Richard Prince has been on the minds of photographers lately because of his mostly successful fair use defense against a copyright infringement suit by Patrick Cariou. As an appropriation artist, Prince has built a career on taking the works of other artists, mucking around with them a bit, and selling them at astronomical prices, leaving the original artists wondering how second-hand versions of their work became darlings of the art elite while the originals were neglected. Recently, Prince convinced the Second Circuit Court of Appeals that all but five of his "artworks are transformative of Cariou’s photographs and, accordingly, do not violate Cariou’s copyrights."

Transformative use has become the touchstone of almost every copyright case involving fair use in the last couple decades. This confuses many people because the term "transformative" doesn't appear anywhere in the copyright statute's definition of fair use. In fact, the right to prepare derivative works is one of the exclusive rights conveyed to copyright holders. Derivative works are defined as, among other things, a "form in which a work may be recast, transformed, or adapted."

It's not just creators who are confused; the courts are also confused. The legal record is a tangled web of ambiguous opinions that provide little security or clarity to those who depend on either copyright protection or the freedoms promised by the concept of fair use.

How did transformativeness become a test for fair use?

The 1976 copyright statute defines fair use in section 107 with a preamble enumerating a non-exclusive list of potentially fair uses—criticism, comment, news reporting, teaching, scholarship, or research—followed by four factors courts should considered when determining fair use:

1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
2. The nature of the copyrighted work
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
4. The effect of the use upon the potential market for, or value of, the copyrighted work

The funny thing about these factors is that they don't really provide any guidance at all. What specifically is a judge supposed to consider regarding the purpose and character of the work? What about the nature of the copyrighted work makes a use fair or not? To understand the effect this uncertainty has on creative efforts, imagine if speed limits were defined in a similar way. Rather than 60 mph, the police and courts were advised to consider a list of factors like the nature and character of the roadway, the amount and speed of traffic, the purpose of the trip. You would never know how fast you could drive and could, depending on the mood of the court, get a ticket at almost any speed. It seems unfathomable that we would endure such a system, yet that is exactly the state in which congress left us. The reason for this is that Congress didn't create the fair use section with the intent of defining new legal concepts, but rather codified 150 years of judicial practice, with all its uncertainty intact, into a few sentences. The statue simply paraphrases Justice Joseph Story's 1841 opinion in Folsom v. Marsh:

In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.

Toward a Fair Use Standard

In the late 1980s two cases came before the U.S. Court for the Southern District of New York involving biographers making unauthorized use of unpublished letters and journals of their famous subjects, J.D. Salinger (Salinger v. Random House) and L. Ron Hubbard (New Era v. Holt). The cases became important because they created a per se rule that fair use was not a defense when the material in question was unpublished. But for our story the cases have another similarity that, in the end, has become more important: Both cases were argued before Judge Pierre Leval, and in both cases Leval's opinions met with forceful disagreement on appeal.

Judge Leval's frustration with the arbitrary way fair use was handled in the courts, especially in some of the major cases from the 1980s, found an outlet in a 1990 Harvard Law Review article, "Toward a Fair Use Standard." Judge Leval confirms the layman's suspicion that fair use is mysterious in its conception and inconsistent in its application:

Curiously, judges generally have neither complained of the absence of guidance, nor made substantial efforts to fill the void. Uttering confident conclusions as to whether the particular taking was or was not a fair use, courts have treated the definition of the doctrine as assumed common ground. The assumption of common ground is mistaken. Judges do not share a consensus on the meaning of fair use.

He follows this immediately with a hopeful promise:

The doctrine of fair use need not be so mysterious or dependent on intuitive judgments. Fair use should be perceived not as a disorderly basket of exceptions to the rules of copyright, nor as a departure from the principles governing that body of law, but rather as a rational, integral part of copyright, whose observance is necessary to achieve the objectives of that law.

In discussing the first factor—the purpose and character of the use—Judge Leval suggests that a fair use defense is justified so long as it advances the utilitarian aim of copyright, "stimulation of creative thought and authorship for the benefit of society," finding that transformation of the original creator's purpose is at the heart of fair use.

I believe the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test; in Justice Story's words, it would merely "supersede the objects" of the original. If, on the other hand, the secondary use adds value to the original—if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings—this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society. Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses.

Toward a Fair Use Standard has become one of the most influential legal essays in modern times.

Campbell v. Acuff-Rose Music, Inc

In 1994 the Supreme Court decided the case Campbell, aka Skywalker, et al. v. Acuff-Rose Music, inc. involving 2 Live Crew's rendition of the Roy Orbison song "Oh, Pretty Woman." In keeping with the general confusion that the courts have demonstrated regarding fair use, the district court granted summary judgement finding 2 Live Crew's version to be parody and the use fair. The Court of Appeals reversed this decision finding that because 2 Live Crew's song was a commercial undertaking, it was presumptively unfair. Finally, the Supreme Court sided with the district court's original judgment and found that parody, even in the context of a commercial undertaking, is fair use.

In writing the opinion, Justice David Souter included a new line of reasoning, heavily indebted to Leval's article, about how to deal with section 107's four factors for fair use:

Under the first of the four §107 factors, “the purpose and character of the use, including whether such use is of a commercial nature…,” the enquiry focuses on whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is “transformative,” altering the original with new expression, meaning, or message. The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.

And this, in a nutshell, is how one goes from a district judge frustrated with overturned cases to a scholar who, though a well reasoned journal article, creates an idea that becomes the law of the land.

Repercussions

Leval's essay ends with prediction that "we can nonetheless gain a better understanding of fair use and greater consistency and predictability of court decisions by disciplined focus on the utilitarian, public-enriching objectives of copyright…" It's been almost twenty years since Campbell v. Acuff-Rose; has it resulted in "a cogent set of governing principles?"

At the very least Campbell has been extremely influential and has provided a central precedent in most fair use cases. The 2006 opinion of the court in Bill Graham Archives v. Dorling Kindersley Publishing, Inc. & RR Donnelley & Sons Company is typical in it's adoption of transformativeness: "most important to the court’s analysis of the first factor is the 'transformative' nature of the work." When it comes to copyright cases involving fair use, all roads lead to Campbell v. Acuff-Rose. But determining whether a use is transformative is still subjective and the "greater consistency" sought by Leval has been to some degree chimerical.

For expressive transformations, the lower courts have avoided some difficulties by embracing Campbell's emphasis on parody and excluding other expressions. Where the Supreme Court found transformative fair use in 2 Live Crew's adaptation, the Ninth Circuit found copyright infringement in Dr Seuss Enterprises v. Penguin Books over a book titled "The Cat NOT in the Hat!" which made use of Seuss's familiar style and character to satirize the OJ Simpson trial. Putting OJ Simpson in a stovepipe hat with such doggerel as "One Knife? / Two Knife? / Red Knife / Dead Wife" might lack poetic merit, but it certainly alters "The Cat in the Hat" "with new expression, meaning or message." But the court focused on the distinction between parody and satire finding parody's transformation fair use and satire's unfair.

In Castle Rock v. Carol Publishing concerning the book "SAT: The Seinfeld Aptitude Test," which contained trivia questions about the television series, the court found the "any transformative purpose possessed by The SAT is slight to non-existent" offering almost no analysis of why this doesn't add "new expression" to a television show.

Using Barbie Dolls (Mattel, Inc. v. Walking Mountain Prods.) in photographs, however, is protected because it can be read as parody. The court again cites Campbell and emphasizes the "extremely transformative nature and parodic quality" of the photographs.

While the courts have viewed transformations narrowly when considering expressive repurposing like "The Cat NOT in the Hat" and the "Seinfeld Aptitude Test," rulings have been expansive when considering functional transformations. This is probably because cases that are similar in specific details to the Campbell case need to focus on the court's specific application of the law, but cases that are dissimilar can use Campbell's broader strokes with wider license.

The court in the above-mentioned Bill Graham Archives v. Dorling Kindersley & RR Donnelley found that, while neither parody nor satire, including Grateful Dead posters in a book on the history of the band without permission of the artists (and no actual transformation of the source material) was transformative fair use because "the images placed in chronological order on a timeline is transformatively different from the mere expressive use of images on concert posters."

In Perfect 10 v. Google the court found that including thumbnail images in search results was "highly transformative." Leaving behind courts that focused on Campbell's emphasis on parody, the Perfect 10 court concluded that "indeed, a search engine may be more transformative than a parody because a search engine provides an entirely new use for the original work, while a parody typically has the same entertainment purpose as the original work." The court stated explicitly "that even making an exact copy of a work may be transformative so long as the copy serves a different function than the original work." It leaves one asking, however, why the Seinfeld Aptitude Test doesn't serve a different function from a television show.

In A.V. v. iParadigms students' papers were appropriated in whole to use in an online plagiarism detection service. The plaintiffs argued that iParadigm's use "cannot be transformative because the archiving process does not add anything to the work." The court found this argument "clearly misguided" citing Perfect 10: "The use of a copyrighted work need not alter or augment the work to be transformative in nature. Rather, it can be transformative in function or purpose without altering or actually adding to the original work."

Patrick Cariou v. Richard Prince

In 2000 Patrick Cariou published a book of portraits and landscapes that he made over six years working in Jamaica among Rastafarians. Richard Prince incorporated several of Cariou's images from the book into his own artwork that he began exhibiting in 2007. Cariou sued for copyright infringement and won in the U.S Court for the Southern District of New York (Judge Levals old stomping grounds). The court, citing Cambell and Castle Rock, found that fair use requires "that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works" and noted that "Prince testified that he has no interest in the original meaning of the photographs he uses." Although he was willing to use the work, Prince's testimony reflected complete contempt for Cariou's photographs, claiming that they were mere compilations of fact and therefore unworthy of copyright protection in the first place.

Cariou's original (left), one of Richard Prince's transformations (right)

In keeping with the tradition of fair use cases, two courts looking at the same material, the same statutes, and the same case law came to completely different conclusions. On appeal the court reversed (in part) the district court's ruling finding that "The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute."

This is in stark contrast to the Ninth Circuit's reading of fair use in the Dr. Seuss case: "the copied work must be, at least in part, an object of the parody, otherwise there would be no need to conjure up the original work."

By casting aside the insistence of previous courts on parody or similar direct commentary on the original work, the appellate court found itself in the unenviable position of making aesthetic judgements from the bench. Their legal determination was that Cariou's images were "serene" while Prince's were "hectic and provocative." This, in their opinion, was enough of a departure from the source material to weigh in favor of transformative use. It leaves us with a completely subjective question of how much aesthetic change is required for fair use. Had Prince's works not been "hectic and provocative," but only less-serene or maybe mildly-agitated, would the use still quality as fair? To make matters worse, the appellate court found that twenty-five of Prince's works in this case were fair use based on their judgment, but the remaining five were remanded back to the district court. What standard allowed the appellate court to determine the transformative nature of twenty-five works that they couldn't apply to the remainder?

Writing a dissenting opinion, Judge J. Clifford Wallace (sitting in from the Ninth Circuit) notes that, "certainly we are not merely to use our personal art views to make the new legal application to the facts of this case" and quotes the old chestnut from Oliver Wendell Holmes Jr.'s opinion in Bleistein v. Donaldson Lithographing as quoted in Campbell:

[I]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits

And so we find ourselves, twenty-three years after Judge Pierre Leval's hopeful view that "the doctrine of fair use need not be so mysterious or dependent on intuitive judgments" with an improved but still "disorderly basket of exceptions to the rules of copyright" that he found so problematic.

The Art Newspaper is reporting that Patrick Cariou plans to file an appeal to the Supreme Court.