Can Instagram Post of Photo Become Transformative?

An enlarged print of an Instagram post containing a copyrighted photo counts as a transformative use, an attorney for “appropriation artist” Richard Prince — whose use of other artists' material in his own works has made him no stranger to the courts — argued before a New York federal judge in April.

At issue in photographer Donald Graham's lawsuit against Richard Prince is a black-and-white photo titled “Rastafarian Smoking a Joint.” Graham v. Prince, 15-cv-10160 (S.D.N.Y.). Graham alleges that he took the photo during a 1996 trip to Jamaica and that it was first published in August 1998. The work was registered with the U.S. Copyright Office on Oct. 20, 2014.

But the registration came after an Instagram user with the username “Indigoochild” posted a slightly cropped version of the photo that was reposted by another user, “Rastajay92,” with the comment “Real Bongo Nyah man a real Congo Nyah,” a reference to a Stephen Marley song.

Using his own account, Richard Prince commented on Rastajay92's photo: “Canal Zinian da lam jam.”

What that phrase means was among the questions that Southern District of New York federal Judge Sidney Stein had for Prince's attorney Joshua Schiller, a partner at Boies Schiller Flexner, during the hearing pertaining to Prince's motion to dismiss. Schiller said the phrase refers to his client's appreciation for music, but that it “means different things to different people.”

“Sounds like music to me,” he said after repeating the phrase three times.

The Instagram post containing “Rastafarian” was Prince's New Portraits exhibition featured in September and October 2014 at the Gagosian Gallery in Manhattan, which consisted of other canvas prints of blown-up screenshots of Instagram posts. The image was also visible on a billboard for the exhibit at 50th Street and the West Side Highway.

In 2015, Graham filed a copyright infringement suit against Prince and the gallery for the use of the image in the work and on the billboard, alleging in his original lawsuit that Prince achieved notoriety in the appropriation art industry for his “blatant disregard of copyright law.” After the filing, Prince took to Twitter to vent in a series of posts, including with a compilation image of the Rastafarian and an ad for alcohol with the comment: “Booze Pot Sex. I guess I was wrong. (Memo to Turner: I DID NOT take make create this montage).”

Since then, Graham has amended his lawsuit to allege that the Twitter message constituted a third infringement. In the motion to dismiss the suit, Prince's attorneys argue that, while Graham's work captures “the spirit and gravitas of the Rastafarian people,” his piece may be portrayed as commentary on the “power of social media to broadly disseminate others' work.”

Schiller noted at the hearing that his client printed an image that was first reposted by other Instagram users. “This is an image that someone has put out to say 'what I love,' which is 'Rastafarians and smoking weed,'” Schiller said.

But District Judge Stein said that he didn't understand “how you can realistically say” that an observer of the work would be drawn to the features of Prince's work more than Graham's photo. “It seems to me that the focus of the eye is a Rastafarian smoking marijuana,” Judge Stein said.

Judge Stein had a briefer exchange with Graham's attorney, Cravath, Swaine & Moore partner David Marriott, in which the judge noted that the proportion of the original work featured in Prince's appropriation cannot be the sole test of whether there was an infringement. “If that were the test, you'd be the slam dunk winner,” the district judge said.

In addition to Schiller, Richard Prince is represented by Boies Schiller partner Matthew Schwartz and associates Frederick Lee and Benjamin Margulis. Graham is also represented by Cravath partner David Kappos and associates Christopher Davis and Daniel Richards. Lawrence Gagosian and Gagosian Galleries are represented by Dontzin Nagy & Fleissig attorneys Matthew Dontzin, Tibor Nagy Jr. and Tracy Appleton.

The case is not the first time that Prince has waded into controversy with his work. Schiller also represented him in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), in which photographer Patrick Cariou sued Prince for copyright infringement for using Cariou's photos in collage paintings. In 2011, the Southern District granted summary judgment on Cariou's copyright infringement claim.

But the U.S. Court of Appeals for the Second Circuit partially reversed the lower court, finding that 25 of the 30 photos that Prince used were transformative and thus constituted fair use. The appeals court cautioned, however, that its ruling should not be taken to suggest that “cosmetic changes to the photographs would necessarily constitute fair use,” and that a “secondary work may modify the original without being transformative.”

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Andrew Denney writes for the New York Law Journal, an ALM sibling of Entertainment Law & Finance. He can be reached at [email protected].

An enlarged print of an Instagram post containing a copyrighted photo counts as a transformative use, an attorney for “appropriation artist” Richard Prince — whose use of other artists' material in his own works has made him no stranger to the courts — argued before a New York federal judge in April.

At issue in photographer Donald Graham's lawsuit against Richard Prince is a black-and-white photo titled “Rastafarian Smoking a Joint.” Graham v. Prince, 15-cv-10160 (S.D.N.Y.). Graham alleges that he took the photo during a 1996 trip to Jamaica and that it was first published in August 1998. The work was registered with the U.S. Copyright Office on Oct. 20, 2014.

But the registration came after an Instagram user with the username “Indigoochild” posted a slightly cropped version of the photo that was reposted by another user, “Rastajay92,” with the comment “Real Bongo Nyah man a real Congo Nyah,” a reference to a Stephen Marley song.

Using his own account, Richard Prince commented on Rastajay92's photo: “Canal Zinian da lam jam.”

What that phrase means was among the questions that Southern District of New York federal Judge Sidney Stein had for Prince's attorney Joshua Schiller, a partner at Boies Schiller Flexner, during the hearing pertaining to Prince's motion to dismiss. Schiller said the phrase refers to his client's appreciation for music, but that it “means different things to different people.”

“Sounds like music to me,” he said after repeating the phrase three times.

The Instagram post containing “Rastafarian” was Prince's New Portraits exhibition featured in September and October 2014 at the Gagosian Gallery in Manhattan, which consisted of other canvas prints of blown-up screenshots of Instagram posts. The image was also visible on a billboard for the exhibit at 50th Street and the West Side Highway.

In 2015, Graham filed a copyright infringement suit against Prince and the gallery for the use of the image in the work and on the billboard, alleging in his original lawsuit that Prince achieved notoriety in the appropriation art industry for his “blatant disregard of copyright law.” After the filing, Prince took to Twitter to vent in a series of posts, including with a compilation image of the Rastafarian and an ad for alcohol with the comment: “Booze Pot Sex. I guess I was wrong. (Memo to Turner: I DID NOT take make create this montage).”

Since then, Graham has amended his lawsuit to allege that the Twitter message constituted a third infringement. In the motion to dismiss the suit, Prince's attorneys argue that, while Graham's work captures “the spirit and gravitas of the Rastafarian people,” his piece may be portrayed as commentary on the “power of social media to broadly disseminate others' work.”

Schiller noted at the hearing that his client printed an image that was first reposted by other Instagram users. “This is an image that someone has put out to say 'what I love,' which is 'Rastafarians and smoking weed,'” Schiller said.

But District Judge Stein said that he didn't understand “how you can realistically say” that an observer of the work would be drawn to the features of Prince's work more than Graham's photo. “It seems to me that the focus of the eye is a Rastafarian smoking marijuana,” Judge Stein said.

Judge Stein had a briefer exchange with Graham's attorney, Cravath, Swaine & Moore partner David Marriott, in which the judge noted that the proportion of the original work featured in Prince's appropriation cannot be the sole test of whether there was an infringement. “If that were the test, you'd be the slam dunk winner,” the district judge said.

In addition to Schiller, Richard Prince is represented by Boies Schiller partner Matthew Schwartz and associates Frederick Lee and Benjamin Margulis. Graham is also represented by Cravath partner David Kappos and associates Christopher Davis and Daniel Richards. Lawrence Gagosian and Gagosian Galleries are represented by Dontzin Nagy & Fleissig attorneys Matthew Dontzin, Tibor Nagy Jr. and Tracy Appleton.

The case is not the first time that Prince has waded into controversy with his work. Schiller also represented him in Cariou v. Prince , 714 F.3d 694 (2d Cir. 2013), in which photographer Patrick Cariou sued Prince for copyright infringement for using Cariou's photos in collage paintings. In 2011, the Southern District granted summary judgment on Cariou's copyright infringement claim.

But the U.S. Court of Appeals for the Second Circuit partially reversed the lower court, finding that 25 of the 30 photos that Prince used were transformative and thus constituted fair use. The appeals court cautioned, however, that its ruling should not be taken to suggest that “cosmetic changes to the photographs would necessarily constitute fair use,” and that a “secondary work may modify the original without being transformative.”

*****
Andrew Denney writes for the New York Law Journal, an ALM sibling of Entertainment Law & Finance. He can be reached at [email protected].