Last month, photographer Peter Cariou petitioned the Supreme Court to overturn the Second Circuit ruling in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), a copyright infringement case, in which the Second Circuit held that twenty five artworks created by the appropriation artist Richard Prince–which incorporated Cariou’s original photographs–were fair use and non-infringing.

At center in this case is the tension between appropriation art, which is based on the idea of taking original works of others and creating different works with a new meaning and esthetics, and the rights of copyright owners of the appropriated works.

Whether or not a piece of appropriation art qualifies as fair use often depends on whether the appropriation art work is found to be transformative.  As initially developed by Judge Pierre Leval in an article Toward the Fair Use Standard, 103 Harv. L. Rev. 1105 (1990), and subsequently adopted by the Supreme Court in Campbell v. Acuff-Rose Music, 510 US 569 (1994), the secondary work is transformative when it adds value to the original material and employs it in a different manner or for a different purpose, including commenting on or criticizing the original work or its author.

Under this standard and until the Second Circuit’s decision in Cariou, which is subject to the current petition to the Supreme Court, secondary use was found transformative and non-infringing where, for example, the original advertisement in a fashion magazine was utilized to criticize the consumer culture represented by the original image, Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006), and denied where a trivia quiz book was based on the television show because the book served the same entertainment purpose as the show. Castle Rock Entm’t, Inc. v. Carol Pub. Group, Inc., 150 F.3d 132 (2d Cir. 1998). When analyzing fair use, courts typically inquired into the creative intent of the artist and his purpose for utilizing the original work to determine whether the message of the original work has been sufficiently transformed into a new idea.

The district court decision in Cariou v. Prince, 784 F. Supp. 2d 337 (S.D.N.Y. 2013) reflects the above approach. Patrick Cariou created a series of photographs of Rastafarians in Jamaica that comprised a book published in 2000 under the title Yes, Rasta. Prince, a successful appropriation artist, whose works are part of a permanent collection of several museums, came across Cariou’s book and used a dozen of Cariou’s photographs, which he enlarged, cropped, tinted and painted over – to create about 30 pieces of art. Prince neither asked for Cariou’s permission nor credited Cariou in connection with his work. Prince’s collection titled Canal Zone was displayed in the Gagosian Gallery in New York and was fairly successful – eight of the Canal Zone pieces were sold for a total of more than $10 million.  Cariou sued for copyright infringement and the district court for the Southern District of New York ordered that all unsold Canal Zone works be impounded for resale or disposal. Striking Prince’s defense of fair use, the district court held that Prince’s work was not transformative because it did not comment on Cariou, his photographs or the related popular culture, and Prince had no transformative intent.

Overruling the district court’s decision, the Second Circuit held that a secondary work does not necessarily have to comment on the original to be transformative. Nor does the artist’s intent matter.  What matters is how the work could be reasonably perceived:

“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. Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so. Rather than confining our inquiry to Prince’s explanations of his artworks, we instead examine how the artworks may ‘reasonably be perceived’ in order to assess their transformative nature. Cariou ,714 F.3d at 707.

Having established this new standard, the Second Circuit looked at each of the accused works. It  found 25 of the Canal Zone works transformative and not infringing because they “have a different character, give Cariou’s photographs a new expression, and employ new aesthetics with creative and communicative results distinct from Cariou’s.” The remaining 5 works, which in the Circuit’s view minimally changed the original photographs, were remanded to the district court for consideration under the new standard.

The Second Circuit’s decision in Cariou has received mixed reception in the artistic and legal community. It has been praised for clarifying that a work of art that utilizes creative expression of another artist does not have to comment on the original artist or his work to constitute fair use. Further, the Second Court removed the requirement for the appropriation artist to articulate transformative intent, which could be prone to embellishment by the artists, and instead replaced it with a potentially more objective “reasonable observer” test. Nonetheless, the court failed to explain how the “reasonable observer” test should be applied. Nor has it explained how transformative use should be distinguished from derivative works which a copyright owner has exclusive right to make and authorize under § 107 of the Copyright Act.

The petition for certiorari filed by Cariou’s attorneys on August 27, 2013 raises these and a number of other issues with the Second Circuit’s decision.  Their main criticism is that the Second Circuit disregards the Supreme Court’s precedent in Campbell and “offers neither predictability nor guidance” for the copyright owners.

It remains to be seen whether the Supreme Court will accept the petition and if so, whether a new fair use standard will be created. In the meantime, at least two courts have followed the Second Circuit’s reasoning in Cariou that a secondary work does not have to comment on the original work or its creator to be transformative. Seltzer v. Green Day, Inc., 2013 U.S. App. LEXIS 16322, 14-15 (9th Cir. 2013); Kienitz v. Sconnie Nation LLC, No. 12-cv-464, 2013 U.S. Dist. LEXIS 115141, 16-17 (W.D. Wis. Aug. 14, 2013).