Lynn Goldsmith has prevailed in her attempt to reverse the decision of a federal court which held that Andy Warhol’s works created using her photograph was a “fair use”. The ruling is from the influential 2nd Circuit Court of Appeals which includes New York and is an excellent analysis of fair use as relates to photography. This opinion is a victory for photographers, and while this case is far from done, the appeals court has set the record straight on a number of critical matters. Let’s dive in.
Authors Note: Since the inception of this case in 2017, ASMP has been at the forefront of the efforts to support celebrated photographer and ASMP member Lynn Goldsmith in her copyright infringement case against the Andy Warhol Foundation. I authored an amicus brief in this matter which you can read below, and you can see the past articles written about this case as well in the previous articles section immediately below.
To support Lynn Goldsmith in what is sure to be a continued fight with the Andy Warhol Foundation, please visit her GoFundMe page about this case.
To support ASMP in its judicial and advocacy efforts on behalf of all photographers, please visit the Legal / Advocacy Fund donation page here.
A Brief Background
In 1984, Lynn Goldsmith’s agency licensed an image taken by Goldsmith of the musician Prince to serve as an “artist’s reference” for an upcoming illustration in Vanity Fair magazine. Importantly, this license was for one-time use in one issue only. Unbeknownst to Goldsmith, that artist was Andy Warhol.
Warhol created the illustration, and it was featured in Vanity Fair magazine, with attribution to Goldsmith as the creator of the “source photograph”. Warhol created in total works which incorporated the picture by Goldsmith as its fundmental layer, and these works were dubbed the “Prince Paintings.” (The court terms this the “Prince Series”.) The artworks were sold and licensed by Warhol and, after his death, the Andy Warhol Foundation (“AWF”).
When Prince died in 2016, Conde Nast (who owns Vanity Fair) reached out to AWF to license and feature one of the Prince Series in an issue commemorating Prince’s passing. This time, however, no one asked Goldsmith before publishing the work. The image chosen was not the original used in 1984, but rather a different image from the series.
When Goldsmith became aware of this use, she contacted AWF, and in response, Goldsmith herself was sued by AWF to have a court definitively decide that the works were not owned by Goldsmith, and she had no copyright interest or, in the alternative, the use by Andy Warhol and AWF was “fair use”. This is called a declaratory action. Goldsmith then countersued for infringement.
Upon review, the District Court held that the works created by Warhol were “fair use” and dismissed the case. Goldsmith then appealed that ruling to the 2nd Circuit Court of Appeals, and that court heard arguments in the Fall of 2020. Now, the 2nd Circuit has issued their ruling, and it reverses the District Court’s fair use finding, and makes it very clear that this is an infringement by AWF of Goldsmith’s work.
Fair Use: What Is It?
Fair use is an affirmative 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.
These factors are not “dispositive”; that is, no one factor can determine the entire decision. The court is asked to balance and weigh each factor and make a determination based on that analysis.
The Fourth Factor
This case is notable for a number of reasons, but one of the most important holdings by the court was the importance of the fourth factor: “the effect on the potential market for the copyrighted work.”
Previously, many courts have looked only at the photographer’s previous use and licensing history when determining the photographer’s intended “purpose” of the work, and when determining the effect of the alleged infringing use on the market for the original. This view fails to consider that photographers work in a business where licensing their work for multiple as yet unknown clients is a critical part of their calculus when creating new works.
The court held, “… the question under this factor is not solely whether the secondary work harms an existing market for the specific work alleged to have been infringed. Rather, we must also consider whether ‘unrestricted and widespread conduct of the sort engaged in by [AWF] would result in a substantially adverse impact on the potential market’ for the Goldsmith Photograph.” (Emphasis added.)
That the court considered this point and found it inured to Goldsmith’s benefit is a positive step in respecting and balancing the creator’s rights with fair use law.
Additionally, another primary 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 cognizable new expression, meaning, or message. With regularity, but not always, commentary, critique, and parody, have qualified as transformative use.
Transformative use is one of the stickiest areas of copyright law and one that we have seen time and time again to be used against photographers seeking redress. Here, however, we have a very influential court laying out very clear guidelines.
A long line of cases in recent years have shown an overreliance of finding transformative use with respect to the fair use analysis. Generally, in the last decade, if a court finds that the use is “transformative” it often means the court will find the use is “fair”. But the 2nd Circuit thinks, rightly, that this line of reasoning has gone too far.
Sometimes, transformative use is more clear-cut: for example, “criticism, comment, news reporting, teaching…” (17 U.S.C. § 107). But often it is clear when a use is not transformative, like when a movie is made based on a book. That is not a fair use.
The lower court relied on language in the famous case of Cariou v. Prince when determining that Warhol’s use of Goldsmith’s photo was transformative. The 2nd Circuit pushed back, saying, “It does not follow, however, that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative.” This is a welcome clarification by the court. If all it took to infringe a photograph was to add any new expression to it, hardly any infringement could be considered not to be a fair use.
Importantly, what has been lacking in cases like Cariou and others, but present here, was Goldsmith’s decision to include expert testimony to assist the court in interpreting the industry-specific facts of the case. Photographer, ASMP member, and copyright expert Jeff Sedlik provided crucial testimony about the practice of copyright licensing in professional photography. This type of testimony is critical to cases such as Goldsmith’s.
Even further, the court held “Rather, the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a ‘new meaning or message’ entirely separate from its source material.” In this case, at its core, these are both competing visual representations of Prince ready and able to be licensed. That one of them happened to apply a different technique on top of the photograph does not make it a new work. It makes it an infringement.
The court went on to say: “… the secondary work’s transformative purpose and character must, at a bare minimum, comprise something more that 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.”
Finally, the court ended its evaluation of transformative use in this case by saying: “… we conclude that the Prince Series is not ‘transformative’ within the meaning of the first factor.
Other Critical Holdings
The entire 56-page opinion (and the two concurring opinions) are filled with well-reasoned and critical clarifications about fair use, infringements, and photography. Here are just a sampling of those that caught my eye:
When presented with the opinion by the lower court that the works at issue are “immediately recognizable as a ‘Warhol’,” the court correctly said that if we simply use this logic, it would create a “celebrity-plagiarist privilege; the more established the artists and the more distinct the artist’s style, the greater leeway that artist would have to pilfer the creative labors of others.” This is an exceptional distillation of one of the most pervasive and concerning arguments in this case. If simply being a famous artist allowed you to infringe works with impunity, that would be no way to operate in a country of law.
Later in the opinion, the court held that, “neither can we conclude that Warhol and AWF are entitled to monetize it without paying Goldsmith the ‘customary price’ for the rights to her work… .” This is a vindication of the basic (and obvious) principle that photographers should get paid for their creations, and have the freedom to market, license, and run their businesses as they see proper.
The bottom line is this: the 2nd Circuit Court of Appeals reversed the lower court and held that all four of the fair use factors favored Lynn Goldsmith. To say this is a clear victory for photographers is an understatement. This case may be appealed by AWF, and it still has to be heard again by the lower court (that’s how appeals generally work), but it could not have been more clear that one of the most influential courts in the nation sided fully with the photographer.
ASMP is proud to stand with Lynn and her team and cannot wait to see what’s next. Thank you, Lynn for fighting this fight for all photographers.