United States Court of Appeals (2nd Circuit): While deciding the instant dispute between renowned celebrity photographer Lynn Goldsmith and Andy Warhol Foundation for Visual Arts, involving the Prince Series of photographs, the Circuit Court ruled in favour of Goldsmith and held that 1980s portrait series by Andy Warhol depicting the singer Prince did not constitute “fair use” of the photograph by Lynn Goldsmith that it was based on. Thus Warhol’s Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law. After a detailed discussion, the decision of the Dist. Court was reversed and the matter was remanded for further proceeding consistent with 2nd Circuit Court’s opinion.
Background
The dispute is centers around a series of silkscreen prints and pencil illustrations created by visual artist Andy Warhol based on a 1981 photograph of Prince that was taken Lynn Goldsmith in her studio, and in which she holds copyright. A professional photographer focusing mainly on celebrity photography, Lynn Goldsmith (also the founder of Lynn Goldsmith Ltd. [LGL]), in December 1981 took a series of portrait photographs of musician Prince Rogers Nelson (popularly known as Prince) for the Newsweek Magazine. The lighting and the makeup was arranged in a way so as to highlight and accentuate Prince’s “chiseled bone structure and his sensuality”- “Goldsmith was trying to capture his willingness to bust through what must be his immense fears to make the work that he wanted to make.” Goldsmith took a total number of 23 photographs- 12 black and white and 11 colour photographs and retained copyright in each of the photographs that she took.
In 1984, Goldsmith though her firm LGL, licensed the Goldsmith Photograph to Vanity Fair magazine for use as an “artist reference”, which meant that an artist would create a work of art based on the image reference. The license allowed Vanity Fair to publish an illustration based on the Goldsmith Photograph in its November 1984 issue; it further required that the illustration be accompanied by an attribution to Goldsmith. Goldsmith however was unaware of the license at the time and played no role in selecting the Goldsmith Photograph for submission to Vanity Fair. The magazine then commissioned Andy Warhol to create an image of Prince for its November 1984 issue. Warhol’s illustration, together with an attribution to Goldsmith, was published accompanying an article about Prince by Tristan Vox. Additionally, 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 counsel Goldsmith that Warhol was the artist for whom her work would serve as a reference, and she did not see the article when it was initially published. Unbeknownst to Lynn Goldmsith, Andy Warhol created 15 additional works based on the Goldsmith Photograph, known collectively (including the Vanity Fair image) as the “Prince Series”. The Prince Series consisted of fourteen silkscreen prints (twelve on canvas, two on paper) and two pencil illustrations.
After Warhol’s demise, the Andy Warhol Foundation for Visual Arts (AWF) acquired title to and copyright in the Prince Series. Between 1993 and 2004, AWF sold or otherwise transferred custody of 12 of the original Prince Series works to third parties, and, in 1998, transferred custody of the other four works to The Andy Warhol Museum. AWF also retains copyright in the Prince Series images and through The Artist Rights Society (a third-party organization that serves as AWF’s agent), continues to license the images for editorial, commercial, and museum usage.
All the aforementioned developments took place with Lynn Goldsmith being unaware of it. However that changed in 2016 post Prince’s demise. Condé Nast, Vanity Fair’s parent company, contacted AWF with the intent to determine whether AWF still had the 1984 image, which they had hoped to use in connection with a planned magazine commemorating Prince’s life. Condé Nast obtained a commercial license, to be exclusive for three months, 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 not given any credit or attribution for the image, which was instead attributed solely to AWF.
Legal Trajectory
Goldsmith for the first time became aware of the ‘Prince Series’ and she contacted the AWF to advise it of the perceived infringement of her copyright. In November 2016, Goldsmith registered the Goldsmith Photograph with the U.S. Copyright Office as an unpublished work. In April, 2017, AWF sued Goldsmith and LGL for a declaratory judgment of non-infringement or, in the alternative, fair use. Goldsmith countersued for copyright infringement.
The District Court however granted summary judgment in favour of AWF. The Dist. Court decided that the Prince Series was “transformative” because, while the Goldsmith Photograph portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays Prince as an “iconic, larger-than-life figure”. It was also held that the Goldsmith’s photograph being creative and unpublished work holds little import in the dispute because the Prince Series works are “transformative works,” and in creating the Prince Series, Warhol “removed nearly all of the Goldsmith Photograph’s protectible elements”. Aggrieved by this decision, Goldsmith filed the instant appeal.
Observations and Conclusions
In order to decide the matter, the Court delved into the core concepts of copyright. The Court reviewed the case under the following important heads-
Copyright, Fair Use and Derivative Works
Transformative Works: The Court observed that the Dist. Court’s decision that the Prince Series is transformative work as they can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure was erroneous. It was observed that it may well have been Goldsmith’s subjective intent to portray Prince as a “vulnerable human being” and Warhol’s to strip Prince of that humanity and instead display him as a popular icon, “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”. The word ‘transformative’ if given too broad an interpretation can also seem to authorize copying that should fall within the scope of an author’s derivative rights, therefore the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue. That is because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective. Instead, 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. 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 recognizably deriving from, and retaining the essential elements of, its source material.
The Court thus concluded that the Prince Series is not “transformative”- “That is not to deny that the Warhol works display the distinct aesthetic sensibility that many would immediately associate with Warhol’s signature style – the elements of which are absent from the Goldsmith photo. But the same can be said, for example, of the Ken Russell film, from a screenplay by Larry Kramer, derived from D.H. Lawrence’s novel, Women in Love: the film is as recognizable a “Ken Russell” as the Prince Series are recognizably “Warhols.” but the film, for all the ways in which it transforms (that is, in the ordinary meaning of the word, which indeed is used in the very definition of derivative works, its source material, is also plainly an adaptation of the Lawrence novel”. The Prince Series retains the essential elements of its source material, and Warhol’s modifications serve primarily to magnify some elements of that material and minimize others. While the collective effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.
The Court also highlighted that “each Prince Series work is immediately recognizable as a ‘Warhol’” is an irrelevant logic to this Court’s analysis- “Entertaining 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. But the law draws no such distinctions”, thus agreeing with the argument presented by Goldsmith that “Martin Scorsese’s film The Irishman is recognizably “a Scorsese” but “does not absolve him of the obligation to license the original book” on which it is based”.
Commercial Use: Even though the 2nd Circuit Court agreed with the Dist. Court’s observations regarding Prince Series being commercial in nature, and that they produce an artistic value that serves the greater public interest; however, the Court refused to 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. “Just as the commercial nature of a transformative secondary use does not itself preclude a finding that the use is fair, 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”.
Nature of Copyrighted Work: The Court again pointed out that Dist. Court correctly held that the Goldsmith Photograph is both unpublished and creative, but in concluding that these factors should favor neither party as LGL had licensed the Goldsmith Photograph to Vanity Fair and the Prince Series was highly transformative, the Dist. Court committed an error. “Having recognized the Goldsmith Photograph as both creative and unpublished, the Dist. 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. And, because we disagree that the Prince Series works are transformative, we would accord this factor correspondingly greater weight”.
Amount and Sustainability of Use: The Court observed that two considerations are necessary in order to judge this factor in relation to the original work- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and, the quantity of the materials used’ but also their quality and importance. The Court noted that copyright does not protect ideas, but only “the original or unique way that an author expresses those ideas, concepts, principles, or processes”. The Court observed that it is true that Goldsmith cannot copyright Prince’s face, but the law grants her a broad monopoly on its image as it appears in her photographs of him, including the Goldsmith Photograph. It was concluded that, “the Prince Series borrows significantly from the Goldsmith Photograph, both quantitatively and qualitatively. While Warhol did indeed crop and flatten the Goldsmith Photograph, the end product is not merely a screen print identifiably based on a photograph of Prince. Rather it is a screen print readily identifiable as deriving from a specific photograph of Prince, the Goldsmith Photograph”.
The Effect of the Use on the Market for the Original: The Court stated that it was not persuaded by the Dist. Court’s rationale that the Prince Series poses no threat to Goldsmith’s licensing markets. Fair use is an affirmative defense; as such, the ultimate burden of proving that the secondary use does not compete in the relevant market is appropriately borne by the party asserting the defense: the secondary user. Since Goldsmith has identified a relevant 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 Dist. Court entirely overlooked the potential harm to Goldsmith’s derivative market, which is likewise substantial. Most directly, AWF’s licensing of the Prince Series works to Condé Nast without crediting or paying Goldsmith deprived her of royalty payments to which she would have otherwise been entitled”.
Substantial Similarity
The Court observed that the Dist. Court did not analyze the issue of substantial similarity when the issue is logically a precursor to that of fair use. In general, two works are substantially similar when “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. The Court concluded that, “This is not to say that every use of an exact reproduction constitutes a work that is substantially similar to the original. But here, given the degree to which Goldsmith’s work remains recognizable within Warhol’s, there can be no reasonable debate that the works are substantially similar. Prince was much photographed. But 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”. [The Andy Warhol Foundation for the Visual Arts v. Lynn Goldsmith, 2021 SCC OnLine US CA 2C 1, decided on 26-03-2021]
Sucheta Sarkar, Editorial Assistant has reported this brief.
Image credits: The Wall Street Journal
