Is Fair Use Analysis a Fair Play?
Judge John G. Koeltl of the District Court of the Southern District of New York (“S.D.N.Y”) handed a victory to the Andy Warhol Foundation for the Visual Arts (the “Foundation”) when it granted the Foundation’s motion for summary judgment in a copyright infringement lawsuit. See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312 (S.D.N.Y. 2019).
On December 3, 1981, Lynn Goldsmith had the opportunity to shoot Prince in her New York studio on assignment from Newsweek. Id. at 318. However, Newsweek chose not to publish any of these photographs, including the photograph featured in the Warhol work (“Goldsmith Prince Photograph”). Id. In 1984, Vanity Fair obtained a license to one of the photographs Goldsmith produced in her studio back in 1981. Id. Vanity Fair then commissioned Warhol to produce an illustration for its upcoming issue themed around Prince (the “Prince Series works”). Id. Goldsmith claimed that Warhol’s resulting illustrative work copied her Goldsmith Prince Photograph. Id. The Foundation adamantly denied the allegation and stated that there was “no evidence that [Warhol] was given the photograph itself.” Id. at 319.
The Foundation sought a declaratory judgment declaring that the Prince Series works “did not constitute a violation of the Copyright Act.” Id. at 316. Goldsmith counterclaimed that the Warhol works clearly infringed her copyright in the Goldsmith Prince Photograph.
On the issue of infringement, Judge Koeltl determined that there “was access and sufficient probative similarity to establish that Warhol ‘copied’ the Goldsmith Prince Photograph,” but declined to address whether the works were substantially similar, stating that “it is plain that the Prince Series works are protected by fair use.” Id. at 323-24.
Fair use is a defense against a claim of copyright infringement. A judge evaluating the validity of any fair use defense looks at the following four factors: 1) the purpose and character of the use, 2) the nature of the copyrighted work, 3) the amount and substantiality of the portion taken, and 4) the effect of the use upon the potential (emphasis mine) market. See generally Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985). The presiding judge has the ultimate discretion in deciding how much weight should be accorded to each factor. On summary judgment, the facts are viewed in the light most favorable to the non-moving party — in this case, Goldsmith.
1] The purpose and the character of the use
This factor evaluates the transformative nature of the work in question. Judge Koeltl stated that the investigation centered around “whether the new work merely supersede[s] 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.” Id. at 325 (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)). In this case, Judge Koeltl determined that although Warhol’s Prince Series works are essentially commercial in nature, they serve a broader public interest. Id. at 325. He then declared that “in any event, the Prince Series works are transformative” because Warhol’s “alterations result in an aesthetic and character different from the original.” Id. at 326.
2] The nature of the copyrighted work
Judge Koeltl found the Goldsmith Prince Photograph to be a creative work, but nonetheless decided that this factor weighed in favor of neither party. Goldsmith, 382 F. Supp. 3d at 327. While the Goldsmith Prince Photograph is an unpublished work (which would normally weigh in favor of Goldsmith), Judge Koeltl found this to “carry little force” because Goldsmith’s agency had licensed the photograph for use as an artist’s reference. Id.
3] The amount and substantiality of the portion taken
The relevant question to ask for this factor is “whether the quantity and value of the materials used are reasonable in relation to the purpose of the copying.” Goldsmith, 382 F. Supp. 3d at 327 (quoting Cariou v. Prince, 714 F.3d 694, 710 (2d Cir. 2013)). Judge Koeltl concluded that Andy Warhol did not substantially take and copy Goldsmith’s work because, despite Warhol’s initial use of Prince’s head and neckline as they appear in the Goldsmith Prince Photograph, “Warhol transformed Goldsmith’s work into something new and different.” Id. at 329.
In analyzing the third factor, a court makes an inquiry into how much the infringing work took from the copyrighted work. In making that inquiry, the court would look at the portion taken both quantitatively and qualitatively. Here, a more qualitative evaluation is necessary because the Prince Series raises a triable issue as to whether it took the heart of the Goldsmith Prince Photograph.
The fact that Warhol transformed Goldsmith’s work should be accorded little weight for the purposes of the third factor. Admittedly, the fair use analysis in Campbell linked the third factor with the first one. The present case, however, can be distinguished from Campbell because, in Campbell, the taking was necessary to achieve the intended effect, namely parody. The parodical nature of the infringing work in Campbell inevitably “[sprang] from recognizable allusion to” the copyrighted work. Campbell at 510 U.S. at 588. In other words, there was no alternative way to produce the infringing work without substantially taking the very essence of the copyrighted work. Here, absent the Foundation’s explanation as to why the taking was necessary to produce the Prince Series, the transformative nature should be accorded less weight in the analysis of the third factor.
4] The effect of the use upon the potential market
Here, Judge Koeltl started by stating that there is no market usurpation on the work itself. Goldsmith, 328 F. Supp. 3d at 330. The concern was whether “her licensing markets overlap the same markets into which Andy Warhol Foundation has licensed Warhol’s imagery for editorial and commercial uses.” Id.
Judge Koeltl perceptively observed that competition occurs in the licensing market. However, he was too quick to conclude that the two works cannot be seen as substitutes. The two works do not have to be substitutes for one another to have an effect on the potential licensing market. Moreover, this factor takes into account the effect of use upon the potential market. Judge Koeltl found that Warhol’s licensing market did not overlap with Goldsmith’s and characterized Warhol’s licensing market as “a market which Goldsmith has not even attempted to enter into with her Prince photographs.” Id. at 331. However, that does not necessarily preclude a finding that there is no potential future effect on Goldsmith’s licensing ability. Given that this is a summary judgment motion, I believe that Goldsmith should have been given the opportunity, as the non-moving party, to prove that the Foundation’s use potentially impacts her licensing market.
Summary judgment is a drastic remedy that should only be granted if there is no triable issue of genuine fact. In this case, there seem to be genuine factual issues in determining whether the Foundation should be entitled to summary judgment as a matter of law.