On July 1, 2019, Justice John G. Koeltl from the United States District Court for the Southern District of New York issued the Opinion and Order. In the Opinion and Order, the Court finds that Andy Warhol’s “Prince Series” constitutes fair use and does not infringe Lynn Goldsmith’s copyright over the Goldsmith Prince Photograph.
Andy Warhol is one of the most celebrated American artists of the 20th Century. Warhol created works about widely circulated images of celebrities, and everyday items such as Campbell’s soup cans and Brillo pads. Museums and universities across the globe display his works which are viewed by millions of people. In 1984, Warhol created a series of portraits of world famous singer Prince Rogers Nelson, commonly known as “Prince.” The portraits reference Lynn Goldsmith’s, a famous rock and roll photographer, photograph of Prince taken in 1981 (“Goldsmith Prince Photograph”).
On April 7, 2017, the Andy Warhol Foundation for the Visual Arts, Inc. (“Foundation”) filed a complaint against Lynn Goldsmith and Lynn Goldsmith, Ltd. seeking a declaratory judgment that (1) the portraits in Warhol’s “Prince Series” do not infringe upon Goldsmith’s copyright in the photographs, (2) the portraits are transformative or are otherwise protected by fair use, and (3) Goldsmith’s claims are barred by the statute of limitations and the equitable doctrine of laches.
On June 9, 2017, Goldsmith filed a counterclaim for copyright infringement against Warhol’s “Prince Series,” specifically against the portrait appearing on the 1984 Vanity Fair publication which was newly published with color by Condé Nast on the cover of a May 9, 2016, special Prince tribute magazine. Per the counterclaim, in 1984, Vanity Fair’s photo department solicited Goldsmith for submission of one of the Prince images from her 1981 Newsweek photo shoot, which Warhol ultimately illustrated. The agreement between Goldsmith and Vanity Fair included that the Goldsmith Prince Photograph was for a one-time use. The counterclaim provides that Condé Nast created and released the 2016 Publication as a special tribute issue to Prince’s life, using for its cover a different color version of the same image Warhol created for Vanity Fair in 1984, based on Goldsmith’s 1981 photo. Condé Nast licensed the image from the Foundation and not Goldsmith. The counterclaim alleges Warhol commercially used the Goldsmith Prince Photograph without Goldsmith’s permission on several occasions.
Copyright refers to an author’s right to control the use of their work for a limited period of time. Copyright protection arises under federal law and is codified under Title 17 of the United States Code. Copyright law protects literary, musical, dramatic, choreographic, pictoral, graphic and sculptural works, motion pictures and other works. Original works, fixed in a tangible medium of expression, are eligible for copyright protection. Under the 1976 Copyright Act, the copyright owner has the exclusive right to reproduce, adapt, distribute, publicly perform, and publicly display the work. A copyright owner may transfer, license, sell, donate, or bequeath their rights. Depending on the work, Copyright protections last anywhere from 70 years after the author’s death to 120 years from the work’s creation. Although original works fixed in a tangible medium of expression receive immediate copyright protection, registration with the federal government allows copyright owners to file copyright infringement claims against infringers.
Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. To prevail, a plaintiff must prove its ownership of a valid copyright and a copying of elements of the work that are original.
Fair use is a codified legal doctrine under Section 107 of the Copyright Act and functions as a statutory exception to copyright infringement. Fair use limits the protections offered by copyright law by ensuring copyright law does not encroach upon the public’s freedom of expression. Fair use limits copyright law by permitting use of copyrighted works by the public under certain circumstances. The Copyright Act lists the following four factors for determining fair use: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
The first factor considers whether the secondary work “is of commercial nature or is for nonprofit educational purposes.” The most important consideration under the first factor is the “transformative” nature of the work at issue. Generally, the more transformative the new work, the less will be the significance of other factors. In the Opinion and Order, the Court finds that the first factor favors the Foundation, holding that the works in the “Prince Series” are transformative of the Goldsmith Prince Photograph because the “Prince Series” “have a different character, give the Goldsmith Prince Photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.” Specifically, all but one of the works in the “Prince Series” remove Prince’s torso and bring his face and neckline to the forefront. Additionally, the “Prince Series” depicts Prince as two-dimensional and uses loud unnatural colors.
The second factor calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied. Courts consider whether the copyrighted work is (1) creative or factual and (2) unpublished versus published. Here, the Court finds that the second factor favored neither the Foundation nor Goldsmith stating that although unpublished works enjoy additional protection against fair use, this bears little weight on the case because Goldsmith licensed her photograph to Vanity Fair.
The third factor considers whether the quantity and value of the materials used are reasonable in relation to the purpose of the copying. The Court finds that although Warhol initially used Prince’s head and neckline as they appear in the Goldsmith Prince Photograph, Warhol removed nearly all protectable elements from the Goldsmith Prince Photograph, such as Prince’s crude and creative facial features which evoked the desired expression. Thus, the Court finds that the third factor favors Warhol.
The fourth factor considers the effect of the use upon the potential market for or value of the copyrighted work. This factor focuses on whether the alleged infringing work “usurps” the market or derivative markets for the original work. The Court finds that the fourth factor favors Warhol because the “Prince Series” works and the Goldsmith Prince Photograph are not market substitutes and do not harm Goldsmith.
The Opinion and Order concludes the action.