UPDATE: In March 2021, the Second Circuit reversed the lower court’s ruling on fair use. On March 28, 2022, the Supreme Court granted cert. and agreed to hear the case. On May 18, 2023, the Supreme Court handed down its much‑anticipated opinion in the case. For a writeup of the opinion, please see our firm’s Minding your Business blog.

Earlier this month, in The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 17-cv-2532 (S.D.N.Y. July 1, 2019), a New York district court granted the Andy Warhol Foundation for the Visual Arts’ (“AWF”) motion for summary judgment that Warhol’s series of screen prints and silkscreen paintings (the “Prince Series”) did not infringe Lynn Goldsmith’s (“Goldsmith”) original 1981 photograph of the musician Prince, ruling that the Warhol works were transformative and qualified as fair use.

The 1981 black and white photograph of Prince by Goldsmith that formed the basis of the Warhol work was captured during a photoshoot in her studio. Warhol was later commissioned by Vanity Fair to create an illustration of Prince for an article titled “Purple Fame” to be published in the November 1984 issue of its magazine. The magazine licensed one of Goldsmith’s black-and-white studio photos of Prince from Goldsmith’s photography agency for use as an artist’s reference in connection with the article. Warhol then created a full-color illustration based on that photograph that later appeared in the article. In his inimitable pop art style, Warhol created the “Prince Series,” which comprised of sixteen distinct works including the one used in Vanity Fair magazine. The works did not include Prince’s torso, bringing his face and a small part of his neckline to the forefront and many works in the Series contained loud colors (in contrast to the original realistic photo).

[A comparison of the works appears below.  Note: The image is from the complaint, using lines to compare features of each work.]

After Warhol died in 1987, AWF obtained ownership of the Prince Series from Warhol’s estate. Goldsmith’s claim pertains to further licensing of works from the Prince Series by AWF in 2016 that allegedly infringed her copyright.

AWF sought a declaratory judgment that the Prince Series was protected by fair use; Goldsmith countered that the Prince Series is substantially similar to her photograph and that AWF does not have a viable fair use defense.

“Fair use” is a statutory defense to a claim of copyright infringement. The Copyright Act sets out four non-exclusive factors for the court to consider in making the determination whether a specific use of a protected work is fair, namely (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. While a review of the court’s full treatment of all the factors would make this post too lengthy, some key points are worth focusing on.

As part of its analysis of the first fair use factor, the court focused on whether Warhol’s use of the photograph was transformative, analyzing whether the new work “merely supersede[s] the objects of the original creation or instead adds something new.” The court noted that Goldsmith stated that her work centers on helping others formulate their identities, and she aims to capture and reveal them through her photography. In comparing Goldsmith’s photo of Prince with Warhol’s work, the court stated that the “Prince Series works can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” The court found that Warhol’s work was indeed transformative, as these alterations resulted in “an aesthetic and character different from the original,” immediately recognizable as “Warhol’s,” akin to the same way that Warhol’s “famous representations of Marilyn Monroe and Mao are recognizable as “Warhol’s,” not as realistic photographs of those persons.

In the court’s discussion of the third fair use factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” 17 U.S.C. § 107(3), the court made some interesting observations.  Goldsmith argued that Warhol’s works had taken the essence of her entire photograph and that the photograph’s core protectable elements were contained in the Warhol works.  The court stated that “Warhol’s alterations wash away the vulnerability and humanity Prince expresses in Goldsmith’s photograph,” additionally comparing the “sharp contours of Prince’s face that Goldsmith emphasized in her photograph” with the “softened” features in some Prince Series works, along with various other differences.  In brief, the court held that although Warhol initially used Prince’s head and neckline as they appeared in the Goldsmith photograph, Warhol removed nearly all the photograph’s protectable elements in creating the Prince Series.

Courts in the Second Circuit have much experience in examining appropriation art under the fair use lens, having previously ruled favorably for visual artists who have based their works on the objects and images from popular media and the work of other artists. The fair use analysis must ultimately balance the IP rights of one creator with the ability of other artists or the public to create a new expression based on that creative work (up to a point).  As we’ve seen in disputes involving both offline and online uses, where that point lies is often a fact-intensive inquiry.  In ruling on fair use and the transformative nature of the work at issue, courts have analyzed factors such as the difference in composition, presentation, scale, color palette, expressive nature, and media, as well as the broader public interest in a new artistic contribution and whether the secondary use substitutes for the original in the licensing market.

While this dispute involved analog media, fair use issues continue to crop up in the digital world alongside changes in technology. Cases such as this one will be instructive in predicting whether a future court would find a secondary use to have infringed the original work or whether the fair use defense applies to the secondary use. The phenomenon of “memes,” driven by social media and pop culture, is an interesting area that might be greatly affected by judicial determinations such as this one, not unlike the issue of sampling and mashups in music that were first addressed in early digital music copyright disputes.