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US: New York District Court issues transformative fair use decision

In Andy Warhol Foundation for the Visual Arts Inc. v Goldsmith et al. No. 17-CV-2532, 2019 (S.D.N.Y. July 1 2019), the US District Court for the Southern District of New York addressed the question of whether Andy Warhol's (Warhol) use of a photograph of Prince Rogers Nelson, best known as Prince, constituted violations of the Copyright Act. Granting the Andy Warhol Foundation's (AWF) motion for summary judgment, the court found that although the at-issue photograph was protected by copyright, AWF had a viable fair use defence.

By way of background, following Warhol's death, AWF was formed in accordance with Warhol's will. AWF controls Warhol's various works and licenses them to fund its programmes. Lynn Goldsmith (Goldsmith) is a photographer who has photographed numerous rock, jazz, and R&B performers. In 1981, during a photoshoot, Goldsmith captured the at-issue photograph of Prince in her New York Studio. According to Goldsmith, the photographs from her shoot with Prince showed he was "not a comfortable person" and that he was a "vulnerable human being." In 1984, Vanity Fair magazine licensed one of Goldsmith's photographs taken during the 1981 shoot (the Goldsmith Photograph). Vanity Fair subsequently commissioned Warhol to create an illustration of Prince for an article entitled "Purple Fame," and Warhol created a full-colour illustration of Prince that ultimately appeared in the article. The article stated that it featured "a special portrait for Vanity Fair by ANDY WARHOL," and contained a copyright attribution credit for the portrait as follows: "source photograph © 1984 by Lynn Goldsmith/LGI." The day after Prince died in 2016, Vanity Fair published an online copy of the "Purple Fame" article, sparking instant litigation.

According to court documents, Goldsmith first learned that Warhol created the illustration for Vanity Fair following the online publication of "Purple Fame." Goldsmith then put AWF on notice of the alleged infringement, and obtained a copyright registration for the Goldsmith Photograph as an unpublished work. AWF, for its part, asserted that Warhol's works were "not substantially similar to the Goldsmith Prince Photograph and, in any event, are protected by the fair use doctrine." After a brief discussion of the "ordinary observer test" for substantial similarity, the court declined to analyse the parties' respective substantial similarity arguments, "because it [was] plain [to the court] that the Prince Series works are protected by fair use." The court proceeded to apply the four fair use factors: (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; and (4) the effect on the potential market for or value of the copyrighted work.

According the first fair use factor great weight in AWF's favour, the court found that although the works were commercial in nature, they also added value to the broader public interest and that Warhol's work was transformative. The court concluded that the work "add[s] something new to the world of art and the public would be deprived of this contribution if the works could not be distributed." In doing so, the court alluded to the critical question in determining fair use, namely, whether copyright law's goal of promoting the progress of science and useful arts, as stated in the United States Constitution, would be better served by allowing the use of a work than by preventing it. The court ultimately held that the first, third, and fourth fair use factors favoured AWF, while the second factor was neutral.

This decision is informative and provides helpful guidance in applying copyright fair use criteria.

Karen Artz AshJerry Jakubovic

Katten Muchin Rosenman LLP 
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671

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