Second Circuit: Warhol's "Prince Series" Derivative, Not Transformative

• Published date: 13 August 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Trials & Appeals & Compensation
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Margaret Esquenet and Maxime Jarquin

The fair use doctrine can be difficult to apply in copyright infringement cases where the copying at issue allegedly furthers an artistic purpose. This challenge was on display in the Second Circuit's reversal of the Southern District of New York's finding that Andy Warhol's use of a copyrighted photograph of the renowned musician Prince constituted a fair use of the portrait, holding that it did not.

At the root of this dispute is a set of portrait pictures Lynn Goldsmith took of the celebrated pop artist in 1981. In 1984, Goldsmith licensed one of the photographs (the "Goldsmith Photograph") to Vanity Fair, so that an artist could use it to make an illustration for an article the magazine. This artist was none other than Andy Warhol, the most prominent figure in the Pop art movement, known for his silk screen prints. Although Warhol had a license to make only one print based on the Goldsmith Photograph, he proceeded to make fourteen additional prints. Warhol claimed a copyright over these prints, and when he died, the rights were conveyed to the Andy Warhol Foundation for the Visual Arts ("AWF").

The original "Goldsmith Photograph" The Warhol print that appeared in Vanity Fair

Some of the 14 "Prince Series" prints

Goldsmith discovered the existence of the additional fourteen prints Warhol made (now known as the "Prince Series") when Prince passed away in 2016. Goldsmith then registered the Goldsmith Photograph with the Copyright Office and promptly informed AWF of Warhol's infringement of her rights in the image. In response, AWF sued Goldsmith and her foundation for a declaratory judgement that the Prince Series was non-infringing. Goldsmith countersued for copyright infringement.

After considering the four fair use factors, the SDNY held that they all weighed in AWF's favor, granted summary judgment to AWF, and dismissed Goldsmith's infringement claim. In relevant part, the court found that the Prince Series was transformative because it evinced a different artistic intent than the Goldsmith Photograph. Specifically, the SDNY found that Goldsmith's portrait shows Prince as "not a comfortable person" and a "vulnerable human being" while the Prince Series depicts him as an "iconic larger-than-life figure." The court also found that by flattening the photograph and doing away with some of the angles and lighting Goldsmith had used, Warhol had removed "nearly all of the protectible elements" from the original.

The Second Circuit rejected the...