Friday 5 July 2019

Court rules Andy Warhol's Prince Portraits are fair use

On the left:  Prince, Lynn Goldsmith, 1981; on the right: Prince, Andy Warhol, 1984

The US District Court, Southern District of New York, on July 1 ruled that Warhol's 1984 "Prince Series" do not infringe Lynn Goldsmith's copyright on a Prince's photograph shot in 1981 for Newsweek and never published.

In October 1984, Vanity Fair licensed for 400 dollars one of Goldsmith's black-and-white studio photographs of Prince by her agency, while the photographer did not know that her work had been licensed for use as an artist's reference. Indeed, Vanity Fair commissioned Warhol to create an illustration of Prince titled "Purple Fame", which was published in the November 1984 issue of the magazine. The article contained a copyright attribution for the portrait making reference to the Goldsmith's source photograph. Based on the Goldsmith's Prince photograph, Warhol created also the Prince Series, comprised of sixteen works: twelve silk-screen paintings, two screen prints on paper and two drawing. Twelve of the sixteen works were then auctioned or sold; all works were licensed for use in books, magazines, newspaper and merchandising purposes.   

After Prince died on April 21, 2016, Vanity Fair republished an online copy of its November 1984 "Purple Fame" article, crediting Warhol and Goldsmith for the Prince illustration in the article, beside publishing a commemorative magazine using one work of Warhol's Prince Series as magazine's cover, crediting only Warhol and not Goldsmith. 

In July 2016, Goldsmith started complaining with the Andy Warhol Foundation that Warhol's Prince Series infringed upon the copyright associated with her photograph, demanding the Foundation to pay a substantial sum of money and threatening to sue if the Foundation refused.

The Foundation preemptively sued Ms Goldsmith and her company in 2017 seeking a declaratory judgement that the works based on Goldsmith's photograph do not constitute copyright infringement, being dissimilar to the Goldsmith Prince photograph and, in any event, that the series is protected by fair use doctrine. In addition, the Foundation raised also a statute of limitation defense, arguing that the three-year statute of limitation barred the defendant's claim. Goldsmith responded with a counterclaim for copyright infringement. 

The Court did not evaluate all parties' claims, focusing on whether that Prince Series were protected by fair use applying the four-factor test.

As to the first factor i.e. the purpose and character of the use, the Court found that the Prince Series works can be considered sufficiently transformative. Whereas Goldsmith's photograph centered on helping Prince to reveal his identity of vulnerable and uncomfortable person, Warhol's Series created an  "iconic, larger-than-life figure" of the singer using unrealistic colors, employing a new aesthetic and conveying a new artistic message. Furthermore, each work of the Prince Series is immediately recognizable as a "Warhol" and not as real photograph.

As to the second factor, that is the nature of the copyrighted works, the Court ruled that its significance - as for the first factor - is diminished when the secondary work uses the copyrighted work for a transformative purpose as in the case at issue.

With reference to the third factor, i.e.  the amount and substantiality of the portion used in relation the copyrighted work as a whole, the Court observed that Warhol removed all protectible elements of Goldsmith's photograph in creating his Series. Indeed, he used only a portion of Goldsmith's photograph that is Prince's head; employing sharp contours of Prince's face and bright colors instead of black and white, giving a flat, two-dimensional effect rather than the three-dimensional one of the source photograph. 

As to the final fair use factor i.e. the effect of the use upon the potential market for or value of the copyrighted work, the Court inquired whether Warhol's Prince Series usurped the market for potential derivative works of Goldsmith's photograph. The Court found that the licensing markets of the two artists are very different and the Prince Series works cannot be considered as market substitutes that have harmed, also potentially, Goldsmith's market.  

The Court granted the Foundation's motion for summary judgement, dismissing Goldsmith's copyright infringement counterclaim. Goldsmith's lawyer said to New York Times that she was very disappointed from the fair use finding, hoping that the appeal will be more successful. 

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