Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith

19-2420-cv
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
August Term, 2020
Argued: September 15, 2020
Decided: March 26, 2021
Amended: August 24, 2021
Docket No. 19-2420-cv
THE ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC.,
Plaintiff-Counter-
Defendant-Appellee,
— v. —
LYNN GOLDSMITH, LYNN GOLDSMITH, LTD.,
Defendants-Counter-
Plaintiffs-Appellants.
B e f o r e:
JACOBS, LYNCH, and SULLIVAN, Circuit Judges.
Defendants-Appellants Lynn Goldsmith and Lynn Goldsmith, Ltd., appeal
from a judgment of the United States District Court for Southern District of New
York (Koeltl, J.) granting summary judgment to Plaintiff-Appellee The Andy
Warhol Foundation for the Visual Arts, Inc. on its complaint for a declaratory
judgment of fair use and dismissing Defendants-Appellants’ counterclaim for
copyright infringement. We conclude that the district court erred in its
assessment and application of the fair-use factors and that the works in question
do not qualify as fair use as a matter of law. We likewise conclude that the Prince
Series works are substantially similar to the Goldsmith Photograph as a matter of
law. We therefore REVERSE the judgment of the district court and REMAND
the case for further proceedings consistent with this opinion.
JUDGE JACOBS concurs in the Court’s opinion, and files a concurring
opinion.
THOMAS G. HENTOFF (Lisa S. Blatt, Katherine Moran Meeks, on
the brief), Williams & Connolly LLP, Washington, D.C.,
for Defendants-Appellants.
LUKE NIKAS (Maaren A. Shah, Kathryn Bonacorsi, on the brief),
Quinn Emanuel Urquhart & Sullivan, LLP, New York,
NY, for Plaintiff-Appellee.
Roman Martinez, Sarang Vijay Damle, Elana Nightingale
Dawson, Latham & Watkins LLP, Washington, D.C.;
Andrew Gass, Nicholas Rosellini, Latham & Watkins
LLP, San Francisco, CA, additional counsel for Plaintiff-
Appellee on Petition for Rehearing.
Christopher T. Bavitz, Harvard Law School Cyberlaw Clinic,
Cambridge, MA, for Amici Curiae Law Professors.
Jason Schultz, Christopher Morten, New York University
Technology Law and Policy Clinic, New York, NY, for
Amici Curiae Latipa (née Michelle Dizon) and Viêt Lê.
2
Ira J. Levy, Goodwin Procter LLP, New York, NY; Jaime A.
Santos, Goodwin Procter LLP, Washington, D.C., for
Amicus Curiae The Robert Rauschenberg Foundation.
Gregory J. Dubinsky, Evan H. Stein, Holwell Shuster &
Goldberg LLP, New York, NY, for Amicus Curiae
Professor Terry S. Kogan.
Thomas B. Maddrey, Maddrey PLLC, Dallas, TX; Russell J.
Frackman, UCLA School of Law Copyright Amicus
Brief Clinic, Los Angeles, CA, for Amici Curiae The
American Society of Media Photographers, Inc., National
Press Photographers Association, Professional Photographers
of America, Graphic Artists Guild, and North American
Nature Photography Association.
Benjamin S. Akley, Donald S. Zakarin, Pryor Cashman LLP,
New York, NY, for Amicus Curiae Recording Industry
Association of America.
Additional Amici Curiae in Support of Petition for Rehearing:
Jaime A. Santos, Andrew Kim, Goodwin Proctor LLP,
Washington D.C., for Amici Curiae The Robert
Rauschenberg Foundation, Roy Lichtenstein Foundation,
Whitney Museum of American Art, The Museum of Modern
Art, and The Solomon R. Guggenheim Foundation.
Allyson R. Bennett, Moon Hee Lee, Durie Tangri LLP, Los
Angeles, CA; Mark A. Lemley, Joseph C. Gratz, Durie
Tangri LLP, San Francisco, CA, for Amicus Curiae
Professor Amy Adler.
Rebecca Tushnet, Harvard Law School, Cambridge, MA, for
Amici Curiae 60 Intellectual Property Scholars.
3
GERARD E. LYNCH, Circuit Judge:
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 in
2016. 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,
4
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 countersued 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
5
conclude that the Prince Series works are substantially similar to the Goldsmith
Photograph as a matter of law.1
BACKGROUND
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
1
After our initial disposition of this appeal, see Andy Warhol Found. for the Visual
Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021), the Supreme Court issued its
decision in Google LLC v. Oracle America, Inc.., 141 S. Ct. 1183 (2021), which
discussed the fair-use factors implicated in this case. Shortly thereafter, Plaintiff-
Appellee filed a “Petition for Panel Rehearing and Rehearing En Banc” (the
“petition”). Apart from its reliance on the Google opinion, the petition mostly
recycles arguments already made and rejected, and requires little comment.
Nevertheless, in order to carefully consider the Supreme Court’s most recent
teaching on fair use, we hereby GRANT the petition, conclude that additional
oral argument is unnecessary, see Fed R. App. P. 40(a)(4)(A), withdraw our
opinion of March 26, 2021, and issue this amended opinion in its place.
6
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. Much
of 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,
7
including eyeshadow 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 chose
to 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 left
without allowing Goldsmith to take any additional photographs. During the
truncated session, Goldsmith took 23 photographs, 12 in black and white and 11
in 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”:
8
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.
9
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.”2 The Prince Series comprises fourteen
2
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
10
silkscreen prints (twelve on canvas, two on paper) and two pencil illustrations,
and includes the following images:
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 to
reproduce a photograph as a high-contrast two-tone image on acetate that, after
any alterations Warhol chose to make, would be used to create a silkscreen. For
the canvas prints, Warhol’s general practice was to paint the background and
local colors prior to the silkscreen transfer of the image. Paper prints, meanwhile,
were generally created entirely by the silkscreen process without any painted
embellishments. Finally, Warhol’s typical practice for pencil sketches was to
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.
11
project an image onto paper and create a contoured pencil drawing around the
projected image.
At some point after Warhol’s death, AWF acquired title to and copyright in
the Prince Series. Between 1993 and 2004, AWF sold or otherwise transferred
custody 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. AWF
retains copyright in the Prince Series images and, through The Artist Rights
Society (a third-party organization that serves as AWF’s agent), continues to
license the images for editorial, commercial, and museum usage.
On April 22, 2016, the day after Prince died, Condé Nast, Vanity Fair’s
parent company, contacted AWF. Its initial intent in doing so was to determine
whether AWF still had the 1984 image, which Condé Nast hoped to use in
connection with a planned magazine commemorating Prince’s life. After learning
that AWF had additional images from the Prince Series, Condé Nast ultimately
obtained a commercial license, to be exclusive for three months, for a different
Prince Series image for the cover of the planned tribute magazine. Condé Nast
published the tribute magazine in May 2016 with a Prince Series image on the
12
cover. Goldsmith was not given any credit or attribution for the image, which
was instead attributed solely to AWF.
It was at that point that Goldsmith first became aware of the Prince Series.
In late July 2016, Goldsmith contacted AWF to advise it of the perceived
infringement of her copyright. That November, Goldsmith registered the
Goldsmith Photograph with the U.S. Copyright Office as an unpublished work.
On April 7, 2017, AWF sued Goldsmith and LGL for a declaratory judgment of
non-infringement or, in the alternative, fair use. Goldsmith countersued for
copyright infringement under 17 U.S.C. §§ 106, 501.
On July 1, 2019, the district court granted summary judgment for AWF on
its fair-use claim. See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382
F. Supp. 3d 312, 316 (S.D.N.Y. 2019). Upon evaluating the four statutory fair-use
factors set forth in 17 U.S.C. § 107, the court concluded that: (1) the Prince Series
was “transformative” because, while the Goldsmith Photograph portrays Prince
as “not a comfortable person” and a “vulnerable human being,” the Prince Series
portrays Prince as an “iconic, larger-than-life figure,” id. at 326; (2) although the
Goldsmith Photograph is both creative and unpublished, which would
traditionally weigh in Goldsmith’s favor, this was “of limited importance because
13
the Prince Series works are transformative works,” id. at 327; (3) in creating the
Prince Series, Warhol “removed nearly all [of] the [Goldsmith] [P]hotograph’s
protectible elements,” id. at 330; and (4) the Prince Series works “are not market
substitutes that have harmed – or have the potential to harm – Goldsmith,” id. at
331. This appeal followed.
DISCUSSION
I. Standard of Review
“We review a grant of summary judgment de novo,” applying the
standards set forth in Federal Rule of Civil Procedure 56(c). Cariou, 714 F.3d at
704. While fair use presents a mixed question of law and fact, it may be resolved
on summary judgment where, as here, the material facts are not in dispute. See,
e.g., Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1199-1200 (2021) (“[T]he
ultimate question whether . . . facts show[] a ‘fair use’ is a legal question for
judges to decide de novo.”).
II. Copyright, Derivative Works, and Fair Use
The Constitution empowers Congress to enact copyright laws “[t]o
promote the Progress of Science and useful Arts.” U.S. Const. art. I, § 8, cl. 8.
Congress has exercised this delegated authority continuously since the earliest
14
days of the nation, beginning with the Copyright Act of 1790 and, more recently,
through the Copyright Act of 1976. Under the 1976 Act, copyright protection
extends both to the original creative work itself and to derivative works, which it
defines as, in relevant part, “a work based upon one or more preexisting works,
such as a[n] . . . art reproduction, abridgement, condensation, or any other form
in which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101.
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, there
are, and can be, few, if any, things, which in an abstract sense, are strictly new
and original throughout. Every book in literature, science and art, borrows, and
must necessarily borrow, and use much which was well known and used
before.’” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994), quoting
Emerson v. Davies, 8 F. Cas. 615, 619 (No. 4,436) (C.C.D. Mass. 1845) (alterations
adopted). The fair-use doctrine seeks to strike a balance between an artist’s
intellectual property rights to the fruits of her own creative labor, including the
right to license and develop (or refrain from licensing or developing) derivative
works based on that creative labor, and “the ability of [other] authors, artists, and
15
the rest of 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 was
formally 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 whether
the use of a copyrighted work is “fair.” These factors are:
(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.
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 [four
statutory factors] are to be explored, and the results weighed together, in light of
the purposes of copyright.” Campbell, 510 U.S. at 577-78; see also, e.g., Google, 141
S. Ct. at 1197 (fair use “is flexible” and “its application may well vary depending
upon context”); Cariou, 714 F.3d at 705 (“[T]he fair use determination is an open-
16
ended and context-sensitive inquiry.”). Indeed, the Supreme Court has explained
that courts must “apply [fair use] in light of the sometimes conflicting aims of
copyright law” and that “copyright’s protection may be stronger where the
copyrighted material . . . serves an artistic rather than a utilitarian function.”
Google, 141 S. Ct. at 1197.
With those competing goals in mind, we consider each factor to determine
whether AWF can avail itself of the fair-use defense in this case. We hold that it
cannot.
A. The Purpose and Character of The Use
This factor requires courts to consider the extent to which the secondary
work is “transformative,” as well as whether it is commercial. We address these
considerations separately below.
1. Transformative Works and Derivative Works
Following the Supreme Court’s decision in Campbell, our assessment of this
first factor has focused chiefly on the degree to which the use is “transformative,”
i.e., “whether the new work merely supersedes the objects of the original creation,
or instead adds something new, with a further purpose or different character,
altering the first with new expression, meaning, or message.” 510 U.S. at 579
17
(internal quotations marks and citations omitted) (alterations adopted); see also
Google, 141 S. Ct. at 1203 (“[W]e have used the word ‘transformative’ to describe a
copying use that adds something new and important.”). We evaluate whether a
work is transformative by examining how it may “reasonably be perceived.”
Cariou, 714 F.3d at 707, quoting Campbell, 510 U.S. at 582; see also, e.g., Leibovitz v.
Paramount Pictures Corp., 137 F.3d 109, 113-15 (2d Cir. 1998). Paradigmatic
examples of transformative uses are those Congress itself enumerated in the
preamble to § 107: “criticism, comment, news reporting, teaching . . . ,
scholarship, or research.” 17 U.S.C. § 107. And, as the Supreme Court recognized
in Campbell, parody, which “needs to mimic an original to make its point,” 510
U.S. at 580-81, is routinely held transformative. See, e.g., Brownmark Films, LLC v.
Comedy Partners, 682 F.3d 687, 693 (7th Cir. 2012). These examples are easily
understood: the book review excerpting a passage of a novel in order to comment
upon it serves a manifestly different purpose from the novel itself. See Authors
Guild v. Google, Inc., 804 F.3d 202, 215-16 (2d Cir. 2015) (“[C]opying from an
original for the purpose of criticism or commentary on the original . . . tends most
clearly to satisfy Campbell’s notion of the ‘transformative’ purpose involved in the
analysis of Factor One.”).
18
Although the most straightforward cases of fair use thus involve a
secondary work that comments on the original in some fashion, in Cariou v.
Prince, we rejected the proposition that a secondary work must comment on the
original in order to qualify as fair use. See 714 F.3d at 706. In that case, we
considered works of appropriation artist Richard Prince that incorporated,
among other materials, various black-and-white photographs of Rastafarians
taken by Patrick Cariou. See id. at 699. After concluding that the district court had
imposed a requirement unsupported by the Copyright Act, we conducted our
own examination of Prince’s works and concluded that twenty-five of the thirty
at issue were transformative of Cariou’s photographs as a matter of law. See id. at
706. In reaching this conclusion, we observed that Prince had incorporated
Cariou’s “serene and deliberately composed portraits and landscape
photographs” into his own “crude and jarring works . . . [that] incorporate[d]
color, feature[d] distorted human and other forms and settings, and measure[d]
between ten and nearly a hundred times the size of the photographs.” Id. Thus,
we concluded that these works “used [Cariou’s photographs] as raw material,
transformed in the creation of new information, new aesthetics, new insights and
19
understandings,” and were transformative within the meaning of this first factor.
Id., quoting Castle Rock Ent. v. Carol Publ’g Grp., 150 F.2d 132, 142 (2d Cir. 1998).
In adjudging the Prince Series transformative, the district court relied
chiefly on our decision in Cariou, which we have previously described as the
“high-water mark of our court’s recognition of transformative works.” TCA
Television Corp. v. McCollum, 839 F.3d 168, 181 (2d Cir. 2016). And, as we have
previously observed, that decision has not been immune from criticism. See id.(collecting critical authorities). While we remain bound by Cariou, and have no
occasion or desire to question its correctness on its own facts, our review of the
decision below persuades us that some clarification is in order.
As discussed supra, both the Supreme Court and this Court have
emphasized that fair use is a context-sensitive inquiry that does not lend itself to
simple bright-line rules. See, e.g., Google, 141 S. Ct. at 1196-97; Campbell, 510 U.S. at
577-78; Cariou, 714 F.3d at 705. Notwithstanding, the district court appears to
have read Cariou as having announced such a rule, to wit, that any secondary
work is necessarily transformative as a matter of law “[i]f looking at the works
side-by-side, the secondary work has a different character, a new expression, and
employs new aesthetics with [distinct] creative and communicative results.”
20
Warhol, 382 F. Supp. 3d at 325-26 (internal quotation marks omitted) (alterations
adopted). Although a literal construction of certain passages of Cariou may
support that proposition, such a reading stretches the decision too far.
Of course, the alteration of an original work “with ‘new expression,
meaning, or message,’” Cariou, 714 F.3d at 706, quoting Campbell, 510 U.S. at 579,
whether by the use of “new aesthetics,” id., quoting Blanch, 467 F.3d at 253, by
placing the work “in a different context,” Perfect 10, Inc. v. Amazon.com, Inc., 508
F.3d 1146, 1165 (9th Cir. 2007) (internal quotation marks omitted), or by any other
means is the sine qua non of transformativeness. It does not follow, however, that
any secondary work that adds a new aesthetic or new expression to its source
material is necessarily transformative.
Consider the five works at issue in Cariou that we did not conclude were
transformative as a matter of law. Though varying in degree both amongst
themselves and as compared to the works that we did adjudge transformative,
each undoubtedly imbued Cariou’s work with a “new aesthetic” as that phrase
might be colloquially understood. Prince’s Canal Zone (2007) is a collage of thirty-
six of Cariou’s photographs, most of which Prince altered by, for example,
painting over the faces and bodies of Cariou’s subjects, in some instances altering
21
them significantly. See Cariou, 714 F.3d at 711. In Graduation, Prince added blue
“lozenges” over the eyes and mouth of Cariou’s subject and pasted an image of
hands playing a blue guitar over his hands. Id. Both of these works certainly
imbued the originals from which they derive with a “new aesthetic;”
notwithstanding, we could not “confidently . . . make a determination about
their transformative nature as a matter of law.” Id.Moreover, there exists an entire class of secondary works that add “new
expression, meaning, or message” to their source material, Campbell, 510 U.S. at
579, but may nonetheless fail to qualify as fair use: derivative works. There is
some inherent tension in the Copyright Act between derivative works, reserved
to the copyright holder, which are defined in part as works that “recast[ ],
transform[ ], or adapt[ ]” an original work, 17 U.S.C. § 101 (emphasis added), and
“transformative”fair uses of the copyrighted work by others. Thus, as we have
previously observed, an overly liberal standard of transformativeness, such as
that employed by the district court in this case, risks crowding out statutory
protections for derivative works. See Authors Guild, 804 F.3d at 216 n.18 (“[T]he
word ‘transformative,’ if interpreted too broadly, can also seem to authorize
copying that should fall within the scope of an author’s derivative rights.”).
22
We addressed derivative works in Cariou, characterizing them as
secondary works that merely present “the same material but in a new form”
without “add[ing] something new.” 714 F.3d at 708 (citation omitted); see also
Authors Guild, 804 F.3d at 215-16 (“[D]erivative works generally involve
transformations in the nature of changes of form.”) (emphasis in original). While
that description may be a useful shorthand, it is likewise susceptible to
misapplication if interpreted too broadly. Indeed, many derivative works that
“add something new” to their source material would not qualify as fair use.
Consider, for example, a film adaptation of a novel. Such adaptations
frequently add quite a bit to their source material: characters are combined,
eliminated, or created out of thin air; plot elements are simplified or eliminated;
new scenes are added; the moral or political implications of the original work
may be eliminated or even reversed, or plot and character elements altered to
create such implications where the original text eschewed such matters. And all
of these editorial modifications are filtered through the creative contributions of
the screenwriter, director, cast, camera crew, set designers, cinematographers,
editors, sound engineers, and myriad other individuals integral to the creation of
a film. It is for that reason that we have recognized that “[w]hen a novel is
23
converted to a film . . . [t]he invention of the original author combines with the
cinematographic interpretive skills of the filmmaker to produce something that
neither could have produced independently.” Authors Guild, 804 F.3d at 216 n.18.
Despite the extent to which the resulting movie may transform the aesthetic and
message of the underlying literary work, film adaptations are identified as a
paradigmatic example of derivative works. See, e.g., Authors Guild, Inc. v.
HathiTrust, 755 F.3d 87, 95 (2d Cir. 2014) (“Paradigmatic examples of derivative
works include . . . the adaptation of a novel into a movie or a play.”).
In evaluating the extent to which a work is transformative in the fair use
context, we consider the “purpose and character” of the primary and secondary
works. Google, 141 S. Ct. at 1204. In Bill Graham Archives v. Dorling Kindersley Ltd.,
for example, we held that the reproduction in a book about the Grateful Dead of
images of posters originally created to advertise Grateful Dead concerts was
transformative because that use was “plainly different from the original purpose
for which they were created.” 448 F.3d 605, 609-10 (2d Cir. 2006). Likewise, in
HathiTrust we held that the defendants’ creation of a searchable “digital corpus”
comprising scanned copies of tens of millions of books that enabled researchers,
scholars, and others to pinpoint the exact page of any book in the catalogue on
24
which the searched term was used was a “quintessentially transformative use.”
755 F.3d at 97. In Authors Guild, we reached the same conclusion when faced with
a larger digital corpus complete with tools that enabled researchers to track how
a specific word or phrase has been used throughout the development of the
English language, despite the fact that, unlike the database in Hathitrust, Google’s
database also permitted the searcher to view a “snippet” from the original text
showing the context in which the word or phrase had appeared. 804 F.3d at 216-
17. And most recently, in Google, the Supreme Court held that fair use protected
Google’s “precise[]” copying of certain computer programming language in part
because Google sought “to create new products . . . [and] expand the use and
usefulness of . . . smartphones” with it. Google, 141 S. Ct. at 1203. Thus, the
Supreme Court concluded, “the ‘purpose and character’ of Google’s copying was
transformative.” Id. at 1204.
But purpose is perhaps a less useful metric where, as here, our task is to
assess the transformative nature of works of visual art that, at least at a high level
of generality, share the same overarching purpose (i.e., to serve as works of visual
art). While this is not the first time we have had to conduct this inquiry, our cases
on such works are considerably fewer in number, and a brief review of them
25
yields conflicting guidance. In Blanch v. Koons, for example, we adjudged
transformative a Jeff Koons painting that incorporated a copyrighted photograph
drawn from a fashion magazine where Koons had testified that he intended to
“us[e] Blanch’s image as fodder for his commentary on the social and aesthetic
consequences of mass media.” 467 F.3d at 253. Some time earlier, however, in
Rogers v. Koons, we denied Koons’s fair-use defense as applied to a three-
dimensional sculpture recreating a photograph, notwithstanding his claim that
he intended his sculpture to serve as a commentary on modern society. 960 F.2d
301, 309-11 (2d Cir. 1992).3 And, in Cariou, we held twenty-five of Richard
Prince’s works transformative as a matter of law even though Prince had testified
that he “was not ‘trying to create anything with a new meaning or a new
message.’” 714 F.3d at 707.
Matters become simpler, however, when we compare the works at issue in
each case against their respective source materials. The sculpture at issue in
Rogers was a three-dimensional colorized version of the photograph on which it
3
We note that Rogers predates the Supreme Court’s formal adoption of the
“transformative use” test and thus does not phrase its inquiry in precisely the
same manner as the cases that have followed. However, it remains a precedential
decision of this Court, and we believe it particularly relevant in this case.
26
was based. See 960 F.2d at 305. In Blanch, however, Koons used Blanch’s
photograph, depicting a woman’s legs in high-heeled shoes, as part of a larger
work in which he set it alongside several other similar photographs with
“changes of its colors, the background against which it is portrayed, the medium,
the size of the objects pictured, [and] the objects’ details.” 467 F.3d at 253. In so
doing, Koons used Blanch’s photograph “as raw material for an entirely different
type of art . . . that comment[ed] on existing images by juxtaposing them against
others.” Id. at 262 (Katzmann, J., concurring). And in Cariou, the copyrighted
works found to have been fairly used were, in most cases, juxtaposed with other
photographs and “obscured and altered to the point that Cariou’s original [was]
barely recognizable.” 714 F.3d at 710. The works that were found potentially
infringing in Cariou, however, were ones in which the original was altered in
ways that did not incorporate other images and that superimposed other
elements that did not obscure the original image and in which the original image
remained, as in the Koons sculpture at issue in Rogers, a major if not dominant
component of the impression created by the allegedly infringing work. See id. at
710-11.
27
A common thread running through these cases is that, where a secondary
work does not obviously comment on or relate back to the original or use the
original for a purpose other than that for which it was created, the bare assertion
of a “higher or different artistic use,” Rogers, 960 F.2d at 310, is insufficient to
render a work transformative. Rather, the secondary work itself must reasonably
be perceived as embodying a distinct artistic purpose, one that conveys a new
meaning or message separate from its source material. While we cannot, nor do
we attempt to, catalog all of the ways in which an artist may achieve that end, we
note that the works that have done so thus far have themselves been distinct
works of art that draw from numerous sources, rather than works that simply
alter or recast a single work with a new aesthetic.
Which brings us back to the Prince Series. The district court held that the
Prince Series works are transformative because they “can reasonably be
perceived to have transformed Prince from a vulnerable, uncomfortable person to
an iconic, larger-than-life figure.” Warhol, 382 F. Supp. 3d at 326. That was error.
Though it may well have been Goldsmith’s subjective intent to portray
Prince as a “vulnerable human being” and Warhol’s to strip Prince of that
humanity and instead display him as a popular icon, whether a work is
28
transformative cannot turn merely on the stated or perceived intent of the artist
or the meaning or impression that a critic – or for that matter, a judge – draws
from the work. Were it otherwise, the law may well “recogniz[e] any alteration as
transformative.” 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 13.05(B)(6).
In conducting this inquiry, however, the district judge should not assume
the role of art critic and seek to ascertain the intent behind or meaning of the
works at issue. That is so both because judges are typically unsuited to make
aesthetic judgments and because such perceptions are inherently subjective.4 As
Goldsmith argues, her own stated intent notwithstanding, “an audience viewing
the [Goldsmith] [P]hotograph today, across the vista of the singer’s long career,
might well see him in a different light than Goldsmith saw him that day in 1981.”
Appellants’ Br. at 40. We agree; it is easy to imagine that a whole generation of
Prince’s fans might have trouble seeing the Goldsmith Photograph as depicting
4
As the Supreme Court observed over a century ago, “[i]t would be a dangerous
undertaking for persons trained only [in] the law to constitute themselves final
judges of the worth of pictorial illustrations, outside of the narrowest and most
obvious limits.” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).
29
anything other than the iconic songwriter and performer whose musical works
they enjoy and admire.
Instead, the judge must examine whether the secondary work’s use of its
source material is in service of a “fundamentally different and new” artistic
purpose and character, such that the secondary work stands apart from the “raw
material” used to create it. Cariou, 714 F.3d at 706 (internal quotation marks
omitted). Although we do not hold that the primary work must be “barely
recognizable” within the secondary work, as was the case with the works held
transformative in Cariou, id. at 710, the secondary work’s transformative purpose
and character must, at a bare minimum, comprise something more than the
imposition of another artist’s style on the primary work such that the secondary
work remains both recognizably deriving from, and retaining the essential
elements of, its source material.
With this clarification, viewing the works side-by-side, we conclude that
the Prince Series is not “transformative” within the meaning of the first factor.
That is not to deny that the Warhol works display the distinct aesthetic sensibility
that many would immediately associate with Warhol’s signature style – the
elements of which are absent from the Goldsmith photo. But the same can be
30
said, for example, of the Ken Russell film, from a screenplay by Larry Kramer,
derived from D.H. Lawrence’s novel, Women in Love: the film is as recognizable a
“Ken Russell” as the Prince Series are recognizably “Warhols.” But the film, for
all the ways in which it transforms (that is, in the ordinary meaning of the word,
which indeed is used in the very definition of derivative works, see 17 U.S.C.
§ 101) its source material, is also plainly an adaptation of the Lawrence novel.
As in the case of such paradigmatically derivative works, there can be no
meaningful dispute that the overarching purpose and function of the two works
at issue here is identical, not merely in the broad sense that they are created as
works of visual art,5 but also in the narrow but essential sense that they are
portraits of the same person.6 See Gaylord v. United States, 595 F.3d 1364, 1372-73
5
The fact that the Goldsmith Photograph and the Prince Series were both created
for artistic purposes makes this a different case from, for example, “[a]n artistic
painting . . . precisely replicat[ing] a copyrighted advertising logo to make a
comment about consumerism” (such as Warhol’s well-known depictions of
Campbell’s soup cans), which “might . . . fall within the scope of fair use.” Google,
141 S. Ct. at 1203 (internal quotation marks omitted).
6
As much as art critics might distinguish Warhol’s aesthetic intentions from
those of portrait photographers, Warhol’s celebrity prints are invariably
identifiable likenesses of their subjects. The district court’s description of the
Prince Series works as transformative because they “can reasonably be perceived
to have transformed Prince from a vulnerable, uncomfortable person to an iconic,
larger-than-life figure,” 382 F. Supp. 3d at 326, rests implicitly on the Warhol
31
(Fed. Cir. 2010) (photograph of Korean War Memorial used on stamp not
transformative despite “different expressive character” brought about by
subdued lighting and snow since sculpture and stamp shared purpose of
“honor[ing] veterans of the Korean War”). Although this observation does not per
se preclude a conclusion that the Prince Series makes fair use of the Goldsmith
Photograph, the district court’s conclusion rests significantly on the
transformative character of Warhol’s work. But the Prince Series works can’t bear
that weight.
Warhol created the series chiefly by removing certain elements from the
Goldsmith Photograph, such as depth and contrast, and embellishing the
flattened images with “loud, unnatural colors.” Warhol, 382 F. Supp. 3d at 326.
Nonetheless, although we do not conclude that the Prince Series works are
necessarily derivative works as a matter of law, they are much closer to presenting
the same work in a different form, that form being a high-contrast screenprint,
than they are to being works that make a transformative use of the original.
Crucially, the Prince Series retains the essential elements of the Goldsmith
Photograph without significantly adding to or altering those elements.
depiction being perceived as a recognizable depiction of Prince.
32
Indeed, the differences between the Goldsmith Photograph and the Prince
Series here are in many respects less substantial than those made to the five
works that we could not find transformative as a matter of law in Cariou. Unlike
the Prince Series, those works unmistakably deviated from Cariou’s original
portraiture in a manner that suggested an entirely distinct artistic end; rather
than recasting those photographs in a new medium, Richard Prince added
material that pulled them in new directions. See, e.g., Cariou, 714 F.3d at 711(“Where [Cariou’s] photograph presents someone comfortably at home in nature,
[Prince’s] Graduation combines divergent elements to present a sense of
discomfort.”). Nevertheless, we could not confidently determine whether those
modest alterations “amount[ed] to a substantial transformation of the original
work[s] of art such that the new work[s] were transformative,” and remanded the
case to the district court to make that determination in the first instance. Id.In contrast, the Prince Series retains the essential elements of its source
material, and Warhol’s modifications serve chiefly to magnify some elements of
that material and minimize others. While the cumulative effect of those
alterations may change the Goldsmith Photograph in ways that give a different
33
impression of its subject, the Goldsmith Photograph remains the recognizable
foundation upon which the Prince Series is built.
Finally, we feel compelled to clarify that it is entirely irrelevant to this
analysis that “each Prince Series work is immediately recognizable as a
‘Warhol.’” Warhol, 382 F. Supp. 3d at 326. Entertaining that logic would
inevitably create a celebrity-plagiarist privilege; the more established the artist
and the more distinct that artist’s style, the greater leeway that artist would have
to pilfer the creative labors of others. But the law draws no such distinctions;
whether the Prince Series images exhibit the style and characteristics typical of
Warhol’s work (which they do) does not bear on whether they qualify as fair use
under the Copyright Act. As Goldsmith notes, the fact that Martin Scorsese’s
recent film The Irishman is recognizably “a Scorsese” “do[es] not absolve [him] of
the obligation to license the original book” on which it is based. Appellants’ Br. at
37.
In reaching this conclusion, we do not mean to discount the artistic value
of the Prince Series itself. As used in copyright law, the words “transformative”
and “derivative” are legal terms of art that do not express the simple ideas that
they carry in ordinary usage. We do not disagree with AWF’s contention that the
34
cumulative effect of Warhol’s changes to the Goldsmith Photograph is to produce
a number of striking and memorable images. And our conclusion that those
images are closer to what the law deems “derivative” (and not “transformative”)
does not imply that the Prince Series (or Warhol’s art more broadly) is
“derivative,” in the pejorative artistic sense, of Goldsmith’s work or of anyone
else’s. As Goldsmith succinctly puts it, “[t]here is little doubt . . . that the Prince
Series reflects Andy Warhol’s talent, creativity, and distinctive aesthetic.”
Appellants’ Br. at 36. But the task before us is not to assess the artistic worth of
the Prince Series nor its place within Warhol’s oeuvre; that is the domain of art
historians, critics, collectors, and the museum-going public. Rather, the question
we must answer is simply whether the law permits Warhol to claim it as his own,
and AWF to exploit it, without Goldsmith’s permission. And, at least as far as
this aspect of the first factor is concerned, we conclude that the answer to that
question is “no.”
2. Commercial Use
The statutory language of the first factor also specifically directs courts to
consider “whether [the] use is of a commercial nature or is for nonprofit
educational purposes.” 17 U.S.C. § 107(1). Although finding that a secondary use
35
is commercial “tends to weigh against” finding that it is fair, we apply the test
with caution since “nearly all of the illustrative uses listed in the preamble
paragraph of § 107 . . . are generally conducted for profit in this country.”
Campbell, 510 U.S. at 584-85 (citation and internal quotation marks omitted).7
And, since “[t]he crux of the profit/nonprofit distinction is . . . whether the user
stands to profit from exploitation of the copyrighted material without paying the
customary price,” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 562
(1985), the commercial nature of a secondary use is of decreased importance
when the use is sufficiently transformative such that the primary author should
not reasonably expect to be compensated. See, e.g., Blanch, 467 F.3d at 254.
We agree with the district court that the Prince Series works are
commercial in nature, but that they produce an artistic value that serves the
greater public interest. See Warhol, 382 F. Supp. 3d at 325. We also agree that,
although more relevant to the character of the user than of the use, the fact that
7
To recognize this is not to read the commercial/non-profit factor out of the
statute. There are other situations in which the absence or presence of a
commercial motive may be highly significant. Producing a small number of
copies of a short story to be distributed for free to a high school English class may
be quite different from producing a similar number of copies for a lavishly bound
and illustrated “limited edition” of the work to be sold in the marketplace at a
high price.
36
AWF’s mission is to advance the visual arts, a mission that is doubtless in the
public interest, may militate against the simplistic assertion that AWF’s sale and
licensing of the Prince Series works necessarily derogates from a finding of fair
use. Nevertheless, just as we cannot hold that the Prince Series is transformative
as a matter of law, neither can we conclude that Warhol and AWF are entitled to
monetize it without paying Goldsmith the “customary price” for the rights to her
work, even if that monetization is used for the benefit of the public.
Of course, even where the secondary use is not transformative, the extent
to which it serves the public interest, either in and of itself or by generating funds
that enable the secondary user to further a public-facing mission, may be highly
relevant when assessing equitable remedies, including whether to enjoin the
distribution or order the destruction of infringing works.8 But just as the
commercial nature of a transformative secondary use does not itself preclude a
finding that the use is fair, the fact that a commercial non-transformative work
may also serve the public interest or that the profits from its commercial use are
8
Goldsmith does not seek such remedies, and it is highly unlikely that any court
would deem them appropriate in this case. See Campbell, 510 U.S. at 578 n.10
(“[T]he goals of the copyright law . . . are not always best served by automatically
granting injunctive relief when parodists are found to have gone beyond the
bounds of fair use.”).
37
turned to the promotion of non-commercial ends does not factor significantly in
favor of finding fair use under the circumstances present here.
B. The Nature of the Copyrighted Work
The second factor directs courts to consider the nature of the copyrighted
work, including (1) whether it is “expressive or creative . . . or more factual, with
a greater leeway being allowed to a claim of fair use where the work is factual or
informational, and (2) whether the work is published or unpublished, with the
scope of fair use involving unpublished works being considerably narrower.”
Blanch, 467 F.3d at 256 (citation omitted).
The district court correctly held that the Goldsmith Photograph is both
unpublished and creative but nonetheless concluded that the second factor
should favor neither party because LGL had licensed the Goldsmith Photograph
to Vanity Fair and because the Prince Series was highly transformative. See
Warhol, 382 F. Supp. 3d at 327. That was error. That Goldsmith, through LGL,
made the Goldsmith Photograph available for a single use on limited terms does
not change its status as an unpublished work nor diminish the law’s protection of
her choice of “when to make a work public and whether to withhold a work to
shore up demand.” Id., citing 4 Nimmer on Copyright § 13.05(A)(2)(b). Further,
38
though we have previously held that this factor “may be of limited usefulness
where the creative work is being used for a transformative purpose,” Bill Graham
Archives, 448 F.3d at 612, this relates only to the weight assigned to it, not whom
it favors. See also Blanch, 467 F.3d at 257 (“[T]he second fair-use factor has limited
weight in our analysis because Koons used Blanch’s work in a transformative
manner.”).
Having recognized the Goldsmith Photograph as both creative and
unpublished, the district court should have found this factor to favor Goldsmith
irrespective of whether it adjudged the Prince Series works transformative within
the meaning of the first factor. And, because we disagree that the Prince Series
works are transformative, we would accord this factor correspondingly greater
weight.
C. The Amount and Substantiality of the Use
The third factor considers “the amount and substantiality of the portion
used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). “In
assessing this factor, we consider not only ‘the quantity of the materials used’ but
also ‘their quality and importance’” in relation to the original work. TCA
Television, 839 F.3d at 185, quoting Campbell, 510 U.S. at 587. The ultimate
39
question under this factor is whether “the quantity and value of the materials
used are reasonable in relation to the purpose of the copying.” Campbell, 510 U.S.
at 586 (citation and internal quotation marks omitted). To that end, there is no
bright line separating a permissible amount of borrowing from an impermissible
one; indeed, we have rejected the proposition that this factor necessarily favors
the copyright holder even where the secondary user has copied the primary work
in toto in service of a legitimate secondary purpose. See Swatch Grp. Mgmt. Servs.
Ltd. v. Bloomberg L.P., 756 F.3d 73, 89-90 (2d Cir. 2014); see also Rogers, 960 F.2d at
310-11 (“Sometimes wholesale copying may be permitted, while in other cases
taking even a small percentage of the original work has been held unfair use.”).
In this case, AWF argues, and the district court concluded, that this factor
weighs in its favor because, by cropping and flattening the Goldsmith
Photograph, thereby removing or minimizing its use of light, contrast, shading,
and other expressive qualities, Warhol removed nearly all of its copyrightable
elements. We do not agree.
We begin with the uncontroversial proposition that copyright does not
protect ideas, but only “the original or unique way that an author expresses those
ideas, concepts, principles, or processes.” Rogers, 960 F.2d at 308. As applied to
40
photographs, this protection encompasses the photographer’s “posing the
subjects, lighting, angle, selection of film and camera, evoking the desired
expression, and almost any other variant involved.” Id. at 307. The cumulative
manifestation of these artistic choices – and what the law ultimately protects – is
the image produced in the interval between the shutter opening and closing, i.e.,
the photograph itself. This is, as we have previously observed, the
photographer’s “particular expression” of the idea underlying her photograph.
Leibovitz, 137 F.3d at 115-16.
It is thus easy to understand why AWF’s contention misses the mark. The
premise of its argument is that Goldsmith cannot copyright Prince’s face. True
enough. Were it otherwise, nobody else could have taken the man’s picture
without either seeking Goldsmith’s permission or risking a suit for infringement.
But while Goldsmith has no monopoly on Prince’s face, the law grants her a
broad monopoly on its image as it appears in her photographs of him, including
the Goldsmith Photograph.9 Cf. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d
9It is for this reason that the cases that AWF cites in support of its position (and
on which the district court relied) are not particularly instructive; each involves a
claim in which a second, distinct work was alleged to infringe the protected
expression of the original work, and each such claim was rejected on the basis
that the second work copied only the unprotected idea of the original. See, e.g.,
41
133, 136-37 (2d Cir. 2004) (vacating summary judgment where district court had
concluded that “defendant could freely copy the central facial features of the
Barbie dolls” and holding that Mattel could not monopolize the idea of a doll
with “upturned nose, bow lips, and wide eyes,” but the law protected its specific
rendition thereof). And where, as here, the secondary user has used the
photograph itself, rather than, for example, a similar photograph, the
photograph’s specific depiction of its subject cannot be neatly reduced to discrete
qualities such as contrast, shading, and depth of field that can be stripped away,
taking the image’s entitlement to copyright protection along with it.
With that in mind, we readily conclude that the Prince Series borrows
significantly from the Goldsmith Photograph, both quantitatively and
qualitatively. While Warhol did indeed crop and flatten the Goldsmith
Photograph, the end product is not merely a screenprint identifiably based on a
photograph of Prince. Rather it is a screenprint readily identifiable as deriving
Bill Diodato Photography, LLC v. Kate Spade, LLC, 388 F. Supp. 2d 382, 393 (S.D.N.Y.
2005) (involving separate photographs of women in bathroom stalls with jauntily
placed handbags); see also infra Section III. Had Warhol used a different
photograph that Goldsmith alleged was similar enough to her own to render the
Prince Series an infringement of her work, these cases might be more instructive.
But he did not, so they are not.
42
from a specific photograph of Prince, the Goldsmith Photograph. A comparison of
the images in the Prince Series makes plain that Warhol did not use the
Goldsmith Photograph simply as a reference or aide-mémoire in order to
accurately document the physical features of its subject. Instead, the Warhol
images are instantly recognizable as depictions or images of the Goldsmith
Photograph itself.
To confirm this, one need look no further than the other photographs of
Prince that AWF submitted in support of its motion below to evidence its
contention that Prince’s pose was not unique to the Goldsmith Photograph.
Though any of them may have been suitable as a base photograph for Warhol’s
process, we have little doubt that the Prince Series would be quite different had
Warhol used one of them instead of the Goldsmith Photograph to create it. But
the resemblance between the Prince Series works and the Goldsmith Photograph
goes even further; for example, many of the aspects of Prince’s appearance in the
Prince Series works, such as the way in which his hair appears shorter on the left
side of his face, are present in the Goldsmith Photograph yet absent even from
some other photographs that Goldsmith took of Prince during the same photo
session. In other words, whatever the effect of Warhol’s alterations, the “essence
43
of [Goldsmith’s] photograph was copied” and persists in the Prince Series.
Rogers, 960 F.2d at 311. Indeed, Warhol’s process had the effect of amplifying,
rather than minimizing, certain aspects of the Goldsmith Photograph.10
Nor can Warhol’s appropriation of the Goldsmith Photograph be deemed
reasonable in relation to his purpose. While Warhol presumably required a
photograph of Prince to create the Prince Series, AWF proffers no reason why he
required Goldsmith’s photograph. See TCA Television, 839 F.3d at 181-82, 185
(wholesale borrowing of copyrighted comedy routine not reasonable where
“defendants offer[ed] no persuasive justification” for its use). To the contrary, the
evidence in the record suggests that Warhol had no particular interest in the
Goldsmith Photograph or Goldsmith herself; Vanity Fair licensed a photograph
of Prince, and there is no evidence that Warhol (or, for that matter, Vanity Fair)
10
For example, the fact that Prince’s mustache appears to be lighter on the right
side of his face than the left is barely noticeable in the grayscale Goldsmith
Photograph but is quite pronounced in the black-and-white Prince Series
screenprints. Moreover, this feature of the Goldsmith Photograph is, again, not
common to all other photographs of Prince even from that brief session. The
similarity is not simply an artefact of what Prince’s facial hair was like on that
date, but of the particular effects of light and angle at which Goldsmith captured
that aspect of his appearance.
44
was involved in identifying or selecting the particular photograph that LGL
provided.
To be clear, we do not hold that this factor will always favor the copyright
holder where the work at issue is a photograph and the photograph remains
identifiable in the secondary work. But this case is not Kienitz v. Sconnie Nation
LLC, in which a panel of the Seventh Circuit held that a t-shirt design that
incorporated a photograph in a manner that stripped away nearly every
expressive element such that, “as with the Cheshire Cat, only the [subject’s] smile
remain[ed]” was fair use. 766 F.3d 756, 759 (7th Cir. 2014). As discussed, Warhol’s
rendition of the Goldsmith Photograph leaves quite a bit more detail, down to the
glint in Prince’s eyes where the umbrellas in Goldsmith’s studio reflected off his
pupils. Thus, though AWF urges this court to follow the Seventh Circuit’s lead,
its decision in Kienitz would not compel a different result here, even if it were
binding on us – which, of course, it is not.
The district court, reasoning that Warhol had taken only the unprotected
elements of the Goldsmith Photograph in service of a transformative purpose,
held that this factor strongly favored AWF. Because we disagree on both counts,
we conclude that this factor strongly favors Goldsmith.
45
D. The Effect of the Use on the Market for the Original
The fourth factor asks “whether, if the challenged use becomes
widespread, it will adversely affect the potential market for the copyrighted
work.” Bill Graham Archives, 448 F.3d at 613. “Analysis of this factor requires us to
balance the benefit the public will derive if the use is permitted and the personal
gain the copyright owner will receive if the use is denied.” Wright v. Warner
Books, Inc., 953 F.2d 731, 739 (2d Cir. 1991) (internal quotation marks omitted). In
assessing market harm, we ask not whether the second work would damage the
market for the first (by, for example, devaluing it through parody or criticism),
but whether it usurps the market for the first by offering a competing substitute.
See, e.g., Bill Graham Archives, 448 F.3d at 614. This analysis embraces both the
primary market for the work and any derivative markets that exist or that its
author might reasonably license others to develop, regardless of whether the
particular author claiming infringement has elected to develop such markets. See
Salinger v. Colting, 607 F.3d 68, 74, 83 (2d Cir. 2010) (affirming that fourth factor
favored J.D. Salinger in suit over unauthorized sequel to Catcher in the Rye despite
the fact that Salinger had publicly disclaimed any intent to author or authorize a
sequel, but vacating preliminary injunction on other grounds). As we have
46
previously observed, the first and fourth factors are closely linked, as “the more
the copying is done to achieve a purpose that differs from the purpose of the
original, the less likely it is that the copy will serve as a satisfactory substitute for
the original.” Authors Guild, 804 F.3d at 223, citing Campbell, 510 U.S. at 591.
We agree with the district court that the primary market for the Warhol
Prince Series (that is, the market for the original works) and the Goldsmith
Photograph do not meaningfully overlap, and Goldsmith does not seriously
challenge that determination on appeal. We cannot, however, endorse the district
court’s implicit rationale that the market for Warhol’s works is the market for
“Warhols,” as doing so would permit this aspect of the fourth factor always to
weigh in favor of the alleged infringer so long as he is sufficiently successful to
have generated an active market for his own work. Notwithstanding, we see no
reason to disturb the district court’s overall conclusion that the two works occupy
distinct markets, at least as far as direct sales are concerned.
We are unpersuaded, however, by the district court’s conclusion that the
Prince Series poses no threat to Goldsmith’s licensing markets. While Goldsmith
does not contend that she has sought to license the Goldsmith Photograph itself,
the question under this factor is not solely whether the secondary work harms an
47
existing market for the specific work alleged to have been infringed. Cf. Castle
Rock, 150 F.3d at 145-46 (“Although Castle Rock has evidenced little if any
interest in exploiting this market for derivative works . . . the copyright law must
respect that creative and economic choice.”). Rather, we must also consider
whether “unrestricted and widespread conduct of the sort engaged in by [AWF]
would result in a substantially adverse impact on the potential market” for the
Goldsmith Photograph. Campbell, 510 U.S. at 590 (internal quotation marks
omitted) (alterations adopted)); see also Fox News Network, LLC v. TVEyes, Inc., 883
F.3d 169, 179 (2d Cir. 2018).
As an initial matter, we note that the district court erred in apparently
placing the burden of proof as to this factor on Goldsmith. See, e.g., Warhol, 382 F.
Supp. 3d at 330. While our prior cases have suggested that the rightsholder bears
some initial burden of identifying relevant markets,11 we have never held that the
rightsholder bears the burden of showing actual market harm. Nor would we so
11
See HathiTrust, 755 F.3d at 96 (“To defeat a claim of fair use, the copyright
holder must point to the market harm that results because the secondary use
serves as a substitute for the original work.”); Leibovitz, 137 F.3d at 116 n.6
(“Leibovitz has not identified any market for a derivative work that might be
harmed by the Paramount ad. In these circumstances, the defendant had no
obligation to present evidence showing lack of harm in a market for derivative
works.”).
48
hold. Fair use is an affirmative defense; as such, the ultimate burden of proving
that the secondary use does not compete in the relevant market is appropriately
borne by the party asserting the defense: the secondary user. See Campbell, 510
U.S. at 590 (“Since fair use is an affirmative defense, its proponent would have
difficulty carrying the burden of demonstrating fair use without favorable
evidence about relevant markets.”); Infinity Broadcast Corp. v. Kirkwood, 150 F.3d
104, 110 (2d Cir. 1998) (“As always, [the secondary user] bears the burden of
showing that his use does not” usurp the market for the primary work); Dr. Seuss
Enters., L.P. v. ComicMix LLC, 983 F.3d 443, 459 (9th Cir. 2020) (“Not much about
the fair use doctrine lends itself to absolute statements, but the Supreme Court
and our circuit have unequivocally placed the burden of proof on the proponent
of the affirmative defense of fair use.”).
In any case, whatever the scope of Goldsmith’s initial burden, she satisfied
it here. Setting aside AWF’s licensing of Prince Series works for use in museum
exhibits and publications about Warhol, which is not particularly relevant for the
reasons set out in our discussion of the primary market for the works, there is no
material dispute that both Goldsmith and AWF have sought to license (and
49
indeed have successfully licensed) their respective depictions of Prince12 to
popular print magazines to accompany articles about him. As Goldsmith
succinctly states: “both [works] are illustrations of the same famous musician
with the same overlapping customer base.” Appellants’ Br. at 50. Contrary to
AWF’s assertions, that is more than enough. See Cariou, 714 F.3d at 709 (“[A]n
accused infringer has usurped the market for copyrighted works . . . where the
infringer’s target audience and the nature of the infringing content is the same as
the original.”). And, since Goldsmith has identified a relevant market, AWF’s
failure to put forth any evidence that the availability of the Prince Series works
poses no threat to Goldsmith’s actual or potential revenue in that market tilts the
scales toward Goldsmith.
Further, the district court entirely overlooked the potential harm to
Goldsmith’s derivative market, which is likewise substantial. Most directly,
AWF’s licensing of the Prince Series works to Condé Nast without crediting or
paying Goldsmith deprived her of royalty payments to which she would have
otherwise been entitled. Although we do not always consider lost royalties from
12
In Goldsmith’s case, photographs other than the Goldsmith Photograph, which
she has withheld from the market.
50
the challenged use itself under the fourth factor (as any fair use necessarily
involves the secondary user using the primary work without paying for the right
to do so), we do consider them where the secondary use occurs within a
traditional or reasonable market for the primary work. See Fox News, 883 F.3d at
180; On Davis v. Gap, Inc., 246 F.3d 152, 176 (2d Cir. 2001). And here, that market
is established both by Goldsmith’s uncontroverted expert testimony that
photographers generally license others to create stylized derivatives of their work
in the vein of the Prince Series, see J. App’x 584-99, and by the genesis of the
Prince Series: a licensing agreement between LGL and Vanity Fair to use the
Goldsmith Photograph as an artist reference.13
We also must consider the impact on this market if the sort of copying in
which Warhol engaged were to become a widespread practice. That harm is also
self-evident. There currently exists a market to license photographs of musicians,
such as the Goldsmith Photograph, to serve as the basis of a stylized derivative
image; permitting this use would effectively destroy that broader market, as, if
artists “could use such images for free, there would be little or no reason to pay
13
Of course, if a secondary work is sufficiently transformative, the fact that its
“raw material” was acquired by means of a limited license will not necessarily
defeat a defense of fair use. As discussed supra, however, that is not the case here.
51
for [them].” Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339, 355
(S.D.N.Y. 2017); see also Seuss, 983 F.3d at 461 (“[T]he unrestricted and
widespread conduct of the sort ComicMix is engaged in could result in anyone
being able to produce” their own similar derivative works based on Oh, the Places
You’ll Go!). This, in turn, risks disincentivizing artists from producing new work
by decreasing its value – the precise evil against which copyright law is designed
to guard.
Finally, our analysis of the fourth factor also “take[s] into account the
public benefits the copying will likely produce.” Google, 141 S. Ct. at 1206; see also
Wright, 953 F.2d at 739 (“Analysis of this factor requires us to balance the benefit
the public will derive if the use is permitted . . . .” ) (internal quotation marks
omitted). AWF argues that weighing the public benefit cuts in its favor because
“[d]enying fair-use protection to works like Warhol’s will chill the creation of art
that employs pre-existing imagery to convey a distinct message.” Reply in Supp.
of Pet. for Reh’g at 7-8. We disagree. Nothing in this opinion stifles the creation of
art that may reasonably be perceived as conveying a new meaning or message,
and embodying a new purpose, separate from its source material. AWF also lists
the possible consequences that it contends will flow if we deny fair use in this
52
case. As discussed supra, however, those consequences would be significant to a
district court primarily when assessing appropriate equitable relief for a
copyright violation. And here, Goldsmith expressly disclaims seeking some of
the most extreme remedies available to copyright owners. See 17 U.S.C. 503(b).
Moreover, what encroaches on Goldsmith’s market is AWF’s commercial
licensing of the Prince Series, not Warhol’s original creation. Thus, art that is not
turned into a commercial replica of its source material, and that otherwise
occupies a separate primary market, has significantly more “breathing space”
than the commercial licensing of the Prince Series. Campbell, 510 U.S. at 579.
Thus, although the primary market for the Goldsmith Photograph and the
Prince Series may differ, the Prince Series works pose cognizable harm to
Goldsmith’s market to license the Goldsmith Photograph to publications for
editorial purposes and to other artists to create derivative works based on the
Goldsmith Photograph and similar works. Further, the public benefit of the
copying at issue in this case does not outweigh the harm identified by Goldsmith.
Accordingly, the fourth factor favors Goldsmith.
53
E. Weighing the Factors
“[T]his court has on numerous occasions resolved fair use determinations
at the summary judgment stage where there are no genuine issues of material
fact.” Cariou, 714 F.3d at 704 (internal quotation marks omitted) (alteration
adopted) (collecting cases). As no party contends that there exist any issues of
material fact in this case, we believe it appropriate to exercise that discretion here.
Having considered each of the four factors, we find that each favors
Goldsmith. Further, although the factors are not exclusive, AWF has not
identified any additional relevant considerations unique to this case that we
should take into account. Accordingly, we hold that AWF’s defense of fair use
fails as a matter of law.
F. The Effect of Google
AWF’s petition relies heavily on the Supreme Court’s Google decision. As
AWF notes, Google is the Supreme Court’s first major decision on fair use in some
time, and we granted the petition for rehearing in large part to give careful
consideration to that opinion. After such consideration, we emphatically reject
AWF’s assertion that Google “comprehensively refutes the panel’s reasoning.”
Pet. for Reh’g at 2. To the contrary, as an attentive reading of the discussion
54
above will show, the principles enunciated in Google are fully consistent with our
original opinion.
AWF’s argument that Google undermines our analysis rests on a
misreading of both the Supreme Court’s opinion and ours, misinterpreting both
opinions as adopting hard and fast categorical rules of fair use. To the contrary,
both opinions recognize that determinations of fair use are highly contextual and
fact specific, and are not easily reduced to rigid rules. As the Supreme Court put
it, both the historical background of fair use and modern precedent “make[] clear
that the concept [of fair use] is flexible, that courts must apply it in light of the
sometimes conflicting aims of copyright law, and that its applications may well
vary depending upon context.” Google, 141 S. Ct. at 1197; see also supra at 16
(noting that “fair use presents a holistic, context-sensitive inquiry”).
In particular, the Supreme Court in Google took pains to emphasize that the
unusual context of that case, which involved copyrights in computer code, may
well make its conclusions less applicable to contexts such as ours. Thus, while
Google did indeed find that the precise copying and incorporation of copyrighted
code into a new program could (and did, on the particular facts of the case)
constitute fair use, the opinion expressly noted that “copyright’s protection may
55
be stronger where the copyrighted material . . . serves an artistic rather than a
utilitarian function.” Google, 141 S. Ct. at 1197. The Court repeatedly emphasized
that “[t]he fact that computer programs are primarily functional makes it difficult
to apply traditional copyright concepts in that technological world.” Id. at 1208. If
the application of traditional copyright concepts to “functional” computer
programs is difficult, it follows that a case that addresses fair use in such a novel
and unusual context is unlikely to work a dramatic change in the analysis of
established principles as applied to a traditional area of copyrighted artistic
expression. And indeed, the Supreme Court did not leave that conclusion to
inference, expressly advising that in addressing fair use in this new arena, it
“ha[d] not changed the nature of those [traditional copyright] concepts.” Id.
Just as AWF misreads the fact- and context-specific finding of fair use in
Google as dictating a result in the very different context before us, it misreads our
opinion as “effectively outlawing” an entire “genre” of art “widely viewed as one
of the great artistic innovations of the modern era.” Pet. for Reh’g at 17 (internal
quotation marks omitted). As any fair reading of our opinion shows, we do not
“outlaw” any form of artistic expression, nor do we denigrate any artistic genre;
56
as we explicitly state, it is not the function of judges to decide the meaning and
value of art, see supra at 29-30, still less to “outlaw” types of art.
We merely insist that, just as artists must pay for their paint, canvas, neon
tubes, marble, film, or digital cameras, if they choose to incorporate the existing
copyrighted expression of other artists in ways that draw their purpose and
character from that work (as by using a copyrighted portrait of a person to create
another portrait of the same person, recognizably derived from the copyrighted
portrait, so that someone seeking a portrait of that person might interchangeably
use either one), they must pay for that material as well. As the Supreme Court
again recognized in Google, the aims of copyright law are “sometimes
conflicting.” Google, 141 S. Ct. at 1197. The issue here does not pit novel forms of
art against philistine censorship, but rather involves a conflict between artists
each seeking to profit from his or her own creative efforts. Copyright law does
not provide either side with absolute trumps based on simplistic formulas.
Rather, it requires a contextual balancing based on principles that will lead to
close calls in particular cases. Like the Supreme Court in Google, we have applied
those well-established principles to the particular facts before us to conclude that
AWF’s fair-use defense fails.
57
III. Substantial Similarity
AWF asks this Court to affirm the district court’s decision on the alternate
grounds that the Prince Series works are not substantially similar to the
Goldsmith Photograph. We decline that invitation, because we conclude that the
works are substantially similar as a matter of law.
The district court did not analyze the issue of substantial similarity
because, in its view, “it [was] plain that the Prince Series works are protected by
fair use.” Warhol, 382 F. Supp. 3d at 324. While “it is our distinctly preferred
practice to remand such issues for consideration by the district court in the first
instance,” Schonfeld v. Hilliard, 218 F.3d 164, 184 (2d Cir. 2000), we are not
required to do so. In this case, because the question of substantial similarity is
logically antecedent to that of fair use – since there would be no need to invoke
the fair-use defense in the absence of actionable infringement – and because the
factors we have already discussed with respect to fair use go a considerable way
toward resolving the substantial similarity issue, we do not believe a remand to
address that issue is necessary in this case.14
14
We express no view on the viability of AWF’s remaining defenses, which are
appropriately considered by the district court in the first instance.
58
In general, and as applicable here, two works are substantially similar
when “an average lay observer would recognize the alleged copy as having been
appropriated from the copyrighted work.” Knitwaves, Inc. v. Lollytogs, Ltd., 71
F.3d 996, 1003 (2d Cir. 1995), quoting Malden Mills, Inc. v. Regency Mills, Inc., 626
F.2d 1112, 1113 (2d Cir. 1980). “On occasion, . . . we have noted that when faced
with works that have both protectable and unprotectable elements, our analysis
must be more discerning and that we instead must attempt to extract the
unprotectable elements from our consideration and ask whether the protectable
elements, standing alone, are substantially similar.” Peter F. Gaito Architecture,
LLC v. Simone Dev. Corp., 602 F.3d 57, 66 (2d Cir. 2010) (internal citations and
quotation marks omitted). AWF and its amici contend that this “more discerning
observer” test should apply here because photographs contain both protectable
and unprotectable elements. See Appellee’s Br. at 65; Law Professors’ Br. at 8. The
same could be said, however, of any copyrighted work: even the most
quintessentially “expressive” works, such as books or paintings, contain non-
copyrightable ideas or concepts. See 4 Nimmer on Copyright § 13.03(B)(2).
Moreover, the cases in which we have applied the “more discerning
observer” test involved types of works with much “thinner” copyright protection
59
– i.e., works that are more likely to contain a larger share of non-copyrightable
elements. See, e.g., Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 102 (2d Cir.
2014) (architectural designs); Tufenkian Import/Export Ventures, Inc. v. Einstein
Moomjy, Inc., 338 F.3d 127, 136 n.13 (2d Cir. 2003) (Tibetan-style carpets); Boisson
v. Banian, Ltd., 273 F.3d 262, 272 (2d Cir. 2001) (quilts). By contrast, “photographs
are ‘generally viewed as creative aesthetic expressions of a scene or image’ and
have long received thick copyright protection[,] . . . even though photographs
capture images of reality.” Brammer v. Violent Hues Prods., LLC, 922 F.3d 255, 267
(4th Cir. 2019), quoting Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1177 (9th
Cir. 2012). We therefore reject AWF’s contention that we should be “more
discerning” in considering whether the Prince Series is substantially similar to
the Goldsmith Photograph and apply the standard “ordinary observer” test. See
Knitwaves, 71 F.3d at 1002-03.
Though substantial similarity often presents a jury question, it may be
resolved as a matter of law where “access to the copyrighted work is conceded,
and the accused work is so substantially similar to the copyrighted work that
reasonable jurors could not differ on this issue.” Rogers, 960 F.2d at 307 (citation
60
omitted); see also Gaito, 602 F.3d at 63 (“The question of substantial similarity is by
no means exclusively reserved for resolution by a jury.”).
Here, AWF has conceded that the Goldsmith Photograph served as the
“raw material” for the Prince Series works. See Appellee’s Br. at 6-7. AWF
nevertheless attempts to compare this case to several decisions from our sister
circuits concluding that the secondary works in question were not substantially
similar to the original photographs on which they were based. See, e.g.,
Rentmeester v. Nike, Inc., 883 F.3d 1111, 1121-23 (9th Cir. 2018) (Nike’s iconic
“Jumpman” logo and the photograph used to create it were not substantially
similar to a photograph of Michael Jordan dunking a basketball); Harney v. Sony
Pictures Television, Inc., 704 F.3d 173, 188 (1st Cir. 2013) (recreated image in made-
for-TV movie was not substantially similar to the photograph that inspired it).
But the secondary users in those cases did not merely copy the original
photographs at issue; they instead replicated those photographs using their own
subjects in similar poses. By contrast, Warhol did not create the Prince Series by
taking his own photograph of Prince in a similar pose as in the Goldsmith
Photograph. Nor did he attempt to copy merely the “idea” conveyed in the
Goldsmith Photograph. Rather, he produced the Prince Series works by copying
61
the Goldsmith Photograph itself – i.e., Goldsmith’s particular expression of that
idea. This case therefore stands in sharp contrast to the situation presented by
Rentmeester, for example, in which the court explained that “[w]hat [the original]
photo and the [allegedly infringing] photo share are similarities in general ideas
or concepts: Michael Jordan attempting to dunk in a pose inspired by ballet’s
grand jeté; an outdoor setting stripped of most of the traditional trappings of
basketball; a camera angle that captures the subject silhouetted against the sky.”
883 F.3d at 1122-23.
This is not to say that every use of an exact reproduction constitutes a work
that is substantially similar to the original. But here, given the degree to which
Goldsmith’s work remains recognizable within Warhol’s, there can be no
reasonable debate that the works are substantially similar. See Rogers, 960 F.3d
307-08. As we have noted above, Prince, like other celebrity artists, was much
photographed. But any reasonable viewer with access to a range of such
photographs including the Goldsmith Photograph would have no difficulty
identifying the latter as the source material for Warhol’s Prince Series.
62
CONCLUSION
For the foregoing reasons, we REVERSE the grant of AWF’s motion for
summary judgment, VACATE the judgment entered below dismissing Lynn
Goldsmith and LGL’s amended counterclaim, and REMAND this case for further
proceedings consistent with this opinion.
63
DENNIS JACOBS, Circuit Judge, concurring:
I concur in the opinion of the Court. I write briefly to make a single point.
It is very easy for opinions in this area (however expertly crafted) to have
undirected ramifications. A sound holding may suggest an unsound result in
related contexts.
So it is useful to emphasize that the holding does not consider, let alone
decide, whether the infringement here encumbers the original Prince Series
works that are in the hands of collectors or museums, or, in general, whether
original works of art that borrow from protected material are likely to infringe.
The sixteen original works have been acquired by various galleries, art
dealers, and the Andy Warhol Museum. This case does not decide their rights to
use and dispose of those works because Goldsmith does not seek relief as to
them. She seeks damages and royalties only for licensed reproductions of the
Prince Series.
Although the Andy Warhol Foundation initiated this suit with a request
for broader declaratory relief that would cover the original works, Goldsmith did
not join issue. The Declaratory Judgment Act is reserved for disputes that are
percolating over parties’ rights and obligations while harm threatens to accrue.
See United States v. Doherty, 786 F.2d 491, 498–99 (2d Cir. 1986) (Friendly, J.); see
also Broadview Chem. Corp. v. Loctite Corp., 417 F.2d 998, 1001 (2d Cir. 1969)
(articulating the criteria for deciding whether to entertain a declaratory judgment
action). But Goldsmith does not claim that the original works infringe and
expresses no intention to encumber them; the opinion of the Court necessarily
does not decide that issue.
The issue, however, still looms, and our holding may alarm or alert
possessors or creators of other artistic works. Warhol’s works are among many
pieces that incorporate, appropriate, or borrow from protected material. Risk of
a copyright suit or uncertainty about an artwork’s status can inhibit the creative
expression that is a goal of copyright. So it matters that a key consideration in
this case is the harm that the commercial licensing of the Prince Series poses to
Goldsmith’s market to license her photograph.
As the opinion observes, the photograph and the original Prince Series
works have distinct markets. See Majority Op. at 46–47. They are not
“substitutes.” Castle Rock Ent., Inc. v. Carol Publ’g Grp., 150 F.3d 132, 145 (2d
Cir. 1998). An original work of art is marked by the hand or signature of the
artist, which is a preponderating factor in its value. But when a work is
reproduced, it loses that mystique, as anyone who has browsed a gift shop can
2
appreciate. Thus there is overlap in the licensing markets for the Prince Series
and the photograph.
When one of the Prince Series works is licensed to a magazine, it functions
as a portrait of the musician Prince--as does Goldsmith’s photograph. The Prince
Series retains the photograph’s expressive capacity for Prince portraiture and is
used for that purpose. It may well compete for magazine covers, posters, coffee
mugs, and other items featuring the late musician. If the Foundation had refuted
the evidence of such market displacement, the weight of the analytical
considerations would have changed.
The distinction between the original and licensed Prince Series works is
likewise important when it comes to assessing the market effect alongside “the
public benefits the copying will likely produce.” Google LLC v. Oracle Am., Inc.,
141 S. Ct. 1183, 1206 (2021). The “public benefits” considered here are those
associated with the only use at issue: the Foundation’s commercial licensing.
This use has nothing to do with “copyright’s concern for the creative production
of new expression.” Id. Had the use been Warhol’s use of the photograph to
construct the modified image, we would need to reassess.
3