Fair Use Victory Costs Defendant Over $1 Million

By Geoffrey Gerber

This past Fall, the Second Circuit affirmed summary judgment in favor of Jeff Koons in a claim against him for copyright infringement. You can read a good analysis of this opinion at the Patry Copyright Blog. Be sure to check out the concurring analysis at the Art Law Blog as well. For a brief, but straightforward summary, look at the Fair Use Network’s post.

Here is an image of Koons’s challenged work, “Niagra” from the Court record (see the Guggenheim Museum’s website for the work in color).

You can compare that with the plaintiff’s appropriated work “Silk Sandals by Gucci” from Avedon protégé Andrea Blanch in the Allure advertisement from the Court record.

A good and fair result.

However, last Wednesday, the District Court in Blanch v. Koons, Case No. 03-cv-8026, (S. D. N.Y., Doc. 71, entered May 9, 2007), announced that his “fair use” cost Koons over $1 million in attorneys’ fees and costs.

As the District Court wrote:

17 U.S.C. § 505 provides in copyright actions that:

In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.

The standard for determining whether a party is entitled to attorneys’ fees is the same whether the prevailing party is the plaintiff or defendant. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994). The following factors may be used to guide a court’s discretion so long as they are faithful to the purposes of the Copyright Act: “‘frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.’” Id. at 534 n.19, quoting Lieb v. Topstone Industries, Inc., 788 F.2d 151, 156 (3d Cir. 1986).

The District Court seems to have relied heavily on the fact that Koons is an “appropriation artist” who has been sued before for copyright infringement. Appropriation art has a long lineage in the visual arts, extending back at least as far as Picasso and Duchamp, but it raises very difficult copyright issues, including derivative works and fair use. For an interesting discussion of the appropriation art intersection with law and economics, see William M. Landes, Copyright, Borrowed Images and Appropriation Art: An Economic Approach, (December 2000). University of Chicago Law & Economics, Olin Working Paper No. 113. Koons has been sued — and lost — several times for copyright infringement over his use of pre-existing images in his work: Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) (use of photograph of couple with puppies as basis for sculpture “String of Puppies”); United Features Syndicate, Inc. v. Koons, 817 F. Supp. 370 (S.D.N.Y. 1993) (use of Garfield comic strip character “Odie” in sculptures entitled “Wild Boy and Puppy”); and, Campbell v. Koons, Case No. 91-cv-6055, 1993 WL 97381 (S.D.N.Y. Apr. 1, 1993) (use of photograph of boy with pig as basis for sculpture “Ushering in Banality”).

Koons clearly pushes the fair-use envelope, but if it costs over $1 million dollars to defend a victorious fair use, how many people will risk it. If Blanch had prevailed, would she have recovered her attorneys’ fees and profits? Although fair use is now codified, it implicates the First Amendment. When the costs of litigation chill First Amendment expression, it certainly seems that attorneys fees and costs should be paid. Compare this in light of the Supreme Court concurrence recently noted at the Volokh Conspiracy regarding fee shifting in a First Amendment political speech case. Koons’s past cases may suggest that little would chill his speech, but what about other artists. If there is a post-modern/consumer-culture comment to be made with appropriation of a visual image, won’t the commentator think twice about making the comment before incurring the risk of substantial defense costs? If most commentators agree that in this particular instance, the fair-use defense was clearly right, then should the defendant bear the costs of the defense? It seems that the attorneys’ fee shifting provision in the Copyright Act would have remedied any past misjudgments and that each instance of speech should be examined on its own merits.

It strikes me that the litigation pendulum has swung back and forth in its appreciation of the First Amendment litigant. Some champions of the First Amendment have been heralded as heroes and others reviled as villains. As Larry Flynt is depicted as saying in The People v. Larry Flynt, “ If the First Amendment will protect a . . . scumbag like me, then it will protect all of you . . . ‘cause I’m the worst. Certainly some might place Koons into the same category as Larry Flynt. (Koons created sexually explicit artwork with his former wife Ilona Staller in arte Cicciolina, in a series entitled “Made in Heaven — this website has links to galleries of several of Koons’s series of works, including “Made in Heaven”). Regardless, I question whether the right to recover defense fees and costs should be based upon a judge’s subjective determination of the societal value of the challenged expression. I wonder whether the fee decision in Blanch v. Koons would have been different if fair use were a First Amendment action rather than a statutory defense? Should fair-use defendants assert a First-Amendment declaratory judgment counterclaim to increase their chances of recovering their defense costs as a prevailing party?.

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