IP Law Daily, TOP STORY—2d Cir.: Warhol’s ‘Prince Series’ prints could infringe photographer’s portrait of late pop star, (Mar 29, 2021)

By Thomas Long, J.D.

Second Circuit reverses district court’s fair use declaration granted to Andy Warhol Foundation; artist’s works were not "transformative" and could harm the photographer’s market for licensing her image.

Screenprints depicting the late pop star Prince, made by the late artist Andy Warhol in 1984, did not make transformative use of photographer Lynn Goldsmith’s portrait of the musician, the U.S. Court of Appeals in New York City has held, reversing a district court’s decision that the Andy Warhol Foundation for the Visual Arts, Inc., was entitled to a declaration that Warhol’s "Prince Series" did not infringe Goldsmith’s photo. The Warhol prints—one of which was reproduced in a Vanity Fair magazine article in 2016—were not entitled to a fair use defense, and they were substantially similar to Goldsmith’s photo, as a matter of law. The appellate court made particular note of the fact that Warhol’s prints did not alter or remove protectable elements of Goldsmith’s photo, and that her work was "instantly recognizable" in the Warhol prints. In finding fair use, the district court improperly focused on its subjective interpretation of the works’ underlying artistic message rather than an objective assessment of their purpose and character. The result of this incorrect approach led to the district court making faulty conclusions as to the rest of the fair use factors, the appellate court said. Along with reversing the fair use judgment, the appellate court vacated the district court’s order dismissing Goldsmith’s counterclaim for copyright infringement (Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, March 26, 2021, Sullivan, R.).

Lynn Goldsmith—a professional photographer primarily focusing on celebrity portraits and rock concert photos—took a series of portrait photos of musician Prince Rogers Nelson, popularly known simply as "Prince," in December 1981. She testified that she made a number of creative decisions in taking the pictures, as to lighting, makeup, and lenses. In 1984, Goldsmith’s agency, Lynn Goldsmith, Ltd. (LGL), licensed the photograph to Vanity Fair magazine for use as an artist reference. The license permitted Vanity Fair to publish an illustration based on the Goldsmith Photograph in its November 1984 issue, once as a full page and once as a quarter page, with attribution to Goldsmith as the creator of the source image. The artist in question was famed contemporary artist Andy Warhol, who had been commissioned to create an image of Prince for the magazine. Vanity Fair did not tell Goldsmith that Warhol was the artist involved, and she did not see the article when it was initially published.

Also unbeknownst to Goldsmith, Warhol created 15 additional works (a combination of screenprints and pencil illustrations) based on the Goldsmith Photograph, referred to (along with the Vanity Fair image) as the "Prince Series." Testimony established that Warhol’s usual practice was to reproduce a photograph as a high-contrast two-tone image on acetate that, after Warhol made various changes of his choice, would be used to create a silkscreen.

After Warhol’s death, the Andy Warhol Foundation for the Visual Arts, Inc. (AWF) acquired title to and copyright in the Prince Series. On April 22, 2016, the day after Prince died, Conde Nast, Vanity Fair’s parent company, contacted AWF to see if the 1984 image was still available. After learning that AWF had additional images from the Prince Series, Conde Nast decided to use a different image from the series for the cover of a Vanity Fair issue paying tribute to the deceased musician. Goldsmith was not given any credit or attribution for the image, which was instead attributed solely to AWF. Goldsmith then became aware for the first time of the existence of the Prince Series.

In July 2016, Goldsmith contacted AWF to advise that her copyright was being infringed. In April 2017, AWF filed an action against Goldsmith and LGL, seeking a declaratory judgment that the Prince Series did not infringe because they qualified for the fair use defense provided by Section 107 of the Copyright Act. Goldsmith countersued for copyright infringement.

Summary judgment. On July 1, 2019, the district court granted summary judgment in AWF’s favor. The district court concluded that the Prince Series was "transformative" because, while the Goldsmith Photograph portrayed Prince as "not a comfortable person" and a "vulnerable human being," the Prince Series portrayed Prince as an "iconic, larger-than-life figure." The district court further reasoned that, although the Goldsmith Photograph was creative and unpublished—which would ordinarily weigh in Goldsmith’s favor—this was "of limited importance," due to the transformative nature of the Prince Series works. The district court opined that Warhol had removed nearly all of the protectable elements of Goldsmith’s work. Finally, the district court concluded that the Prince Series works were not "market substitutes" with the potential to economically harm Goldsmith. Goldsmith and LGL appealed to the Second Circuit.

Fair use. In deciding whether the Prince Series qualified for the fair use defense, the court reexamined the district court’s analysis of the four factors listed in Section 107: the character and purpose of the use, the nature of the copyrighted work, the substantiality of the portion used, and the effect on the potential market for or the value of the copyrighted work.

Purpose and character of use—transformativeness. Goldsmith and LGL argued that the district court mistakenly grounded its conclusion that the Prince Series works were transformative in a subjective evaluation of the works’ underlying artistic message rather than an objective assessment of their purpose and character. The Second Circuit agreed.

First, the appellate court explained that the district court appeared to have misconstrued the Second Circuit’s decision in Cariou v. Prince by interpreting that opinion as establishing a rule that any secondary work is necessarily transformative as a matter of law if a side-by-side comparison indicates that the secondary work has a different character, a new expression, and employs new aesthetics with distinct creative and communicative results. Opining that "an overly liberal standard of transformativeness, such as that embraced by the district court in this case, risks crowding out statutory protections for derivative works," the Second Circuit clarified that "where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’ … is insufficient to render a work transformative."

"Rather, said the court, "the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a ‘new meaning or message’ entirely separate from its source material." Although Goldsmith may have had the subjective intent to portray Prince as a "vulnerable human being" and Warhol to instead display him as a popular icon, the question of whether a work is transformative doesn’t turn merely on the stated or perceived intent of the artist or a critic’s impression. Instead, the court has to examine how the works may reasonably be perceived. Courts should not step into the role of an art critic and make aesthetic judgments, the Second Circuit cautioned, but rather must examine whether the secondary work’s use of its source material is aimed at creating a "fundamentally different and new" artistic purpose and character, such that the secondary work stands apart from the "raw material" used to create it. This does not mean that a secondary work has to be "barely recognizable" in comparison to the primary work, but "the secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material," the court said.

Comparing the parties’ works side-by-side, the Second Circuit concluded that Warhol’s prints were not transformative. Although Warhol’s distinctive style was perceivable in the Prince Series, they were "paradigmatically derivative" of Goldsmith’s photo. According to the Second Circuit, "there can be no meaningful dispute that the overarching purpose and function of the two works at issue here is identical, not merely in the broad sense that they are created as works of visual art, but also in the narrow but essential sense that they are portraits of the same person." The Prince Series kept the essential elements of the Goldsmith Photograph without significantly adding to or altering those elements, and Warhol’s changes mainly related to altering depth and contrast, embellishing the photo with bright colors, and rendering them as high-contrast screenprints. Although Warhol had made some changes, the Goldsmith Photograph was still evident to the viewer as the foundation upon which the Prince Series was built.

Purpose and character of use—commercial use. Section 107 directs courts, when considering the first fair use factor, to consider whether the challenged use is of a commercial nature or is for nonprofit educational purposes. The Second Circuit agreed with the district court that the Prince Series works were commercial in nature, but that they produced an artistic value that served the greater public interest. "Nevertheless," the court said, "just as we cannot hold that the Prince Series is transformative as a matter of law, neither can we conclude that Warhol and AWF are entitled to monetize it without paying Goldsmith the ‘customary price’ for the rights to her work, even if that monetization is used for the benefit of the public."

Nature of the copyrighted work. In the appellate court’s view, "the district court’s error in analyzing the first factor was compounded in its analysis of the remaining three factors." The district court erred in concluding that the second fair use factor should favor neither party because LGL had licensed the Goldsmith Photograph to Vanity Fair and because the Prince Series was highly transformative. Goldsmith’s making the photo available for a single use on limited terms did not change its status as an unpublished work (which generally weighed against fair use). Although a transformative use could diminish the importance of the unpublished nature of the primary work, Warhol’s prints at issue in this case were not transformative.

"Having recognized the Goldsmith Photograph as both creative and unpublished, the district court should have found this factor to favor Goldsmith irrespective of whether it adjudged the Prince Series works transformative within the meaning of the first factor," the Second Circuit said. "And, because we disagree that the Prince Series works are transformative, we would accord this factor correspondingly greater weight."

Amount and substantiality of use. The ultimate question addressed by the third fair use factor is whether the quantity and value of the materials used are reasonable in relation to the purpose of the copying. AWF convinced the district court that this factor weighed in its favor because, by cropping and flattening the Goldsmith Photograph—thereby removing or minimizing its use of light, contrast, shading, and other expressive qualities—Warhol removed nearly all of its copyrightable elements. The Second Circuit disagreed. Although Goldsmith obviously could not hold a copyright in Prince’s face, she held exclusive legal rights to its image as it appeared in her photographs of him, including the Goldsmith Photograph. Because Warhol had used the photo itself to create his works, Goldsmith’s work could not be "neatly reduced to discrete qualities such as contrast, shading, and depth of field that can be stripped away, taking the image’s entitlement to copyright protection along with it," the appellate court said.

Warhol’s Prince Series borrowed significantly from the Goldsmith Photograph, both quantitatively and qualitatively. And Warhol’s screenprints were readily identifiable as deriving specifically from the Goldsmith Photograph. It was clear, in the court’s view, that Warhol did not merely use the photo as a reference point or memory aid but instead made use of it in an "instantly recognizable" way. Moreover, the court opined that Warhol’s changes amplified rather than diminished some of the protectable aspects of the Goldsmith Photograph.

Warhol’s appropriation of the photo could not be deemed "reasonable" in relation to his purpose because there was no apparent reason why he needed to use the Goldsmith Photograph, as opposed to some other picture of Prince. There was no evidence that Warhol—or even Vanity Fair—played a role in the selection of the image that was licensed. Accordingly, this factor strongly favored Goldsmith.

Effect on value or market. Although the district court correctly held that the primary market for the Warhol Prince Series and the Goldsmith Photograph did not meaningfully overlap, and that the two works occupied distinct markets with respect to direct sales, the Second Circuit disagreed with the district court’s conclusion that the Prince Series posed no threat to Goldsmith’s licensing markets. The district court apparently placed the burden of proof on Goldsmith to show that the Prince Series could usurp her ability to license her photograph, which was error. The rightsholder generally has the burden to identify relevant markets, but not of showing actual market harm. At any rate, the court said, Goldsmith satisfied her initial burden of identifying a market for her photo—specifically, popular print magazines as an image to accompany articles about Prince—and also showed that AWF had licensed Warhol’s depictions of Prince in that same market. "AWF’s failure to put forth any evidence that the availability of the Prince Series works poses no threat to Goldsmith’s actual or potential revenue in that market tilts the scales toward Goldsmith," the court said. The appellate court also opined that the Prince Series could harm Goldsmith’s market to license the Goldsmith Photograph to publications for editorial purposes and to other artists to create derivative works. Therefore, this factor favored Goldsmith.

Because all four factors favored Goldsmith, AWF’s fair use defense failed as a matter of law.

Substantial similarity. Finally, the court determined that the Prince Series works were substantially similar to the Goldsmith Photograph as a matter of law. Because the question of substantial similarity was "logically antecedent" to that of fair use (that is, there would be no reason to invoke a fair use defense if there were no actionable infringement), and because the discussion of the fair use factors went "a considerable way" toward resolving the issue of substantial similarity, the appellate court determined that remand was not needed. Moreover, Warhol’s access to Goldsmith’s work was not in question. Noting that Warhol had literally copied the Goldsmith Photograph, the Second Circuit reasoned that, given the degree to which Goldsmith’s work remained recognizable within Warhol’s, there could be "no reasonable debate that the works are substantially similar."

Concurring opinions. Circuit Judge Richard J. Sullivan, joined by Circuit Judge Dennis Jacobs, concurred with the majority but wrote separately to highlight what he called an overreliance on "transformative use" in the Ninth Circuit’s jurisprudence and to suggest that a renewed focus on the market-effects factor "would bring greater coherence and predictability to this area of the law."

"Placing dispositive weight on transformative use while reducing evidence of market harm to an afterthought is difficult to square with the Supreme Court’s guidance that the fourth factor ‘is undoubtedly the single most important element of fair use,’" Judge Sullivan wrote.

Judge Jacobs wrote his own concurring opinion to make the point that "the holding does not consider, let alone decide, whether the infringement encumbers the original Prince Series works that are in the hands of collectors or museums." The rights to use and dispose of the 16 original screenprints—which had been acquired by galleries, art dealers, and the Andy Warhol museum—were not at issue here because Goldsmith did not seek relief as to those parties. In Judge Jacobs’ view, the original screenprints were not "substitutes" for the Goldsmith Photograph, whereas the commercial competition for derivative reproductions of the Prince photo was key to the panel’s decision in this case.

This case is No. 19-2420-cv.

Attorneys: Luke W. Nikas (Quinn Emanuel Urquhart & Sullivan, LLP) for Andy Warhol Foundation for the Visual Arts, Inc. Thomas G. Hentoff (Williams & Connolly LLP) for Lynn Goldsmith and Lynn Goldsmith Ltd.

Companies: Andy Warhol Foundation for the Visual Arts, Inc.; Lynn Goldsmith Ltd.

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