Citation: 11 F.4th 26 (2d Cir. 2021)
Date of Judgment: March 26, 2021
Court: United States Court of Appeals, Second Circuit.
Judges: Hon. Dennis Jacobs, Hon. Gerard E. Lynch and Hon. Richard J. Sullivan
Facts:
Goldsmith, a professional photographer, took a series of portrait photographs of Prince Rogers Nelson (“Prince”) in her studio. In 1984, Goldsmith, through LGL, (collectively “Goldsmith”) licensed the Goldsmith Photograph to Vanity Fair magazine for use as an artist reference. Vanity Fair, in turn, commissioned Andy Warhol to create an image of Prince for its November 1984 issue.
Andy Warhol created 15 additional works based on the Goldsmith Photograph, known collectively, and together with the Vanity Fair image, as the “Prince Series.” Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) acquired copyright in the Prince Series. Goldsmith first became aware of the Prince Series in late July 2016 and contacted AWF to advise it of the perceived infringement of her copyright.
Procedural History:
In 2017, AWF sued Goldsmith for a declaratory judgment that the Prince Series works were non-infringing or that they made fair use of Goldsmith's photograph. Goldsmith countersued AWF for copyright infringement. The United States District Court for the Southern District of New York (“the District Court”) granted summary judgment to AWF on its assertion of fair use and dismissed Goldsmith's counterclaim with prejudice. Goldsmith filed an appeal at the United States Court of Appeals, Second Circuit (the “Court”).
Analysis:
The Court considered the following four factors to determine whether AWF could avail the fair-use defense:
A. The Purpose and Character of The Use
The Court opined that this factor required the secondary work to be “transformative,” as well as non-commercial.
Transformative Works and Derivative Works
The Court emphasized the case of Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013) (“Cariou”) and opined that fair use is a context-sensitive inquiry that does not lend itself to simple bright-line rules.
The District Court had interpreted Cariou liberally by stating that any secondary work is necessarily transformative as a matter of law “[i]f looking at the works side-by-side, the secondary work has a different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results.”
However, the Court rejected the interpretation of Cariou by the District Court and held that any secondary work that adds a new aesthetic or new expression to its source material may not be necessarily transformative.
Additionally, the Court held that liberal interpretation of transformative fair use reduces statutory protections for derivative works. Further, the Court stated that any derivative works that “add something new” to their source material would not qualify as fair use.
The Court analyzed the concept of transformative fair use by considering the “purpose and character” of the primary and secondary works. While referring to the test of comparing the works at issue the Court stated that, “the secondary work itself must reasonably be perceived as embodying a distinct artistic purpose, one that conveys a new meaning or message separate from its source material.”
Accordingly, viewing the works side-by-side, the Court concluded that the Prince Series is not “transformative” within the meaning of the first factor. However, the Court did not confirm whether the Prince Series was a derivative work.
Commercial Nature
With respect to the commercial use factor, the Court held that “the fact that a commercial non-transformative work may also serve the public interest or that the profits from its commercial use are turned to the promotion of non-commercial ends does not factor significantly in favor of finding fair use.”
B. The Nature of the Copyrighted Work
The Court held that since the Goldsmith Photograph was both creative and unpublished, this factor must favor Goldsmith irrespective of whether the Prince Series works are transformative within the meaning of the first factor. The decision that the Prince series was non-transformative accorded this factor correspondingly greater weight.
C. The Amount and Substantiality of the Use
The Court concluded that the Prince Series borrows significantly from the Goldsmith Photograph, both quantitatively and qualitatively as the Warhol images are instantly recognizable as depictions or images of the Goldsmith Photograph itself.
D. The Effect of the Use on the Market for the Original
The Court by concluding that this factor weighed in favour of Goldsmith held that “although the primary market for the Goldsmith Photograph and the Prince Series may differ, the Prince Series works pose cognizable harm to Goldsmith's market to license the Goldsmith Photograph to publications for editorial purposes and to other artists to create derivative works based on the Goldsmith Photograph and similar works.”
Conclusion:
The Court finally concluded that each of the fair use factors favoured Goldsmith and AWF's defense of fair use failed. Further, the Court decided that AWF’s works were substantially similar to Goldsmith’s photographs as a matter of law.
Currently, a certiorari has been granted by the U.S. Supreme Court to revisit the question of whether a work of art is “transformative” when it conveys a different meaning or message from its source material. This matter is sub judice.
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