Recently, the U.S. Court of Appeals for the Second Circuit issued a decision in Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) v. Goldsmith, No. 19-2420 (Mar. 26, 2021). The case was on appeal following AWF’s summary judgment victory in which the Southern District of New York concluded Andy Warhol’s “Prince Series” silkscreen prints and pencil illustrations constituted fair use of Goldsmith’s copyrighted 1981 photograph portrait of the musical artist Prince. The Second Circuit reversed the district court’s summary judgment ruling.
The decision focused on whether the Prince Series images were transformative works under the first fair use factor. The district court had held that Warhol’s images were transformative of the underlying photograph because they added new expressions and aesthetics. But, the Second Circuit said, application of such a bright-line rule overstretched the precedent and risked “crowding out statutory protections for derivative works.” To be transformative without making an obvious comment on the original, a secondary work of visual art must embody “an entirely distinct artistic purpose, one that conveys a new meaning or message entirely separate from its source material.” This requires more than merely altering or recasting the original work with a new aesthetic or another artist’s style. A transformative secondary work should stand apart from the raw material used to create it.
Warhol embellished Goldsmith’s photograph of Prince by adding “loud, unnatural colors,” intending to magnify some elements of the photograph while minimizing others. Still, however, the resulting Prince Series works retained the photograph’s essential elements. Because the photograph remained the “recognizable foundation upon which the Prince Series is built,” the Second Circuit concluded Warhol’s secondary works were not transformative. It also affirmed the district court’s finding that the Prince Series works were commercial in nature. Thus, the first fair use factor weighed in Goldsmith’s favor.
The Court held the remaining fair use factors also favored Goldsmith. The photograph was a creative and unpublished work, which limited application of the fair use doctrine. The Prince Series works borrowed significantly from the photograph, both quantitatively and qualitatively, and are readily identifiable as deriving from that specific photograph. Finally, the Prince Series works posed cognizable harm to Goldsmith’s market to license the photograph. Accordingly, the Court held that AWF’s fair use defense failed as a matter of law.