Joshua Berlowitz
Andy Warhol has been called “the most important Western artist overall of the second half of the twentieth century” who “transformed both the appearance of art and the behavior of artists.”[1] Nevertheless, in Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, the Second Circuit held that (at least some of) Warhol’s works were not only not “transformative” but nearly “derivative”—about as “pejorative” a term as any that can be used to describe art.[2] What gives?
At issue in Goldsmith was Warhol’s “Prince Series.” In 1984, photographer Lynn Goldsmith licensed a photograph of the musician Prince for use as a source image for a Warhol silkscreen print. Unknown to Goldsmith, Warhol created fifteen additional prints, the Prince Series. When Prince died in 2016, Condé Nast licensed one of these unauthorized works for a special memorial issue. Goldsmith saw the cover and protested, after which the Andy Warhol Foundation (AWF) sued for a declaratory judgment of non-infringement or fair use. In 2019, the Southern District of New York granted AWF’s motion for summary judgment on the fair use claim.[3]
The Second Circuit disagreed with the district court’s analysis of the fair use defense. This defense balances an artist’s exclusive rights with the ability of others to respond to the original artist’s creative advances. The Copyright Act provides four factors for courts to consider in a “context-sensitive inquiry”[4] when alleged infringers raise the fair use defense:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.[5]
The first factor—purpose and character—focuses on commerciality and “the extent to which the secondary work is ‘transformative.’”[6] In fair use analysis, “transformative” bears a special definition, requiring the second work to bear not just a new aesthetic but to “reasonably be perceived as embodying a distinct artistic purpose, one that conveys a new meaning or message separate from its source material.”[7] Imposing a new style on a source image, therefore, doesn’t cut it; an artist needs to impose a new message, too.[8] Unfortunately for AWF, the court held that “the Prince Series retains the essential elements of the Goldsmith Photograph without significantly adding to or altering those elements.”[9] That is, it was not “transformative” even though it transformed the image from a Lynn Goldsmith photograph into an Andy Warhol silkscreen.
Confusingly, “derivative works” include those that “transform[]” an original work into a new medium.[10] Thus, a court may decide a work is “derivative” and not entitled to the fair use defense because it “transform[s]” a preexisting work but is not “transformative.” Although the Second Circuit panel did not hold that the Prince Series images were “derivative” as a matter of law, that the Series was nearly so helped justify their conclusion that the Series was not “transformative.” At the same time, they expressly rejected commenting on the “artistic worth of the Prince Series []or its place within Warhol’s oeuvre.”[11] Calling a work of art “derivative” as a matter of law can therefore be done without assessing whether it is “derivative” as a matter of art. After finding all four fair use factors favored Goldsmith, the court then rejected AWF’s fair use defense.[12]
This case highlights the importance of understanding legalese. “Derivative” and “transformative” are both terms of art and terms of art: Critics can use them to cast value judgments on creative works, and judges use them to refer to specific aspects of American copyright law. Thus, Warhol may be “derivative” yet cast an image in an entirely new style and be non-“transformative” despite his continuing influence on contemporary art. Goldsmith encourages copyright lawyers to check their context before commenting on art: What’s transformative outside the courtroom may be derivative within it.
[1] David W. Galenson, Revising the Canon: How Andy Warhol Became the Most Important American Modern Artist, 1 (Becker Friedman Institute for Economics Working Paper No. 2021-14, 2021), https://ssrn.com/abstract=3778740.
[2] ___ F.4th ___ (Goldsmith I), 2021 WL 3742835 at *35 (2d. Cir. 2021).
[3] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith (Goldsmith II), 382 F. Supp. 3d 312, 316 (S.D.N.Y. 2019).
[4] Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013) (as quoted in Goldsmith I, ___ F.4th at *17).
[5] 17 U.S.C. § 107.
[6] Goldsmith I, ___ F.4th at *17 (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)).
[7] Id. at *28.
[8] Id. at *30.
[9] Id. at *32.
[10] 17 U.S.C. § 101.
[11] Id. at *35.
[12] Id. at *54.