Longtime APA member Donald Graham recently obtained the first ever judgment for copyright infringement against the appropriation artist, Richard Prince, in the U.S. Southern District Court of New York. In 2014, Richard Prince reproduced an Instagram post featuring Donald Graham’s photograph and exhibited it in his exhibition at the Gagosian Gallery entitled “New Portraits". Larry Gagosian bought the Prince artwork featuring Graham’s photograph. Graham sat down to answer APA’s questions about this important victory for photographers and the U.S. Copyright law.
APA: Why did you choose to file the Richard Prince lawsuit?
DG: When I was made aware of my photograph being sold by the Gagosian Gallery in a show entitled “New Portraits” by Richard Prince, I had to choose — I could sit back and watch the willful infringement of copyright law or stand up to defend it. Copyright is very important—so much so that it is provided for directly by the U.S. Constitution—and especially for the field of photography, which could not sustain a professional class without it. I’ve never sued anyone before, and hopefully, I’ll never sue anyone again. But sometimes you have to do what’s right. I care deeply about photographers’ ability to make a living from their work, and this lawsuit was about protecting the law that fundamentally makes that possible.
APA: Take us back to when you first saw the infringement. When was it, and what was your reaction?
DG: In 2014, I got a call from the Photography Director at Vogue, Ivan Shaw, who is a good friend of mine. He told me he had just come from the opening of Richard Prince’s New Portraits at the Gagosian Gallery and that my photograph—which had long been hanging in my New York apartment—was in Prince’s show.
APA: What did you do first? What was your process in selecting an attorney to represent you?
DG: I had no idea where to start, so I reached out to everyone I knew to ask for advice on what I should do and how to find an attorney. Cost was a significant concern. I expected that litigating against Richard Prince and Larry Gagosian would be enormously expensive. No matter how strong my legal claim was, I assumed they would be able to make it a long and difficult process—sitting here more than eight years later, I can say my assumption was correct. I needed lawyers who were aligned with my purpose for the lawsuit, which was never really about money, and would be willing and able to go toe-to-toe against such powerful figures in the art world.
Eventually, I was referred to Cravath, Swaine & Moore, one of the most respected law firms in the country. Cravath lawyers David Marriott, David Kappos, and Christopher Davis were teaching a Copyright Dispute Resolution Externship in association with Columbia Law School. I was more than happy for my case to serve as an educational opportunity for law students, and Cravath clearly was invested in the advancement of copyright law to ensure the protection of creators’ rights. It was a great fit.
APA: What have been some of the problems in pursuing the protection of your copyright?
DG: The art world establishment, not surprisingly, rallied around Richard Prince and Larry Gagosian. The professional photography world was less mobilized for the fight, and I did not feel I had the same level of organizational support. I would love to see the APA and other photography organizations invest more in copyright advocacy. There are more fights to come, and developing a network of attorneys and expert witnesses who are committed to the protection of the copyright law would help to ensure that when a photographer’s copyright is violated, that photographer can find resources and support throughout the dispute resolution or litigation process.
APA: What was the most unexpected or complicated part of the lawsuit?
DG: Soon after I filed my lawsuit, Prince and Gagosian offered to pay me off to drop the case and not speak about the settlement. When I refused, they made an offer of judgment under a sort of arcane federal rule of civil procedure, Rule 68. This was a tactic to coerce me into dropping the case.
In lay terms, Rule 68 says that if I won, but the judgment was less favorable than what the defendants offered, I would be liable for paying their costs. This would have been at least in the hundreds of thousands of dollars and, if attorney’s fees were to be factored in, many millions more. Let that sink in: I win my lawsuit and potentially pay the losers—a lot. From what I understand, Rule 68 is not the most developed area of the law, so it was unclear how the judge might apply it to my case. But the risk was always there. It was so frustrating because the case was not about money for me, and yet Prince and Gagosian forced there to be a focus on money because if I won and did not recover a certain amount, there could be this absurd outcome. Meanwhile, Richard Prince is tweeting about money-mooching photographers, and his lawyers are painting me in legal briefs as someone just looking for a big payday.
So, I got a real taste of what well-resourced defendants can do to avoid judgment. Bullying tactics like this Rule 68 offer, along with a motion to make me post a $150,000 bond, asserting twenty-five or more affirmative defenses—these things created enormous amounts of legal work. Cravath did a great job of securing victories along the way to keep the case going. It was clear Richard Prince did not really want to engage with the substance of my claim and have the fight over fair use.
APA: Why did it take nine years to resolve this matter?
DG: Certainly not anything coming from my side. My attorneys were not filing motions other than what they had to in response to motions from Prince’s and Gagosian’s attorneys. The original judge assigned to the case retired, which might have caused a delay initially, and it’s likely Covid-19 played a role. But it was surprising to me that it took this long.
Litigating takes perseverance—but it’s helpful when you know you’re fighting for what’s right.
APA: Can you talk about the progress of settlement discussions, if any, and what opportunities there were to resolve the case before the final determination?
DG: That’s the great thing about refusing to settle—I can talk about it! I could have entered into a confidential settlement agreement and walked away with a lot of money. We’re talking over a million dollars. There’s nothing wrong with settling, assuming the goal is just compensation for the work. But for me, the lawsuit was about principle. I wanted a judgment against Richard Prince for my claim of willful copyright infringement.
In the end, that’s what I got.
That does not mean I was never willing to hear from the other side. I even engaged in mediation. But every time an opportunity came up to resolve the litigation, I would ask my lawyers: what would this outcome do to advance copyright law?
It’s important that we received a very favorable opinion from the judge denying Prince’s and Gagosian’s summary judgment on fair use grounds, which held that Prince’s use of my copyright was not transformative as a matter of law and that the factors used in fair use analysis weighed strongly against fair use. If you read that summary judgment opinion, you will see all the ways the fair use argument fell short. Artists whose works are infringed in the future can cite that opinion for support if their infringer mounts a similar fair use defense. So when I learned Prince and Gagosian were willing to accept a judgment entered against them for willful copyright infringement, I was thrilled to take the victory without a trial. My lawyers explained that a jury would not issue an opinion anyway, so there wasn’t much to be gained by going through with a trial.
APA: How do you feel about the Gagosian Gallery being let off the hook?
DG: I have great respect for Larry Gagosian. His influence and impact on modern art is extraordinary. But neither Larry Gagosian nor Gagosian Gallery were “let off the hook”. Far from it. It’s all in the judgment: “Judgment is entered in favor of Plaintiff and against Defendants for the claims asserted against them”, “Defendants’ defenses are dismissed with prejudice”, “Defendants are enjoined from reproducing, modifying, preparing derivative works from, display publicly, selling, offering to sell, or otherwise distributing” my photograph and the Prince work that copied it. “Defendants” means Richard Prince, Gagosian Gallery, and Larry Gagosian. My claims were for willful infringement against each of them, and judgment was entered against all of them.
Further, Larry Gagosian bought the Richard Prince artwork that copied my photograph. Any sale or public display of the work by him would be in violation of the court’s order. He has transferred ownership of the work to me.
APA: Having gone through this, is there anything photographers should be doing to protect their copyright?
DG: I had not registered my photograph with the U.S. Copyright Office until after Richard Prince created the work and after it was exhibited at the Gagosian Gallery. If I had registered it earlier, it would have allowed me to sue for statutory damages and to recover attorney fees for those infringements. Also, the law has changed since I filed suit. Back then, you only needed to have applied for registration to commence a lawsuit—today, you have to wait until the registration is issued. So I recommend that all photographers register their works and do so as quickly as possible.
APA: Will this case have any bearing on how the art industry views copying in the future?
DG: Only time will tell. But this judgment, together with the judgment obtained by Eric McNatt (who litigated alongside me for the last seven years with respect to another of Richard Prince’s New Portraits works), represents the only time Richard Prince has been held legally accountable for copyright infringement. This is a celebrity artist who is in his sixth decade of appropriating other artists’ works without seeking permission, providing attribution, or paying remuneration.
He has served as a high-profile, living example of how to achieve enormous financial success through stealing other artists’ works without legal consequences—until now. So, in addition to the legal importance, I believe there is real symbolic importance to the outcome of my case.
APA: What can we do to better educate people about fair use and copyright infringement?
DG: Every year members of APA will have their photographs used in ways that violate copyright law. APA and other photography organizations should hold seminars on a yearly basis, including giving a detailed explanation of how APA can help their photographers when their copyright is infringed. I suggest APA ask their legal team to publish a pamphlet describing when a photographer’s copyright has been violated and how APA can help their members when an infringement has occurred.
Donald Graham is an internationally recognized portrait, fashion and fine art photographer who works in the worlds of fashion, movies, music, magazines and advertising. His work is in the Metropolitan Museum of Art in New York, the International Center of Photography in New York and the Detroit Institute of Arts Museum. His photographs have appeared in over 500 publications and he has done advertising campaigns for many Fortune 500 companies. Donald began his career in Paris as a fashion photographer. He then shifted his work to New York and Los Angeles where he broadened his photography to include portraiture for the movie, music, editorial and advertising industries and began devoting significant time to fine art. During his career, Donald has expanded his unique style with extensive portraiture in India, Tibet, Jamaica and Africa.
Donald has received awards from Nikon, Hassleblad, Communication Arts, the New York Photography Awards, the London Photography Awards, and others. A fashion photograph of Donald Graham's was featured in an exhibition in the Costume Institute at the Metropolitan Museum of Art, entitled "Men in Skirts". Donald has had exhibitions in New York, Los Angeles, Paris and Munich and his work is widely owned by private collectors. His book of black & white portraits, "ONE OF A KIND", published by Hatje Cantz, is available on Amazon.com and in bookstores worldwide. The book and its photographs has won over 40 international awards.