Case 1:15-cv-10160-SHS Document 44 Filed 11/07/16 Page 1 of 2

B O I E S ,

S C H I L L E R

&

F L E X N E R

L L P

575 LEXINGTON AVENUE ● NEW YORK, NY 10022 ● PH. 212-446-2300 ● FAX 212-446-2350

November 7, 2016
Via CM/ECF
The Honorable Sidney H. Stein
United States District Court
for the Southern District of New York
500 Pearl Street
New York, NY 10007
Re:

Graham v. Prince, No. 1:15-cv-10160-SHS

Your Honor:
On behalf of Defendants in the above-referenced matter, I write in response to Plaintiff
Donald Graham’s letter, dated November 4, 2016. As explained below, this Court should reject
the arguments put forth in Graham’s letter.
First, the ultimate holding of the Second Circuit in TCA Television Corp. v. McCollum,
No. 16-134-cv, 2016 WL 5899174 (2d Cir. Oct. 11, 2016), was not related to fair use. Despite
discussing the doctrine, the Second Circuit ultimately affirmed dismissal of the copyright suit
because “plaintiffs fail[ed] plausibly to allege a valid copyright interest.” Id. at *1. Indeed, the
Court held: “We identify no merit in any of the theories relied on by plaintiffs to support their
copyright claim and, accordingly, we affirm dismissal of the amended complaint for failure to
plead a valid copyright.” Id. at *14. Therefore, the entire discussion of fair use is dicta.
Second, contrary to Plaintiff’s argument, the fair use discussion in TCA Television is
inapposite. In that case, the Second Circuit noted that the Broadway play Hand to God did not
make fair use of the Abbot and Costello routine Who’s on First because “the extent of
defendants’ taking is identically comedic to that of the original authors, that is, to have two
performers expand on a singular joke in order to generate increasing audience laughter.” Id. at
*10. In other words, the play exploited the routine’s creative virtue “in the manner it was made
to be used,” without adding any new expression, meaning, or message. Id. By contrast, Prince
used Graham’s photograph for a highly transformative purpose: as a commentary on social
media. This new meaning and message is apparent to any reasonable observer who looks at the
artwork.
Third, Graham’s focus on the “verbatim” or “excessive” use in TCA Television is
misguided: The Court noted that Hand to God unnecessarily used an “extensive[]” amount of the
Who’s on First routine, “some dozen of the original exchanges,” for “its original comedic effect”

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Case 1:15-cv-10160-SHS Document 44 Filed 11/07/16 Page 2 of 2

and without any transformation. Id. Here, Prince’s transformative purpose—to provide a
commentary on social media—required the incorporation of the entire Instagram post (which
included almost the entire Graham photograph) to accomplish that purpose. Prince’s use cannot
be qualified as “excessive” where he used as much of Graham’s photograph as was necessary to
achieve his transformative purpose.
Finally, Graham misconstrues TCA Television as holding that a “sharply different
context” is inconsequential to the fair use analysis. Quite the contrary, the Second Circuit merely
noted that using the routine in the different context of a dark Broadway play did not salvage the
defendant’s fair use argument because there was no transformative purpose to begin with. Id.1
Graham also misinterprets TCA Television as focused solely on physical alteration, a
dangerously narrow view of fair use that he also expounded in his opposition brief. The Second
Circuit merely noted that the play had used the routine “almost verbatim” for no apparent
purpose other than to evoke the famous routine. Id. at *9–*10 (“The only purpose served by the
extent of defendants’ taking is identically comedic to that of the original authors.”). That is a far
cry from here, where Prince used the social media post for the specific transformative purpose of
commentary.
In sum, TCA television is readily distinguishable and does not alter the conclusion that
this case should be dismissed with prejudice.
Respectfully submitted,
/s/ Joshua I. Schiller
Joshua I. Schiller
Counsel for Defendant Richard Prince
cc:

All Counsel (via CM/ECF)

1

Graham’s argument is also a red herring because Prince’s transformation derives from new elements
beyond just a new context. (Defs.’ Br. at 14–15.)

2

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