On September 15, 2020, the United States Court of Appeals for the Second Circuit heard oral arguments in The Andy Warhol Foundation v. Goldsmith, a case that could have powerful implications for photographers’ ability to enforce copyright protections and license their works. (For more on this case, see our previous post here).
What Are Oral Arguments Anyway?
In an appellate court, the parties to a lawsuit can ask the court to hear oral arguments. It is an option that allows the parties to clarify the major points in their submitted briefs, resolve any misconceptions or discrepancies, and answer questions the court may have. They typically take place before a panel of three judges, who have already reviewed the parties’ briefs, the facts of the case, and the applicable law. Each side argues their case for fifteen minutes, during which the judges can ask them questions. After oral arguments end, the judges discuss the case with each other to reach a decision.
Lynn Goldsmith, an iconic photographer and ASMP member, took photos of the late musician Prince in 1981 for Newsweek. In 1984, Vanity Fair licensed one of Goldsmith’s unpublished, black-and-white photographs and commissioned Andy Warhol to create a colorful version of it for an article titled “Purple Fame.” He created sixteen variations of the photo, using only Prince’s head and a small part of his neck, and later sold both originals and copies. The Vanity Fair article featured Prince in purple, set against an orange backdrop, and credited only Warhol. Goldsmith discovered Warhol’s illustrations when Vanity Fair published a commemorative tribute issue after Prince’s death in 2016. The Andy Warhol Foundation (AWF) sued Goldsmith in 2019, seeking a declaratory judgment of non-infringement. The district court found that fair use applied to Warhol’s use of the photo. Goldsmith appealed.
Fair use is a defense to copyright infringement. When determining if fair use applies, a court looks at four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect on the potential market for the copyrighted work. Here, the main question was whether the district court correctly considered the first factor – the purpose and character of the use. One aspect of that factor is “transformative use,” which means adding something new or altering the copyrighted work with new expression, meaning, or message. Traditionally, commentary, parody, or product transformation have qualified as transformative use.
The district court held that Warhol’s use of new expression, new aesthetics, and his distinctive style changed the character of Goldsmith’s Prince photo. It became instantly recognizable as a Warhol. Goldsmith argued that the court should have considered whether Warhol added those qualities as part of an effort to change the actual purpose or character of the photo itself. In other words, the court should have looked at why Warhol added the new qualities, but it based the decision on the presence of the qualities themselves. She also argued that the court should not have included Warhol’s distinctive style as an important part of the analysis. On the other hand, AWF argued that the district court correctly analyzed the purpose factor by comparing Warhol’s purpose in creating his artwork of Prince to Goldsmith’s purpose in creating the original image. Warhol commented on consumer culture, while Goldsmith illustrated her subjects’ personalities. Because Warhol’s purpose in creating the Prince photo was different from Goldsmith’s, AWF argued that he transformed the purpose of work.
Throughout AWF’s oral argument, the panel questioned Warhol’s purpose in creating the photo, suggesting that he simply created a portrait of Prince for use in a magazine, just as Goldsmith had. The panel also appeared to disagree with AWF’s interpretation of the purpose and character factor because requiring magazines to figure out artists’ intentions would destabilize the entire licensing system. One judge compared Warhol’s use of the Prince photo to a hypothetical filmmaker’s book-to-movie adaptation, where everything except the plot and characters was changed. The judge stated that Warhol’s portrait of Prince was closer to the original Goldsmith photo than any film adaption of a novel he had ever seen. He commented that this standard would “undermine every possible opportunity to retain copyright in a derivative work.”
What This Means
Based on its questioning of AWF, the court seemed reluctant to uphold the fair use defense. This may be good news for photographers who license their works to others because a ruling for Goldsmith prevents the possibility of secondary artists creating derivative works without asking permission or licensing the original work.
Copyright protection gives the owner the exclusive right to create, or authorize someone else to create, derivative works, which are based on an original but in a different form or otherwise altered. For example, a movie adaptation of a novel is a derivative work. The creator of the derivative work can then obtain copyright registration in any original material they contributed to the new work.
Many photographers, including Goldsmith, live off licensing their works. AWF’s interpretation creates a loophole that could cheat photographers out of their ability to enforce copyright protection. Upholding the fair use ruling lowers the bar for an alleged infringer to prove fair use. Without a mechanism to enforce their copyright protections, photographers face a loss in legal rights to their work. To make matters worse, AWF’s proposed standard could affect photographers’ ability to earn income from licensing: if a magazine has to figure out a photographer’s purpose in creating a photo to avoid a potential copyright infringement claim, the entire market for licensing could fall apart.
The district court’s analysis incentivizes secondary artists to find a way around the right to create derivative works: all it takes is a little creativity and justification for their aesthetic choices. If the Second Circuit holds that the fair use doctrine does not apply, photographers like Goldsmith can breathe easy. They will be protected from the possibility that a famous artist may one day decide to copy their copyrighted work, add his own distinctive flair, claim he had a different purpose in creating the new work, and successfully assert a fair use defense.
While the court’s decision remains to be seen, its demonstrated concern for the implications on photographers’ copyright protection and the licensing system is an encouraging sign.