A Case for Law as an Artistic Medium

By Caroline I. Keegan*

The contemporary art industry and the legal community differ notably in their conceptions of art. The two worlds do not agree on what art is, a disagreement that causes some artwork to have no legal protections, while giving a legal pass to other artists to create works the art world may wish would be disbanded. At the intersection of art and law, artists find inspiration and new ways to express themselves using law as their tool.

The legal world’s conception of “visual art” is spelled out by the U.S. Copyright Act and is both a traditionalist and reductionist take on the subject:

A “work of visual art” is—

(1) a painting, drawing, print or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or

(2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.;…

Moreover, copyright protection extends to a narrower subset, “original works of authorship fixed in any tangible medium of expression…” This reductionist idea of art was not invented by the courts; it is reflective of a very traditional view of art and authorship.

Many artists find this legal definition of art, embodied in U.S. copyright law, problematic. In response, there exists works that challenge that conception. Some of these artists have incorporated legal discourse surrounding their work into the medium. Other artists use carve- outs in the law to receive legal “permission” to create their controversial works. Others have exhibited literal legal documents as artwork. Following is select examples of artworks created with law as the material.

Law Provides a Platform for Artworks

Certain artists use law in their works as a platform to question traditional views of authorship and originality also expressed in copyright law. In the 1960’s, normative definitions of art began to crumble and artists began to re-interpret the essence of art. Then and now, appropriation artists would copy the visual aspects of a preexisting work to express ideas about ownership and authorship or, in the case of parody, often about the prior work specifically.  Many of these works, arguably intentionally, found their way into court, forcing viewers to give affirmative opinions as to whether they constituted art.

Art historian Arthur Danto presents an excellent example of this idea; a dancer performs a dance move that mirrors someone ironing a skirt. What happens is that ironing a skirt is what the dancer’s movements mean, that is what is embodied in the movements. This is not the case when someone irons a skirt, the action of ironing a skirt is performed to free a skirt of wrinkles and that is not what the dancer did. The dance piece, although entirely imitative, is an independent piece of artwork (aesthetic or intrinsic quality irrelevant).

Many appropriation artists use judicial structure as their one of their artistic mediums. At the forefront of this is Richard Prince. After being party to a number of law suits, think Canal Zone series, and having well-known art law counsel, it is fair to assume Prince is well aware of the legal line his work pushes (and occasionally crosses). Reaching record numbers at auction, it is also safe to assume Prince is able to afford licensing agreements to avoid such litigation. It appears artists like Prince knowingly invite the law into their studios, embracing it as part of the process and a crucial layer to the pieces. Years after Prince’s first copyright dispute in a courtroom setting, in 2015, Prince added comments to other people’s Instagram posts, took screenshots of the photos with his comments underneath, enlarged them, and sold them for hundreds of thousands of dollars.

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Richard Prince,“New Portraits” (2015)

Patent attorney, John Arsenault, has already looked over the potential legal issues explained: “although it looks like a case of outright plagiarism, [it] might be a little more complex if it were argued in a legal context. When I first saw it, I thought it was cut and dry, but then I looked again and saw what was captured specifically, and the commentary under it, then it creates a question. A silly question, especially given that he has sold these for money, but there you go.” This “question” Arsenault is referring to is the crux of Prince’s work, and the reason the law plays such an important role in forcing answers. The question here is, of course, what constitutes originality and who is an author.

Kenneth Goldsmith, a poet and conceptual artist, is likewise completely engaged in the question of authorship and originality. Goldsmith’s poetry is a decree against copyright, the legal boundaries placed on appropriation, and the judicial view of “originality.” He prefaces his work by declaring that he has no restrictions on his work, he celebrates the copying and sharing of his poetry. Goldsmith highlights that restriction on the dissemination of work harms the longevity of its existence, and advocates for greater access and sharing of artistic ideas than the law allows. Goldsmith posted a link on his own Facebook to a copy of one of his poetry books that had been translated into Spanish and shared online; he commented “Lovely to see my book pirated in Spanish. #freeculture.” Goldsmith’s works are described as better thought about than read as the base of his poetry is directly copied from various unauthorized sources, often creating absolutely mundane and simultaneously provocative art. For instance, one piece that received much attention was “Printing out the Internet” where Goldsmith asked his online audience to print out pages from the internet and send them to a specific gallery. Goldsmith puts it, “context is the new content.”

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Kenneth Goldsmith, “Printing out the Internet” (2013)

Utilizing a legal platform as a medium to re-negotiate an existing piece of work provokes established categories. These artists portend the end of traditional (and legal) views of art by rejecting the crux of it: originality, ownership, and authenticity.

When Law Protects Creation

In some instances, laws protect artists that create work objectionable in the art world, for example, because other artist’s works are mocked in the process. We know these works as parody. The law addresses parodic works in the Fair Use doctrine, section 107 of the Copyright Act, which reads: “the fair use of a copyrighted work, including such use by reproduction in…for purposes such as criticism, comment…is not an infringement of copyright.” This is accompanied by a four factor test to determining if a work falls into this caveat.

Jeff Koons is often seen as a seminal example of an artist who is well aware of how the law will play a role in his parodic art. Koons now employs lawyers before, during, and after the creation of his works to evaluate the legality of each step of his process, allowing him to incorporate the judicial system into his process. Koons argued in his affidavit in Rogers v. Koons, a case in which another artist accused Koons of copyright infringment, that “my paintings are not about objects or images that I might invent, but rather about how we relate to things that we actually experience…Therefore, in order to make statements about contemporary society and in order for the artwork to be valid, I must use images from the real world. I must present real things that are actually in our mass consciousness”. Koons has a necessity of referencing existing material to create his work, and he is able to use the law to protect such work.

Nathan Fielder, writer and comedian, likewise utilizes the law in his work for parodic effect. Fielder uses legal loopholes as the essence of his work. His most momentous piece that exemplifies law-as-medium is “Dumb Starbucks”. Through the first part of Fielder’s video piece he speaks to a lawyer about parody law, and begins working on an art piece that would mimic an entire Starbucks store, placing “dumb” in front of every drink title, logo, and retail item in the mock store. Despite the inherent risk in appropriating existing art works, artists such as Fielder and Koons educate themselves on the judicial issues of their work and the evidence suggests they embrace them as part of their work.  

Law to Subvert

In a 2017 video piece, “Shipping Logistics Company,” Fielder attempts to avoid import tax law concerning smoke detectors by labeling smoke detectors as tax-exempt musical instruments. In an elaborate scheme, Fielder creates a band with a member playing the smoke detector, achieves notoriety for the band by developing a news-worthy fake controversy with the oil company Shell, and rebrands smoke detectors with new packaging and videos on how to play them as an instrument. Fielder talks specifically about his utilization of the law in his work in an interview. He explains his work is about “finding a loophole that’s technically legal but one step ahead of anything anyone else has thought about.” Fielder uses the legality of his work as a stage to highlight a larger social problem, as art often does. Fielder laments that people often find any legal loophole to make money, regardless of any moral or ethical issue that comes along with it, if a scheme is legal and makes money, it will be exploited. With law as the medium, Fielder’s works do just that, challenging viewers to question his actions and engage in a critical discourse about the work.

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Seth Siegelaub and Robert Projansky “Artist’s Contract” (1971)

Seth Siegelaub, art dealer and curator,  utilized law as a medium in his work “Artist’s Reserved Rights Transfer and Sale Agreement,” otherwise known as the “Artist’s Contract,” was drafted in 1971 by Siegelaub and lawyer Robert Projansky.

Cameron Rowland likewise has a contract based work titled “Disgorgement” (2016). The Museum of Modern Art’s website lists the medium for the piece as “Reparations Purpose Trust, Aetna Shares.” The trust purchased 90 actual shares in the insurance company Aetna, which had formerly issued life insurance policies on slaves to owners of slaves. The piece is symbolic for emphasizing the continuous impact of slavery on the United States. Rowland’s actual framed work that exists on the wall is simply the contract for such shares, while the shares, as they exist beyond the framed work, are serve as actual restitution to the families of former slaves. 

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Cameron Rowland, “Disgorgement” (2016).

In this way the work exists far beyond the relationship between the work on the wall, and the viewer, which Art in America dub “socially illuminating value.”

Carey Young’s works Declared Void and Declared Void II are in essence large scale interactive vinyl contractual agreements posted on walls. Declared Void states

BY ENTERING THE ZONE CREATED BY THIS DRAWING, AND FOR THE PERIOD YOU REMAIN THERE, YOU DECLARE AND AGREE THAT THE US CONSTITUTION WILL NOT APPLY TO YOU.

Accompanying the text, is a marked off area. Likewise, Declared Void II states

BY ENTERING THE ZONE CREATED BY THIS DRAWING, AND FOR THE PERIOD YOU REMAIN THERE, YOU DECLARE AND AGREE THAT YOU ARE A CITIZEN OF THE UNITED STATES OF AMERICA.

Young explores the monolithic power of the legal system through these artworks. The works were displayed in a show titled “Legal Fictions,” a title which truly gets to the heart of the pieces. The text is drafted in legalese, and gives the impression that it is true and enforceable, yet, of course, stepping into the zones ascribed to the texts absolutely does not result in the proposed outcomes. The statements and associated acts are legal fictions which simply invite the viewer to interact with the idea of how law moderates your life and identity.

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Taryn Simon, “Memorandum of Understanding between the Royal Government of Cambodia and the Government of Australia Relating to the Settlement of Refugees in Cambodia. Ministry of Interior, Phnom Penh, Cambodia, September 26, 2014”

Taryn Simon’s 2015 exhibition Paperwork and the Will of Capital presented itself as a group of archival-style photo and sculpture works that documented agreement meetings in international juridical history. For the series, Simon recreated bouquets present on the tables where world leaders were brokering deals. She then photographed the bouquets, and paired them with text summarizing the legal element and archiving the species of plant. By pairing the legal texts with visual element, the work did not simply record pivotal moments but through archival methodology, effectively reacted to it and highlighted the artifice of both the bouquets as a stand in for the natural and the meetings respectively. The legal text, incorporated as a medium in the works, pair with the soft flowers to give meaningful context to the images.

 

Conclusion

Artists use law as an artistic medium by taking advantage of the platform a court room can offer a work, utilizing the protections the law affords them, and embracing the creative potential of legal documents to formulate works that have tangible consequence beyond a museum wall. Using law as an artistic medium in producing artwork is not new or rare, however the law’s centricity to these artistic projects is often treated as subordinate to the greater artistic idea. The above examples establish the trend of artists recognizing the capacity for law to be artistic, or inspiring. To conclude with a thought (and Andy Warhol parody) by a law school professor: “Working in law is art, making law is art, and good law is the best art.”

*About the Author: Caroline I. Keegan received her Juris Doctor Degree at Fordham University School of Law, and holds a Bachelor of Arts in History and Criticism of Art. Caroline was a Fellow in the Art & Law Program, the Center for Art Law, and the Research Center for Arts & Culture. Caroline previously worked at the Museum of Modern Art, the Metropolitan Museum of Art, the Brooklyn Museum of Art, Volunteer Lawyers for the Arts and, most recently, the legal department of the Calder Foundation. Caroline currently works on art and corporate matters at Kurzman Eisenberg Corbin & Lever, LLP.

Realities of Fan Fiction: Paramout To Boldly Drop Lawsuit

By David Honig, Esq.*

Star_Trek_TOS_logo_(1)

In 1966 the world was introduced to the crew of the USS Enterprise NCC-1701! On September 8, 2016, 50 years will have passed since we joined that intrepid crew on its five year mission. Over the course of
a half century
Star Trek has amassed a following unlike any other. The original series, which only made it to the air because of Lucille Ball, lasted only three seasons before it was canceled. Gene Roddenberry’s tale of a future where humanity put its petty differences aside to unite and explore the stars did not end, however, when the last episode aired on June 3, 1969.

tumblr_o2awj8Rh0Z1rwjpnyo1_500After being canceled Star Trek spawned a franchise that consists of an animated television series, major motion pictures, comic books, novels, numerous spin-off shows and a Las Vegas attraction. But most importantly, Star Trek took firm root in the hearts of its fans. As a testament to their devotion, fans have learned Star Trek’s alien language Klingon, going as far as translating Hamlet, and a few other works, into their beloved alien tongue.

Like all good works of fiction, Star Trek developed a life of its own and inspired a parade of  unauthorized fan fiction. While a phenomenon like Star Trek lives and dies with the fans, it  exists as property owned not by the fans but by a major corporation. As such, Paramount and CBS have a vested interest in protecting the rights associated with their copyrights under 17 U.S.C. 106. Specifically, the copyright holder has exclusive rights to reproduce, create derivative works, distribute copies, and perform and display the work publicly.

Fan fiction regularly infringes a copyright because copyright often covers more than just the work itself. Instead, copyright has been extended to cover characters and settings as well as other literary elements, see Walt Disney Productions v. Air Pirates, 581 F.2d 751, 754-5 (2d Cir. 1978).

Fan fiction violates the exclusive rights of a copyright holder in two ways, expressly or through derivative works. A piece of fan fiction that incorporates a character or setting from the original work infringes – since, as just discussed, the character is subject to copyright protection and using the character violates the exclusive right to reproduce. Similarly, fan fiction violates the exclusive right to create derivative works even as  the fan-author creates her own story, because of familiar settings or characters derived from the original work. It is also worth noting that selling or distributing fan fiction does not change the fact that it infringes the original copyright. Commercializing a work, or more precisely the effect on the market for the original copyright, only comes in when determining whether the fair use exception applies not whether something infringes.

When deciding to prosecute copyright infringement the holder is faced with a Kobayashi Maru scenario – in the Star Trek universe, the Kobayashi Maru refers to a training exercise designed to place starfleet cadets in a no-win scenario. The copyright holder must decide whether it should allow the copyright to be infringed or enforce its rights and risk the ire of fans. The amount of money involved in fan fiction infringement is usually nominal compared to the risk of alienating fans. Additionally, because of the  uncertainty of fair use protection under 17 U.S.C. 107, fan fiction is often left alone even when the potential infringer is making money. This is a simple cost benefit analysis. However, there are instances where the holder does assert its copyright and recently some Star Trek fan fiction has fallen into that category.

Anyone who has ever been to a comic convention knows that there are people dressed up as starfleet officers, members of the United Federation of Planets or other Star Trek Characters. These fans are often wearing uniforms that they made themselves which include elements that are subject to copyright protection – such as the starfleet insignia. For various reasons Paramount and CBS will not go after these fans, the damages are de minimis

In addition to wearing costumes, many of these fans will also create their own movies, comics or other form of art – even the Internal Revenue Service is not above creating such a video. These videos are usually viewed as harmless since they have no impact on the market for the genuine article and if anything they endear fans to the source even more by allowing them to continue to engage in ways that traditional content does not allow. There is a limit, however, to what the Star Trek copyright holders will accept before they begin enforcing their rights. It seems that a fan project that raised over a million dollars and was set to be released the same year as Paramount’s next installment in the Star Trek motion picture franchise was too much.

Star Trek: Axanar, a fan film set before the original 1966 television series, raised over a million dollars on Indiegogo and Kickstarter. The film, which follows a successful short that raised over $100,000 on Kickstarter in 2014, raised its funds with some encouragement from Star Trek alum George Takei. With a mounting economic incentive, on December 29, 2015 Paramount and CBS filed a lawsuit against the producer of the film, Axanar Productions (“Axanar”), alleging copyright infringement.

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George Takei as Sulu on the set of Star Trek

Among other aspects of Star Trek such as history and characters, the complaint claimed a copyright over languages. What might have seemed to be one more violation to the copyright holder and its attorneys ended up developing a life of its own.

First Axanar, responded by filing a motion to dismiss claiming that Klingon, a language invented for Star Trek, could not be protected by copyright law under Baker v. Seldon, 101 U.S. 99 (1879), because it is an idea or system. In response, Paramount claimed that the Klingon language isn’t useful, wholly fictitious and “there are no Klingons with whom to communicate.” After Paramount responded to Axanar’s motion the Language Creation Society submitted an amicus brief in support of Axanar.

The brief begins with a curious footnote quoting Marc Okrand, author of The Klingon Dictionary and creator of the language, claiming  Okrand “has asserted that the Klingon language, tlhlngan Hol, was received by him from a captured Klingon named Maltz.” The brief thus concludes that Plaintiffs cannot claim otherwise in this litigation, citing to Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1075 (2d Cir. 1992), to support its position. The Language Creation Society does not pull any punches stating, “Feeling ownership and having ownership are not the same thing.”

The Language Creation Society’s brief is quite an enjoyable read. The brief quotes Star Trek: The Next Generation, recognizes there is a child who was raised as a native speaker of Klingon and intersperses Klingon phrases written in the Klingon alphabet throughout. What might appear as gimmicks actually make the Language Creation Society’s point stronger – Klingon is a real language spoken by real people so much so that it can be used coherently in a brief amicus curaie. If the point of filing this brief was to argue that Klingon has taken on a life of its own as a communication system then there truly is no more powerful tool to prove this postulate than by showing Klingon can indeed act as a communication system instead of just reporting on its wide use.

Alas, the issue will not be adjudicated, at least not in this case. On Friday May 20, 2016 J.J. Abrams, the director of the first two Star Trek reboot films, announced that the lawsuit against Axanar would be dropped. The announcement was made during a fan event to promote the third installment of the rebooted Star Trek franchise, which Abrams serves as a producer, Star Trek Beyond. Unfortunately, this voyage is not yet over.

Abrams merely announced that Paramount WOULD drop the lawsuit not that the lawsuit WAS dropped. In fact, four days after the announcement Axanar an answered amended complaint and filed a counterclaim to ensure it met court ordered filing deadlines. Additionally, CBS and Paramount are working on fan film guidelines and if Star Trek: Axanar, or some other fan film, does not follow those guideline then the Star Trek copyrights will most likely be enforced again. Clearly there is still work to be done before Axanar, its fans, and producers and fans of other Star Trek fan fiction can proclaim Qapla’.

About the Author: David Honig is a post graduate fellows at the Center for Art Law. He is a member of the Brooklyn Law School class of 2015. While attending law school he focused his studies on intellectual property and was a member of the Brooklyn Law Incubator & Policy (BLIP) Clinic. He is admitted to New York and New Jersey state bars. In the Fall of 2016 he will be pursuing an LL.M. in taxation from NYU Law.

Disclaimer: This article is for educational purposes only and is not meant to provide legal advice. Readers should not construe or rely on any comment or statement in this article as legal advise. Instead, readers should seek an attorney.

Artists, Not Judges, Should Decide Fair Use: Select Implications of the Cariou-Sconnie Nation Deviation

by Sekou Campbell, Esq.*

This piece will focus on two implications of the Cariou and Sconnie Nation analyses: (1) the inherently factual nature of “fair use” analysis and (2) fair use as an affirmative defense. “Fair use” started as a judge-made remedy to technically correct legal conclusions that led to absurd results, a practice commonly known as “equity.” Generally, and in the case of “fair use,” equity requires a court to make a significant factual investigation so as to demonstrate why the technical law should not apply. “Fair use,” however, is odd because despite its equity origins, it has been codified as a technical law for the last forty years in the U.S. Copyright Act. Moreover, “fair use” can only be found if (a) a defendant has been found to infringe a plaintiff’s copyright, and (b) a defendant proves that “fair use” should be applied. Although the burden of proof is traditionally on a plaintiff, “fair use” is an affirmative defense, meaning the defendant must prove each element. Courts frequently delve into their analyses without acknowledging the significance of the fact that they are making equitable, not technical, decisions that the defendant, not the plaintiff-creator, must fully prove. Sconnie Nation serves as a good reminder of the pitfalls to treating equity like a technical law and ignoring that the defendant bears the burden to prove “fair use.”

Over the last two decades, a single doctrine has garnered much of the attention of “fair use” case law: “transformativeness.” “Transformativeness,” first introduced by Southern District of New York District Judge Pierre N. Leval, suggests that when a subsequent user “adds value” to an original piece of artwork by using that original as “raw material,” rather than “repackaging” or “republishing” the original, that subsequent use deserves protection under the “fair use” statute.[1] As more and more artists “quote” other artists and artwork, “transformativeness” has become more and more central to the “fair use” decisional law. Indeed, it can be argued that Cariou, the 2013 Second Circuit decision, held that transformativeness is a dispositive “fair use” factor.

The case law generally ignores the equity origins of “fair use” and by necessary implication “transformativeness,” and jumps right into a “legal analysis” by comparing the plaintiff-creator’s work to the defendant-second user’s work. Focusing the analysis on which facts best show “fair use” by relying on art experts and fact testimony and documents from artists rather than other judges will result in two favorable outcomes: (1) fewer judges acting like art critics and (2) more private negotiations between artists about the use of each other’s work.

It seems that thee Seventh Circuit’s criticism of Cariou, in Sconnie Nation, highlights the shortcomings of relying too heavily on works that are technically “transformative” in order to conclude that a defendant has proven “fair use.” Specifically, Judge Easterbrook reasoned that “transformativeness” is actually codified as a protected right in 17 U.S.C. § 106(2), the statute that establishes what uses constitute “copyright infringement.” That statute protects “derivative works,” which is defined to include a “transformed work.” Therefore, as Sconnie Nation points out, an expanding “transformative use” doctrine threatens to extinguish the derivative work right. But, as will be discussed below, a more nuanced and fact-intensive inquiry can save both the transformativeness doctrine and the derivative work statute.

Tale of Two Circuits: 2nd and 7th

Cariou and Sconnie Nation both purportedly involved “appropriation art,” whereby the defendant-second users copied or otherwise used the plaintiff-creator’s copyrightable artwork as “raw material.”[2] In Cariou, the “raw material” came from Patrick Cariou, a professional photographer who lived in Jamaica for six years. During that time, Mr. Cariou developed a relationship with Rastafarians that allowed him to take “extreme classical” and not “pop culture” photographs. In Sconnie Nation, Michael Kienitz photographed Madison, Wisconsin mayor Paul Soglin during his inauguration. In both cases, the defendant-second users (Richard Prince in Cariou and Sconnie Nation in Sconnie Nation) modified the original, taking elements away and adding others to them. Thus, both defendants admitted to “appropriating” or infringing upon their adversary’s work. Both parties also asserted “fair use” defenses by incorporating a “transformativeness” argument.

Cariou

cariou-princeCariou represents a tension between the “reasonable observer” test, on the one hand, and the oft-quoted dictum that “it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work],” on the other.[3] The “reasonable observer” test requires the Court to “examine how the artworks may ‘reasonably be perceived’ in order to assess their transformative nature.”[4] Without a fully developed factual record, however, judges serve as rather inept observers because they generally do not “assess transformativeness from multiple perspectives, with attention to what different audiences might see in a work and in an allegedly transformative remix of that work.”[5] The dissent in Cariou takes a similar position.[6] Thus, to resolve the tension between the “reasonable observer” test and the judge-as-art-critic problem, appellate courts, like the Cariou dissent, should defer more to lower courts, pushing litigants to trial and not merely dispositive motion practice.

This adjustment will lead to two developments. First, the higher courts will have more facts on appeal. Specifically, they will have experts’ testimony, actual professional art critics, upon which to base their opinion. Second, more settlements will occur, encouraging artists to resolve these disputes on their own. In either case, an artist or art professional gets a much more prominent voice in decisions affecting artwork, a welcomed development.

Sconnie Nation

Screen shot 2015-04-02 at 10.41.13 AMJudge Easterbrook points out that “[f]air use is a statutory defense to infringement.”[7] This is almost correct.[8] It highlights, without saying it, the fact that a defendant has the burden to prove fair use. Judge Easterbrook stated that transformativeness cannot be a significant factor when considering a “derivative work” protected by 17 U.S.C. §106(2). This statement, taken together with the fact that fair use is an affirmative defense, suggests that “transformativeness” cannot do much work in a fair use analysis because a “transformed work” is defined as a “derivative work” in the Copyright Act.[9] Therefore, if a plaintiff argues that its derivative work copyright has been violated, it may also be conceding fair use, rendering 17 U.S.C. § 106(2) useless. Sconnie Nation solves this problem by largely ignoring the “transformativeness” analysis. However, another solution exists; require the defendant to distinguish between an infringing transformation (e.g. translation or summary) and fair transformation (e.g. parody and satire).

Of course, such a distinction requires a court, preferably the U.S. Supreme Court, to provide a principled rule of law. However, this could also be a factual inquiry, governed by some basic principles that mirror current copyright law, like a modicum of creativity and originality, an effect on the commercial market of the plaintiff-creator and the amount and substantiality of the transformation (e.g. is the change subtle or bold). Ultimately, when courts require defendants to prove more, they may also help artists to fashion more developed arguments that lead to better rules that guide the fact finders below.

Conclusion

Judge Easterbrook seems to have done a good job stoking the flames of controversy over fair use and hopefully triggering Supreme Court analysis in Sconnie Nation. This piece hopefully highlights some additional considerations that will make the doctrine more clear.

 

Select Sources:

About the Author: Sekou Campbell is an attorney in private practice in Philadelphia, Pennsylvania, where he litigates commercial matters in state and federal courts throughout the country.

  1. The Cariou Court adopted the Tate Gallery’s definition of appropriation art as “the more or less direct taking over into a work of art a real object or even an existing work of art.” Cariou, 714 F.3d at 699.
  2. Cariou, 714 F.3d at 714 (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903)).
  3. Cariou, 714 F.3d at 714 (“because the district court takes the primary role in determining the facts and applying the law to the facts in fair use cases, after which we exercise our appellate review if called upon to do so, I conclude that as to each painting, the district court is best situated to determine, in the first instance, ‘whether Prince is entitled to a fair use defense in light of the correct legal standard.’”).
  4. Sconnie Nation, 766 F.3d at 758.
  5. Fair use is derived from equity and merely codified in the 1976 Copyright Act. See Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 448 (1984).
  6. A ‘derivative work’ is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work.’
  7. 17 U.S.C. § 101.

Paper, Rock, Scissors: Smith-Clay Conflict and Resolution

By Irina Tarsis, Esq.

Think “Paper, rock, scissors;” David v. Goliath; momentary v. permanent; feminine v. masculine; appropriation v. original; transformative v. derivative.

In the 1960s, David Smith (1906-1965) created a series of monumental steel sculptures called “Cubi.” In his own words, he “intended the reflective surface [of the Cubi] to be part of the concept.” Half a century later, Lauren Clay studied Smith’s works and his ideas about the surface of the geometrically shaped sculptures and created a series of her own. She reproduced some of the Smith’s compositions, as smaller decorative items, using different medium to craft a different surface. Her works, constructed from paper, cardboard and papier-mâché are not light-reflective but reflective of crafts and decorative arts and not industrial and masculine aesthetic of Smith.

In an Artist Statement, Clay explained that she distinctly wanted to comment on Smith’s works and the ephemeral nature of art, choosing to render the familiar awesome shapes as dainty tabletop sculptures, radically different from the effect Smith sought to accomplish. Regardless of the dialogue Clay engaged in with Smith, and the dichotomy between the light paper models and the strong metal constructions, the Smith Estate objected to Clay’s use of Smith’s sculptures, alleging her reproductions were in violation of the copyright. Opinions may vary whether or not Clay’s works are protected under the fair use doctrine, but in light of the recent Cariou v. Prince, Clay clearly was not infringing Smith’s rights (read “Is Cariou v. Prince Headed to Supreme Court?“). Her artist’s statement clearly explained why she specifically chose to transform works of David Smith and no other master of post modernist art. Richard Prince on the other hand chose to appropriate works of a relatively unknown photographer, Patrick Cariou, without any apparent reason and still he won on fair use grounds.

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Last month, attorneys negotiating on behalf of Lauren Clay, and the Estate of David Smith (Richard A. Altman and Donn Zaretsky respectively) reached an agreement. In the jointly issued statement, approved by both sides, the parties admitted that they have resolved their differences, stemming from a copyright (infringement versus fair use) dispute, “in a manner that both parties feel protects and honors the freedom of artistic expression…” However, some have interpreted the agreement as limiting Lauren Clay’s artistic freedom.

Opinions and tempers ran high, if mostly among third parties (see for example Lexology or Clancco, as those in support of the fluid fair use and rigid copyright protections opined on who had the upper hand in the dispute. The debate that sparked over Clay’s work may be characterized as a round of the popular children’s game: Paper, Rock, Scissors. Here scissors (metal) may or may not have trumped paper (papier-mâché) due to interpretation of the copyright law (stumbling block/rock).

The settlement reached by the parties in the Clay-Smith dispute remains private leaving little guidance for young artists who must decide for themselves how far they are wiling to push the envelope of the fair use protection as they forge their own artistic path.

To learn more about Lauren Clay’s work read Interview with Lauren Clay and Art In America.

With Victory for Green Day, the West Coast Weighs In On the Fair Use Debate

Note: This story is being revised to include a comparison between this case and recent fair use ruling in appropriation art. For in depth coverage of this story, please see our post: Green Day Wins Fair Use Claim.

* * *

On August 8, 2013, the United States Court of Appeals for the Ninth Circuit in California ruled in favor of the American rock band Green Day against the infringement claims of illustrator and street artist Dereck Seltzer, when the band used his work “Scream Icon” in a video backdrop during its ‘21st Century Breakdown’ tour in 2009 without the artist’s permission. “Scream Icon” consists of a black and white image from 2003 that depicts the contorted face of a shrieking woman.

Seltzer has made several posters of the image, which he has sold and given away. Roger Staub, a photographer and professional set lighting and video designer, took a photograph in 2008 of a street corner on Sunset Boulevard in Los Angeles that displayed a poster of “Screaming Icon” visible on a brick wall. Green Day had used the image – altered by a large red crucifix across it – as a concert backdrop while performing “East Jesus Nowhere.”  Mr. Seltzer sued Green Day in 2010, after the band apparently offered him concert tickets as settlement.

Green Day was able to defend itself against Seltzer’s infringement claims because the Ninth Circuit determined that the band’s unauthorized use of the artist’s image was fair. Fair use is a defense to copyright infringement that permits a defendant to borrow aspects of an original work for purposes such as commentary, criticism, news reporting, scholarship, or to create works that are “transformative.” A finding of fair use is a close, fact-specific inquiry that considers four factors, including the purpose and character of the use, the nature of the copyrighted work, the amount and sustainability of the portion taken, and the effect of the use on the potential market.

Proper applicability of the fair use defense has long been debated. In a recent closely-watched case that ended in New York’s Second Circuit Court, Cariou v. Prince, the Court ruled in favor of appropriation artist Richard Prince. However, the decision was criticized for not providing sufficient guidance to future artists and lawyers to help determine what specifically constitutes a “transformative” use. Both cases turned on an analysis of the first fair use factor–whether the new works created by the alleged infringers could be considered “transformative” of the original works. Should the type or medium of art considered make a difference? From comparison of the cases, this line appears fuzzier when it comes to appropriation art.

Green Day Wins Fair Use Claim

Left: Green Day's set, Right:  Derek Setzer's "Scream Icon"

Left: Green Day’s stage design, Right: Derek Setzer’s “Scream Icon”

On Thursday, the Ninth Circuit Court of Appeals in California ruled that Green Day’s use of Derek Seltzer’s “Scream Icon” was Fair Use.

The artwork in question is Mr. Seltzer’s image of a shrieking woman’s face a la Munch, which he pasted as posters and stickers in public areas around Los Angeles in 2009.

Green Day, which has sold 70 million records worldwide since 1987, used a transformed version of the image as a stage backdrop during the song “East Jesus Nowhere” during the band’s 2009 American tour and also during their performance at the American Music Awards.  The set designers added a red cross and black streaks over the face of Mr. Setzer’s black and white image.  Additionally, the image was adapted into a video format and not used as a fixed poster.

Green Day performing at the American Music Awards

Green Day performing at the American Music Awards in 2009

The Appeals Court affirmed the 2011 Federal Court ruling which dismissed Mr. Seltzer’s copyright complaint.  Represented by William Nathan Canby and Todd Bonder of Rosenfeld, Meyer & Susman, LLP, Mr. Seltzer sought $150,000 for each infringement.  Mr. Setzer argued that the use of the image, “[t]ainted the original message of the image and . . .  made it now synonymous with lyrics, a video, and concert tour that it was not originally intended to be used with . . . I make an image, I produce it, I tailor it to my needs, the concept, the content, and then someone comes along, defaces the image, put a red cross on it.  I mean, maliciously devalues the original intent and then shows it to thousands upon thousands of people.”

This case follows closing the decision of Fair Use in Cariou v. Prince 784 F. Supp. 2d 337 (2011) this June.

The ruling breaks down the four codified elements in 17 U.S.C § 107 used to determine Fair Use.  The opinion for the Ninth Circuit Court, authored by Judge Diarmuid F. O’Scannlain, was based on these four factors:

  1. Purpose and Character of Use: “the purpose and character of the use was transformative because the video altered the expressive content or message of the illustration.”  He explained further that Green Days use provided  “new information, new aesthetics, new insights and understandings” different than Mr. Seltzer’s original work and was therefore transformative.
  2. Nature of Copyrighted Work: “the illustration was a creative work, but its nature included its status as a widely disseminated work of street art.”
  3. Amount and Substantiality of the Portion Used: “the defendant copied most of the illustration, but it was not meaningfully divisible.”
  4. Effect on the Market: “the video backdrop did not affect the value of the illustration” and “The purpose and character of the use was transformative and not overtly commercial.”
Green Day at the American Music Awards in 2009

Green Day at the American Music Awards in 2009

Judge O’Scannlain also cited Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994), which ruled that the Fair Use doctrine “permits and requires courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which the law is designed to foster.”

Interestingly, the Court held that Mr. Seltzer’s work as “clearly identifiable” in the video and his claim was not “objectively unreasonable.”  The Ninth Circuit decision refused Green Day request for legal fees. Judge O’Scannlain explained that “[v]acating the district court’s award of attorney’s fees to the defendants under the Copyright Act, the panel held that, despite the defendants’ success on the fair use defense, the plaintiff did not act objectively unreasonably.”

For coverage on the Cariou v. Prince case visit: “Is Cariou v. Prince Headed to the Supreme Court?” and “Appropriate Standards in Appropriation Art? Cariou v. Prince Decision Garners Relief but Fails to Provide Substantive Guidance.”

Sources: Dereck Seltzer v. Green Day, Inc.; “Judge Upholds Green Day’s Right to Use Artist’s Image for Concert, ” The New York Times, August 8, 2013; “Green Day Triumphs in Copyright Case, Use Transformative,” Clancco, August 9, 2013; “Green Day Sued by Artist Over Copyright,” Hyperallergic, March 26, 2010.

Is Cariou v. Prince Headed to the Supreme Court?

Photographer Patrick Cariou is expected to file an appeal with the Supreme Court within the next three months in the next installment of the closely watched copyright infringement case, Cariou v. Prince. In a disappointing result for the photographer in April, the United States Court of Appeals for the Second Circuit overturned the 2011 District Court decision, holding that contemporary artist Richard Prince’s appropriation of photographs from Cariou’s book “Yes Rasta” for his own “Canal Zone” series was protected under the fair use doctrine (reported here).

Following that decision–which was decided by a three-judge panel, Cariou had petitioned for his case to be reheard by thirteen judges on the Second Circuit Court of Appeals in May. This request was denied on June 10. Dan Brooks, Cariou’s lawyer, has said that the next step is to file an appeal with the Supreme Court, which must be done within 90 days of the Second Circuit’s refusal to rehear the case.

The Supreme Court receives thousands of petitions for review each year, but only hears a small percentage of those cases (in 2010, it heard 1%). Brooks stated that he has “no idea” whether the Supreme Court will take on Prince v. Cariou. “If they think the law needs to be settled or there is a conflict between the circuits, they may agree to hear the case.”

The Second Circuit’s decision has been criticized for not providing sufficient guidance for future appropriation artists and their lawyers as to what actually constitutes fair use. Furthermore, the proliferation of other appropriation art cases (from Shepard Fairey to Mr. Brainwash) also points to a lack of clarity in the area. If the Supreme Court did decide to weigh in on the issue, it could provide clarification as to the legal standards for applying the fair use defense in appropriation art cases, as the art form itself continues to evolve at a quick pace with the development of online and digital technologies.

Source: The Art Newspaper

Fair Use Fails Mr. Brainwash: Judicial Stance on Infringement and Appropriation Art Swings the Other Way

Hot on the heels of appropriation artist Richard Prince’s victory in the Second Circuit (covered here two weeks ago), a Los Angeles federal court has returned a less favorable ruling for appropriation and street artist Thierry Guetta, better known as Mr. Brainwash. Last week, district court judge John A. Kronstadt ruled that seven of Guetta’s works, based on photographer Dennis Morris’ iconic 1977 picture of Sid Vicious, deceased lead singer of punk rock group The Sex Pistols, was not protected by fair use, continuing a lack of predictability for future infringement cases  involving appropriation art.

Guetta is a street artist whose works typically appropriate well-known images of celebrities. He and his work were featured in Exit Through the Gift Shop, a documentary film by famed street artist Banksy. His works have fetched high prices at auction houses such as Philips de Pury since 2010 and in 2009 he designed the cover of Madonna’s Celebration album. Since 2004, Guetta has used Morris’ original photograph in at least seven works, including a large mural in La Brea in Los Angeles, a work made with broken vinyl records, and works that add a mole onto Sid’s face and overlay blonde hair and splatters of paint.

In the present case, Guetta argued that his works should be protected by fair use because they are transformative and that his intentions in creating them differed from those of the photographer. In his declaration, Guetta stated: “I created the mural (with color) in particular because it was larger than life, like Sid Vicious, and I wanted to give him the respect it seemed like he did not get in life.” He also called it a “commentary on Sid Vicious’s persona and on the nature celebrity generally.” With a favorable outcome for the appropriation artist in Cariou v. Prince, a closely-watched copyright case in the Second Circuit decided two weeks ago involving Richard Prince’s successful use of the fair use defense against infringement claims brought by photographer Patrick Cariou, Guetta was likely hopeful that the win signalled a positive outcome for him as well.

Unfortunately for the street artist, Judge Kronstadt rejected Guetta’s fair use claim and arguments. The opinion states: “An independent review of Defendants’ works shows that they are not sufficiently transformative… The Photograph is a picture of Sid Vicious making a distinct facial expression. Defendants’ works are of Sid Vicious making that same expression. Most of the Defendants’ works add certain new elements, but the overall effect of each is not transformative; Defendants’ works remain at their core pictures of Sid Vicious.” Kronstadt also clarified that “[t]here must be some showing that a challenged work is a commentary on the copyrighted one, or that the person who created the challenged work had a justification for using the protected work as a means of making an artistic expression.” Kronstadt characterized Guetta’s arguments as effectively arguing that appropriation art should be considered per se fair use. To this, he responded: “To permit one artist the right to use without consequence the original creative and copyright work of another artist simply because that artist wished to create an alternate work would eviscerate any protection by the Copyright Act.”

Guetta is no stranger to courtroom losses. In 2011, he lost a copyright case to Glen Friedman, another photographer who photographed the rap group Run DMC in 1985. Guetta is currently involved in another lawsuit with the estate of photographer Jim Marshall, who sued the artist and Google last year for the unauthorized use of Marshall’s photographs of musicians. The trial is set for July.

Does the current legal landscape regarding fair use and appropriation art provide any lessons for Mr. Brainwash (or his lawyers) for his upcoming trial? The current ruling seems to suggest that some “commentary or justification” is required for a work to be transformative, while the rulings of Cariou v. Prince and Blanche v. Koons (both cases involving successful fair use arguments by appropriation artists) suggest that fair use does not necessarily need to comment on the original image. Perhaps success for Guetta (and other appropriation artists) lies in changing the focus of his arguments. Cat Weaver, writing for Hyperallergic, suggests that Guetta would have more luck arguing that his work is parodying street art, an undertaking which requires “recognizable pop imagery to signify the way these sorts of images are used in street art.”

One thing is certain: the line dividing a fair use from an infringing use in appropriation art–a medium defined by borrowing original from other sources–is likely to remain fuzzy and unpredictable for the foreseeable future.

For more on legal issues in street art, see our previous posts: Who Owns Street Art? and UNESCO Forced to Consider Street Art As Cultural Heritage

Sources: The Art Newspaper, Photo District News, Phaidon

Appropriate Standards in Appropriation Art? Cariou v. Prince Decision Garners Relief but Fails to Provide Substantive Guidance

One of the most closely watched copyright cases in the legal and contemporary art worlds was settled last week. On Thursday, April 25, the United States Court of Appeals for the Second Circuit overturned the 2011 District Court decision, holding that contemporary artist Richard Prince‘s appropriation of 30 photographs from Patrick Cariou‘s book “Yes Rasta” for his own “Canal Zone” series was protected under the fair use doctrine.

The controversial case arose in 2008, when Cariou sued Prince, the Gagosian Gallery (which exhibited his works), and Rizzoli books (publisher of the exhibition catalogue) for copyright infringement. For his “Canal Zone” series, Prince took photographs from “Yes Rasta,” Cariou’s photographic book about Rastafarian culture, and added other elements, such as painting gas masks, guitars, oversized hands, and geometrical shapes over the original works. Prince did not seek the photographer’s permission, and his show at the Gagosian Gallery generated over $10 million in sales.

In defense of his work, Prince argued that his work falls within the Copyright Act’s codified defense to infringement–fair use–which permits some borrowing of an original work for purposes such as commentary, criticism, news reporting, scholarship, or to create works that are “transformative.” A finding of fair use is a close, fact-specific inquiry that considers four factors, including the purpose and character of the use, the nature of the copyrighted work, the amount and sustainability of the portion taken, and the effect of the use on the potential market. The proper applicability of the fair use doctrine has been fiercely debated in the legal and art worlds alike, particularly in how to properly determine whether a work is “transformative.” It is an especially fuzzy line in appropriation art, which is typically defined by an artist’s use or borrowing of another’s original work.

Many were surprised by the decision of District Court Judge Deborah A. Batts, which came out in 2011. She stated that in order for fair use to have applied in this case, Prince’s work would have had to “in some way comment on, relate to the historical context of, or critically refer back to the original work.” Judge Batts gave heavy weight to Prince’s statements in relation to his work, concluding that because Prince specifically stated that he did not intend one particular message with “Canal Zone,” his works could not be transformative. In a particularly harsh remedy, she also gave Cariou the right to destroy the “Canal Zone” works that had not yet been purchased. Prince had appealed the decision, and the outcome has been anxiously awaited by those in the art world and intellectual property community for months.

The Second Circuit ruled that Judge Batts’s interpretation was based on an incorrect understanding of the fair use doctrine. The court stated that “the law does not require that a secondary use comment on the original artist or work, or popular culture,” but rather that the proper test to determine the applicability of fair use is whether a reasonable observer would find the work transformative after a side-by-side comparison. The court stated that “what is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work.” Significantly, the Court stated that a work could be transformative, without intending specifically to comment on Cariou’s work or on culture in general. The Court also criticized the district court’s permanent injunction, which permitted Cariou to destroy Prince’s works as “improper and against the public interest.” The opinion may be read here. Although the decision may be characterized as a victory for Prince, the Court did remand the case to the district court for further analysis of five of Prince’s paintings, stating that Prince’s use was “similar in key aesthetic ways” in these paintings and that his changes were too minimal.

Many in the art world gave sighs of relief when the Second Circuit’s ruling came out. Artists, academics, and lawyers believed that Batt’s decision would create a chilling effect for creative works. Joshua Schiller, counsel for Prince, stated that “Judge Batts put too much weight on the artist’s own characterization of his work, and the artist’s ability to articulate what their message is.” This statement is aligned with the opinion articulated by Stanford Law School’s “Center of Internet and Society,” which studies the law and policy of the Internet and other emerging technologies, and had submitted an amicus brief in support of Prince’s position. Julie Ahrens stated that “the decision affirms an important tradition in modern art that relies on the appropriation of existing images to create highly expressive works with new meaning.”

However, the opinion has also been criticized for lacking much instructive guidance for the future. Daniel Brooks, lawyer for Cariou, stated that he thought that the “decision doesn’t offer much guidance or predictability for the future, either to artists or courts that are going to have to deal with these decisions.” Donn Zaretsky, of the Art Law Blog, also called the decision a “missed opportunity.”

Though it may not have provided much specific guidance, the opinion did reiterate the principle that an artist need not have intended or even to have been aware of his own intentions when creating work for it to be transformative. This basic principle is significant and instructive, as it conclusively removes the artist’s own intentions from the fair use analysis- at least in the Second Circuit. What courts will specifically consider when determining how a “reasonable observer” would evaluate the transformativeness of a potentially infringing work remains to be fleshed out in further decisions. The debate in art and legal circles will continue. This issue, unlike the case, is far from settled.

Sources: The New York Times, Hyperallergic

It’s a Riot not a Scream: Judge with a Sense of Humor Hears Green Day Copyright Infringement Case on Appeal

Did you hear that a 9th Circuit judge brought an inflatable doll of the figure from the Munch’s painting The Scream into court?

The gesture  if true seems very apropos when hearing arguments on appeal in Dereck Seltzer v. Green Day, Inc. et al, 2:10-cv-02103-PSG-PLA. In the Complaint, filed in 2010, Plaintiff seeks damages for copyright infringement and unfair competition from the music group Green Day, and various individuals and businesses, including DOES 1 through 50 associated with it. Selzer alleges that Defendants violated his secured and exclusive rights by using his image,  Scream Icon, on http://www.greenday.com website and as a backdrop for a music video.

Seltzer, a street artist, created the image in question in 2003. He printed posters and stickers depicting the image and posted them around Los Angeles. In 2008, Green Day’s set designer, Richard Staub, photographed one such poster and with some modification incorporated it into the band’s video as a backdrop as well as used it in other places. In 2011, District Judge Philip Gutierrez granted defendant’s motion for summary judgment on the grounds that Staub’s use of the image was “transformative” under the fair use defense. Selzer appealed.

The judges hearing the arguments on appeal included: Judge Richard Clifton; Judge Stephen Trott and Judge Diarmuid O’Scannlain. It is unclear at this time which of the three brought in the balloon shaped as Munch’s Scream. While their ruling is pending, Selzer hopes that his “status as street art [does] not impact the court’s decision under copyright law.”

Plaintiff is represented by Todd W Bonder and William Nathan Canby, with Rosenfeld Meyer and Susman, LLP.

Attorney for Green Day is Peter Anderson.

 Source: Courthouse News Service; Music Law Seminar.