Warhol v Goldsmith: fairness of use by iconic artwork adjudicated in New York

Earlier this month, the Southern District Court of New York handed down a decision regarding whether Andy Warhol’s use of a photograph taken by a rock and roll celebrity photographer Lynn Goldsmith of the iconic singer Prince Rogers Nelson, best known as Prince, is  protected as fair use.

Background

In 1981, Lynn Goldsmith took approximately eleven studio photographs of Prince. Three years later, Goldsmith licensed one of her yet unpublished black and white portraits to Vanity Fair magazine. The magazine then commissioned Warhol to create an illustration of Prince for an article titled “Purple Fame”.

Goldsmith's photograph v Warhol's illustration

Based on Goldsmith’s photograph, Andy Warhol not only created the requested illustration, but also developed the entire Prince Series, comprised of sixteen distinct works: silkscreen paintings, screen prints and drawings.

After Warhol’s death in 1987, the Andy Warhol Foundation for the Visual Arts (AWF) obtained ownership of the Prince Series. Since then, it has auctioned, sold, donated and displayed this artwork in various museums, galleries, books, magazines, and promotional materials.

Prince died on 21 April 2016. The next day, Vanity Fair published an online copy of its 1984 article “Purple Fame” followed by a commemorative magazine issue entitled “The Genius of Prince”. It was then that Goldsmith first learned of the Prince Series and it did not go down well with her. After being contacted by the disgruntled photographer, AWF sought a declaratory judgement declaring that Warhol’s illustration did not constitute a violation of the US Copyright Act. In response, Goldsmith filed a counterclaim claiming that Warhol’s works constituted copyright infringement.

Court findings

Infringement analysis

The court started its discussion by reiterating the criteria for copyright protection of a photographic work: the protectible, original elements must necessarily stem from the photographer’s original expression, such as “posing the subjects, lighting, angle, selection of film and camera, [and] evoking the desired expression” (citing Rogers v Koons), rather than flow from the photograph’s idea, choice of a given subject or general features of that subject.

Goldsmith indisputably made creative choices when photographing Prince: she selected the photographic equipment, the plain white background and arranged the lighting for the shot in a way that emphasised Prince’s “chiselled bone structure”. She also applied make up to the musician “to connect with [him] physically and in recognition of her feeling [that] Prince was in touch with the female part of himself while also being very much male”. According to Goldsmith, her photographs portrays Prince as “not a comfortable person” and a “vulnerable human being”.

Next, the court considered whether Warhol’s use of Goldsmith’s photograph amounted to copying, by considering the two required elements: (1) actual copying and (2) substantial similarity between the allegedly infringing work and the protectible elements of the copyrighted work. AWF did not deny Warhol’s access to the copyrighted material and that there was sufficient probative similarity to establish that Warhol had copied Goldsmith’s photograph.

Once actual copying has been established, the copyright owner must then demonstrate that substantial similarities as to the protected elements of the work would cause an average observer to “recognize the alleged copy as having been appropriated from the copyrighted work” (citing Diodato v Kate Spade). The ordinary observer should not only evaluate the protectable elements in isolation, but also the aesthetic appeal and the total concept and feel of the two works.

The parties disagreed as to substantial similarity under the “ordinary observer test”. Goldsmith argued that her entire photograph had been reproduced, while AWF claimed that none of the Prince Series works is similar to Goldsmith’s photograph. The court decided not to address this argument because it considered it “plain that the Prince Series works [were] protected by fair use”.

Fair use

Fair use is a statutory exception to copyright infringement under 17 U.S.C. § 107. The courts apply a context-sensitive inquiry of both law and fact in determining fair use, but the most critical question is whether copyright’s constitutional goal of promoting the progress of science and useful arts is better served by allowing the use then by preventing it. The statute identifies four non-exhaustive  factors to be considered in a fair use inquiry: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the substantiality of the portion used; and (4) the effect on the potential market or value of the copyrighted work and its derivatives (citing Harper & Row v Nation Enterprises).

In line with the common judicial approach, the court placed most importance on the first factor. Even though Warhol’s series might have been considered commercial works that were available for licensing, sale and auction, they also added value to the broader public interest. Moreover, the court was satisfied that AWF was a not-for-profit entity created for a purpose of advancing visual arts.

Further, in order to address the transformative nature of the Prince Series works, the court examined how they may reasonably be perceived. Warhol’s interpretation of a Prince portrait could reasonably be viewed as having a completely different character, new expression and aesthetics from that of Goldsmith’s photograph. In nearly all his Prince series works, Warhol removed the performer’s torso and focused on his face by bringing it forward. He also softened Prince’s bone structure, using, in contrast to Goldsmith’s choice, a flat, two-dimensional technique, characterized by “loud, unnatural” colours.

“These alterations result in an aesthetic and character different from the original. 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 humanity Prince embodies in Goldsmith’s photograph is gone. Moreover, each Prince Series work is immediately recognizable as a “Warhol” rather than as a photograph of Prince[…].”

The court concluded that the new work did not merely supersede the original creation, but rather added something new to the world of art. And because Warhol’s creative choices had rendered the Prince Series transformative, the “import of their (limited) commercial nature [was] diluted”. (In fact, this point was also decisive on the analysis of the court regarding the other fair use factors.)

The second factor attracted scant attention from the court. Its significance is diminished when the secondary work used the copyrighted work for a transformative purpose.

In fairness, this Kat is Warhol star-struck

This Kat, however, finds it curious how the court interpreted the fact that Goldsmith’s photograph had not been published, which would usually weigh against fair use. The court considered Goldsmith’s licensing of her photograph to Vanity Fair in 1984 somewhat equal to the act of publication, whereby the author’s choices of when to make a work public and whether to withhold it “to shore up demand” were exhausted.

In its consideration of the third fair use factor, the court rejected Goldsmith’s argument that the Prince Series works “contain the essence of the entire” [photograph]; that the photograph’s core protectible elements remain in Warhol’s works”. The court emphasised that although the pose and the angle of Prince’s head were copied, these aspects did not attract copyright protection and the creative elements of the Goldsmith’s photograph were almost entirely absent from the Prince Series works.

Applying the fourth factor, the court considered whether Warhol’s work had usurped Goldsmith’s market for direct sales and licensing. It found no reason to conclude that potential licensees would view Warhol’s series “manifesting a uniquely Warhol aesthetic” as a substitute for Goldsmith’s photograph. “Put it simply, the licensing market for Warhol prints is for “Warhols”.

Kat’s corner

Although the court concluded that three of the four fair use factors favoured Warhol (second factor being neutral), it seems reasonable to conclude that the determination that the Prince Series was transformative in nature was decisive.

On another note, it may have proved helpful that a secondary work was created by a prominent and recognisable artist such as Andy Warhol and not by an ordinary Kat.

Image credits: Andy Warhol, Cats and Dogs (Broadway), Early 1976