A Reader Survey on Copyright Fair Use
How close is too close?
That question can arise in a number of situations, including shaving, hatchet throwing competitions and war games. It often arises in the context of Intellectual Property disputes. For example, in patent matters, the proximity of the claimed subject to prior art and to an accused device arises in questions of obviousness and infringement under the doctrine of equivalence, respectively. In cases of trademark infringement, the inquiry addresses whether the accused mark is so close to the challenging mark as to have caused the likelihood of confusion in consumers regarding the source of the goods or services. In the context of copyright law, the issue can arise when an artist uses a copyrighted work as an artists reference for his 1 own work. A case pending before the US Supreme Court starkly illustrates the issues and ironies that can arise when a graphic artist uses a photograph whose copyright is owned by another as an artists reference. The battle is not a mundane question regarding the facts (what was done), but rather the more ethereal inquiry into how the courts should analyze the facts in view of the law.
Factual Background
In 1981 Lynne Goldsmith, a noted photographer of numerous rock, jazz and R&B performers, took a series of black-and-white studio portrait photographs of the then-emerging rock star known as Prince. Then in 1984, Conde Nast paid a $400 fee for a license to use one of the photographs ( the Goldsmith photograph ) as an artists reference, and commissioned Andy Warhol to create a full color illustration based on the licensed photograph for an article titled Purple Fame , which was ultimately published in the November 1984 issue 1 of Vanity Fair magazine (which was owned by Conde Nast).
The Goldsmith Prince Photograph and Warhols Purple Fame Image
Based on the photograph, and without taking a further license from Goldsmith, Warhol then created the Prince Series comprising sixteen distinct works including the one used in the Vanity Fair magazine article. Twelve of the works are silkscreen paintings, two are screen prints on paper and two are drawings. The Andy Warhol Foundation for the Visual Arts, Inc ( AWF ) acquired ownership rights of the Prince Series from the Warhol estate after Warhol died in 1987
Warhols Prince Series
After Prince died in 2016, Vanity Fair published an online copy of its 1984 Purple Fame article, and subsequently issued a commemorative magazine titled The Genius of Prince with one of the images from Warhols Prince Series. Without taking a license from Goldsmith, AWF proceeded to make each of the Prince Series works available for magazines, newspapers and for other merchandizing purposes.
In the avoidance of giving any reason for social dyspepsia, and without sacrificing clarity or focus, pronoun genders are used in an alternating pattern.
February 2023, The SideBar
Goldsmith first learned that Warhol created the Prince illustration for Vanity Fair after Prince s death in 2016. She advised AWF that she believed the Condé Nast magazine cover infringed one of her Prince photograph copyrights, and subsequently filed a copyright registration application for the Goldsmith Prince Photograph as an unpublished work. AWF filed in the Southern District of New York a request for a declaratory judgment declaring that none of the sixteen works in the Prince Series infringes the copyright of the Goldsmith Prince Photograph, claiming that the Prince Series works are not substantially similar to the Goldsmith Prince Photograph and, in any event, the Prince Series works are protected by the fair use doctrine. Goldsmith counterclaimed for summary judgment denying AWFs request for a declaratory judgment and holding that the Prince Series works infringe the copyright of the Goldsmith Prince Photograph.
Copyright Law Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, and works of authorship include pictorial and graphic works. 17 USCS §102(a). Within the bundle of rights included in a copyright grant are protections of derivative works. 17 USCS §103. A derivative work is a work based upon one or more preexisting works. 17 USCS §101.
Copyright infringement generally occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. 17 USCS §§ 106, 501.
Photographs are generally considered creative works that merit copyright protection. Burrow Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); The protectible, original elements of a photograph include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved. Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992). But aspects of [a photograph] that necessarily flow from the photographs idea or the photographer s choice of a given concept are not protectible. Bill Diodato Photography, LLC v. Kate Spade, LLC, 388 F. Supp. 2d 382, 392 (S.D.N.Y. 2005).
To establish copyright infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Feist Publ ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). The copying of the second element must be unlawful based on the existence of a substantial similarity between the allegedly infringing works and the protectible elements of the copyrighted work. See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995).
''Fair use is a statutory exception to copyright infringement. 17 U.S.C. § 107. The four factors identified by Congress as especially relevant in determining whether the use was fair are: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the substantiality of the portion used in relation to the copyrighted work as a whole; (4) the effect on the potential market for or value of the copyrighted work. Harper & Row Publishers v. Nation Enters., 471 U.S. 539, 560-61 (1985). Courts often apply the term transformative to accused works that meet their ideals of fair use.
The SideBar, February 2023
The Southern District of New York found that the Prince works were transformative and within the fair use defense, and hence dismissed Goldsmiths infringement claim. Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 316 (S.D.N.Y. 2019). On appeal, the Second Circuit reversed and remanded for further proceedings on remedies. Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 2021 (2d Cir. N.Y., Mar. 26, 2021). AWF filed a petition for certiorari, which was granted. Oral arguments were held before the US Supreme Court in October 2022. For a review of the analyses employed by the district and appellate courts, see the full review article on my website at https://reinhardtip.com/.
Practice Tips
Advise your artist clients, as follows: If using an artists reference as the basis for a secondary work (in this case the Goldsmith photograph), either create the artist reference yourself, or commission another to do so under a work-for-contract. This will secure the copyright of the original work to your client.
Short of this, obtain a broad license to use the original artist reference materials from the owner of the copyright of the original work.
In the absence of a copyright or license, add sufficient elements to the secondary work to push it over the line from derivative to fair use. Merely removing some elements found in the original and amplifying others may not be sufficient. In this case, the Second Circuit found that the loud colors that Warhol applied were insufficient to achieve this goal. Although the Second Circuit denied setting a bright line rule, it is safer if the original work is not immediately identifiable in the secondary work. Merely adding sufficient elements to allow identification of the secondary work as being that of your client may be insufficient.
As these can be somewhat esoteric questions, it may be advisable to confer with counsel experienced in copyright matters.
Reader Survey
In recognition of the gaping disparities in the decisions of the well-informed district and appellate courts here, I thought it would be interesting to poll the readers of this article on their conclusions regarding the fair use issue raised.
(A) Are Warhols works derivative works within the scope of Goldsmiths copyright on the photo (opening AWF to potential liability for damages to Goldsmith)?
or,
(B) Are Warhols works sufficiently transformative to come within the fair use defense (in which case Goldsmith takes naught)?
or,
(C) Among the Warhol works, are the black and-white works derivative works, and the brightly colored works fair uses?
Transmit your answer to me at the email address below, with comments if you choose. Insert Warhol Survey Result in the title line. I will report results of this very unscientific poll in a future article, and perhaps (without attribution) in an amicus curiae brief.
