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Date: 03-27-2021

Case Style:

The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, Lynn Goldsmith, Ltd.

Case Number: 19-2420-cv

Judge: Grard E. Lynch

Court: United States Court of Appeals for the Second Circuit on appeal from the Southern District of New York

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Defendant's Attorney:

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Description: This case concerns a series of silkscreen prints and pencil illustrations created by the visual artist Andy Warhol based on a 1981 photograph of the musical artist Prince that was taken by Defendant-Appellant Lynn Goldsmith in her studio, and in which she holds copyright. In 1984, Goldsmith’s agency,Defendant-Appellant Lynn Goldsmith, Ltd. (“LGL”), then known as Lynn Goldsmith, Inc., licensed the photograph to Vanity Fair magazine for use as an artist reference. Unbeknownst to Goldsmith, that artist was Warhol. Also unbeknownst to Goldsmith (and remaining unknown to her until 2016), Warhol did not stop with the image that Vanity Fair had commissioned him to create, but created an additional fifteen works, which together became known as the Prince Series.


Goldsmith first became aware of the Prince Series after Prince’s death in2016. Soon thereafter, she notified Plaintiff-Appellee The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”), successor to Warhol’s copyright in the Prince Series, of the perceived violation of her copyright in the photo. In 2017, AWF sued Goldsmith and LGL for a declaratory judgment that the Prince Series works were non-infringing or, in the alternative, that they made fair use of Goldsmith’s photograph. Goldsmith and LGL counter sued for infringement. The United States District Court for the Southern District of New York (John G. Koeltl, J.) granted summary judgment to AWF on its assertion of fair use and dismissed Goldsmith and LGL’s counterclaim with prejudice.Goldsmith and LGL contend that the district court erred in its assessment and application of the four fair-use factors. In particular, they argue that the district court’s conclusion that the Prince Series works are transformative was grounded in a subjective evaluation of the underlying artistic message of the works rather than an objective assessment of their purpose and character. We agree. We further agree that the district court’s error in analyzing the first factor was compounded in its analysis of the remaining three factors. We conclude upon our own assessment of the record that all four factors favor Goldsmith and


that the Prince Series works are not fair use as a matter of law. We further conclude that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law.


The relevant facts, which we draw primarily from the parties’ submissions below in support of their respective cross-motions for summary judgment, are undisputed.Goldsmith is a professional photographer primarily focusing on celebrity photography, including portrait and concert photography of rock-and-roll musicians. Goldsmith has been active since the 1960s, and her work has been featured widely, including on over 100 record album covers.Goldsmith also founded LGL, the first photo agency focused on celebrity portraiture. LGL represents the work of over two hundred photographers worldwide, including Goldsmith herself.Andy Warhol, né Andrew Warhola, was an artist recognized for his significant contributions to contemporary art in a variety of media. Warhol is particularly known for his silkscreen portraits of contemporary celebrities. Muchof his work is broadly understood as “comment[ing] on consumer culture and


explor[ing] the relationship between celebrity culture and advertising.” Cariou v.Prince, 714 F.3d 694, 706 (2d Cir. 2013). AWF is a New York not-for-profit corporation established in 1987 after Warhol’s death. AWF holds title to and copyright in much of Warhol’s work, which it licenses to generate revenue to further its mission of advancing the visual arts, “particularly work that is experimental, under-recognized, or challenging in nature.” J. App’x at 305.On December 3, 1981, while on assignment from Newsweek magazine,Goldsmith took a series of portrait photographs of (then) up-and-coming musician Prince Rogers Nelson (known through most of his career simply as“Prince”) in her studio. Goldsmith testified that, prior to Prince’s arrival at her studio, she arranged the lighting in a way to showcase his “chiseled bone structure.” Id. at 706. Goldsmith also applied additional makeup to Prince,including eye shadow and lip gloss, which she testified was intended both to build a rapport with Prince and to accentuate his sensuality. Goldsmith further testified that she was trying to capture Prince’s “willing[ness] to bust through what must be [his] immense fears to make the work that [he] wanted to [make].”Id. at 1557. Goldsmith took black-and-white and color photographs using a


Nikon 35-mm camera and a mixture of 85- and 105-mm lenses, which she choseto best capture the shape of Prince’s face.Prince, who according to Goldsmith appeared nervous and uncomfortable,retired to the green room shortly after the session began and ultimately lef twithout allowing Goldsmith to take any additional photographs. During the truncated session, Goldsmith took 23 photographs, 12 in black and white and 11in color. Goldsmith retained copyright in each of the photographs that she took. Most relevant to this litigation is the following photograph, hereinafter referred to as the “Goldsmith Photograph”:In 1984, Goldsmith, through LGL, licensed the Goldsmith Photograph to Vanity Fair magazine for use as an artist reference. Esin Goknar, who was photo


editor at Vanity Fair in 1984, testified that the term “artist reference” meant that an artist “would create a work of art based on [the] image reference.” Id. at 783.The license permitted Vanity Fair to publish an illustration based on the Goldsmith Photograph in its November 1984 issue, once as a full page and once as a quarter page. The license further required that the illustration be accompanied by an attribution to Goldsmith. Goldsmith was unaware of the license at the time and played no role in selecting the Goldsmith Photograph for submission to Vanity Fair.Vanity Fair, in turn, commissioned Warhol to create an image of Prince for its November 1984 issue. Warhol’s illustration, together with an attribution to Goldsmith, was published accompanying an article about Prince by Tristan Vox and appeared as follows: In addition to the credit that ran alongside the image, a separate attribution to Goldsmith was included elsewhere in the issue, crediting her with the “source


photograph” for the Warhol illustration. Vanity Fair did not advise Goldsmith that Warhol was the artist for whom her work would serve as a reference, and she did not see the article when it was initially published.Unbeknownst to Goldsmith and LGL, Warhol created 15 additional works based on the Goldsmith Photograph, known collectively, and together with the Vanity Fair image, as the “Prince Series.”1The Prince Series comprises fourteen silkscreen prints (twelve on canvas, two on paper) and two pencil illustrations,and includes the following images: 1 Though it acknowledged that the depiction of Prince in the Prince Series is similar to that in the Goldsmith Photograph, AWF did not concede below that the Goldsmith Photograph was the source image for the Prince Series, arguing instead that “somehow, Warhol created” it. Dist. Ct. Dkt. 55 at 18. In its brief before this Court, however, AWF describes the Goldsmith Photograph as the“source image” for the Prince Series. Appellee’s Br. at 6-7.


Although the specific means that Warhol used to create the images is unknown(and, perhaps, at this point, unknowable), Neil Printz, the editor of the Andy Warhol Catalogue Raisonné, testified that it was Warhol’s usual practice toreproduce a photograph as a high-contrast two-tone image on acetate that, afterany alterations Warhol chose to make, would be used to create a silkscreen. Forthe canvas prints, Warhol’s general practice was to paint the background andlocal colors prior to the silkscreen transfer of the image. Paper prints, meanwhile,were generally created entirely by the silkscreen process without any paintedembellishments. Finally, Warhol’s typical practice for pencil sketches was toproject an image onto paper and create a contoured pencil drawing around theprojected image.At some point after Warhol’s death, AWF acquired title to and copyright inthe Prince Series. Between 1993 and 2004, AWF sold or otherwise transferredcustody of 12 of the original Prince Series works to third parties, and, in 1998,transferred custody of the other four works to The Andy Warhol Museum. AWFretains copyright in the Prince Series images and, through The Artist RightsSociety (a third-party organization that serves as AWF’s agent), continues tolicense the images for editorial, commercial, and museum usage.


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On July 1, 2019, the district court granted summary judgment for AWF onits fair-use claim. See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382F. Supp. 3d 312, 316 (S.D.N.Y. 2019

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The Constitution empowers Congress to enact copyright laws “[t]opromote the Progress of Science and useful Arts.” U.S. Const. art. I, § 8, cl. 8.Congress has exercised this delegated authority continuously since the earliestdays of the nation, beginning with the Copyright Act of 1790 and, more recently,through the Copyright Act of 1976. Under the 1976 Act, copyright protectionextends both to the original creative work itself and to derivative works, which itdefines as, in relevant part, “a work based upon one or more preexisting works,such as a[n] . . . art reproduction, abridgement, condensation, or any other formin which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101.

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The doctrine of fair use has developed along with the law of copyright.“[A]s Justice Story explained, ‘in truth, in literature, in science and in art, thereare, and can be, few, if any, things, which in an abstract sense, are strictly newand original throughout. Every book in literature, science and art, borrows, andmust necessarily borrow, and use much which was well known and usedbefore.’” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994), quotingEmerson v. Davies, 8 F. Cas. 615, 619 (No. 4,436) (C.C.D. Mass. 1845) (alterationsadopted). The fair use doctrine seeks to strike a balance between an artist’sintellectual property rights to the fruits of her own creative labor, including theright to license and develop (or refrain from licensing or developing) derivativeworks based on that fruit, and “the ability of [other] authors, artists, and the restof us to express them- or ourselves by reference to the works of others.” Blanch v.Koons,467 F.3d 244, 250 (2d Cir. 2006).

Though it developed as a creature of common law, the fair-use defense wasformally codified with the passage of the 1976 Act. The statute provides a non-exclusive list of four factors that courts are to consider when evaluating whetherthe use of a copyrighted work is “fair.” These factors are:

(1) the purpose and character of the use, includingwhether such use is of a commercial nature or is fornonprofit educational purposes;(2) the nature of the copyrighted work;(3) the amount and substantiality of the portion used inrelation to the copyrighted work as a whole; and(4) the effect of the use upon the potential market for orvalue of the copyrighted work.17 U.S.C. § 107.As the Supreme Court has held, fair use presents a holistic context-sensitive inquiry “not to be simplified with bright-line rules[.] . . . All [fourstatutory factors] are to be explored, and the results weighed together, in light ofthe purposes of copyright.” Campbell, 510 U.S. at 577-78; see also, e.g.,Cariou, 714F.3d at 705 (“[T]he fair use determination is an open-ended and context-sensitiveinquiry.”). We consider each factor in turn.

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Outcome: For the foregoing reasons, we REVERSE the grant of AWF’s motion forsummary judgment, VACATE the judgment entered below dismissing LynnGoldsmith and LGL’s amended counterclaim, and REMAND this case for furtherproceedings consistent with this opinion.

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