Holding that “transformativeness” element of fair use analysis should not involve subjective evaluation of works’ underlying artistic message, Second Circuit reverses district court’s holding that Andy Warhol’s use of black-and-white photograph of pop icon Prince for silkscreen paintings and other works constituted fair use.
In December 1981, music photographer Lynn Goldsmith photographed music icon Prince at her studio following his performance at the Palladium in New York City. Nearly three years later, in October 1984, Goldsmith licensed one of her photographs to Conde Nast as an “artist reference” for an illustration in Vanity Fair. Conde Nast, in turn, commissioned famed pop artist Andy Warhol to create the illustration and published it alongside a Vanity Fair article about Prince, attributing the “special portrait” to Warhol and the “source photograph” to Goldsmith.
Warhol later used the same photograph from Goldsmith to create 16 silkscreen paintings, screen prints and drawings of Prince in a variety of color combinations typical of Warhol’s style at the time, which were collectively dubbed the “Prince Series.” Goldsmith never saw any works in the Prince Series and allegedly did not learn that Warhol had created them until after Prince’s death in April 2016. To pay tribute to Prince after his death, Conde Nast republished its 1984 Vanity Fair article online and released a commemorative magazine titled The Genius of Prince featuring one of Warhol’s Prince Series works on its cover. The publisher obtained a license for the Prince Series works from the Andy Warhol Foundation for the Visual Arts, which acquired ownership of the late artist’s works following his death in 1987. Goldsmith contacted the foundation, claiming that the work featured on the commemorative magazine cover infringed her black-and-white photograph of Prince, and she subsequently registered a copyright in her photograph as an unpublished work.
In 2017, the foundation filed suit against Goldsmith, seeking a declaration that Warhol’s use of the photograph to create his Prince Series did not constitute copyright infringement. Goldsmith filed a counterclaim alleging that Warhol’s creation of the series and the foundation’s subsequent licensing of one of the works to Conde Nast for publication in its commemorative magazine constituted infringement. The parties cross-moved for summary judgment and, in July 2019, the district court granted judgment in favor of the foundation. (Read our summary of the district court’s decision here.)
Upon evaluating the four statutory fair use factors, the district court concluded that (1) the Prince Series was “transformative” because, while Goldsmith’s photograph portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays Prince as an “iconic, larger-than-life figure”; (2) although Goldsmith’s photograph is both creative and unpublished, which would traditionally weigh in Goldsmith’s favor, this was “of limited importance because the Prince Series works are transformative works”; (3) in creating the Prince Series, Warhol “removed nearly all of the photograph’s protectible elements”; and (4) the Prince Series works “are not market substitutes that have harmed—or have the potential to harm—Goldsmith.” On appeal, the Second Circuit reversed and found that all four factors favor Goldsmith.
As to the first fair use factor, i.e., the purpose and character of the secondary use, the court held that Warhol’s use was not “transformative” as a matter of law. The court clarified its 2013 opinion in Cariou v. Prince—an opinion that it acknowledged has frequently been criticized and which the district court principally relied on in determining that Warhol’s use was fair. In Cariou, the court had considered works of appropriation artist Richard Prince that incorporated, among other materials, various black-and-white photographs of Rastafarians taken by Patrick Cariou. There, the court held that most of the artist’s works were transformative because, among other reasons, they “used [Cariou’s photographs] as raw material, transformed in the creation of new information, new aesthetics, new insights and understanding.” Here, the court took occasion to clarify that Cariou did not announce a bright-line rule that any secondary work which adds a new aesthetic or new expression to its source material is necessarily transformative. Such an expansive definition of transformativeness, the court observed, risks crowding out statutory protections for derivative works—such as film adaptations, which often do add new expressions to their source material, such as cinematographic contributions and changes to characters or plot elements.
Against this backdrop, the Second Circuit held it was error for the district court to conclude that the Prince Series was transformative simply because it “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” According to the Second Circuit, whether a work is transformative cannot “turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic—or for that matter, a judge—draws from the work.” It also criticized the district court for focusing on the stylistic changes that Warhol applied to the photograph and for reasoning that “each Prince Series work is immediately recognizable as a ‘Warhol.’” Entertaining that logic, the court held, would create a “celebrity-plagiarist privilege,” inappropriately benefiting more established artists whose styles are more universally recognizable.
Ultimately, to determine whether a secondary work is transformative, courts must examine whether its use of the source material “is in service of a ‘fundamentally different and new’ artistic purpose and character, such that the secondary work stands apart from the ‘raw material’ used to create it.” The work’s “transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material,” the court said. The Prince Series, it held, does not clear that hurdle.
As to the second factor, i.e., the nature of the copyrighted work, the court held that the district court correctly found that Goldsmith’s photograph was both unpublished and creative. It was error, however, for the district court to hold that because the Prince Series was transformative, the second factor should favor neither party. Although the Second Circuit has previously held that this second factor may be of limited utility where the creative work is being used for a transformative purpose, it noted here that this effect related only to the weight assigned to the second factor, not whom it favors.
As to the third factor, i.e., the amount and substantiality of the portion of the original work used, the court held that it was error for the district court to conclude that Warhol removed nearly all of the photograph’s copyrightable elements. Rather, it held, the Prince Series borrows significantly from Goldsmith’s photograph, both quantitatively and qualitatively. Although Warhol cropped and flattened the photograph, Warhol’s screen print is still readily identifiable as deriving from the photograph, the court observed. Warhol did not simply use the photograph as a reference; the Prince Series works are depictions of the photograph itself. The court found it notable that several aspects of Prince’s appearance in the Prince Series are present in the source photograph yet absent even from other photographs that Goldsmith took of Prince during the same session.
As to the fourth factor, i.e., the effect of the use on the potential market for or value of the copyrighted work, the court held that although the primary markets for the Prince Series and Goldsmith’s photograph may differ, the Prince Series nonetheless poses cognizable harm to Goldsmith’s market to license the photograph to publications for editorial purposes and to other artists to create derivative works based on the photograph and similar works.
In a concurring opinion, Judge Richard Sullivan, joined by Judge Dennis Jacobs, cautioned against courts’ “overreliance” on the concept of transformative use in fair use jurisprudence and called for “renewed attention” to the fourth fair use factor. Judge Sullivan noted that “the ‘transformative’ nature of a secondary work has become the dominant focus in determining whether that work is protected by fair use,” which “threatens to collapse the four statutory fair use factors into a single dispositive factor.” Placing greater emphasis on the fourth factor, he opined, “will ultimately better serve the purposes of copyright, which remains at its core ‘a commercial doctrine whose objective is to stimulate creativity among potential authors by enabling them to earn money from their creations.’”
In a separate concurring opinion, Judge Jacobs clarified that the court’s holding does not decide whether the infringement of Goldsmith’s photograph encumbers the original Prince Series works in the hands of collectors or museums, since Goldsmith did not seek relief as to them but rather only as to licensed reproductions of the Prince Series.