By, Ankita Malik & Amala Govindarajan

On March 26th, 2021, in Andy Warhol Foundation v. Goldsmith,[i] the Second Circuit held that artist Andy Warhol’s secondary work[ii], the ‘Prince Series’ based on Lynn Goldsmith’s photograph[iii] of the musician Prince was not fair use. On April 5th, 2021, the United States Supreme Court decided Google v. Oracle[iv] (the Google judgment), which moved away from the traditional application of the fair use doctrine. The Andy Warhol Foundation (AWF) filed a petition for rehearing en banc following the Google judgment.[v] On August 24th, 2021, the Second Circuit reaffirmed[vi] its decision by stating that the rationale in the Google judgment did not affect the decision rendered on March 26th.

Background

In 1984, Goldsmith’s studio had licensed the Prince photograph to Vanity Fair to use as an artist reference for an illustration.[vii] In addition to creating the authorized illustration, Andy Warhol also created fifteen unauthorized silkscreen and pencil illustrations of Prince by referring to Goldsmith’s photograph. After Warhol’s death, the AWF assumed ownership of the copyright of Warhol’s works. In 2016, the AWF licensed the Prince Series to Condé Nast. When Goldsmith came upon the publication, she realized that her photograph was the basis of the Prince Series. She sent a legal notice to AWF claiming copyright infringement. AWF sued Goldsmith for a declaratory judgment of non-infringement and, alternatively, of fair use. Goldsmith countersued for copyright infringement.

The Second Circuit on the Fair Use Doctrine

In determining the fair use question, the Second Circuit held all the four non-exhaustive factors[viii] in favour of Goldsmith in the March 26th judgment. It held the Prince Series to be non-transformative as it did not have an entirely distinct artistic purpose.[ix] Despite the alterations made by Warhol, the Prince Series was substantially similar to Goldsmith’s photograph. According to the Second Circuit, allowing the argument that the secondary work was recognizable as a Warhol would create a ‘celebrity-plagiarist privilege.’[x]

Effect of Google v. Oracle

In its amended opinion, the Second Circuit considered the US Supreme Court’s decision in the Google judgment while discussing the ‘purpose of the work.’[xi] In that case, the  Supreme Court had weighed fair use in favour of Google due to the ‘public benefit’ it would produce via the precise copying of the particular computer code.[xii] The Second Circuit gave lesser importance to a similar argument where it held that ‘public benefit’ did not trump the requirement to compensate Goldsmith. Thus, it brings forth the question of when ‘purpose’ as a factor has more weightage. Further, AWF’s argument that the Google judgment refuted the March 26th opinion was rejected on the basis that determinations of fair use are highly contextual and fact-specific.[xiii] Therefore, the doctrine of fair use could not have a straitjacket application and would be applied differently to utilitarian computer concepts[xiv] as compared to works of art, photographs, literature etc.

New Considerations 

Some creative works contain inseparable elements, wherein secondary works cannot be produced if the elements are separated. The Google judgment acknowledged that the original code had inseparable elements, and the secondary work was, thus, fair use. [xv] The Second Circuit also identified the inseparable elements in Goldsmith’s photograph but held that it was not transformative fair use as the secondary work contained these inseparable elements.[xvi] Thus, what was considered a legitimate argument in favour of Google, drew a different conclusion in the amended judgment. This creates an inconsistency over whether a secondary work containing inseparable elements of the original work – where the original work is a photograph – is fair use or not.  In the March 26th judgement, the Court referred to Kienitz v. Sconnie Nation LLC[xvii], in which it was held that the use of a photograph in a manner that stripped away nearly every expressive element was fair use. However, while deciding the matter in AWF v. Lynn Goldsmith, the court considered how the specific elements incorporated by Goldsmith were so inextricably linked to the photograph that even though Warhol tried to amplify or change these elements, the same remained intrinsic to the picture. Thus, while the Court in the Google judgment had stipulated a narrow application of copyright doctrines vis-à-vis software codes or similar types of works, the inconsistency referred to here pertains to intrinsic and inextricable elements of a photograph or any work for that matter, which cannot be separated from the subject matter. Thus, the question arises as to what would constitute fair use in such situations and what would be the limits of the same.

Further, the Second Circuit focused on the ‘potential market of derivative works’ in the Goldsmith judgment. In the Google judgement, the Supreme Court had warned about the ‘danger of circularity’[xviii] where every fair use case can have a ‘potential’ loss of market to the plaintiff if unrealized licensing opportunities are considered. However, the Second Circuit gave weightage to the effect of Warhol’s work on Goldsmith’s potential derivative works market. This application is on the fringe of circularity, as there is no concrete limitation on assessing ‘potential’ harm.

Impact on Pop Art

AWF argued that the March 26th judgment tried to outlaw a specific style of art. The Second Circuit rejected this argument and clarified that it was merely trying to ensure that no artist takes undue advantage of another artist’s work.[xix] Pop Art, as used by Warhol, draws heavily from various photographs as artistic references. What the Court referred to as a ‘celebrity-plagiarist privilege’ is, in fact, an art form that was developed in reaction to abstract expressionism.[xx] It connected to wider audiences due to its stark style and identifiable subjects, thereby becoming one of the primary tributaries of modern art.[xxi]

The amended judgment post the Google verdict has thus, left appropriation artists in a fix again, which will open the floodgates of litigation. This might significantly alter the way that Pop Art is created and perceived.

[i] Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, Lynn Goldsmith Ltd.,  No. 19-2420- CV, WL 1148826 (2d Cir. Mar. 26, 2021) hereinafter Andy Warhol v. Lynn Goldsmith.

[ii] Id. at 9.

[iii] Id. at 7.

[iv] Google LLC v. Oracle America, Inc., 593 U. S. 1 (2021).

[v] Daniel Cassady, Andy Warhol Foundation Fights Back in Fair Use Case, The Art Newspaper (April 24, 2021, 00:35 BST), https://www.theartnewspaper.com/news/andy-warhol-foundation-for-the-visual-arts-fights-back-in-fair-use-case.

[vi] Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, Lynn Goldsmith Ltd.,  No. 19-2420- CV (2d Cir. Aug. 24, 2021) hereinafter Andy Warhol v. Lynn Goldsmith (Amended Opinion).

[vii] Id. at 10.

[viii] 17 U.S.C. § 107.

[ix] Andy Warhol v. Lynn Goldsmith, No. 19-2420- CV, WL 1148826, 30 (2d Cir. Mar. 26, 2021).

[x] Id. at 31.

[xi] Id. at 25.

[xii] Google LLC v. Oracle America, Inc., 593 U. S. 25, 31 (2021).

[xiii] Andy Warhol v. Lynn Goldsmith (Amended Opinion), No. 19-2420- CV, 55 (2d Cir. Aug. 24, 2021).

[xiv] Google LLC v. Oracle America, Inc., 593 U. S. 15 (2021).

[xv] Id. at 29.

[xvi] Andy Warhol v. Lynn Goldsmith (Amended Opinion), No. 19-2420- CV, 42 (2d Cir. Aug. 24, 2021).

[xvii] Kienitz v. Sconnie Nation, LLC, 766 F. 3d 756 (7th Cir. 2014).

[xviii] Google LLC v. Oracle America, Inc., 593 U. S. 33 (2021).

[xix] Andy Warhol v. Lynn Goldsmith (Amended Opinion), No. 19-2420- CV, 57 (2d Cir. Aug. 24, 2021).

[xx] Comparing Abstract Expressionism and Pop Art, Art Blog – David Charles Fox (October 14, 2016), https://davidcharlesfox.com/comparing-abstract-expressionism-pop-art/.

[xxi] Abstract and Pop Art, Art at the Vac, https://www.artatthevac.com/abstract-and-pop-art.

Photo by Getulio Ferreira on Flickr.