Friday, July 05, 2019

Warhol wins on fair use of photo (but should've won on substantial similarity)

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 17-cv-2532 (JGK) (S.D.N.Y. Jul. 1, 2019)

In some sense, this fair use case is a foregone conclusion; even the terrible Saderup decision made an exception for Andy Warhol, because we all know that his touch (filtered through the actual human touch of assistants) confers new meaning and value on an artwork.  The other thing this case illustrates is that courts are more comfortable with fair use than they are with a true infringement inquiry (did the defendant copy too much protected material from the plaintiff?) when the real problem with the claim is that the defendant copied without taking very much, if any, protected material.  The third factor analysis here even implicitly admits that the plaintiff hasn’t identified any expression that was taken from her photograph of Prince.  If we were really concerned that transformativeness has gone too far—I’m not, but I also think we should be serious about requiring substantial appropriation of protected expression—then one way to deal with that problem would be to take infringement more seriously rather than using fair use as a clean-up tool.  The finding of transformativeness here is in part the flip side of the lack of copying of protected expression: Warhol’s prints were readily able to bear new meaning and message because the expression in the original photo had been abstracted away, not because of a Sherrie Levine-style appropriation.

Anyhow, “Lynn Goldsmith is a photographer who has photographed numerous rock, jazz, and R&B performers,” and her work “centers on helping others formulate their identities, which she aims to capture and reveal through her photography.”  She uses both interpersonal techniques to establish rapport and photographic techniques with respect to lighting, camera position, and other elements to capture her subjects’ “true selves.” She photographed Prince in her studio on assignment from Newsweek in 1981. He arrived wearing makeup, and she applied more “to connect with Prince physically and in recognition of her feeling [that] Prince was in touch with the female part of himself” while also being “very much male.” He was photographed in his own clothes, except for a black sash that he picked from Goldsmith’s clothing room and wore around his neck. Goldsmith decided to use a plain white background and lit the shoot in a way that emphasized Prince’s “chiseled bone structure.” Goldsmith believed that the photographs from her shoot with Prince show that he is “not a comfortable person” and that he is a “vulnerable human being.”
1984 Vanity Fair portrait
In 1984, Vanity Fair licensed one of these studio portraits for use as an artist’s reference. Goldsmith’s photography agency submitted the photo; Goldsmith herself did not know at the time that the photograph had been licensed for use as an artist’s reference. Vanity Fair commissioned Warhol to create an illustration of Prince for an article titled “Purple Fame,” which stated that it featured “a special portrait for Vanity Fair by ANDY WARHOL.” The credit included: “source photograph © 1984 by Lynn Goldsmith/LGI.” Warhol then created the “Prince Series,” comprised of sixteen distinct works: twelve silkscreens, two screen prints on paper, and two drawings. Although Goldsmith alleged that Warhol bodily copied her photo as part of his creation process, defendant AWF didn’t concede this and it doesn’t matter, because any exact reproduction occurred 40 years ago, well beyond the limitations period.
color version of one of the images

Goldsmith first learned that Warhol created the Prince illustration for Vanity Fair after Prince’s death, when it republished the image online; initially, she told AWF that use infringed one of her colored Prince portraits but, after further comparison, identified instead the black and white photo at issue in this case. She then registered the photo as an unpublished work. AWF makes the Prince Series available for licensing to third parties for use in books, magazines, newspapers, and for other merchandizing purposes. Goldsmith licenses single images of her photography, and has issued 10 or 11 licenses for other photos of Prince in concert and at other venues, but hasn’t editioned or sold any prints of the photo here; she intends to start in the future, when prices will be higher. In 2004, she sold a fine-art print of Prince that she created in 1993 to a private collector who also owns three Warhol works of art.

Fair use factor one: the Prince Series is commercial, but public exhibition of art is in the public interest. Anyway, transformativeness trumps commerciality. The question is whether new meaning/message may reasonably be perceived and the answer is yes.  Goldsmith focused on revealing identity, and her photo illustrated that Prince was “not a comfortable person” and that he is a “vulnerable human being.”

Warhol’s Prince Series, in contrast, can reasonably be perceived to reflect the opposite. In all but one of the works, Prince’s torso is removed and his face and a small portion of his neckline are brought to the forefront. The details of Prince’s bone structure that appear crisply in the photograph, which Goldsmith sought to emphasize, are softened in several of the Prince Series works and outlined or shaded in the others. Prince appears as a flat, two-dimensional figure in Warhol’s works, rather than the detailed, three-dimensional being in Goldsmith’s photograph. Moreover, many of Warhol’s Prince Series works contain loud, unnatural colors, in stark contrast with the black-and-white original photograph. And Warhol’s few colorless works appear as rough sketches in which Prince’s expression is almost entirely lost from the original.
These alterations result in an aesthetic and character different from the original. The Prince Series works can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure. The humanity Prince embodies in Goldsmith’s photograph is gone. Moreover, each Prince Series work is immediately recognizable as a “Warhol” rather than as a photograph of Prince - in the same way that Warhol’s famous representations of Marilyn Monroe and Mao are recognizable as “Warhols,” not as realistic photographs of those persons.

One could reasonably object to the last sentence as carving out an Andy Warhol exception, but the rest of it is hard to dispute (and provides some reason to think that Warholization is transformative, albeit not a tactic limited to Warhol himself).

Factor two: unpublished status would ordinarily weigh in Goldsmith’s favor, but “the reasons unpublished works enjoy additional protection against fair use - including respect for the author’s choices of when to make a work public and whether to withhold a work to shore up demand - carry little force in this case, where Goldsmith’s photography agency licensed the photograph for use as an artist’s reference.” Anyway, factor two is of limited relevance for transformative works. Favors neither party.

Factor three: Goldsmith argued that the Prince Series works contain the essence of the entire Goldsmith Prince photo.  Her best argument for this was apparently that Vanity Fair told him to use the photo, and thus must have required that he include the expression in the photo.  The court compared this case to the Seventh Circuit case of Kienitz v. Sconnie Nation LLC, and helpfully included the relevant images in the opinion to show why the comparison was apt. The Kienitz court, while—as the district court here specifically noted—criticizing Cariou, found fair use, placing particular emphasis on the third factor. The Warholization-like process employed “removed so much of the original that, as with the Cheshire Cat, only the smile remains,” even though it weighed against the defendants the claim that they didn’t need to use that particular photo “when so many noncopyrighted [sigh] alternatives (including snapshots they could have taken themselves) were available.” Here, by contrast, Warhol was required to use the photo.
Kienitz images
This case was Kienitz plus Cariou: Though the Goldsmith photo had protectable elements, which could include “posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved,” “these creative elements are almost entirely absent from the Prince Series works.”  The cropping was different; Goldsmith’s photo included much of Prince’s torso.  The Prince Series softens, shades, or traces over the sharp contours of Prince’s face that Goldsmith emphasized in her photo. The 3D effect of the photo, produced by the background and lighting that Goldsmith chose, was replaced by “a flat, two-dimensional and mask-like figure of Prince’s head,” and mostly on a loudly colored background; the Warhol works that were in black and white “especially crude and the creative features of the Goldsmith Prince Photograph are especially absent.”  Here you see the flip side of transformativeness in the factor three analysis: “Ultimately, Warhol’s alterations wash away the vulnerability and humanity Prince expresses in Goldsmith’s photograph and Warhol instead presents Prince as a larger-than-life icon.”

The pose and angle of Prince’s head were copied, but “such a pose cannot be copyrighted” because copyright law “protect[s] only plaintiff’s particular photographic expression of [a] pose[] and not the underlying ideas therefor.” Several non-Goldsmith photographs also captured Prince in a similar pose, “indicating that the pose is not particularly original.” The distinctive way in which Goldsmith presented Prince’s uncopyrightable facial features was absent from the Warhol works, which each contained “little, if any, of the copyrightable elements” of Goldsmith’s photo (which is why this should be a non-substantial similarity case).  Heavily favors fair use.

Factor four: Goldsmith argued that the Prince Series harmed her licensing markets, which overlap with AWF’s licensing markets.” Her evidence didn’t show market substitution.  Although her photos and Warhol’s works have appeared in magazines and on album covers, “this does not suggest that a magazine or record company would license a transformative Warhol work in lieu of a realistic Goldsmith photograph.”  The licensing market for Warhol prints is for Warhols, not for portrait photos like Goldsmith’s. One collector who owned three of Warhol’s works of art also bought a fine-art print of Prince from her. “But as AWF persuasively argues, this does not suggest that the collector bought the works for the same reason, perceives the works similarly, or believes the works are substitutes for each other (the fact that the collector owns both of them suggests the opposite).” The court declined to rely on AWF’s expert report or on one of its fact witnesses on the market, and didn’t rule on excluding Goldsmith’s expert; even taking his opinions into account on licensing, the fourth factor favored AWF. “The evidence shows that the Prince Series works are not market substitutes that have harmed - or have the potential to harm Goldsmith.” And we’re done.

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