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Intellectual Property

Fed Ct. Chooses Law Over Art: Warhol Piece Was Not Fair Use of a Prince Photograph

In a major loss for the Andy Warhol Foundation, the 2nd Circuit Court of Appeals ruled last week that the famed artist did not make “fair use” of celebrity photographer Lynn Goldsmith’s 1981 portrait of Prince for his own 1984 series of similar-looking images. The decision overturns one made in 2019 by the Southern District Court of New York, which ruled in favor of the Foundation, finding that Warhol had “transformed” the original work into something new. The case will now return to a lower court to consider damages.

The lawsuit concerned Warhol’s 1984 “Prince Series,” which features images based on the photographer’s portrait of Prince taken while on assignment for Newsweek. In 1984, Goldsmith licensed her Prince portrait to Vanity Fair, which then commissioned Warhol to make an artwork based on it. Warhol went on to create 15 more works as part of the series. Goldsmith claimed not to have been aware of the series until 2016, when Prince died and Condé Nast published a tribute magazine featuring Warhol’s image without any credit to Goldsmith. The photos are below with the original on the right and Warhol’s work to the left:

The issue is that making a work from another person’s work is called a “derivative” use and is considered copyright infringement. But the Copyright Act says that if a person so changes the original work that it becomes something entirely different, then that is “transformative” and is not infringement. The use of the prior work would then be considered a “fair use” which again is a defense to infringement.

The problem is that this then turns judges into art critics, without any training or experience in the field. Courts have set forth a four factor analysis to determine if the use is “fair” but applying those factors can be very subjective. Here, the Court tried to turn the test more into an objective analysis by “examining how [the work] may ‘reasonably be perceived.’”   The Court stated that rather than “assum[ing] the role of art critic and seek[ing] to ascertain the intent behind or meaning of the works at issue,” the court must examine how the works may “reasonably be perceived,” and must determine whether the secondary work’s use of its source material is in service of a “fundamentally different and new” artistic purpose.  For a purpose to be “fundamentally different and new,” the Court found that though the primary work need not be “barely recognizable” within the secondary work, the secondary work must “at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work.” 

The Second Circuit concluded the fair use factors weighed against the Warhol Foundation.    The Court noted Warhol’s work “retain[ed] the essential elements of the Goldsmith photograph” without adding to or modifying those elements.  Warhol’s only changes to the original photograph involved magnifying some elements of the source material (like contrast and lighting) and minimizing others. Goldsmith’s original photograph was both creative and unpublished, favoring Goldsmith in the “nature of the work” factor.  The “amount and substantiality” factor also favored Goldsmith; Warhol’s work borrowed so significantly from her photograph that the end product was not merely a screenprint based on a photograph of Prince.  Instead, it was a screenprint based on a specific photograph – Goldsmith’s photograph. And lastly, assessing the “harm in the marketplace” factor, despite finding the markets for the Goldsmith photograph and Warhol prints did not meaningfully overlap, the Court determined Warhol’s use harms Goldsmith’s potential market in a different way – by threatening Goldsmith’s actual or potential licensing revenue.  Because both images are depictions of the same person, both Goldsmith and the Warhol Foundation have sought to license (and have successfully licensed) their respective depictions of Prince to accompany articles about him.

Here, in the final analysis, the Court said a reasonable observer would say that Warhol did not transform the Goldsmith photo but rather derived his work work from her image of Prince. This seems to be the way courts are leaning and it could be a danger to artists.

Art has always been inspired by previous works and reining in creativity by saying that building an original piece off a previous idea is not enough to “transform” the work could hurt the growth of art. It is part of a general trend to make copyright a much more enforceable right whereas in the past courts generally recognized that art was dependent on inspiration and that copyright’s purpose was not to restrict creativity. Warhol was the king of this type of work and redefined what “art” is. He made works from Brillo boxes and Campbell Soup cans as statements about commercialism and finding beauty in common objects. He wasn’t merely copying those prior works, he was completely changing them not by changing the way they were painted because he in fact barely changed them at all but by changing the way we looked at them and challenging us to see them differently; they in fact became different things. In doing so, he launched the Pop Art movement and changed the art world and the way we look at the world. This decision basically says a major portion of his catalog is copyright infringement.

So sure, under the Second Circuit’s test of “reasonable perception” this was not transformative – Warhol just splashed some color and detail over the Goldsmith photograph. But her original portrait is of a sullen, insecure man on his way to stardom; Warhol’s piece is Prince in full out rock star icon mode. This new test for transformation does not take into account Warhol’s creativity and the significant change it had on the way others perceive the “art” quality of the photo.

Interestingly, my last post was about SCOTUS’ decision in Google v. Oracle, where the High Court decided that Google’s use of elements of Oracle’s Java code to build the Android system was “transformative” and a “fair use.” The Court held that, though Google used portions of Oracle’s code “for the same reason” the code was originally created, it was nonetheless transformative because Google sought to “create new products” with it.  The Court found that was “consistent with that creative ‘progress’ that is the basic constitutional objective of copyright itself.”

So maybe we haven’t heard the last of the Tale of Two Princes as this may go up to SCOTUS for a final determination of how we will define “transformative” use of prior works going forward.

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