992 F.3d 99
2d Cir.2021Background
- Lynn Goldsmith photographed Prince in 1981 (the "Goldsmith Photograph"); she retained copyright and LGL licensed the photo to Vanity Fair in 1984 as an "artist reference."
- Andy Warhol used that licensed reference to produce an image for Vanity Fair and, unbeknownst to Goldsmith, later created an additional 15 works (the "Prince Series").
- The Andy Warhol Foundation (AWF) now owns copyright in the Prince Series; AWF licensed a Prince Series image for a 2016 Condé Nast tribute cover, which alerted Goldsmith to the series.
- Goldsmith registered the photograph and asserted infringement; AWF sued for a declaratory judgment of non-infringement or fair use; Goldsmith counterclaimed for infringement.
- The district court granted summary judgment to AWF on fair use; the Second Circuit reversed, holding the Prince Series are not fair use as a matter of law, that all four statutory factors favor Goldsmith, and that the Prince Series are substantially similar to the Goldsmith Photograph; case remanded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Warhol’s Prince Series is a "transformative" fair use (Factor 1, purpose/character) | AWF: Warhol altered the photo’s expression/meaning, producing an iconic, new aesthetic; thus transformative. | Goldsmith: Warhol’s works retain the photograph’s essential elements and serve the same portrait purpose; not transformative. | Not transformative; Prince Series closer to a derivative reproduction than a work with a fundamentally different purpose. |
| Whether the use is commercial (Factor 1, commerciality) | AWF: AWF’s licensing and museum activity furthers public art interests; commercial nature should not preclude fair use. | Goldsmith: Commercial exploitation without paying for the photo weighs against fair use. | Use is commercial; AWF’s public-interest mission does not overcome lack of license. |
| Nature of the copyrighted work (Factor 2) | AWF: Limited prior licensing and purported transformative use reduce weight of unpublished/creative status. | Goldsmith: Photo is unpublished and creative, so this factor favors the photographer. | Factor 2 favors Goldsmith: the photograph is creative and unpublished and retains full protection. |
| Amount/substantiality and market effect (Factors 3 & 4) | AWF: Warhol removed protectable elements (flattening, colorization), so little protectable material copied; no meaningful market harm. | Goldsmith: Warhol copied the photograph’s essence; Prince Series competes with licensing markets and derivative markets. | Factors 3 and 4 favor Goldsmith: Warhol copied quantitatively and qualitatively; Prince Series threatens licensing/derivative markets. |
| Substantial similarity | AWF: Alleged differences and other photos of Prince mean no actionable similarity. | Goldsmith: Prince Series derives from and is recognizable as the Goldsmith Photograph. | Works are substantially similar as a matter of law; average observer would identify the Prince Series as appropriated from Goldsmith’s photo. |
Key Cases Cited
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (articulates transformative-use inquiry and relevance of market effect)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (discusses transformative use in visual art and limits of that doctrine)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (emphasizes importance of market harm in fair use)
- Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) (found transformative use where photograph was used as raw material in a different artistic context)
- Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) (denied fair use for sculpture closely derived from a photograph)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (use in a different informational context held transformative)
- Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (digital copying for a search corpus as transformative)
- TCA Television Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016) (cautions against overbroad readings of Cariou)
- Castle Rock Ent. v. Carol Publ’g Grp., 150 F.3d 132 (2d Cir. 1998) (derivative markets are cognizable under fourth factor)
- Fox News Network, LLC v. TVEyes, Inc., 883 F.3d 169 (2d Cir. 2018) (transformativeness insufficient where defendant usurped plaintiff’s licensing function)