Warhol prints of the artist Prince found not to be fair use as a matter of law. WARHOL v. GOLDSMITH

United States copyright law uses the phrase, original works of authorship, to describe what is protected by copyright law. This phrase is given an expansive meaning which covers creative works other than books. Music, movies, photographs and computer software are all considered works of authorship. When one of these works is created, the creator is granted a copyright to their work. A copyright is a set of exclusive rights granted to the creator of a new expressive work. A copyright gives its owner the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original. If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement. A copyright owner can combat copyright infringement by filing a lawsuit. In that lawsuit a plaintiff may request an injunction to prevent infringing activity from continuing and monetary damages for copyright infringement which has occurred.

Copyright law grants a copyright owner a significant amount of control over their work. However, there are some limits to the rights granted by copyright law. When a copyrighted work is copied for a limited and “transformative” purpose, such as to comment upon, criticize, or parody a copyrighted work, that copying is considered a fair use. Fair use is an affirmative defense to copyright infringement. Technically copyright infringement is committed, but that infringement is excused because a fair use promotes the greater purpose of advancing the arts and sciences. Fair use is codified in 17 U.S. Code § 107 of United States Copyright Law, but determining whether a use is a fair use is left to the court presented with the fair use defense. Because fair use is so fact specific it is helpful to study court cases to learn when a court will rule that fair use applies.

THE ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC., v. LYNN GOLDSMITH, 19-2420-cv (2nd Cir 2021) is an example of a case where the court found that fair use does not apply.

The controversy in this case revolves around a photograph the Defendant took in 1981, of the artist Prince. In 1984 Defendant licensed the photograph to Vanity Fair magazine for use as an artist reference. The artist Vanity Fair commissioned was Andy Warhol. After creating a painting for Vanity Fair, Warhol went onto create a serves of 15 paintings known at the Prince Series. Defendant first became aware of the Prince Series in 2015 and contacted Plaintiff who owns several different collections of Andy Warhol’s work.

In 2017, Plaintiff sued Defendant for a declaratory judgment that the Prince Series did not infringe on or, that they made fair use of Goldsmith’s photograph. Defendant countersued for infringement. The District Court granted summary judgment to Plaintiff on its assertion of fair use and dismissed Defendant’s counterclaim with prejudice. Defendant then appealed to the Court of Appeals for the Second Circuit.

The Second Circuit began its fair use analysis by noting that fair use is a context-sensitive inquiry that does not lend itself to simple bright-line rules. The court found that the Prince Series was not transformative because it presented the same work in a different form, retaining the essential elements of the original photo without significantly adding to or altering those elements. Because the use was non-transformative and Plaintiff was commercially exploiting the work the court found that the purpose and character of the use weighed against fair use.

The nature of the copyrighted work was found to weigh against fair use because Defendant’s photograph was both creative and unpublished. The amount and substantiality of Defendant’s photograph was deemed to strongly weigh against fair use because shading and light reflections, unnecessary to reproduce the subject of the photograph, were copied. The effect on the potential market for the copyrighted work was found to weigh against fair use because the Plaintiff’s work competed with the original photograph, and if this practice were to become widespread it would discourage the creation of new art.

The Second Circuit concluded that the district court erred in its assessment and application of the fair-use factors and that the Prince Series does not qualify as fair use as a matter of law. The Second Circuit also found that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law. Based on these conclusions the judgment of the district court reversed and remanded for further proceedings.

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