Article by Clyde Shuman
In a 56-page opinion that could substantially affect for the concept “fair use” in U.S. copyright law, the U.S. Court of Appeals for the Second Circuit overturned a district court ruling that a series of Andy Warhol prints of the musical artist Prince were not fair use but infringed the copyrighted photograph on which they were based. The Andy Warhol Foundation v. Goldsmith, case number 19-2420.
The case concerned a series of silkscreen prints and pencil illustrations created by Andy Warhol based on a 1981 photograph of Prince that was taken by the photographer Lynn Goldsmith in her studio. By way of brief background, in 1981, Goldsmith, a professional photographer primarily focusing on celebrity photography, including musicians, took a series of 23 portrait photographs of Prince, then an up-and-coming musician. Goldsmith retained copyright in each of the photographs.
In 1984, Goldsmith, through her agency, licensed the photograph at issue to Vanity Fair magazine for use as an artist reference, meaning that an artist “would create a work of art based on [the] image reference.” The license permitted Vanity Fair to publish an illustration based on the photograph in its November 1984 issue. The license further required that the illustration be accompanied by an attribution to Goldsmith. Vanity Fair, in turn, commissioned Warhol to create an image of Prince for the issue. Warhol’s illustration, together with an attribution to Goldsmith, was published accompanying an article about Prince. A separate attribution to Goldsmith was included elsewhere in the issue, crediting her with the “source photograph” for the Warhol illustration. Vanity Fair did not advise Goldsmith that Warhol was the artist in question, and she did not see the article when it was initially published.
Warhol subsequently created 15 additional works based on the Prince photograph, known collectively, and together with the Vanity Fair image, as the “Prince Series.” Between 1993 and 2004, the Warhol Foundation sold or otherwise transferred custody of 12 of the original Prince Series works to third parties. On April 22, 2016, the day after Prince died, Condé Nast, Vanity Fair’s parent company, contacted the Foundation to determine whether it still had the 1984 image, which Condé Nast hoped to use in connection with a planned magazine commemorating Prince’s life. After learning about additional images from the Prince Series, Condé Nast obtained a commercial license for a different Prince Series image for the cover of the planned tribute magazine. Condé Nast published the tribute magazine in May 2016 with a Prince Series image on the cover. Goldsmith was credited for the image, which was attributed solely to the Foundation.
It was at this point that Goldsmith first became aware of the Prince Series. Goldsmith contacted the Foundation in July 2016 to advise it of the perceived infringement of her copyright and subsequently registered the photograph at issue with the Copyright Office as an unpublished work. The following April, the Foundation sued Goldsmith and her agency for a declaratory judgment of non-infringement or, in the alternative, fair use. Goldsmith countersued for copyright infringement. The district court granted summary judgment for the Foundation on its fair use claim, finding in particular that the Prince Series was “transformative” because, while Goldsmith’s photograph portrayed Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrayed him as an “iconic, larger-than-life figure.”
On appeal, the Court focused primarily on the first fair use factor (the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes), including especially, “the extent to which the secondary work is ‘transformative,’ as well as whether it is commercial.”
The Court began by clarifying its 2013 decision in Cariou v. Prince, which rejected the proposition that a secondary work must comment on the original in order to qualify as fair use. There, the Court had observed that the appropriation artist Richard Prince had incorporated Cariou’s “serene and deliberately composed portraits and landscape photographs” into his own “crude and jarring works . . . [that] incorporate[d] color, feature[d] distorted human and other forms and settings, and measure[d] between ten and nearly a hundred times the size of the photographs.” The Court concluded that these works “used [Cariou’s photographs] as raw material, transformed in the creation of new information, new aesthetics, new insights and understanding,” and were transformative.
Here, the district court relied on Cariou to find the Prince Series transformative. Noting this, and noting that the decision had been criticized, the Court decided to clarify its holding in Cariou, saying, contrary to the district court’s view, Cariou did not create a rule that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative. The Court referred to the “entire class of secondary works that add ‘new expression, meaning, or message’ to their source material but are nonetheless specifically excluded from the scope of fair use: derivative works,” saying that, as one court observed, 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 Court identified “[a] common thread running through” its relevant decisions finding fair use:
[W]here 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. [T]he 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. [W]orks that have done so thus far have themselves been distinct works of art that draw from numerous sources, rather than [ ] simply alter or recast a single work with a new aesthetic.
Returning to the Prince Series, the Second Circuit held that the district court erred in finding that the Prince Series works are transformative because they “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” Rather, per the Court, “whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic – or for that matter, a judge – draws from the work. Were it otherwise, the law may well ‘recogniz[e] any alteration as transformative.’” Instead, the court must examine how the works may reasonably be perceived.
The Court cautioned that a district judge, conducting this inquiry, “should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue. That is so both because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective.” Rather, judges “must examine whether the secondary work’s use of its source material is in service of a ‘fundamentally different and new’ artistic purpose and character, such that the secondary work stands apart from the ‘raw material’ used to create it.” Per the Court, “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.”
Based on this clarification of its holding in Cariou, and viewing the works side-by-side, the Court concluded that the Prince Series was not “transformative” within the meaning of the first factor. Instead, the Court found that the Prince Series works were “much closer to presenting the same work in a different form, that form being a high-contrast screenprint, than they are to being works that make a transformative use of the original.” The Court found it “[c]rucial[ ]” that the Prince Series retained the essential elements of Goldsmith’s photograph “without significantly adding to or altering those elements.”
The Court also “clarif[ied]” “that it is entirely irrelevant to this analysis that ‘each Prince Series work is immediately recognizable as a “Warhol,”’” saying that “[e]ntertaining that logic would inevitably create a celebrity-plagiarist privilege; the more established the artist and the more distinct that artist’s style, the greater leeway that artist would have to pilfer the creative labors of others.”
Concluding its discussion of the first fair use factor, the Court said,
We do not disagree with [the[ contention that the cumulative effect of Warhol’s changes to [Goldsmith’s photograph] is to produce a number of striking and memorable images… But the task before us is not to assess the artistic worth of the Prince Series nor its place within Warhol’s oeuvre…Rather, the question [ ] is [ ] whether the law permits Warhol to claim it as his own, and [the Foundation] to exploit it, without Goldsmith’s permission… [W]e conclude that the answer to that question is “no.”
Turning to the other fair use factors, the Court held that, because Goldsmith’s photograph was both creative and unpublished, the district court should have found the “nature of the copyrighted work” favored Goldsmith irrespective of whether it adjudged the Prince Series works transformative (which they are not). The Court held that the remaining fair use factors also favored Goldsmith, finding that “Warhol[‘s] images are instantly recognizable as depictions or images of [Goldsmith’s photograph]” and “the Prince Series works pose cognizable harm to Goldsmith’s market to license the [photograph] to publications for editorial purposes and to other artists to create derivative works.”
Having concluded that Warhol’s use of Goldsmith’s photograph was not fair use, the Court then held that, as a matter of law, the Prince Series was substantially similar to Goldsmith’s photograph and therefore infringed her copyright in it. Per the Court, “[G]iven the degree to which Goldsmith’s work remains recognizable within Warhol’s, there can be no reasonable debate that the works are substantially similar.”
Judge Sullivan concurred separately, joined by Judge Jacobs, arguing that there was “an overreliance on ‘transformative use’ in our fair use jurisprudence, generally,” and that focus on the fourth fair use factor (effect of use upon potential market for/value of copyrighted work) “would bring greater coherence and predictability to this area of the law.” He noted an empirical study of 238 district and circuit court decisions, finding that whether a secondary work was transformative correlated with the ultimate fair use outcome 94% of the time.
