No Celebrity-Plagiarist Privilege

Copyright protects both original creative work and derivative works. The objective of fair use is to strike a balance between an artist’s intellectual property rights and the others’ ability to express by reference to others’ works. The 1976 Copyright Act provides a non-exclusive list of factors, which should be weighed together, to assert the fair-use affirmative defense:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(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.

Background and Procedural history

In 1981, defendant-appellant Lynn Goldsmith, on assignment from Newsweek magazine, made a series of portrait photographs of Prince, a musical artist. In 1984, Goldsmith’s agency licensed the photograph to Vanity Fair magazine for use as an artist reference, permitting the publication of an illustration based on the photography once as a full page and once as a quarter page, insofar the illustration was accompanied by an attribution to Goldsmith. An ‘artist reference’ means an artist ‘would create a work of art based on [the] image reference’. Vanity Fair commissioned Andy Warhol to create a Prince’s image to accompany the publication of an article on the musician for its November 1984 issue. Warhol also made a series of silkscreen prints and pencil illustrations collectively known as the ‘Prince Series’. In 1987 after Warhol’s death, Andy Warhol Foundation for the Visual Arts (AWF) was established as a nonprofit corporation in New York. AWF retains copyright in the Prince Series.

In April 2016 after Prince’s death, Vanity Fair’s parent company, Condé Nast, obtained a commercial license for a different Prince Series image to publish as the magazine cover. Goldsmith became aware of Warhol’s Prince Series when the magazine was published in May 2016. In July 2016, Goldsmith notified AWF of the perceived infringement of her copyright. In November 2016, Goldsmith registered the photograph as an unpublished work.

In April 2017, AWF sued Goldsmith for a declaratory judgment of non-infringement or fair use. Goldsmith countersued for copyright infringement. In July 2019, the district court granted summary judgment for AWF, concluding the Prince Series was transformative because: 1) it portrays Prince as ‘iconic, larger-than-life’, whereas Goldsmith’s portrayal shows Prince as a ‘vulnerable human being’; 2) Goldsmith’s creative and unpublished photograph was of ‘limited importance’ as the Prince Series is transformative; 3) Warhol ‘removed nearly all’ protectible elements of Goldsmith’s photograph; and 4) Prince Series works ‘are not market substitutes that have harmed — or have the potential to harm — Goldsmith’.

Contrary to the district court’s decision, the Second Circuit reviewed the grant of summary judgment de novo and found each of the four fair use factors favored Goldsmith and AWF’s defense failed as a matter of law. It also found Andy Warhol’s Prince Series are substantially similar to Goldsmith’s photograph, reversed the district court’s grant of summary judgment and remanded the case.

Because the defendant did not seek relief as to works produced by Andy Warhol that have been acquired by other art market players, the case did not decide on their rights of use.

Fair use factor 1a — Purpose and character of the use

To avoid creating a ‘celebrity-plagiarist privilege’, the court emphasized the law does not allow an artist to exploit another artist’s work without his/ her permission.

The ‘purpose and character’ of the primary and secondary works are used to evaluate the extent of transformativeness. A work is not sufficiently transformative, where a secondary work does not obviously comment on or relate back to the original work, or does not use the original for a different purpose. The secondary work must convey a separate ‘new meaning or message’, embodying a ‘distinct’ artistic purpose reasonably perceived. The district court erred in using the artist’s ‘stated or perceived intent’ to recognize an alteration as transformative.

The Prince Series retains the ‘essential elements’ of its source material, the Goldsmith photograph, which remains the ‘recognizable foundation’ of the derivative series. Simply removing certain elements like depth and contrast, and embellishing images with loud and unnatural colors do not mean significant change, even if it means to display Warhol’s signature style of ‘distinct aesthetic sensibility’. Hence, the Prince Series is not transformative according to the first factor.

Fair use factor 1b — Commercial use

Distinguishing between a commercial use and nonprofit use is to see if a user stands to profit from exploitation of the copyrighted material without paying the customary price. Where a secondary use is found to be commercial in nature, it ‘tends to weigh against’ fair use. However, the commercial nature is less important when the secondary use is transformative enough; where the primary artist has no reasonable expectation of compensation.

Both the Second Circuit and the district court found the Prince Series commercial in nature, serves the public interest because advancing the visual arts is AWF’s mission, hence mitigating against its sales and licensing.

Where both courts diverge is on AWF’s entitlement to monetize Goldsmith’s work without paying the ‘customary price’ to the latter. A commercial non-transformative work that may serve the public interest does not sway ‘significantly’ in favor of fair use. The extent of serving the public interest is relevant to assess equitable remedies. The Second Circuit held the Prince Series is not transformative and AWF must pay to monetize another artist’s work even if it serves the public interest.

Fair use factor 2 — Nature of the copyrighted work

Where a copyrighted work is ‘factual or informational’ and ‘published’, it swings in favor of finding fair use.

Because the Second Circuit held the Prince Series is not transformative, greater weight was given to this factor. The district court erred in not finding this factor in favor of Goldsmith, where her work was recognized as both creative and unpublished.

Fair use factor 3 — Amount and substantiality of the portion used in relation to the copyrighted work as a whole

What copyright protects is the ‘cumulative manifestation’ of artistic choices of ‘ideas, concepts, principles, or processes’; in the case of a photograph, the ‘particular expression’ of the photographer’s idea underlying her photograph, including the posing of the subjects, lighting, angle, selection of film and camera, and any other variant.

Besides considering the ‘quantity of the material used’, the ‘quality and importance’ in relation to the original work are also part of the third factor. The test is the reasonableness of the quantity of the materials used in relation to the purpose of copying.

The Prince Series was found to have borrowed significantly both quantitatively and qualitatively from Goldsmith’s photograph. Despite the cropping and flattening Warhol did to Goldsmith’s photograph, his screenprint is ‘readily’ and ‘instantly’ identifiable as deriving from a ‘specific’ photograph taken by Goldsmith; in which Prince’s hair appears shorter on the left side of his face. The Second Circuit found Warhol copied the ‘essence’ of Goldsmith’s photograph and held this factor swings in favor of Goldsmith.

The district court erred in finding Warhol removed nearly all of the copyrightable elements of Goldsmith’s photograph by removing or minimizing Goldsmith’s expressive qualities.

Fair use factor 4 — Effect of the use upon the potential market

Fair use is an affirmative defense, the burden of proving the secondary use does not compete in the relevant market lies with the party asserting the defense. Where the infringer’s target audience and the nature of the infringing content is the same as the original, there is usurpation.

Even though the primary market of both works differ and there may be a public interest in Warhol’s copying, the Prince Series poses ‘recognizable harm’ to Goldsmith’s licensing market for editorial purposes. The Second Circuit held this factor swings in favor of Goldsmith.

The district court erred in placing the burden of proof on the rightsholder and overlooked the potential harm to Goldsmith’s derivative market.

Effect of Google decision

The court granted plaintiff-appealer’s ‘Petition for Panel Rehearing and Rehearing En Banc’ after Supreme Court handed down its first major decision on fair use in some time in Google.

Both courts reiterated fair use decisions are highly contextual and fact specific. Courts must apply the flexible concept of fair use in light of the ‘sometimes conflicting’ aims of copyright law.

The Google decision is limited to the unusual context of copyrights in computer code. Such a context rendered no change to the application of established principles to a traditional area of artistic expression. Copyright material serving an artistic function rather than a utilitarian one may enjoy stronger copyright protection.

Substantial similarity

Photographs are ‘creative aesthetic expressions’ of a scene or image. Both photographs in this case are substantially similar as a matter of law. A reasonable viewer can easily recognize Goldsmith’s photograph as the source material for Warhol’s Prince Series. The court deemed the ‘ordinary observer’ test was appropriate for photographs, which have ‘long received’ thick copyright protection.

Key message

Where artists choose to incorporate other artists’ copyrighted expression into their own works, they must pay for the source material. Even if the secondary user has generated an active market for his own work, the right market must be analyzed. There is no ‘celebrity-plagiarist privilege’ in law.

It is not the function of judges to decide the meaning and value of art, which remains in the domain of art historians, critics, collectors, and the museum-going public.

Cases cited:

Andy Warhol Found. For the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).

Andy Warhol Found. For the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021).

Andy Warhol Found. For the Visual Arts, Inc. v. Goldsmith, 382 F.3d 312 (S.D.N.Y. 2019).

Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006).

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

Cariou v. Prince, 714 F.3d 694, 709 (2d Cir. 2013).

Google LLC v. Oracle Am., Inc., 141 U.S. 1183 (2021).

Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985).

Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998).

Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992).