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Graham v. Prince

United States District Court, S.D. New York

July 18, 2017

DONALD GRAHAM, Plaintiff,
v.
RICHARD PRINCE, GAGOSIAN GALLERY, INC., and LAWRENCE GAGOSIAN Defendants.

          OPINION & ORDER

          SIDNEY H. STEIN, U.S. District Judge.

         Table of Contents I. Background .................................................................................................. 3

         A. The Parties ................................................................................................ 3

         B. Graham's Rastafarian Smoking a Joint .................................................... 4

         C. Prince's Untitled and New Portraits Exhibition .................................... 5

         D. Plaintiff's Cease and Desist Letter and Defendants' Subsequent Use of the Image ......................... 7

         E. This Action ............................................................................................. 10

         II. Motion to Dismiss Standard .................................................................. 10

         III. Fair Use ....................................................................................................... 11

         A. Legal Standards ..................................................................................... 11

         B. Application of the Fair Use Factors ..................................................... 15

         1. Purpose and Character of the Use .................................................. 16

         a. Transformative use…………………………………………..16

         b. Commercial Use……………………………………………...20

         2. Nature of the Work ........................................................................... 21

         3. Amount and Substantiality ............................................................. 21

         4. Effect on the Potential Market for the Copyrighted Work ......... 22

         5. Application of the Fair Use Factors to the Billboard and the Twitter Compilation .......................................................................... 24

         IV. Defendants' Request for Conversion to Motion for Summary Judgment .......................... 26

         V. Limitation of Damages ............................................................................ 26

         A. Actual Damages and Infringers' Profits ............................................. 26

         1. Actual Damages ................................................................................ 27

         2. Infringers' Profits .............................................................................. 28

         B. Statutory Damages, Attorneys' Fees, and Costs ............................... 29

         1. Statutory damages and attorneys' fees .......................................... 30

         2. Costs .................................................................................................... 31

         C. Punitive Damages .................................................................................. 32

         VI. Conclusion ................................................................................................. 32

         Donald Graham brings this action against Richard Prince, Gagosian Gallery, Inc., and Lawrence Gagosian for copyright infringement arising out of Prince's failure to seek Graham's permission to use one of his photographs in creating the “appropriation art” for which Prince is well known. Prince used Graham's photograph, Rastafarian Smoking a Joint, to create an artwork known as Untitled (Portrait) (“Untitled”), which was featured by defendants as part of an exhibition called New Portraits, as well as in the catalog for that exhibition, a billboard displayed in New York, and in a post by Prince on the social media platform Twitter.

         Defendants have asserted the affirmative defense of fair use and moved to dismiss the Corrected Amended Complaint (the “Complaint”), with prejudice. In the alternative, defendants ask the Court to convert their motion into a motion for summary judgment pursuant to Fed.R.Civ.P. 12(d). Defendants also urge the Court to limit, as a matter of law, Graham's damages claims to any profits obtained from the sale of Untitled; to restrict the bounds of possible statutory damages, attorneys' fees, and costs that plaintiff may recover; and to bar plaintiff from seeking punitive damages.

         Because the affirmative defense of fair use requires the Court to engage in a fact-sensitive inquiry that cannot be completed - in this case - on a motion to dismiss the complaint, defendants' motion is denied. In addition, because discovery will be necessary to conduct the fair use inquiry, the Court declines to convert this motion into a motion for summary judgment. With respect to defendants' request to limit Graham's potential damages, the Court grants defendants' request to bar Graham from seeking punitive damages but otherwise denies that request.

         I. Background

         The following facts are as alleged in the Complaint and are taken as true solely for purposes of this motion:

         A. The Parties

         Plaintiff Donald Graham, the creator of the original photograph Rastafarian Smoking a Joint (see Fig. 1 annexed to this Opinion), is a professional photographer who specializes in portraiture. (Compl. ¶ 14.) Graham began his career in 1983 and his fine artwork has been exhibited at prominent museums and art galleries throughout the world. (Id. ¶¶ 14, 18.) Graham has not only received commissions to create photographs for commercial purposes but has also licensed his commercial work to numerous publications. (Id. ¶ 14.) However, “[i]n order to protect its art market value, ” Graham generally does not license his fine art photography. (Id. ¶ 23.)

         Defendant Richard Prince is a well-known “appropriation artist” who created the allegedly infringing print known as Untitled (Portrait) (“Untitled”) (see Fig. 2 annexed to this Opinion) by “cop[ying], ” “reproduc[ing], ” and “modif[ying]” Graham's Rastafarian Smoking a Joint photograph. (Id. ¶¶ 4, 31). Prince has built his career on “reproducing, modifying or preparing derivative works from the works of others, typically without permission, and selling [them] as his own.” (Id. ¶ 15.) Prince's appropriation of others' works has subjected him to copyright litigation in the past; he has previously appeared as the defendant-appellant in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013). (See Id. ¶¶ 26, 47.)

         Defendant Gagosian Gallery owns and operates art galleries in various cities, including one at 976 Madison Avenue, New York, NY. According to the Complaint, Gagosian Gallery has been Prince's primary gallery and agent. (Id. ¶¶ 5, 16.) Defendant Lawrence Gagosian is the controlling shareholder of Gagosian Gallery. (Id. ¶ 17.) That gallery displayed and promoted Prince's Untitled in September and October of 2014 as part of an exhibition of works by Prince entitled New Portraits (id. ¶ 4), and Gagosian himself allegedly purchased Untitled “at or prior to the conclusion” of that exhibition (id. ¶¶ 5, 40).

         B. Graham's Rastafarian Smoking a Joint

         The original photograph at issue in this case is Rastafarian Smoking a Joint. It is a black-and-white portrait that, as its title suggests, depicts a Rastafarian man with long dreadlocks, standing shirtless against a white background, smoking a marijuana cigarette. (Compl., Ex. A; see Fig. 1 annexed to this Opinion.) Graham captured the image during a two-week trip to rural Jamaica in 1996, during which he sought to depict “the Rastafarian people in their surrounding environment.” (Id. ¶ 19.) Graham alleges that he was able to take these photographs only after gaining the trust of his Rastafarian subjects by “convinc[ing]” them “that his purposes were artistic.” (Id.)

         Graham first published Rastafarian Smoking a Joint in August 1998 and the work was recognized for its “artistic merit” when it was included, under license, in Communication Arts magazine's “Photography Annual 39” edition. (Id. ¶ 21.) Since then, Graham has sold prints of the photograph to “fine art collectors” in limited editions and sizes. The photograph is available in an edition of eight prints - which are 4 ft. by 5 ft. - and an edition of twenty-five prints - which are 20 in. by 24 in. (Id. ¶ 22.) Graham's photograph is digitally available on his websites but Graham has never “licensed” or “made [Rastafarian Smoking a Joint] available for any [other] commercial purpose.” (Id. ¶ 23).

         Graham did not register Rastafarian Smoking a Joint with the U.S. Copyright Office until October 20, 2014 - after becoming aware that Prince had appropriated it to create his own artwork.[1] (Id. ¶¶ 20, 39, Ex. C.)

         C. Prince's Untitled and New Portraits Exhibition

         Graham alleges that Prince willfully infringed his copyright in Rastafarian Smoking a Joint by incorporating the photograph into Untitled, a 2014 work that was part of Prince's New Portraits exhibition, which was originally displayed at the Gagosian Gallery's Madison Avenue location in New York in September and October of 2014. (Compl. ¶ 4.)

         Prince's Untitled is a 4 ft. ¾ in. by 5 ft. ¾ in. inkjet print of a screenshot taken by Prince that captures a “post” made by a user named “rastajay92” on the social media platform Instagram.[2] (Id. ¶ 29, Ex. B; see Fig. 2 annexed to this Opinion.) A screenshot is, in this instance, a digital copy of an Instagam post. Rastajay92's post consists of a slightly cropped copy of Rastafarian Smoking a Joint (id. ¶¶ 31(a), (b)), which he reproduced without Graham's permission (id. ¶¶ 4, 34). In fact, rastajay92 had “reposted” a copy of the photograph that had previously been posted by yet another Instagram user, “indigoochild.” (Id. ¶¶ 31(b), 32.) When rastajay92 reposted the image, he also commented: “Real Bongo Nyah man a real Congo Nyah [emoji[3] of a raised fist].” (Id. ¶ 31(b).) This is a transliteration of the chorus to a reggae song by recording artist Stephen Marley, Bob Marley's son.4 (Id. ¶¶ 32-33.) Rastajay92's comment also attributes his post to indigoochild by stating: “repost @indigoochild.” (Id. ¶ 32.)

         After Prince encountered rastajay92's post on Instagram, he used the username “richardprince[4], ” to add a comment of his own: “Canal Zinian da lam jam [emoji of a raised fist].” (Id. ¶ 31(b).) Prince then took a screenshot of rastajay92's Instagram post, which now included his own comment, [5] as well as the other elements of the Instagram graphic interface: rastajay92's username and comment, the number of "likes" rastajay92's post had received - 128 in this instance - and the number of weeks that elapsed between rastajay92's post and Prince's screenshot - three weeks here. (Id. ¶ 34.) Prince then printed - or arranged for someone else to print - the screenshot onto canvas in order to create the final artwork at issue in this litigation: Untitled. (Id. ¶ 34, Ex. B; see Fig. 2.)

         (Image Omitted)

         As noted above, Untitled was part of a broader exhibition of Prince's work - the New Portraits exhibition - which was displayed in Gagosian's Madison Avenue gallery in September and October of 2014. Untitled itself was sold to defendant Lawrence Gagosian “at or prior to the conclusion” of the New Portraits exhibition. (Id. ¶ 40.) The thirty-six other works in New Portraits also feature prints of Instagram screenshots by Prince and were created in much the same way as Untitled.[6] (Id. ¶¶ 29, 36.) In his own description of this exhibition, Prince characterized the comments he wrote in those Instagram posts as “gobblygook” and “inferior language” that “sounds like it means something.” (Id. ¶ 36.)

         According to Graham, while the New Portraits exhibition was ongoing, “[o]ne or more of the Defendants” used Untitled to promote the exhibition through websites (id. ¬∂ 43) and through the exhibition's catalog, which ‚Äúprominently ...


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