## Facts

- Donald Graham, a fine-art photographer, created a black-and-white portrait titled *Rastafarian Smoking a Joint* in the late 1990s and owned the copyright.
- The photograph appeared on Instagram in a post uploaded by someone other than Graham, and it was later reposted with a comment that included reggae lyrics and an emoji.
- Appropriation artist Richard Prince took a screenshot of the Instagram post containing Graham’s photograph.
- Prince added his own short, garbled comment and an emoji beneath the image (within the Instagram-style layout), without making significant changes to the photograph itself.
- Prince printed the screenshot—showing the Instagram interface elements—on a large canvas, titled the work *Untitled (Portrait)*, and included it in his “New Portraits” series.
- The work was exhibited at Gagosian Gallery and offered for sale; Graham also alleged related commercial uses such as exhibition catalogs, other advertising materials, and at least one billboard.
- After learning of Prince’s use, Graham registered the photograph and sent a cease-and-desist letter; he alleged defendants continued their activities.
- Graham sued Prince, Gagosian Gallery, Inc., and Lawrence Gagosian for copyright infringement under the Copyright Act, seeking injunctive relief and monetary remedies.
- Defendants moved to dismiss under Rule 12(b)(6), arguing Prince’s work was fair use as a matter of law, and alternatively sought to narrow the remedies available (including striking punitive damages).

## Issues

1. Whether the court could decide, on a Rule 12(b)(6) motion based on the complaint and incorporated materials, that Prince’s use was fair use under 17 U.S.C. § 107 as a matter of law.
2. Whether the court should limit remedies at the pleading stage based on registration timing and, in particular, whether punitive damages are available for copyright infringement under the Copyright Act.

## Decision

- The court denied defendants’ motion to dismiss on fair-use grounds, holding that fair use could not be determined as a matter of law on the pleadings on this record.
- The court declined to impose broad damages restrictions at the pleading stage based on registration timing, leaving those issues for later development.
- The court granted the motion only to the extent it struck Graham’s request for punitive damages, holding punitive damages are not available under the Copyright Act.

## Legal Principles

- Fair use is a mixed question of law and fact requiring an open-ended, context-sensitive application of the four statutory factors; dismissal is disfavored unless fair use is clear from the complaint and properly considered materials.
- For the first factor (purpose and character), minimal alterations—such as reproducing a copyrighted image in an Instagram-style frame and adding brief text—do not automatically establish transformativeness as a matter of law, particularly where the original image remains the dominant content and the secondary use is commercial.
- For the second factor (nature of the work), creative photographic portraits are at the core of copyright protection and generally weigh against fair use.
- For the third factor (amount and substantiality), copying an entire image weighs against fair use unless justified by the asserted purpose; whether such copying is justified often depends on facts not suitable for resolution on the pleadings.
- For the fourth factor (market effect), allegations of market substitution or harm to licensing opportunities are sufficient at the pleading stage to weigh against finding fair use as a matter of law.
- The Copyright Act supplies a comprehensive remedial scheme (including actual damages and profits, statutory damages, and fee-shifting in appropriate cases) and does not authorize separate punitive damages; demands for punitive damages may be dismissed as a matter of law.

## Conclusion

The court allowed Graham’s infringement claim to proceed because defendants had not shown, based solely on the pleadings, that Prince’s Instagram-based reuse of the photograph was fair use under § 107, while dismissing only the request for punitive damages as unavailable under the Copyright Act.


Graham v. Prince, 265 F. Supp. 3d 366 (2017)