Fair Use Flop: Understanding The Second Circuit’s Decision in Warhol v. Goldsmith

On March 26, 2021, the Second Circuit ruled that a decades-old series of prints created by Andy Warhol depicting music legend Prince infringed the copyrighted photograph by Lynn Goldsmith on which the series was based. Warhol’s series of prints takes Goldsmith’s traditional, black and white portrait of the singer and superimposes it with his signature pop art stylization. Goldsmith did not find out that Warhol had used her image until Prince died in 2016. The court’s decision overturned a district court ruling which declared Warhol’s works legal under the fair use doctrine. But what exactly is the fair use doctrine, and why was it so important in this case? Let’s find out.

Photo by Julius Drost on Unsplash

The Cornerstones of Copyright
To understand fair use, you first have to know some basics of copyright law. Copyright is a form of intellectual property that protects the creators of “original works of authorship” that are fixed in a tangible medium of expression. First, let’s address what “fixation” means. A work is fixed when it is stored or captured in a medium for more than a short period of time, allowing it to be perceived, reproduced, or communicated for more than a short time. For example, when an author puts a pen to paper and writes a story, the “work” of the story is fixed on paper.

An original work of authorship must meet two requirements. First, the work must be independently created. In other words, it cannot be copied from elsewhere. The second requirement is that the work possesses at least some minimal degree of creativity. As the phrase suggests, the minimal degree of creativity bar is low, making it an easy standard to meet. Types of work that are eligible for copyright protection include books, movies, music, pictures, paintings, sculptures, and many others. However, ideas, methods, and systems, cannot be copyrighted.

Copyright infringement occurs when any of the copyright owner’s exclusive rights are violated. For example, when the work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. However, there is one major exception to these exclusive rights: the fair use defense.

Focusing On Fair Use Factor
Activities that would otherwise infringe an owner’s copyright may be defensible under the fair use doctrine. In essence, fair use acts as a limitation on copyright owners’ exclusive rights. The doctrine may permit unauthorized uses of copyrighted works depending on the circumstances and nature of the use. Examples of fair use may include commentary, criticism, news reporting, research, and scholarship.

Whether or not a use is fair is determined on a case-by-case basis depending on four factors:

  1.    The purpose and character of the use,
  2.    The nature of the copyrighted work,
  3.    The amount and substantiality of the original work that is taken, and
  4.    The effect of the use upon the plaintiff’s commercial market. 

Even if the use is for criticism or news reporting, it is not necessarily permissible fair use. So, how do you know whether a use is fair or not? Typically, it is uncertain what is fair until the court applies the fair use factors.

The first fair use factor, the purpose and character of the defendant’s use, concerns whether the use is of a commercial nature or is for nonprofit or educational purposes, as well as whether the work is transformative. A noncommercial and highly transformative use is more likely to be found fair. Transformativeness considers the extent to which the new work has altered the appearance or nature of the original work, or even its use in a different context. For example, changing a song’s style and lyrics to convey a new meaning and message could be considered transformative for the purposes of fair use analysis.

The second factor is the nature of the copyrighted work. Highly creative works, such a fictional novel, as opposed to those that are factual, such as a biography, generally have a stronger basis for copyright protection. In a case where the original work is highly creative, a party’s use of the work is less likely to be deemed fair. But, as with the first factor, if the defendant’s use or work is transformative, it is possible to have fair use even if the original work is highly creative.

The third factor in a fair use analysis is the amount and substantiality of the original work that is taken. In general, the less a party takes from the original work, the more likely it is that their copying will be considered a fair use. However, a party is more likely to run into problems if they take the most memorable aspect of a work. This is often referred to as “the heart of the work.” Taking this part of the work makes it less likely that a party’s fair use defense will succeed.

The fourth fair use factor is the effect of the use upon the plaintiff’s commercial market. This factor essentially looks at whether a party’s use deprives the copyright owner of income. Uses that undermine an existing or potential market for a copyrighted work are less likely to be found fair.

These factors must be balanced against one and another when considering whether or not a particular use is fair. And while none of these factors are dispositive of a fair use finding, the Second Circuit decision in this case turned largely on the analysis of transformative use. However, the standard for determining which uses are transformative is often quite blurry. And this case is no exception.

Transformativeness Takes Center Stage

The lower court’s decision centered on the conclusion that Warhol’s work constituted a transformative work. In its decision, the court looked to the Second Circuit’s 2013 ruling in Cariou v. Prince. The controversial Cariou case found that appropriation artist Richard Prince had made fair use of photographer Patrick Cariou’s images. The court reasoned that Prince’s new images had “a different character” and employed new aesthetics (in other words, a new look and feel) that were distinct from the originals. Relying on this analysis, the district court judge concluded that Goldsmith depicted Prince in the photo as a “vulnerable, uncomfortable person” and Warhol transformed the photo to depict Prince as “an iconic, larger-than-life figure.”

Second Circuit Judge Gerald Lynch disagreed, asserting that the ruling had placed too much emphasis on subjective meaning. In other words, transformativeness cannot be determined by the stated or perceived intent of the artist. Furthermore, the court cautioned that judges should not attempt to assume the role of art critic when making this inquiry. A court must instead examine “how the works may reasonably be perceived.” The Second Circuit ultimately determined that the purpose and function of the two works were identical in that they are both portraits of the same person.

The court resolved that while Warhol may have added his own “signature style,” he had not created something “fundamentally different and new.” Judge Lynch explained that a transformative work must at a minimum “comprise something more than the imposition of another artist’s style” on the original work. In addition to rejecting the fair use argument, the Second Circuit ruled that Warhol’s image constituted copyright infringement.

The Fair Use Fight Continues

The decision suggests that using “new aesthetics” is not enough to make a work transformative. Furthermore, it requires secondary works to serve a distinctly different artistic purpose than that of the original work.

However, the case may not be settled quite yet. Less than a month after the decision was released, The Andy Warhol Foundation for the Visual Arts petitioned the Second Circuit for a new hearing. In its petition the Foundation warned that allowing the decision to stand could “render unlawful many of the most historically significant artistic works of the last half-century.” To be sure, the ruling signals a marked departure from Cariou, potentially raising the bar for fair use standards moving forward.

Lydia Bayley
Associate Blogger
Loyola University Chicago School of Law, JD 2022