Big Fair Use Win Concerning Andy Warhol's Paintings Of Prince

from the fair-use-prevails-again dept

A decade ago, you may recall, there was a big copyright fight concerning the iconic “Hope” poster that artist Shepard Fairey had created for the Obama campaign. The Associated Press realized that Fairey had used one of its photos as the “model” for making the poster, and started demanding money (there was also a side issue where the actual photographer kept changing his story, first claiming he was thrilled that Fairey had used it, then arguing that the copyright on the photo was his and not the AP’s, and then getting angry at Fairey). Eventually Fairey filed for declaratory judgment of non-infringement, against the AP, arguing that his use was covered by fair use. We argued at the time that he had a very strong case. However, Fairey poisoned his own position in the lawsuit by stupidly first (falsely) claiming he had used a different photograph as the basis for his poster and then destroying evidence about which photo he had used. That’s bad. Really bad. So, it wasn’t a huge surprise to see Fairey eventually agree to just settle the lawsuit, rather than fight for the fair use ruling, since the case was so muddied by his own early actions.

But, for those of us who value fair use, this was disappointing, because it would have been nice to have had a clear fair use ruling in that case.

However, now, a decade later, we do have a ruling in a case that has some similarities to the Fairey/Obama/Hope/AP case, though, oddly, on photographs and paintings that are much older. And this one also involves two incredibly well-known figures: the artist Andy Warhol and the musician Prince. There’s a fair bit of background to this story, so stick with me, but the short version is that a photographer, Lynn Goldsmith, took a bunch of photos of Prince in 1981. In 1984, Vanity Fair magazine (owned by Conde Nast) licensed Goldsmith’s photographs for an article the magazine was doing about Prince. The magazine then commissioned Warhol to do a painting of Prince based on Goldsmith’s photographs. That resulted in this 1984 spread:

Apparently Warhol actually created a bunch of paintings based on Goldsmith’s photographs, most of which have been sold, and a few of which are now in the Warhol museum. You can see all the images in the original complaint in this case.

After Prince died, Vanity Fair reran its article, and then teamed up with some other Conde Nast publications, and put out a special magazine called “The Genius of Prince” using one of Warhol’s other portraits.

There was some procedural oddness in all of this — because Goldsmith claims that she knew about none of this until after that “The Genius of Prince” magazine came out (even though she had licensed a photograph to Vanity Fair, it appears that there was some confusion about that, and at least Goldsmith claims she was never aware of the Warhol portrait based on her photograph back in the 1980s). Goldsmith contacted the Andy Warhol Foundation about the portrait, arguing that it was infringement. The Foundation then filed for declaratory judgment against Goldsmith. It made a bunch of arguments, including that the statute of limitations (three years) had run out, but most of the case focused on the 2016 magazine, which made it still well within the statute of limitations.

Either way, the court notes that those other issues don’t much matter, because this is an easy fair use call. As the court says, “it is plain that the Prince Series works are protected by fair use.”

It runs through the standard four factor test, finding that the first, third and fourth factors all lean towards fair use, and the second factor is merely “neutral.” The judge finds them transformative:

In any event, the Prince Series works are transformative, and therefore the import of their (limited) commercial nature is diluted. If “looking at the [works] side-by-side,” the secondary work “ha[s] a different character, . . . a new expression, and employ[s] new aesthetics with creative and communicative results distinct” from the original, the secondary work is transformative as a matter of law. Cariou, 714 F.3d at 707-08. The Court must “examine how the [Prince Series works] may ‘reasonably be perceived’ in order to assess their transformative nature.” See id; at 707 (quoting Campbell, 510 U.S. at 582).

Each of the Prince Series works may reasonably be perceived to be transformative of the Goldsmith Prince Photograph. As Goldsmith has confirmed, her photographic work centers on helping others formulate their identities, which she aims to capture and reveal through her photography. Her photoshoot illustrated that Prince is “not a comfortable person” and that he is a “vulnerable human being.”… The Goldsmith Prince Photograph reflects these qualities.

Warhol’s Prince Series, in contrast, can reasonably be perceived to reflect the opposite. In all but one of the works, Prince’s torso is removed and his face and a small portion of his neckline are brought to the forefront. The details of Prince’s bone structure that appear crisply in the photograph, which Goldsmith sought to emphasize, are softened in several of the Prince Series works and outlined or shaded in the others. Prince appears as a flat, two-dimensional figure in Warhol’s works, rather than the detailed, three-dimensional being in Goldsmith’s photograph. Moreover, many of Warhol’s Prince Series works contain loud, unnatural colors, in stark contrast with the black-and-white original photograph. And Warhol’s few colorless works appear as rough sketches in which Prince’s expression is almost entirely lost from the original.

These alterations result in an aesthetic and character different from the original. The Prince Series works can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure. The humanity Prince embodies in Goldsmith’s photograph is gone. Moreover, each Prince Series work is immediately recognizable as a “Warhol” rather than as a photograph of Prince in the same way that Warhol’s famous representations of Marilyn Monroe and Mao are recognizable as “Warhols,” not as realistic photographs of those persons.

There is then a footnote that throws a bit of shade towards Goldsmith’s lawyer suggesting that the test for fair use is “you know it when you see it,” by pointing out that anyone looking at the Warhol paintings of Prince would “know” that these are works of Warhol, and not the photographer Goldsmith.

For what it’s worth, part of the analysis of the third factor is also quite interesting — and hearkens back to our recent post about the copyright lawsuit over a Gigi Hadid photo, in which one of the issues is whether or not Hadid “posing” for a paparazzi photograph contributed to the copyright in the photograph, and also whether poses not “created” by the photographer were even subject to copyright protection. Here, the judge points out that the pose in the Prince photograph Goldsmith took is probably not copyright-eligible, since Prince was known to stand like that:

Although the pose and angle of Prince’s head were copied from the photograph to the Prince Series, “such a pose cannot be copyrighted” because copyright law “protect[s] only plaintiff’s particular photographic expression of pose[] and not the underlying ideas therefor.” See Kate Spade, 388 F. Supp. 2d at 393 (quotation marks omitted). And several non-Goldsmith photographs capture Prince in a similar pose, indicating that the pose is not particularly original…. Finally, to the extent that Prince’s facial features remain in Warhol’s works, the features themselves are not copyrightable, see Mattel, 365 F.3d at 136, and the distinctive (and therefore copyrightable) way in which Goldsmith presented those features is absent from the Prince Series works. Each Prince Series work contains little, if any, of the copyrightable elements of the Goldsmith Prince Photograph.

In short, although Warhol initially used Prince’s head and neckline as they appear in the Goldsmith Prince Photograph, Warhol removed nearly all the photograph’s protectible elements in creating the Prince Series. In doing so, Warhol transformed Goldsmith’s work “into something new and different and, as a result, this factor weighs heavily” in favor.

All of that certainly seems like it would have been relevant in the Obama/Fairey/AP case as well.

Of course, if true, this also suggests that the Foundation wouldn’t even need fair use to prevail, but could prevail solely because none of the copyrightable elements were copied.

The fourth factor analysis is also interesting. The court notes that even though Goldsmith hasn’t licensed the photographs from her 1981 photoshoot, that doesn’t mean she couldn’t in the future. But it also notes that even though other Goldsmith photos are used in magazines and album covers, people licensing Warhol paintings are doing so because they want Warhol. Not because they want Goldsmith.

Goldsmith’s evidence and arguments do not show that the Prince Series works are market substitutes for her photograph. She provides no reason to conclude that potential licensees will view Warhol’s Prince Series, consisting of stylized works manifesting a uniquely Warhol aesthetic, as a substitute for her intimate and realistic photograph of Prince. Although Goldsmith points out that her photographs and Warhol’s works have both appeared in magazines and on album covers, this does not suggest that a magazine or record company would license a transformative Warhol work in lieu of a realistic Goldsmith photograph. Moreover, Goldsmith does not specify the types of magazines and album covers on which she and Warhol appear, and whether they are similar. Put simply, the licensing market for Warhol prints is for “Warhols.” This market is distinct from the licensing market for photographs like Goldsmith’s a market which Goldsmith has not even attempted to enter into with her Prince photographs.

Goldsmith has said that she’s planning to appeal the ruling, but also gave a really silly quote to Artnet:

Goldsmith, meanwhile, plans to appeal. ?I know that some people think that I started this, and I?m trying to make money. That?s ridiculous?the Warhol Foundation sued me first for my own copyrighted photograph,? she told artnet News.

That ignores (or misunderstands?) the fact that this was a filing for declaratory judgment, which was filed only after Goldsmith had threatened to sue if she wasn’t paid. From the complaint:

Despite knowing that Warhol?s portraits are a protected fair use, Defendants have attempted to extort a settlement from the Foundation. Goldsmith herself made this clear when she wrote in another public Facebook post dated January 5, 2015, ?It is a crime that so many ?artists? can get away with taking photographers images and painting on them or doing whatever to them without asking permission of the ?artist? who created the image in the first place.?

The complaint also details Goldsmith posting about other, similar (and very relevant) fair use rulings to suggest that Goldsmith completely understood how such paintings were considered fair use (even if she didn’t like the rulings), including this Facebook post mentioned in the complaint:

For example, on January 6, 2015, she wrote a public Facebook post stating, ?I?m pretty knowledgeable about copyright laws and they are changing as Francoise Kirkland pointed out due to the latest ruling in the RIchard [sic] Prince case…they are not changing in our favor.?

So, to argue that this was Warhol suing, while technically accurate, is misleading. That lawsuit was for declaratory judgment (basically asking the judge to say, “this doesn’t infringe,” so that it doesn’t have to keep dealing with threats of a lawsuit and demands for money), and only came after Goldsmith or her representatives had requested money and threatened to sue.

The appeal in this case, assuming it goes forward, will be worth following as well, and hopefully reinforces the district court’s clear fair use ruling. Thankfully, the case will be in the 2nd Circuit, which tends to put out pretty good fair use rulings.

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Comments on “Big Fair Use Win Concerning Andy Warhol's Paintings Of Prince”

Subscribe: RSS Leave a comment
Killercool (profile) says:

Re: "procedural oddness" + unique features = anomaly and who car

Well, for one, you care, or you wouldn’t be so quick to try to downplay the ruling’s significance. For another, even if people don’t care, that does not mean it isn’t important.

Every fair use judgement is important, whether it reduces fair use boundaries, increases them, or just reinforces them. All three outcomes change the way art is created in the United States: weaker fair use rulings reduce art produced, because speech that was legal last week isn’t this week; stronger fair use increases art produced, because artists can support themselves by selling art that they were previously afraid to publish; even confirming current fair use limits increases art production, though to a lesser degree, since artists can be more confident of what kind of speech is or isn’t legal.

Stephen T. Stone (profile) says:

Re: Re: Re:

I take this to mean you have no problems with corporations using copyright law to silence what would otherwise be lawfully protected speech — e.g., film criticism — because said speech uses portions of a copyrighted work under the principles of Fair Use.

I would thus love to know why you think, say, CinemaSins should be nuked by Marvel.

Stephen T. Stone (profile) says:

Re: Re: Re:3

Do you support the idea of a corporation using copyright to permanently and irrevocably take down any legally protected speech that happens to use, under the principles of Fair Use, even the tiniest amount of a work — one second of footage from a movie, one second of a song, one paragraph of a book, one screenshot of a videogame — for which a corporation owns the copyright?

PaulT (profile) says:

Re: Re: Re:3 Re:

"no one said they couldn’t critique, just not our property"

The usage of "your property" in order to critique is expressly permitted by the rules you always fail to understand.

But, you’d have to be some kind of moron to not understand that people will often be driven to see the full film by seeing a critique of it, especially when there’s decent clips involved. Are you that dumb? I mean, I’ve been driven to seek out even films that are objectively terrible by amusing reviews and clips, so your objection to this can’t just be that you’re a failure as a filmmaker.

Anonymous Coward says:

Re: Re: Re:4 Re:

You should quit projecting with the name calling when you have no argument.

I see I have an omission
"If they want to critique films, they are free to create their own films to critique, or critique someone else’s films, no one said they couldn’t critique, just not using our property."

Why should their property be used in a way they don’t wish? You know, like youtube or twitter. Is youtube or twitter any more tangible? Any less a part of today’s culture?

Stephen T. Stone (profile) says:

Re: Re: Re:9

I won’t bother explaining the concept of Fair Use to you so long as you’re committed to intentionally misunderstanding it for the sake of…I’unno, making yourself look like an idiot? ¯(ツ)

Also: Invoking the name of Rosa Parks doesn’t frighten or intimidate me like you think it does. But please, keep using your new catchphrase. It shows how willing you are to exploit a Black person for your own personal benefit.

PaulT (profile) says:

Re: Re: Re:5 Re:

"Why should their property be used in a way they don’t wish?"

Because the law allows fair use. If you want total control of your crap, keep it to yourself. If you release it to the public, the public gains some ownership whether you like it or. It’s been that way for millenia with every piece of culture you’ve ever experienced. That doesn’t change because you decided to be a selfish bastard.

Stephen T. Stone (profile) says:

Re: Re: Re:3

no one said they couldn’t critique, just not our property

Wow. And here I thought Blue Balls was an extremist. Here you are saying a corporation should be allowed to stamp out legally protected speech (film criticism) if said criticism is about a film with a copyright assigned to that corporation.

And if you’re not saying that, well, you might want to clarify your statement. From where I sit, you’re advocating for film criticism to be limited to only what a critic can make or get permission to critique/criticize. For what reason should someone need the permission of both Quentin Tarantino and whatever studio distributes his films to critique/criticize Once Upon a Time in Hollywood?

Bobvious says:

".. defendant.. sued me first for my own copyrighted photograph"

Your Honour,

the prisoner struck my rapidly moving closed fist with his stationary face, then continued the attack by assaulting me with blood from his nose. After defending myself from his ribcage impacting upon my fist, he compounded the assault by vomiting on me, with malice aforethought. He then deliberately slumped forward in his electric wheelchair and engaged the joystick so that the wheels would run over my foot.

The defense counsel expects this court to believe that the prisoner’s "refusal" to identify themselves was due to a tracheotomy, which only became apparent to this department after the post mortem.

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