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. 

Andy Warhol Foundation Asks SDNY to Declare Prince Series Not Infringing

The Andy Warhol Foundation for the Visual Arts filed this month a suit against photographer Lynn Goldsmith asking the Southern District of New York Court (SDNY) to declare that the Andy Warhol Prince Series did not infringe on Defendant’s copyright, that the portraits in the series are transformative works protected by fair use, and that Defendant’s claim is barred by the equitable doctrine of laches. The case is The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith and Lynn Goldsmith, Ltd., 1:17-cv-2532.

Andy Warhol died in 1987, and his will directed that almost all of his estate should be used to create a foundation dedicated to the “advancement of visual arts.” Andy Warhol Foundation for the Visual Arts was created in 1987, and, around 1994, took ownership of all copyrights and trademarks owned by Andy Warhol at the time of his death.

Defendant photographed in 1981 musical artist Prince, aka the Artist Formerly Known as Prince, or the Artist. The photograph shows Prince facing the viewer, wearing a white shirt and suspenders. Only the top part of his pants are shown.

Andy Warhol created a whole series of portraits of Prince (the Prince Series), using his famous silkscreen printing technique, which he also used for his Marilyn Monroe portraits. The Prince Series “were inspired by [Defendant’s] photograph” (Complaint p. 13). The different portraits which are part of the Prince Series are variations of the same image, the face of Prince, detached and seemingly floating over a single color background, looking toward the viewer.

Andy Warhol, Prince (1984) Copyright AWF

Defendant licensed the photograph in 1984 to monthly magazine Vanity Fair, to be published in the November 1984 issue. One of the portraits of the Prince Series by Warhol was also published in Vanity Fair in its November 1984 issue.

Defendant contacted the Foundation for the first time in July 2016. Prince had died on April 21, 2016, and one of the portraits of the Prince Series was used for the cover of The Genius of Prince, published by Condé Nast in May 2016 to commemorate the musician’s life and works. Defendant “demanded that the Foundation pay a substantial sum of money and threatened to sue if the Foundation refused” (Complaint p.24).

Plaintiff filed suit, asking the SDNY to declare that the Prince Series does not infringes Defendant’s copyright, and that the portraits are a fair use of Plaintiff’s photograph.

Is the Prince Series Transformative? (First Fair Use Factor)

The Complaint concentrates on two of the fair use factors, the first factor, the purpose and character of the use and the fourth factor, the effect of the use on the potential market.

In 2013, the Second Circuit Court of appeals held in Cariou v. Prince that twenty-five of Prince's artworks were fair use because of their “entirely different aesthetic from Cariou's photographs.” In this case, Richard Prince, the appropriation artist, not the Artist formerly known as Prince, had used several photographs created by Patrick Cariou to create his Canal Zone series.

 Indeed, the more transformative is a use of a work, the more likely will it be protected by fair use. In our case, the Andy Warhol Foundation is claiming that the Prince Series “transforms the aesthetic and meaning of the Prince Publicity Photograph” and lists a series of examples showing how the Prince Series visually differs from the photograph (Complaint p. 14 to 17).

The Complaint notes, for example, that the portraits in the Prince Series focuses on the face of the subject, whereas the photograph shows Prince below the waist. The photograph shows Prince’s natural colors, whereas the portraits of the Prince Series use “unnatural neon colors.” Prince’s eyes are more heavily made-up in the Prince Series, the angle of the face differs from the angle of Prince’s face in the photograph, and the light reflected on Prince’s face in the photograph does not appear in the portraits made by Warhol.

Plaintiff argues that Warhol’s works are even more fundamentally different from the photograph, beyond mere visual differences, because the painting in the Prince Series “may reasonably be perceived as simultaneously honoring the celebrity of Prince while also conveying that Prince (like Marilyn Monroe and many other subjects of Warhol’s works) is a manufactured star with a stage name, whom society has reduced to a commodity” (Complaint p. 18). The essence of the Prince Series, a comment, is different than the original photograph, which was a publicity photograph.

Does the Prince Series Usurp the Market of the Photograph? (Fourth Fair Use Factor)

Plaintiff also argue that Warhol’s works and Defendant’s work do not target the same audiences, nor do they target the same art collectors or the same commercial markets. Andy Warhol’s works are “primarily sold to collectors of high-end Pop Art” (see here), which is not the case for the photograph (p.19).

Is the Copyright Claim Against the Foundation Barred by Laches?

Laches is an equitable defense where the defendant (or, in our case, the plaintiff seeking declaratory judgment) claims that the other party commenced suit with an unreasonable and prejudicial delay. The Warhol Foundation claims that Defendant should have known about the Prince Series after Vanity Fair published one of the Prince portraits in November 1984, because “[a]ny reasonable person in Defendant’s position would have reviewed the November 1984 issue of Vanity Fair, if only to confirm that Vanity Fair had complied with the license terms described above” (Complaint p. 20).

Since Defendant failed to timely file a copyright infringement suit, she prevented the Foundation to be able to defend itself, as Andy Warhol had died in 1987, three years after Defendant should have known about the Prince Series. Documents pertaining to the dispute may have been lost ordestroyed, and thus, as claimed by Plaintiff, the evidentiary record “has become prejudicially stale” (Complaint p.28).

The case is interesting, but likely to settle or be dismissed, and thus may not become a famous copyright case, even for 15 minutes.