265 F. Supp. 3d 366
S.D.N.Y.2017Background
- Photographer Donald Graham owns the copyrighted photograph Rastafarian Smoking a Joint (published 1998; registered Oct. 20, 2014) and generally does not license his fine-art prints.
- Artist Richard Prince created Untitled (Portrait) by taking an Instagram screenshot that reproduced Graham’s photograph (with minor cropping) inside the Instagram frame, added a comment, printed it on canvas, and sold it via Gagosian Gallery as part of the New Portraits exhibition.
- Untitled appeared in the exhibition catalog and allegedly was used in promotional materials; a billboard and a later Twitter post by Prince also incorporated or reproduced the image.
- Graham sued for willful copyright infringement as to Untitled/catalog, the billboard, and a Twitter compilation, and seeks damages, injunctive relief, and fees.
- Defendants moved to dismiss on fair use grounds (and asked conversion to summary judgment), and alternatively asked the court to limit Graham’s damages recovery and bar punitive damages.
- The district court denied dismissal and conversion, concluding the fair-use inquiry is fact-intensive and cannot be resolved on the pleadings; it barred only punitive damages as a matter of law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Untitled is fair use (transformative) | Graham: Untitled preserves and exploits his photograph; not transformative | Prince: Uses the photo as raw material to comment on social media; transformative | Court: Not transformatively different as a matter of law; fair use cannot be resolved on 12(b)(6) given the pleadings; dismissal denied |
| Whether motion should be converted to summary judgment | Graham: Discovery needed to evaluate fair use factors | Prince: Court can decide now and rely on outside materials | Court: Declined conversion; discovery is necessary for fact-intensive fair-use analysis |
| Whether damages should be limited to defendants’ profits / scope of statutory damages & fees | Graham: May recover actual damages, infringer’s profits, or statutory damages/fees where permitted; facts needed to assess license value and causal nexus | Defendants: Limit actual damages to profits on sale of Untitled; bar statutory damages/fees for pre-registration acts; bar costs; bar punitive | Court: Denied preemptive limits except barred punitive damages; statutory damages/fees may be unavailable for acts that commenced pre-registration (Untitled) but cannot be resolved now for other works; costs not barred by registration timing |
| Availability of punitive damages | Graham conditioned on statutory damages being barred | Defendants: Punitive damages not available under Copyright Act | Court: Granted—punitive damages are not available in Copyright Act claims |
Key Cases Cited
- Cariou v. Prince, 714 F.3d 694 (2d Cir.) (fair-use transformative analysis; reasonable-observer test)
- Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) (secondary use as commentary; aesthetic alteration and commercialization considered)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (1994) (four statutory fair-use factors; transformativeness central)
- TCA Television v. McCollum, 839 F.3d 168 (2d Cir. 2016) (fair use is fact-intensive; caution on deciding at dismissal)
- Davis v. The Gap, Inc., 246 F.3d 152 (2d Cir. 2001) (actual damages, infringer’s gross revenue standard)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (contextual, minimal-use presentation can favor fair use)
- Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (market-effects importance in fair-use inquiry)