The Second Circuit Court of Appeals issued a ruling on Friday, March 26, 2021, holding that Andy Warhol’s series of prints depicting the musical artist Prince are not transformative fair use under copyright law. The three-judge panel further ruled that Warhol’s prints and Lynn Goldsmith’s photograph, the source material for Warhol’s prints, are substantially similar as a matter of law.
Lynn Goldsmith photographed Prince in her studio in 1981. Three years later, Goldsmith’s agency licensed the photo to Vanity Fair magazine for use as an artist reference. Unbeknownst to Goldsmith, Vanity Fair commissioned Andy Warhol to create artwork using Goldsmith’s photo for an article titled “Purple Fame.” Warhol continued on to create fifteen additional works consisting of silkscreen prints and pencil illustrations using Goldsmith’s photo as a reference, which became known as the Prince Series. Goldsmith became aware of the Prince Series after Prince’s death in 2016 and, thereafter, contacted The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) notifying AWF of the copyright violation. AWF sued Goldsmith in 2017 seeking a declaratory judgment that the Prince Series does not infringe on Goldsmith’s copyright or, alternatively, that the Prince Series is a fair use of Goldsmith’s photograph. The U.S. District Court for the Southern District of New York ruled that the Prince Series is a fair use of Goldsmith’s photograph.
The three-judge panel of the Second Circuit Court of Appeals overturned the district court’s ruling on the ground that the district court erred in analyzing the first factor of the fair use analysis. The first factor of a fair use analysis considers the purpose and character of the use; specifically, the first factor considers whether a secondary use is transformative and whether a secondary use is commercial. The appeals court in this case commented on the district court’s understanding of Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) to mean that “any secondary work is necessarily transformative as a matter of law ‘[i]f looking at the works side-by-side, the secondary work has a different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results.'”
The appeals court found this interpretation of Cariou as stretching the decision too far. Rather, after an analysis of past precedent, the appeals court stated that “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.” The appeals court further clarified that “the judge 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.” In light of this clarification of Cariou, the appeals court concluded that the Prince Series is not transformative.
As to the commercial use aspect of the first factor in a fair use analysis, the appeals court agreed with the district court “that the Prince Series works are commercial in nature, but that they produce an artistic value that serves the greater public interest.” The appeals court also agreed with the district court’s ruling “that AWF’s mission is to advance the visual arts. . . may militate against the simplistic assertion that AWF’s sale and licensing of the Prince Series works necessarily derogates from a finding of fair use.” However, the appeals court ruled that “the fact that a commercial non-transformative work may also serve the public interest or that the profits from its commercial use are turned to the promotion of non-commercial ends does not factor significantly in favor of finding fair use under the circumstances present here.” After a brief analysis of the other three fair use factors, the appeals court held that the district court erred in its assessment and application of the fair use factors such that the Prince Series is not a fair use of Goldsmith’s photograph as a matter of law.
The appeals court declined AWF’s request to “affirm the district court’s decision on the alternate grounds that the Prince Series works are not substantially similar to the Goldsmith Photograph.” Rather, the appeals court found that the Prince Series is substantially similar to Goldsmith’s photograph. Specifically, in coming to this conclusion, the appeals court relied on the fact that Warhol “produced the Prince Series works by copying the Goldsmith photograph itself – i.e., Goldsmith’s particular expression of that idea.” Thus, the appeals court concluded that “any reasonable viewer with access to a range of such photographs including the Goldsmith Photograph would have no difficulty identifying the latter as the source material for Warhol’s Prince Series.”
2nd Circuit Flays Fair-Use Defense to Warhol Prince Prints, Courthouse News Service (March 26, 2021)
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