In 1994, the U.S. Supreme Court held, in Campbell v. Acuff Rose Music, Inc., that the focus in determining fair use is “whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is transformative.” The Campbell case involved a rendition of the Roy Orbison hit “Oh, Pretty Woman” by the hip-hop group 2 Live Crew. The Court concluded that the four factors expressly listed in section 107 “provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses.” Although the decision in Campbell did not involve visual arts, it is at the center of most cases involving the transformative fair use defense regardless of the nature of the work.
Conflicting decisions emanating from federal courts nationwide prevent creators with flourishing creativity from relying on the safe harbor promises of fair use. Notably, protecting the copyrights of photographers and visual artists while promoting freedom of expression and artistic creativity is a balancing act. Therefore, any pre-litigation assessment must focus on considering all relevant factors—among them, similarities between the original work and the secondary work, as well as the extent and scope of the transformation the secondary work delivers.
Transformative Fair Use in New York
Following the Campbell decision, and using it as precedent, New York courts have adopted certain guidelines to identify transformative fair use. According to federal appellate courts in New York, a new work is deemed transformative of the original work “if looking at the works side-by-side, the secondary work has a different character, a new expression, and employs new aesthetics with creative and communicative results distinct from the original.” The more transformative characteristics the secondary work claims, the stronger the fair use defense. A new work that uses the copyrighted work as a raw material must include new information, aesthetics, or context for the court to consider it transformative.
New York State has always been at the forefront of creative advancement, with jurisprudence supporting the expansion of fair use. However, on March 26, 2021, the Second Circuit reversed a 2019 decision holding that Andy Warhol’s use of a copyrighted photograph was transformative and, thus, fair use.
Andy Warhol’s “Prince Series” and the Future of Transformative Fair Use
The case of Andy Warhol Foundation v. Goldsmith raised the question of whether the fair use doctrine protects Andy Warhol’s use of a photograph depicting Prince to create a series of artworks. The original elements of photographs, such as the specific pose and expression, lighting, angle, and selection of film and camera, are protected under the law. Relying on the doctrine of fair use, the district court held that Warhol’s works sufficiently transformed the original black-and-white photo from a “vulnerable, uncomfortable person” into “an iconic, larger-than-life figure” through alterations in color and shading.
In 1981, at the genesis of Prince’s career, photographer Lynn Goldsmith took 11 photographs of the iconic artist. In October 1984, Vanity Fair obtained licenses to use the unpublished photos as an artist reference in connection with an article the magazine was launching. As a result, Warhol created a single image depicting Prince’s head and a small portion of his neckline. Warhol’s creation was ultimately used in the 1984 Vanity Fair article “Purple Fame.”
Thereafter, Warhol created the “Prince Series” comprising 16 images based on one of Goldsmith’s unpublished photographs. Following the death of Prince in 2016, Vanity Fair published one of the “Prince Series” in connection with a tribute article. The article prompted Goldsmith’s team to contact the Andy Warhol Foundation for the Visual Arts (AWF), alleging copyright infringement of her unpublished photographs. The AWF preemptively filed an action against Goldsmith, seeking judgment declaring that the Prince Series works did not infringe the copyright of the Goldsmith Prince photograph. The AWF argued that Warhol’s works are not substantially similar and, in the alternative, that Warhol’s secondary works constitute fair use.
In deciding the case “solely on fair use grounds,” the district court found that the Prince Series transformed the original work. The court also found that the potential market for or value of the work weighed in favor of fair use because the market for a Warhol is distinct from the licensing market for a photograph of Prince, and the Prince Series is not a substitute for Goldsmith’s photograph.
On March 26, 2021, the Second Circuit ruled that the Prince Series infringed on Goldsmith’s black-and-white photograph, overturning the district court’s 2019 ruling. Circuit Judge Lynch wrote, “[W]hether a work is 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.” The court of appeals concluded that Warhol added his own “signature style” but did not create a “fundamentally different and new” work.
Notably, the court then applied the substantial similarity test to determine copyright infringement. The court concluded that “there can be no reasonable debate that the works are substantially similar” and, more importantly, that “any reasonable viewer with access” to Goldsmith’s photograph would identify the original black-and-white photo as the “source material.”
Cariou v. Prince: “Yes Rasta” and “Canal Zone”—Second Circuit Clarifications
At issue in Cariou v. Prince, decided in 2013, was whether artist Richard Prince’s appropriation art incorporating photographer Patrick Cariou’s copyrighted photographs is considered fair use because it comments or relates to historical context or critically refers to the original copyrighted work. Legal and art professionals alike have largely criticized the Second Circuit’s decision in this case as an over-amplification of the fair use doctrine.
Photographer Cariou spent about six years living among Rastafarians in Jamaica. In 2000, he published the book Yes Rasta featuring classical portraits and landscapes that he took during those years. Thereafter, Richard Prince, a well-known appropriation artist, used several of Cariou’s Yes Rasta photographs to create a series of paintings and collages. Cariou filed an action against Prince in the Southern District of New York, resulting in a summary judgment in favor of Cariou.
The federal appeals court decided that Prince’s paintings “were transformative as a matter of law and thus constituted fair use of the copyrighted photographs.” The court explained that the law does not require that a work comment on the original and found Prince’s works to be transformative. Prince’s “composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of [the defendant’s] work.” In sum, having a different purpose and aesthetic is sufficient to consider the work transformative.
For its fair use analysis, the Second Circuit also considered the effect that the new work had on the market for the original copyrighted work. In other words, the fair use should not completely damage the market for the original work by providing a substitute. With regard to this factor, the court held that Prince’s use of Cariou’s photographs did not usurp the copyright owner’s market because Prince’s paintings have a completely different market: wealthy collectors. Thus, as long as the target audience of the new work is different than the original’s, these facts will likely support a finding of fair use.
While rendering the Warhol decision, the Second Circuit took the opportunity to clarify its ruling in Cariou. In doing so, Judge Lynch wrote, “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.” The decision emphasizes that fair use is a context-sensitive inquiry and that, as a result, Cariou must not be literally construed. Any alterations of an original work that provide “new expression, meaning or message,” employ “new aesthetics,” and position the work in “a different context” are not decisive factors in determining transformative fair use.
Final Considerations for Artists and Content Creators
Due to the conflicting judicial precedent concerning copyright infringement and fair use, artists should seek legal advice at the conceptual stages of their creations. Early legal assessment of any potential fair use defense is key. We recommend that our clients first seek permission from the copyright owner and explore licensing opportunities. However, securing permission from the owner is often easier said than done. Copyright owners sometimes will demand approval rights over the use, impairing an otherwise adventurous creative process.
When permission is simply not an option for the artist, preemptively assessing a fair use defense becomes the next reasonable step. Because the fair use defense is subjective and lacks a uniform legal precedent, the client and the attorney must collaborate to determine potential risks. Regardless of the legal technicalities that a transformative fair use assessment involves, there are also business considerations, e.g., the costs of litigation versus the licensing fees. In addition, the client might want to take advantage of the fair use defense to push the boundaries of creativity. The client’s artistic and creative goals are important considerations because these factors are intimately related to the ultimate notoriety and recognition the artist is looking to achieve. The client should make an informed decision with the advice of counsel before exploring transformative uses.