Analysis of Warhol Art Fair Use Ruling

AWF then brought a declaratory judgment action seeking declarations that the Warhol Prince Series works did not infringe the Goldsmith photograph, that use of the Goldsmith Prince photograph in the Warhol Prince Series works constituted fair use. Goldsmith counterclaimed asserting copyright infringement.

Although in his fair use analysis District Judge Koetl primarily referenced these two works, he considered that analysis to apply as well to the entire series of 16 works in Warhol's Prince Series.

Before considering fair use, Judge Koetl addressed AWF's arguments that Goldsmith's claim was barred by the three-year statute of limitations set forth in §507(b) of the Copyright Act, and that the Warhol Prince illustration did not infringe the Goldsmith Prince photograph because the two works were not "substantially similar." On the statute of limitations, the district court found that Condé Nast's 2016 publication of the Prince commemorative magazine was a new infringement within the three-year period. Moreover, the statute of limitations would not bar infringement claims as to ongoing and future licensing of the Warhol Prince Series works by AWF. Because Goldsmith sought no relief as to the 1984 Vanity Fair publication, Judge Koetl did not address whether her claimed discovery of that publication within three years preceding her counterclaim for infringement avoided the limitations bar as to that use.

With respect to infringement, the district court first noted that AWF did not deny, for the purpose of the summary judgment motions only, "that there was access and sufficient probative similarity to establish that Warhol 'copied' the Goldsmith Prince photograph — at least to some extent." However, the court explained to establish infringement it is also necessary to establish "unlawful appropriation," i.e., "substantial similarities as to the protected elements of the work would cause an average lay observer to recognize the alleged copy as having been appropriated from the copyrighted work."  AWF denied that any similarities were sufficient to constitute infringement. Judge Koetl declined to opine on that issue because he considered it to be "plain that the Prince Series works are protected by fair use."

At the outset of his fair use analysis, Judge Koetl observed that the "critical question in determining fair use is 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,'" citing Castle Rock Entertainment v. Carol Publishing Group, 150 F.3d 132 (2d Cir. 1998). We note, however, that this overarching inquiry, which apparently guided the court's consideration of each of the fair use factors and their overall balance, is inherently subjective, and may not be so "plain" to the appellate panel.

In considering the fair use factors of §107 of the Copyright Act, on purpose and character of use, the Warhol court noted the most important inquiry is whether the use is "transformative," that is "whether the new work merely supersede[s] the objects of the original creation or instead adds something new, with a further purpose of different character, altering the first with new expression, meaning, or message," quoting Campbell v. Acuff-Rose, 510 U.S. 569 (1994).

District Judge Koetl found that Warhol's Prince Series works were transformative because they alter the Goldsmith Prince photograph in a manner resulting in "an aesthetic and character different from the original" and "something new to the world of art," and that "the public would be deprived of this contribution if the works could not be distributed."

The court did not consider the possibility that injunctive relief might not necessarily follow from a holding of infringement.

Judge Koetl described Warhol's "transformation" of the Goldsmith photograph as follows: "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 district judge therefore weighed the first factor strongly in favor of AWF.

The court found that the second fair use factor (the nature of the copyrighted work) favored neither party because, although the creative nature of photographs generally balances this factor in favor of the photographer, the transformative nature of the Prince Series works rendered this factor "of limited importance."

On the third factor — the amount and substantiality of the portion used — the court observed that "the extent of permissible copying varies with the purpose and character of the use." Relying on Cariou, the court found this factor weighed heavily in AWF's favor because although key portions (Prince's head and neckline) of the Goldsmith photograph were used, "Warhol removed nearly all the photograph's protectable elements" and "transformed Goldsmith's work into something new and different." The court identified Prince's facial features and his pose as non-protectable elements in the Goldsmith photograph.

On the fourth factor of fair use analysis, the district court observed that the inquiry into the effect of the use on the potential market (including the market for derivative works) focuses on whether the secondary use usurps the market for the original work by providing a substitute for the original, and that "[t]he more transformative the secondary use, the less likelihood that the secondary use substitutes for the original."

Goldsmith contended that her licensing markets were adversely affected by the use. However, the court found that Goldsmith provided "no reason to conclude that potential licensees will view Warhol's Prince Series, consisting of stylized works manifesting a uniquely Warhol aesthetic, as a substitute for her intimate and realistic photograph of Prince." The court therefore weighed the fourth factor in AWF's favor.

Having found the first factor weighing strongly in AWF's favor, the second factor neutral, the third factor weighing heavily in AWF's favor and the fourth factor favoring AWF, the Southern District concluded that the overall balancing of the fair use factors "points decidedly in favor of AWF." The court therefore held that the Prince Series works are protected by fair use and dismissed Goldsmith's copyright infringement claim.

Conclusion

Whether this resolution better serves "copyright law's goal of 'promot[ing] the Progress of Science and useful Arts'" — the critical fair use inquiry identified by Judge Koetl at the outset of his analysis — will next be addressed by the Second Circuit via Goldsmith's notice of appeal. The scope of protection afforded to the art of photography, and the leeway given to an artist making use of a photograph in creating a painting or illustration, impact the progress of both forms of creative expression. Moreover, a determination of infringement does not necessarily result in injunctive relief, which is discretionary and itself subject to multi-factor analysis, whereas a holding of fair use deprives the photographer of any compensation for the use.

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Robert W. Clarida is a partner at Reitler, Kailas & Rosenblatt and the author of the treatise Copyright Law Deskbook (BNA). Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein.