Warhol Foundation Tells SCOTUS Second Circuit’s Fair Use Ruling ‘Threatens a Sea-Change’ in Copyright Law

The Andy Warhol Foundation has petitioned the U.S. Supreme Court, asking it to review a decision of the U.S. Court of Appeals for the Second Circuit holding  that Andy Warhol’s Prince Series did not constitute fair use of Lynn Goldsmith’s photograph. The Second Circuit held in March that “the district court erred in its assessment and application of the fair-use factors and the works in question do not qualify as fair use.” The Court of Appeals further concluded that the Prince Series works were substantially similar to the Goldsmith Photograph “as a matter of law.” The Supreme Court petition argues that “the Second Circuit’s decision…creates a circuit split and casts a cloud of legal uncertainty over an entire genre of visual art.”

In 1981, Lynn Goldsmith took several photographs of the then up-and-coming musical artist Prince Rogers Nelson (Prince). In 1984, Goldsmith’s agency, Lynn Goldsmith, Ltd. (LGL) licensed one of the photographs from the 1981 photoshoot to Vanity Fair magazine “for use as an artist reference.” Unbeknownst to Goldsmith and LGL, the artist who used her photo as inspiration was Andy Warhol, and not only did he use her photo for inspiration for the image Vanity Fair commissioned, but he continued to create an additional 15 works, which are known as the “Prince Series.”

When Goldsmith became aware of the Prince Series in 2016, she notified The Andy Warhol Foundation for the Visual Arts, Inc. (AWF), who is the copyright holder for the Prince Series, that she believed the Prince Series violated her copyrighted photo from the 1981 photoshoot. In 2017, upon receipt of this notification, AWF sued Goldsmith and LGL seeking a declaratory judgment that the Prince Series was non-infringing or, alternatively, that the works “made fair use of Goldsmith’s photograph.”

In response, Goldsmith and LGL countersued for infringement. The United States District Court for the Southern District of New York granted summary judgment to AWF on its assertion of fair use and dismissed Goldsmith and LGL’s counterclaim with prejudice. On appeal, Goldsmith and LGL argued that the district court “erred in its assessment and application of the four fair-use factors.” Specifically, they argued the district court’s conclusion that the Prince Series is transformative “was grounded in a subjective evaluation of the underlying artistic message of the works rather than an objective assessment of their purpose and character.” The Second Circuit agreed with Goldsmith and LGL, stating that “the district court’s error in analyzing the first factor was compounded by its analysis of the remaining three factors.” This finding prompted the appellate court to conduct their own four-factor fair use analysis.

The Second Circuit reasoned that the doctrine of fair use strikes a balance between an artist’s rights to the fruits of their own creative labor, and “the ability of [other] authors, artists, and the rest of us to express them- or ourselves by reference to the works of others.” Blanch v. Koons F.3d 244, 250 (2d Cir. 2006). The court of appeals decided that the district court improperly identified a bright-line rule when it reasoned 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.” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d at 325-26. While the court of appeals recognized that alterations to the original work is “the sine qua non of transformativeness,” it does not follow “that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative.”

The Warhol Foundation’s petition claims that this analysis “threatens a sea-change in the law of copyright” because it essentially holds that even when a new work undeniably has a distinct message, it is not necessarily transformative if it retains the essential elements of the source material. “That approach is unheard-of among the courts of appeal, and squarely contravenes this Court’s decisions in Google and Campbell,” says the petition. (Links added).

Additionally, says the petition, the Second Circuit’s ruling creates a conflict with the Ninth Circuit, which held in Seltzer v. Green Day, Inc. that “‘even where’ a new ‘work makes few physical changes to the original,’ it can be transformative if ‘new expressive content or [a new] message is apparent.’” Well over half the nation’s copyright cases arise in these two circuits, says the petition, and their two now “entirely different frameworks for assessing transformativeness is a recipe for inconsistent results and forum shopping.”

The petition points to other works by Warhol, such as his famous Campbell’s Soup Cans series and his portrayals of Marilyn Monroe and other artists, to demonstrate how the fair use doctrine has consistently operated to protect those pieces as commentary on consumerism and culture. In creating the Prince Series, Warhol used Goldsmith’s photo as source material, but cropped it to remove the torso, resized it, altered the angle of Prince’s face, and changed tones, lighting and detail, explains the petition. Warhol then added color and shading to exaggerate Prince’s features. The result, the petition argues, “is a flat, impersonal, disembodied, mask-like appearance” that “the district court aptly found, ‘transformed’ Goldsmith’s intimate depiction into ‘an iconic, larger-than-life figure,’ stripping Prince of the ‘humanity…embodie[d] in the photograph’ to comment on the manner in which society encounters and consumes celebrity.”

In addition to the reasons stated above, the petition argues that the Court should grant the writ because the Second Circuit’s holding will “inflict serious harm on artistic expression.” The Second Circuit’s test amounts to a “visual similarity” test that would require artists to alter new works in ways that would result in them actually failing the transformation test, says the petition. It continues: “By focusing on visual similarities between the new and protected work, the Second Circuit has collapsed the transformativeness inquiry into the antecedent substantial similarity analysis,” and would render a large number of works unlawful. The decision may also block museums and foundations from displaying works like the Prince Series and to err on the side of removing such works to avoid liability, in addition to a slew of other unintended consequences.



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One comment so far.

  • [Avatar for C. Whewell]
    C. Whewell
    December 19, 2021 10:56 am

    It seems to me that the original creator should be due some compensation, akin to a mechanical royalty when one artist copies another artist’s song, the original composer is compensated an industry-accepted amount. I think of weird Al Yankovic’s parodies, when he took a song and put goofy lyrics to it. Without the original song, or original photo, etc., the person coming later who changes it for commercial use, would have had absolutely NOTHING, without the original work, and the creator ought be appropriately compensated. Otherwise, the greatest minds will “go Gault.”