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‘Nothing Compares 2’ a Warhol

Andy Warhol Foundation for the Visual Arts v. Goldsmith

By Wesley Lewis

This July, a federal district court in New York granted the Andy Warhol Foundation's motion for summary judgment in a copyright dispute between the non-profit foundation and music photographer Lynn Goldsmith. The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 17-cv-2532 (S.D.N.Y. July 1, 2019).

Background

At the center of the lawsuit was a series of sixteen distinct artistic works depicting the recording artist Prince, which Warhol based on one of Goldsmith's photographs of the enigmatic musician. In a 35-page Opinion and Order, United States District Judge John Koeltl conducted a thorough fair use analysis, ultimately holding that Warhol's "Prince Series" of works was subject to fair use protection. The decision relied heavily on the transformative nature of the allegedly infringing works, noting that Warhol transformed the reference photo "into something new and different" that was "immediately recognizable as a 'Warhol.'"

In 1981, Goldsmith photographed Prince in her New York City studio on assignment for Newsweek Magazine. According to the record on summary judgment, Goldsmith applied makeup and selected the photographic equipment, film, and background for the shoot. Goldsmith stated that her artistic choices resulted in photographs that portrayed Prince as a "vulnerable human being" and "not a comfortable person."

Approximately three years later, Condé Nast licensed one of Goldsmith's photographs from that 1981 session for use as an artist's reference for artwork for an upcoming issue. Warhol used that photograph to create a full-color illustration of Prince to accompany an article in a 1984 issue of Vanity Fair Magazine. Later that year, Warhol created the Prince Series of sixteen distinct works based on that same photograph.

After Warhol's death in 1987, AWF obtained ownership of the Prince Series, and the foundation has continued to license the works to third parties for use in books, magazines, and for other purposes. When Prince died in 2016, Condé Nast once again displayed one of Warhol's Prince Series works in the magazine—this time licensing the work through AWF. Upon learning of this, Goldsmith informed AWF that she believed the photograph infringed on her original work and obtained copyright registration of her original photograph—a prerequisite to bringing a copyright infringement claim. AWF brought an action seeking a declaratory judgment of non-infringement, and Goldsmith countersued for copyright infringement.

Both parties moved for summary judgment. AWF argued that the Prince Series works were not substantially similar under "ordinary observer" test employed in the Second Circuit and additionally, even if the two works were substantially similar, that the works were sufficiently transformative to constitute fair uses of the Photograph. Goldsmith argued that the Prince Series impermissibly appropriated protectible elements of her photograph and that the Warhol pieces were not fair uses of her work. (AWF also argued that the Copyright Act's three-year statute of limitations barred Goldsmith from asserting an infringement claim based on alleged acts that occurred more than three years prior to bringing her claim. Goldsmith responded by focusing on AWF's license of the work to Condé Nast in 2016, which fell within the relevant statute of limitations, as well as AWF's ongoing practice of licensing the Prince Series works. The Court determined that certain actions were time-barred but nevertheless treated Goldsmith's copyright infringement claims as timely to the extent that they involved AWF's actions within the limitations period, such as the 2016 license.)

Fair Use Analysis

Judge Koeltl began his analysis of the parties' motions for summary judgment by noting that photographs (like the allegedly infringed work) are typically subject to copyright protection. Although the Court determined that the two works had "probative similarity," the Court declined to determine whether "substantial similarity" existed, which is necessary to establish that an alleged infringer engaged in 'improper appropriation' of protectible elements of a copyrighted work. Instead, the Court determined that an assessment of substantial similarity was unnecessary because it was "plain" that fair use protected the Prince Series works.

Section 107 of the Copyright Act demands that Courts embark on an "open-ended and context-specific inquiry" of assessing "whether copyright law's goal of 'promot[ing] the Progress of Science and useful Arts would be better served by allowing the use than by preventing it." Upon consideration of the four statutory fair use factors, the Court concluded that it would.

The first factor, the purpose and character of the use, strongly favored AWF. Although the works were commercial in nature, the Court found Prince Series works were highly transformative, thereby "dilut[ing]" the "import of their (limited) commercial nature." Unlike Goldsmith's original work, which portrayed Prince as "vulnerable" and "not ... comfortable," the Court interpreted Warhol's works as having "an aesthetic and character different from the original," transforming the musician into "an iconic, larger-than-life figure." Furthermore, Judge Koeltl noted, each work in the Prince Series is "immediately recognizable as a 'Warhol,'" and the works "add something new to the world of art and the public would be deprived of this contribution if the works could not be distributed."

The second factor, the nature of the copyrighted work, favored neither party. Although the allegedly infringed work was a creative work subject to protection, the Court determined that the factor was "of limited importance" because of the highly transformative nature of the Prince Series works.

The third factor considers the amount and substantiality of the portion used in relation to the copyrighted work as a whole. 17 U.S.C. § 107(3). In addressing this factor, the Court looked to two recent photography fair use case, Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 757 (7th Cir. 2014) and Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013), for guidance. In Kienitz, the Court of Appeals held that the third factor favored the alleged infringer where the use "removed so much of the original that, as with the Cheshire Cat, only the smile remains." And, in Cariou, the court held that, although the allegedly infringing work took significant portions of the plaintiff's photographs, the transformative nature of the work nevertheless counseled in favor of fair use. Here, because Warhol's alterations "wash[ed] away the vulnerability and humanity Prince expresses in Goldsmith's photograph," the third fair use factor favored AWF.

Finally, the Court held that the fourth fair use factor also favored AWF. Here, the existence of the Prince Series did not usurp the market for direct sales of her Prince photograph or for any derivative markets. The Court reasoned that the licensing market for the Prince Series works was "distinct from the licensing market for photographs like Goldsmith's," because "the licensing market for Warhol prints is for 'Warhols.'" Thus, the fourth factor favored AWF.

Considering these four factors together, all but one decisively favored AWF. Based on a "holistic weighing" of the factors, the Court held that the Prince Series works were protected by fair use and granted summary judgment in favor of AWF.

Judge Koeltl's decision is a testament to the importance of the transformative nature of an allegedly infringing work in a fair use analysis. Indeed, the transformative nature of the Prince Series informed every step of the Court's fair use analysis to some extent. Certainly, it tilted the first factor strongly in AWF's favor, but the Court's analysis did not stop there. The Court found that the Warhol's transformation of the Goldsmith photograph rendered factor two neutral and tipped the balance of factor three in AWF's favor because it "washed away" the protectible elements of the original work. Additionally, because the works were so distinct, AWF was able to establish that it occupied a different licensing market from the original work. Thus, the transformative nature of Warhol's use of the original photograph pervaded every element of the analysis. Copyright attorneys litigating fair use should consider this decision when assessing potential liability for claims arising from works that substantially transform the originals.

Wesley Lewis is an associate at Haynes and Boone in Austin.

 
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