As many of you know, the Second Circuit Court of Appeals has reversed in part and remanded in part, the decision made by Judge Batts in the case of Patrick Cariou v. Richard Prince. Many lawyers have commented on the Court’s ruling but unfortunately many laypeople with no legal background, have chimed in to muddy the waters. We have taken some time analyze the decision soliciting the views of several other IP attorneys in order to bring you what we hope to be, a streamlined interpretation of a decision and important dissent which run 28 pages.
Those who have seen us lecture or have watched our B&H presentation may recall that we each discussed the decision of Judge Batts regarding the applicability of a fair use defense in this case. A total of 30 photographs which were altered, appropriated, changed or augmented by Mr. Prince are at issue. Mr. Prince claimed that his “changes” to all of Mr. Cariou’s registered photographs constituted “fair use” and thus were permissible.
The Appellate Court “agreed” with both Jack and I, in holding that the Prince image we use in our lecture does not appear to constitute “fair use”. Additionally it correctly notes as we always do that the percentage of an image “taken” is of little to no importance. The Court noted that one could “take” 100% of a registered image and still properly use the fair use defense. We routinely point this out in our book and in our lectures and videos.
The majority of the Appeals Court held that 25 of the 30 images in question were “transformative” and that they came under the fair use exception. This was a rather unusual step as typically an appeals court would not determine whether or not a given appropriation was/was not fair use but rather would direct the trial judge (here Judge Batts and/or a jury) to make that determination based on a standard set by the appeals court. The majority of the judges in this Circuit found that works can be transformative without relating back to the original works. Judge Batts’ decision in effect said they could not. These judges took over the role generally filled by the judge and/or jury and then imposed a new test for the remaining 5 images.
The Judges found therefore, that Judge Batts used the wrong test in making her decision and rather than remand (send back) to the trial court for a trial on whether or not the appropriations under the “new test” constituted fair use, it decided on its own that 25 of 30 were indeed “Kosher” and fell under the umbrella of “fair use”. It then went on to say that 5 images were clearly not eligible for such designation by the appeals court and “sent them back” for a trial on the issue as to whether some testimony or evidence could place one or more of them into the fair use category. Generally speaking appeals courts at both state or federal levels do not make findings of fact as it did here.
Judge Wallace wrote a very strong dissent (one with which Ed and all of the 6 IP attorneys consulted agree with) saying in effect that – if Judge Batts used the wrong test to determine whether the images constituted fair use, then all of the images should be referred back to the trial court so a judge and/or jury can hear testimony, review evidence and judge each image on the merits using the “new” or “correct test”. He accuses his fellow judges of “playing art critics” and doing so without hearing any trial testimony or seeing any evidence as there has been none. Ed strongly agrees with Judge Wallace, as do many litigators and legal scholars.
So what should photographers and other creators take away from this decision? Well, for one thing mere cosmetic changes to photography by an artist does not constitute a “fair use”. Each case must be judged on its merits. To be safe, if the offending work looks like a copy see a lawyer ASAP. The “tests” endlessly repeated on websites regarding the percentage or amount of work copied or taken are nonsensical and must be ignored.
If the parties settle their differences before trial there will likely be no determination on the remaining 5 works. If there is a trial, Judge Batts and/or a jury will determine whether any or all of the 5 remaining images constitute copyright infringement or not based on testimony and evidence. Note that nothing in the appellate decision which reverses a portion of Judge Batts’ decision affects anything said in our videos.
Judge Batts made an unprecedented, sweeping order affecting the rights of owners of the artworks to sell them to third parties. As we have always said, Judge Batts went to bat (pun intended) for creators everywhere whose work had been ripped off. While admiring her guts, we were quick to point out that an injunction even approaching the breadth of hers, was very, very rarely issued. The appeals court ruled that Judge Batts was shall we say, “excessive” and overruled that injunction.
This decision will incentivize infringers to assert the “fair use” defense whether or not it has merit. The publicity around the case and the decision of the Circuit Court of Appeals will likely dissuade many attorneys from taking infringement cases on a contingency or similar fee basis. Finally, the decision serves as further proof that “one size fits all” answers to copyright issues are most often dead wrong.
Neither of us had any personal involvement in the case nor contact with the lawyers.