What Lead to the Lawsuit?
In December 1981 Lynn Goldsmith, a professional photographer, took a series of photographs of the music artist known as Prince. The photo shown to the left is one that Goldsmith captured during this shoot. A few years later, Goldsmith licensed the photo to Vanity Fair magazine for use as an artist reference. In other words, Vanity Fair wanted to give the photo to an artist so that a rendition of it could be created and used in their magazine.
The artist in question turned out to be Andy Warhol and he produced the image shown below.
But, without Goldsmith's knowledge, Warhol created fifteen additional images using her reference photo. Over the years, most of these images were sold or given away and, in 1998, custody of the remaining four pieces was transferred to the Andy Warhol Museum. Thereafter, the Andy Warhol Foundation ("AWF") continued to license and exploit the images and Goldsmith was none the wiser.
However, in 2016, shortly after Prince died, Condé Nast, Vanity Fair's parent company, wanted to put together a tribute magazine edition for the singer. They contacted AWF to inquire about licensing the prince image created by Warhol in 1984. When Condé Nast discovered that Warhol had additional images, it ultimately chose one of those for the tribute edition shown below.
It was after seeing this 2016 magazine cover that Goldsmith became aware of the additional works created by Warhol. She contacted AWF to advise them that she believed her copyright was being infringed. AWF decided to file a lawsuit in order to get a judge to make a determination about its rights to the image. Goldsmith filed a counterclaim for copyright infringement.
Initially, AWF was victorious in the litigation. The district court dismissed Goldsmith's claims and granted summary judgment to AWF on the basis that fair use permitted Warhol to use Goldsmith's image for the additional works without her permission. This appeal followed.
What Did the Court Determine and Why?
I have to admit, I was so confused when AWF originally prevailed in this case. The original and the Warhol copy were so similar and clearly related, it made me feel like I did not know what qualified as fair use anymore. But, the 2nd Circuit Court of Appeals really righted the ship, overturned the decision and ruled against Warhol. Not only did they determine that the district court got it wrong, but they got it wrong on almost every point.
As you may recall, fair use is a doctrine included in the Copyright Act that allows someone to use the copyrighted work of another without permission as long as it is done within certain parameters. These parameters come in the form of four main factors that are analyzed and then weighed. Generally, the more factors that weigh in favor of fair use, the more likely it is a court will find that fair use applies and a copy is not infringing. In this case, the court of appeals determined that fair use did not apply and that a determination on Goldsmith's copyright infringement counterclaim still needed to be made. So, why was fair use ruled out? Let's take a look at the four factors and the court's reasoning related thereto.
The Nature and Character of the Use
The first fair use factor looks at whether a particular act of copying is commercial and/or "transformative" in nature. Commerciality is usually straightforward to figure out - you have to consider whether a use is for nonprofit, educational purposes or not. Does the "user stand to profit from exploitation of the copyrighted material without paying the customary price?" [1] In this case, the use was determined to be commercial in nature which weighed against a finding a fair use but this part of the first factor was not dispositive. Because secondary uses that are challenged in court often tend to be commercial in nature that, by itself, should be used with caution and not unduly emphasized.
Most of the the first factor analysis was focused on whether the Warhol use was "transformative" in nature. "Transformative" is a legal term of art and can tend to be a bit squishy in its meaning. At the same time, "fair use is a context-sensitive inquiry that does not lend itself to simple bright-line rules." [2] In other words, the meaning of "transformative" has to be firm enough to be applied consistently to various situation but cannot be too firm because each case is different. Yep. It is no wonder the district court got this wrong; sometimes it is difficult to pin down.
The 2nd Circuit sort of cuts through some of the haze. They first made the point that transformation is often determined by a change in purpose between the original and the secondary use. For instance, copying a piece of art in order to comment or criticize it in a blog or newspaper is a different purpose than copying a piece of art so that you can hang it on your wall. The former is often transformative while the latter probably isn't.
The 2nd Circuit then went on to discuss situations like the one in this case where the two works have overlapping purposes - both being works of visual art. In cases like this the court must examine whether the secondary work conveys a "new meaning or message" which is "entirely separate" from the original and whether it "stands apart" from its source. [3] "Stands apart" is no more firm than "transformative" but the court did mention that the secondary user has to do more than just take someone else's work and do it in their style when the "secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material." [4] Works that draw from numerous sources are more likely to be transformative than works that simply "recast a single work with a new aesthetic." [5] The court determined that the Warhol images did just that - recast Goldsmith's photo with a new aesthetic - so they were deemed not transformative. The factor cut decisively against Warhol and was the main reason the decision was overturned.
The Nature of the Copyrighted Work
This factor considers whether a work is creative or factual and published or unpublished. The scope of fair use is narrower for creative and unpublished works. While this factor must be considered, it is not as significant as the first factor and "has rarely played a significant role in the determination of a fair use dispute." [6] That being said, this factor favored Goldsmith due to the fact that her photo is a creative work and it is considered unpublished as it was never released to the public.
The Amount and Substantiality of the Use
This prong considers both the quantity and quality of what was taken from the copyrighted work to make sure that no more was used than was necessary to accomplish the purpose of the copying. AWF tried to make the argument that Warhol only took unprotectible parts of Goldsmith's photo (i.e Prince's face) but the court was not buying it. Photographs have always enjoyed broad copyright protection and Goldsmith's is no different. While it is true that Goldsmith cannot copyright Prince's face as faces, as part of the human body, are generally not eligible for copyright protection, she can certainly copyright a specific expressive rendition of that face. Had Warhol taken his own photo, even if he'd copied Goldsmith's aesthetic, he would have been in a better position to claim fair use. But, taking an exact replica of the most important parts of Goodman's photo tilted this factor against him.
The Effect of the Use on the Market
The final fair use prong looks at what effect the secondary use had or will have on the market for the original work. This factor considers markets that currently exist for the work and ones that may reasonably exist in the future. The 2nd Circuit determined that the Goldsmith photos and the Warhol images occupy different markets; someone looking for to buy a Warhol would not want Goldsmith's photo instead or vice versa. So, Warhol's copying did not necessarily hurt Goldsmith's market for direct sales. However, the licensing market for Goldsmith's work would be and actually was adversely affected by Warhol's appropriation. As an example of this, the court pointed out that Goldsmith received no royalties or credit for the Condé Nast cover. As such, this factor also favored Goldsmith.
The Final Tally
The 2nd Circuit found that every factor favored Goldsmith and, accordingly, the fair use defense failed as a matter of law. The court noted that AWF provided no other defenses or reasons why the copying should be excused so Goldsmith's infringement counterclaim was reinstated. The case was sent back to the district court so it could hold further proceedings in light of the appellate decision.
The Takeaway For Crafters
What does this case mean for you, fellow crafter? The usefulness here is in the discussion of the nuance and minutia of fair use. It is a tricky area of the law, especially for laypersons, and it is best understood through the helpful examples of case law.
[1] Harper & Row v. Nation Enterprises, 471 U.S. 539, 562 (1985); The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, Case No. 19-2420-cv, Slip Op. at 34 (2d Cir. Mar. 26, 2021).
[2] The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, Case No. 19-2420-cv, Slip Op. at 18 (2d Cir. Mar. 26, 2021).
[3] Id. at 25.
[4] Id. at 28.
[5] Id. at 26.
[6] Id. at 36.
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