This article is written by Nilesh Pratap Singh, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Aatima Bhatia (Associate, LawSikho) and Ruchika Mohapatra (Associate, LawSikho).
In the Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith and Lynn Goldsmith, Ltd., the United States Court of Appeals for the Second Circuit ruled that contemporary artist Andy Warhol’s 1984 images of musical artist Prince did not make fair use of photographer Lynn Goldsmith’s 1981 photograph of the music legend, overturning a 2019 decision by the United States District Court for the Southern District of New York. This case is essentially about a contradiction between an artist’s right to communicate ideas, which includes the creation of creative works that incorporate prior material, and a creator’s right to control his original work.
Facts of the case
The Andy Warhol Foundation (“AWF”) requested panel rehearing and en banc rehearing, claiming that the Second Circuit’s judgement deviates from established fair use law and will have far-reaching implications. Goldsmith responded by filing an opposition to the motion for rehearing.
In this case, the late Andy Warhol created a set of 16 silkscreen prints and pencil illustrations. The series is based on Lynn Goldsmith’s 1981 photograph of late musical artist Prince, to which she owns the copyright. Lynn Goldsmith Ltd. (“LGL”) is a professional photographer and the creator of Lynn Goldsmith Ltd. (“LGL”), which specialises in celebrity portraiture.
Andy Warhol is well-known for his contributions to mixed media art in the modern era. Warhol’s fame stems mostly from his silkscreen portraits of modern icons, each of which is instantly recognisable as a “Warhol.” Much of Warhol’s work is owned by AWF, which also owns the rights to it.
AWF gained rights to and copyright in the Prince Series after Warhol’s death in 1987. Goldsmith stated that she first became aware of the Prince Series after Prince’s death in 2016 and that she notified AWF of the alleged breach of her copyright in the photo. In 2017, AWF sued Goldsmith and LGL for a declaratory judgement, claiming that the Prince Series works were non-infringing or, alternatively, that they constituted fair use of Goldsmith’s photograph; Goldsmith and LGL countersued for infringement.
The district court’s decision
In a decision by Judge John G. Koeltl, the district court granted AWF summary judgement on its claim of fair use and dismissed Goldsmith’s and LDL’s counterclaim. Judge Koeltl emphasised in his ruling that “fair use” is a legislative exception to copyright infringement, and listed the four statutory considerations that must be considered when determining whether a use is fair:
- The nature of the copyrighted work;
- The substantiality of the portion used in respect to the copyrighted work as a whole; and
- The purpose and character of the use;
- The impact on the copyrighted work’s potential market or value.
The District Court determined that the use of the Prince Series was fair, partly because it was transformative: the Goldsmith photograph represented an up-and-coming, insecure musician, whereas the Warhol photograph depicted a tremendously successful music legend. The court determined that the accused works “have a different character” (evocative of a “Warhol”) that provides Goldsmith’s photograph with a “new expression” by adopting new aesthetics that produce creative and communicative effects that are separate from Goldsmith’s.
Furthermore, the new works contribute “something fresh to the realm of art,” and the audience would be deprived of this contribution if the works were not available for distribution. As a result, the court determined that the first and most crucial fair use criteria favoured AWF. Aside from the commercial nature of the work, the court found that all of the circumstances went in favour of AWF and that the use was fair.
Second circuit appeal
Goldsmith took his case to the Second Circuit, contending that the district court’s decision on transformative use was “based on a subjective underlying artistic message of the works, rather than an objective assessment of their purpose and character,” according to the appeal. The Second Circuit agreed with Goldsmith and overturned the decision. It agreed with the District Court solely in determining that the usage was commercial; it disagreed with the district court on all other reasons the district court found to be in AWF’s favour.
The fair use defence tries to create a balance between a copyright owner’s rights to his work, including the ability to licence and develop derivative works, and others’ rights to express themselves through transformative use of the original work, according to the court. Throughout the case, the court struggled with the line between transformative and derivative works.
The focus is “chiefly on the degree to which the use is transformative,” according to the court, and notably on “whether the new work just supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, modifying the first with new expression, meaning or message.”
The Appellate Court acknowledged that the district court relied on an earlier Second Circuit decision, Cariou v. Prince, in reaching its transformativeness determination, noted that Cariou “has not been without criticism” and was the “high-water mark of the court’s recognition of transformative works.”
Cariou was a case in which appropriation artist Richard Prince used Patrick Cariou’s black-and-white images of Rastafarians as “raw material” in his work. The works were modified in that case, according to the Second Circuit, by “the development of new information, new aesthetics, new insights and knowledge.” While criticising the District Court for “stretching” the Cariou decision too far, the Court acknowledged that “alteration of an original work ‘with new expression, meaning, or message,’… whether by use of ‘new aesthetics,’… by placing the work ‘in a different context,’… or by any other means is the sine qua non of transformativeness. “It does not follow, however, that each secondary work that adds new aesthetic or new expressions to its parent material is inherently transformational,” the report said.
“There is an entire class of secondary works that add ‘additional expression, meaning, or message’ to their source material but are nonetheless specifically barred from the purview of fair use: derivative works,” the court stated. “Where a secondary work does not obviously comment on or relate back to the original or uses the original for a purpose other than that for which it was created,” the panel continued, “the bare assertion of a ‘higher or different artistic use’… is insufficient to render a work transformative,” and it is instead derivative and infringing.” The secondary work must “fairly be viewed as reflecting an altogether independent artistic aim, one that transmits a ‘new meaning or message’ entirely separate from its parent material” in order to be found transformative. The court determined that works that fit under this category frequently “draw from a variety of sources, rather than those that merely alter or recast a single work with a new aesthetic.”
Furthermore, “whether a work is transformative cannot rest solely on the artist’s expressed or perceived goal, or the interpretation or impression that a critic – or, for that matter, a judge – takes from the work,” according to this court. A judge is not a critic of art. “Rather, the judge must consider whether the secondary work’s use of its source material is in service of a fundamentally distinct and unique artistic purpose and character, such that the secondary work stands independently from the ‘raw material’ utilised to generate it,” the judge writes. “At a bare minimum, the transformative purpose and character of the secondary work must consist of something more than the imposition of another artist’s style on the primary work, such that the secondary work remains both recognisably deriving from and retaining the essential elements of its source material,” according to the guidelines.
Petition for rehearing en banc
The initial panel’s ruling “conflicts with Supreme Court and Second Circuit precedent and establishes a circuit divide on an issue of particular importance to copyright law and free expression,” according to AWF’s application for a rehearing en banc. Amici have filed briefs in support of AWF’s position. AWF argued that the appellate panel’s rejection of the well-known and widely-used “meaning and message” analysis in favour of an analysis that determines whether work was reasonably derived from and retained the essential elements of its source material was in error deviated from the principle defined in Campbell and upheld in the recent Google v. Oracle decision.
The AWF’s petition distinguishes a novel adaptation from a film adaptation by stating that a novel adaptation does not convey a new message. The Prince Series, according to the petition, conveys the “opposite” message from Goldsmith’s portrait, namely, the strength of the well-known artist Prince rather than the fragility of the up-and-coming artist Prince. As a result, according to the petition, the Prince Series is revolutionary. The petition lists opinions from the United States Courts of Appeals for the First, Fourth, Sixth, Ninth, and Federal Circuits finding transformative use when the new work conveyed a different message than the original work and claims that the Goldsmith ruling creates a circuit split.
Finally, the petition claims that the panel’s decision “threatens to render unlawful large swaths of contemporary art that incorporates and reframes copyrighted material to convey a new and different message,” and that it “will have extraordinary and harmful effects in an area of exceptional public importance.” The AWF concludes by claiming that the court’s decision “will inevitably chill the creation of similar art in the future” and “deter many artists” from “using existing imagery in the service of new and different creative expression,” effectively eviscerating the First Amendment safeguard that fair use was supposed to provide.
In its brief, Goldsmith contended that the judgement was perfectly consistent with the Google decision, which was also consistent with existing fair use law, and that, in any case, Google did not immediately apply because it included a functioning computer code rather than an artistic piece. “The Supreme Court in Google specifically indicated the decision was not modifying the legal framework for judging fair use,” Goldsmith said in response to the court’s request to address the impact of Google. “We do not overturn or amend our earlier rulings involving fair use,” the Supreme Court stated.
Goldsmith also contended that Google “stressed that the question of fair use is case-specific and that the Supreme Court’s application of recognised fair-use principles, in that case, was impacted by the distinctive features of computer code,” making Google consistent with the panel’s conclusion. The other issues raised in the AWF brief and by amici were not addressed in Goldsmith’s brief.
Impact of the decision if it stands
The panel’s determination that the Prince Series was not transformative but rather derivative aimed to clarify the Court’s previous stance in Cariou while also upholding the Supreme Court’s 1985 Harper & Row decision, which found no fair use where a secondary work took the “heart” of the original work. However, as a result of this ruling, artists and litigants are left without a clear standard to assess whether a work based on a single other work is transformative, and so fair use, or derivative, and thus infringing usage.
The panel instructed that while determining whether a work is transformational, the focus should be on whether the new work has a “fundamentally distinct and new creative purpose and character so that the secondary work stands independently from the ‘raw material’ used to generate it.” While it would appear that this analysis requires a court to decide whether the secondary work stands apart from the source material, the panel stated, confusingly and explicitly, that courts are not art critics and should not make “inherently subjective” judgments about an artist’s intended meaning of the artwork an issue. What is the panel’s advice to lower courts on how to conduct a fair use analysis to determine whether an allegedly infringing work is substantially similar to the original?
Is it possible that Section 106 of the Copyright Act, by allowing a creator the exclusive right to make derivative works, will nullify the safeguards afforded by Section 107’s fair use defence?
Is the Second Circuit returning to a more restrictive construction of Section 107, which provides a safe harbour for purposes such as criticism, comment, news reporting, or teaching, despite Sections 106 and 106A?
Is it possible to claim fair usage just when the new work responds to or critiques the source work?
Can a photograph of another copyrighted work, such as a painting, street art, or a copyrighted product label, ever be considered a transformative use if the snapshot captures the source work in its entirety?
While the panel’s decision emphasises the difference between “transformative” and “derivative” works, the implications of these classifications will most likely be clarified by the decision on the petition for rehearing and rehearing en banc, as well as possibly by a petition for certiorari to the United States Supreme Court.
Until this issue is further clarified, artists, musicians, photographers, and other work creators should be aware of this decision, which appears to require that their works stand apart from any source material on which they are based in such a way that they have a fundamentally different and new artistic purpose and character.
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