Transformative Use v. Derivative Use:  Will the Outcome of a Recent Lawsuit Test the Limits of Fair Use Doctrine, or Result in a Free-for-all?

by | Sep 5, 2017 | Legal, Strictly Business Blog





[by Sammetria Goodson and Thomas Maddrey, Maddrey PLLC]

As ASMP members may know, there is an on-going legal battle over the concept of “fair use” in copyright infringement claims. One of the more recent cases involves photographer and ASMP member Lynn Goldsmith, who was sued by the Andy Warhol Foundation for the Visual Arts, Inc. (“Foundation”) in April 2017. The Foundation utilized a legal device known as a “declaratory judgment” to prosecute a case against Lynn, effectively putting Lynn in the position of defending herself against the Foundation. A declaratory judgment is a petition that asks the court to declare certain rights and obligations without awarding any damages or ordering any specific action. In Lynn’s case, the Foundation wants the Southern District Court of New York to declare that a series of works by Andy Warhol featuring Lynn’s photographic portrait of the late Prince Rogers Nelson (commonly known as the musician Prince) is not an infringing use.

Instead of accepting a defensive position against the Foundation, Lynn filed an offensive counterclaim against the Foundation for copyright infringement of her 1981 photograph of Prince. ASMP members are encouraged to obtain and read the various court filings through PACER, the public repository of federal court records. The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith and Lynn Goldsmith, Ltd., No. 17-cv-02532-JGK, (U.S. Dist. Southern Dist. of New York). Many see the Foundation’s initial lawsuit as a pre-emptive strike against Lynn’s ability to seek damages for the Foundation’s infringing use of Lynn’s Prince photographic portrait. Others see the Foundation’s lawsuit as a way to use the court system to create favorable copyright law in support of a wider application of fair use. Still others are following the lawsuit developments simply because it involves Prince, who passed away in April 2016.

Notwithstanding all the press surrounding Lynn’s case, it is clear that the allegations and legal arguments put forth by the Foundation serve the interests of groups who desire wider latitude to use photographers’ images in their own work. The arguments are simple: the Foundation claims that Warhol’s Prince Series is “transformative,” and thus a fair use of Lynn’s photograph. Lynn argues that Warhol’s Prince Series is “derivative” of her photographic portrait, and therefore an unauthorized and infringing use of the copyright in her photograph.

Courts look at four different factors to determine whether the use of someone else’s copyright-protected work is fair use: 1) the purpose and character of the infringer’s use; 2) the nature of the infringer’s work; 3) the amount of the protected work used by the infringer; and, 4) the effect of the infringer’s use on the market for the protected work. If the court weighs these factors in favor of the infringer, the infringer’s use is deemed a “fair use,” and the infringer is insulated from copyright infringement and any damages from copyright infringement.

The Foundation essentially rests its entire lawsuit against Lynn on the first factor of the fair use analysis, which tends to revolve around the question of whether or not the purpose and character of the infringer’s use was “transformative.” “Transformative” use as articulated in the earliest court opinions means adding something new, with either a purpose that goes beyond the original work or a different character than the original work, where the resulting work has new expression, meaning, or message. Numerous legal battles have been waged over the contours of “transformative” use of photographs. A summary of transformative use rulings are beyond the scope of this article, however ASMP members are encouraged to learn more about fair use and photographs from the U.S. Copyright Office’s Fair Use Index published here. In support of its claim, the Foundation has put together an arsenal of art historical references, as well as quotes and analysis from curators. A clear theme in their arguments is that Lynn’s work is not protectable in the first instance, while Warhol’s work is high art and thus worthy of artistic license and protection. 

Lynn argues that the Foundation’s use of her photographic Prince portrait was not “transformative,” but rather “derivative.” “Derivative” use as stated in the Copyright Act means basing a new work on preexisting works, including translations, art reproductions, or any form that recasts, transforms, adapts, or represents the preexisting work.

In this case, Lynn shot a series of studio portraits of Prince for Newsweek in 1981. Lynn licensed the photograph to Vanity Fair in 1984 for use as reference material for an illustration of Prince by, unbeknown to her at the time, Andy Warhol. The one-time use license was narrowly tailored to allow Vanity Fair to distribute the illustration full page and under quarter page in the November 1984 issue; Lynn’s license also required that Vanity Fair attribute the original preexisting photograph to her. Most importantly, the license explicitly prohibited any other use of Lynn’s photographic portrait outside of the license agreement terms.

Despite the license agreement, Andy Warhol made additional illustrations besides the image published by Vanity Fair; Conde Nast later published one of Warhol’s illustrations on the cover of a special tribute issue following Prince’s death in 2016. Lynn argues that the Conde Nast cover illustration is derivative of her 1981 photographic portrait of Prince, and therefore the Foundation infringed on Lynn’s copyright protected work. It is clear that Lynn’s case will test the boundaries of the “transformative use” versus “derivative use” dichotomy due to the specific circumstances surrounding the creation of the Vanity Fair illustration.

It is also easy to see why Lynn is fighting the Foundation on this issue. Imagine if you as a photographer issued a license that was as narrowly tailored as Lynn’s only to have someone completely ignore the license, use your work as reference material, and then sue you to get a court to say that the resulting work was a fair use. Adding insult to injury, imagine further that the resulting work was licensed to another organization, and multiple versions of the resulting works were sold all over the world. This is what happened to Lynn, and this is what can happen to all commercial photographers.

ASMP will keep its members up to date on Lynn’s case as the litigation develops. Suffice to say at this point that Lynn’s case and other cases like hers will have a direct impact on Photographers’ Rights. If the Foundation wins its lawsuits, virtually any use of a photographer’s work will be de facto “transformative” and thus ripe for use without authorization or license. Photographers may see a day where even the slightest modifications made to photographs are deemed “transformative.”

If Lynn is victorious in her case, it will send a strong message that Photographers’ work is worthy of copyright protection and that others cannot simply use photographic images at will without seeking authorization from the photographer who created the work. ASMP members may learn more about Lynn’s case from Lynn here.