Andy Warhol Foundation Suffers Big Copyright Defeat at Appeals Court

Andy Warhol Prince Paintings - Split - Publicity - H 2017
Courtesy of the U.S. District Court/The Andy Warhol Foundation for the Visual Arts

The 2nd Circuit Court of Appeals has delivered a huge victory for a photographer claiming that Andy Warhol infringed her 1981 photo of Prince.

Back in the mid-1980s, Lynn Goldsmith licensed her image to Vanity Fair, which commissioned Warhol to make a silkscreen. Warhol created 15 additional works for a series on Prince, and Goldsmith says she didn't know about this until Prince died in 2016. Afterwards, her complaints had the Andy Warhol Foundation running to court seeking a declaration of fair use.

That's what the Andy Warhol Foundation got previously in a summary judgment, but today, 2nd Circuit Judge Gerald Lynch reverses with a majority opinion that Warhol's work isn't fair use. Having revived the suit, and found Warhol's image is substantially similar to Goldsmith's, the case is remanded back to the district court for further proceedings. It's possible that a trial focusing on damages may proceed.

The opinion runs through copyright precedent including that new works needn't comment on the original in order to qualify as fair use. On the other hand, when looking at how one of the fair use factors directs judges to measure whether there's any “new expression, meaning, or message” being added, Lynch is careful to come to a point where something like a film adaptation of a novel isn't afforded protection merely because it's adding something new.

"A common thread running through these cases is that, where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a 'higher or different artistic use,' is insufficient to render a work transformative," writes Lynch. "Rather, the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a 'new meaning or message' entirely separate from its source material. While we cannot, nor do we attempt to, catalog all of the ways in which an artist may achieve that end, we note that the works that have done so thus far have themselves been distinct works of art that draw from numerous sources, rather than works that simply alter or recast a single work with a new aesthetic."

Addressing the situation at hand, the appellate judge disagrees with the district court's conclusion that Warhol's use was transformative because Prince was transformed from a "vulnerable, uncomfortable person to an iconic, larger-than-life figure."

He writes that Goldsmith's and Warhol's subjective intentions and even the overall meaning of art doesn't matter as much as how works will be reasonable be perceived.

Viewing the artistic works side-by-side in the same way one might look at a film and screenplay both derived from the same novel, Lynch continues, "[T]here can be no meaningful dispute that the overarching purpose and function of the two works at issue here is identical, not merely in the broad sense that they are created as works of visual art, but also in the narrow but essential sense that they are portraits of the same person."

The fuller discussion — involving everything from caution that judges not act as art critics to the advisory that secondary works may need to "stand apart" from their source material in order to clear judicial scrutiny — figures to make it more tough for copyright defendants to rely on fair use.

On the other hand, two of the three appellate judges on this panel join together for a concurring opinion that criticizes an over-reliance on measuring “transformative use” — arguing that a market-based measure (under the fourth factor) should get heavier focus.

With respect to that factor, while the 2nd Circuit agrees with a lower judge that Goldsmith and Warhol don't traffic in the same market (one's a photographer and the other was in fine arts), the majority opinion departs from the district court's conclusion that Warhol's Prince Series poses no threat to Goldsmith’s licensing markets.

As Lynch writes, and as will be welcomed by some in Hollywood, "While Goldsmith does not contend that she has sought to license the Goldsmith Photograph itself, the question under this factor is not solely whether the secondary work harms an existing market for the specific work alleged to have been infringed... [T]he district court entirely overlooked the potential harm to Goldsmith’s derivative market, which is likewise substantial..."

Here's the full opinion: