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

Copyright

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.

Filed Under: andy warhol, copyright, fair use, lynn goldsmith, prince, shepard fairey, transformative
Companies: andy warhol foundation