Second Circuit Finds Magazine Cover Featuring Portrait of Prince by Andy Warhol Not Fair Use
Recently, a federal appeals court in New York held that artwork by Andy Warhol, a leading figure of the Pop art movement, is not “transformative” and that the artist’s foundation committed copyright infringement when it licensed the reproduction of one of his works. Does the decision represent a shift in the copyright law? Here’s what you need to know.
In 1984, Vanity Fair licensed as an artist’s reference a black-and-white photograph of pop icon Prince shot by photographer Lynn Goldsmith. Vanity Fair then commissioned Warhol to create an illustration of Prince, which accompanied an article entitled Purple Fame. Warhol later created 15 additional artworks based on the Goldsmith photograph. Following Prince’s death in 2016, Condé Nast (the owner of Vanity Fair) issued a commemorative magazine entitled The Genius of Prince and licensed another of Warhol’s Prince series artworks from the Andy Warhol Foundation for the Visual Arts, Inc. (“the Warhol Foundation”) as the magazine’s cover.
After seeing the 2016 tribute magazine, Goldsmith accused the Warhol Foundation of copyright infringement; the foundation subsequently sued Goldsmith in federal district court in Manhattan for a declaratory judgment of non-infringement. On July 1, 2019, the district court held that Warhol’s work made fair use of Goldsmith’s photograph (which is a complete defense to copyright infringement). The court found that the Prince series works are transformative – meaning they add something new to the original work, with a further purpose or different character, altering the first with new expression, meaning, or message. In making its ruling, the district court heavily on a 2013 opinion from the Second Circuit Court of Appeals (which hears all appeals from federal courts in New York) in Cariou v. Prince, which found that 25 of 30 collaged and painted works by appropriation artist Richard Prince made fair use of Patrick Cariou’s photographic portraits of Rastafarians.
Goldsmith filed an appeal, and on March 26, 2021, the Second Circuit (through a three-judge panel) reversed the district court’s decision, finding that the 2016 publication of Warhol’s work in the magazine constituted copyright infringement. In doing so, the Second Circuit made two key rulings: (a) the Prince Series works are substantially similar to the Goldsmith photograph, and (b) Warhol’s use of Goldsmith’s photograph was not a fair use.
As to fair use, acknowledging that the district court was relying on Cariou, the Second Circuit stated that Cariou was the “high-water mark of our court’s recognition of transformative works,” and that, while the Second Circuit was not calling into question the correctness of its prior decision, it believed “some clarification” of Cariou “is in order.” The court then went through the other cases it has decided involving questions of fair use in the visual art context (two cases involving works by Jeff Koons) and stated: “A common thread running through these cases is that, where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’ . . . is insufficient to render a work transformative.” To be fair use, the secondary work must have an “entirely distinct artistic purpose, one that conveys a ‘new meaning or message’ entirely separate from its source material. While we cannot, nor do we attempt to, catalog all of the ways in which an artist may achieve that end, we note that the works that have done so thus far have themselves been distinct works of art that draw from numerous sources, rather than works that simply alter or recast a single work with a new aesthetic.” Here, per the Second Circuit, the changes made by Warhol to Goldsmith’s photograph were not enough to find the work transformative, as the photograph “remains the recognizable foundation upon which the Prince Series is built.” Importantly, the court found that, although the primary market for the Prince series and the Goldsmith photograph may differ, the Prince series works pose harm to Goldsmith’s market to license her photograph to publications and to other artists to create derivative works, weighing against fair use.
To read more about developments since the Second Circuit’s decision, including a recent petition for rehearing by the Warhol Foundation to the Second Circuit, how a Supreme Court case involving software code may impact this decision, and scholarly reaction to the decision, read Ms. Brankov’s article What’s Going on in the Warhol Foundation v. Goldsmith Case and Why It Matters, published in the first edition of Art She Says magazine (available for subscription here).
