload pictures of your artwork to the INTA website. The option exists to display your work in a virtual gallery accessible through the INTA website by INTA members and Annual Meeting attendees".

The deadline for submission is 22 April 2011, via the INTA -- which has almost as many rules for the submission and exhibition of entries as there are rules for the registration of trade marks.

Manet's Bar at the Folies-Bergere: note the Bass Triangle (UK
trade mark no.1) on the label of the bottle on the far right

Trade mark enthusiasts and art lovers have shared some delightful moments, as the illustrations above and below demonstrate.  Readers are invited to nominate other trade mark-driven artwork, which may be seen as a missed opportunity for product placement ...

Andy Warhol: one day every soup
will enjoy 15 minutes of fame ...

EC Consultation on the implementation and effect of the Artist’s Resale Right Directive

A reminder that the deadline for contributions to this Consultation is next week only a week away, on 11 March 2011.

The questionnaire can be found here.

The European Commission is particularly looking for contributions from artists, art market professionals and collecting societies managing resale right royalties.

With continued conflict over the full implementation of the Artist’s Resale Right in the UK – due to take place in January 2012 – it is important that all sides to the debate take the time to give their input.

"Who owns the orphans? Traditional and Digital Property in Visual Art"

Dr Maria Mercedes Frabboni (Centre for Commercial Law Studies, Queen Mary, University of London) informs us about a project on which she has been working as research fellow, 'Who owns the orphans? Traditional and Digital Property in Visual Art'. This project has been funded by the Arts and Humanities Research Council (AHRC) and is led by Uma Suthersanen. 

Says Maria, there will be a wine reception and exhibition to mark the conclusion of the first stage of this investigation. The event will take place at the University of London's Senate House, from 16.30 to 19.00 on 17 March 2011.  Admission is free but registration is essential.  Further details can be found on the Who owns the orphans website. Enquiries can be emailed to Maria Mercedes here.