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Is A Painting Based On A Photo Of Prince Fair Use Or Copyright Infringement? SCOTUS Will Decide

By Dove Barbanel on April 07, 2022 11:10 AM

It is easier than ever to take a photo of someone and make a painting based on it. The painting may reflect the artist's unique personal style. It may have taken a lot of effort to make sure the painting accurately represents the content of the original photo. But can the painter get a copyright on their painting, with all the legal rights and protections that entails?

To qualify for copyright protection, a visual work must be an original work of authorship. But if an artist bases their painting on a photo, who is the author? The artist who painted or the photographer who created the source material? If it is the latter, the painter has created a derivative work, and they need a license to market their painting. If it is the former, the painter has transformed the source material into a new work all their own, at least for the purposes of copyright law.

Does the line between derivative works and transformative works appear blurry? SCOTUS will hopefully add some clarity to this picture in the coming months. On March 28, the court agreed to review the Second Circuit case addressing this issue, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith.

Read the Second Circuit's opinion and thousands of other cases with a free trial of Westlaw Edge.

A Dispute Over An Image Of Prince

The case derives from a photograph of the musician Prince that photographer Lynn Goldsmith licensed to Vanity Fair in 1984. The magazine had permission to provide the photograph to an illustrator, who would use it as a model for a painting of Prince. Vanity Fair chose Andy Warhol for the job. Warhol, famous for his distinctive pop art portraiture, created 16 works of art based on Goldsmith's photo of Prince. However, the license only permitted him to make and publish one.

When Prince died in 2016, Vanity Fair reprinted Warhol's portrait, crediting the Andy Warhol Foundation (AWF). Goldsmith discovered the existence of Warhol's Prince Series and realized her photo had been used without a license.

When Goldsmith queried AWF about the Prince Series, they filed for a declaratory judgment in District Court, seeking a determination that there was no copyright infringement or that the series qualified as "fair use." Goldsmith counterclaimed, alleging copyright infringement. The District Court ruled for AWF on fair use grounds, but the Second Circuit overturned the ruling in Goldsmith's favor.

The Standard For Fair Use and Transformative Works

Fair use is a defense against copyright infringement that allows artists to use copyrighted works when doing otherwise would stifle the creativity that copyright law aims to foster. To determine fair use of a copyrighted work, courts look to four factors:

  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.

The first and fourth factors are often the most important when courts analyze fair use. In the 1994 case Campbell v. Acuff-Rose Music, Inc., SCOTUS held that if, under the first factor, the purpose or character of the use is "transformative," this can tip the balance towards a finding of fair use rather than infringement, even when other factors tip the other way.

In Campbell, the music group 2 Live Crew used singer Roy Orbison's song "Oh, Pretty Woman" as the basis for a parody. Even though the parody song borrowed heavily from the music and lyrics of the original, the court found fair use because the parody had a different character and purpose. Few artists would willingly license others to make fun of their works, so the fair use doctrine steps in to protect this form of creativity.

What about transformative fair use in the context of visual art? In the Second Circuit case Blanch v. Koons AG, artist Jeff Koons used a piece of a magazine photograph in a collage and was sued for copyright infringement. Koons won on a fair use defense because his purpose for using the photograph, in the context of the collage, transformed the meaning of the image.

However, in Cariou v. Prince, artist Richard Prince didn't claim any particular meaning in his artworks that incorporated unlicensed material from Cariou's photographs. He still won on fair use grounds for some of the works because, despite the lack of evidence on meaning, some of the works were so aesthetically different from the source material that they qualified as transformative. But as Justice Holmes famously warned in the 1903 SCOTUS case, Bleistein v. Donaldson Lithographing Co., judges are ill-equipped to make reliable aesthetic judgments in copyright cases.

Here, the plaintiffs claim that Warhol transformed Goldsmith's photo into a commentary on celebrity. The District Court found the paintings had a different meaning from the photo because Warhol's alterations reduced the humanity apparent in the source material.

But the Second Circuit reversed, finding that these changes were not sufficient to transform the work and that the source material was still readily recognizable in the painting of Prince. They were reluctant to call the work transformative, which could dilute the protections afforded to derivative works.

Fair Use In Google LLC v. Oracle America, Inc.

Google LLC v. Oracle America, Inc., which refined the Campbell standard for fair use in the context of computer programs in 2021, gave AWF a second chance. Justice Stephen Breyer, a former copyright scholar, wrote the opinion.

In his discussion of fair use, Breyer noted that a visual artist could get copyright protection for an artistic painting that "precisely replicates" a copyrighted logo because his use is transformative as a commentary on consumerism. Many see this as a reference to famous paintings of Campbell's Soup cans by (you guessed it) Andy Warhol.

AWF sought a rehearing in light of the Oracle decision. The Second Circuit issued an amended opinion stating that the Oracle case did not change its decision because the ruling was specific to software. Further, the purpose and character of the use differed from that of the original work, which made the use transformative. Warhol was not copying an advertisement logo to make art; he was copying an artist's work, so the use had the same overarching purpose, meaning his copy was not sufficiently transformative. Unhappy with this amended opinion, AWF petitioned SCOTUS for certiorari to define the standard for transformative use in this case.

Is There A Circuit Split?

The petitioners argue the Second Circuit's opinion caused a circuit split. They say that the Second Circuit created a new test where judges will not inquire in-depth as to the new purpose or meaning of a work that is not sufficiently different visually from a prior work.

They contrast this test with one from a Ninth Circuit case, Seltzer v. Green Day Inc III. In that case, a designer for Green Day used an image of a screaming face made by a street artist, Dereck Seltzer, without permission, to make a video backdrop to play during a song on the band's concert tour. The image was put into a video collage virtually unchanged, except a red cross was painted over it.

Even though the image was Seltzer's, the court said that Green Day had imbued the composition with new meaning. Green Day used Seltzer's image to comment on religious hypocrisy, a theme of their songs, while Seltzer had intended the image to stand for youthful outsider culture and directionless anguish. Because Green Day's use brought new meaning to the image, it was transformative, and the court found fair use.

The respondents, representing Goldsmith, deny that the Second Circuit created a circuit split. They argue that Warhol's image has the same purpose or meaning as Goldsmith's image: it is a visual representation of Prince. They also point to the market effects of Warhol's copy, which harms the market for licensing Goldsmith's photo under the fourth fair use factor.

The Second Circuit opinion also thought Warhol's image wasn't visually different enough from Goldsmith's. They noted that finding Warhol's image transformative because of his recognizable style would create a "plagiarist privilege" in copyright law for famous artists. The respondents noted that Goldsmith herself is a famous photographer who used her skill to prepare Prince as a model and frame the original photo.

Policy Questions At Stake

The petitioners warn that the Second Circuit's test for fair use could do serious harm to the art world. On their side are visual artists and museums, who might face copyright liability for presenting paintings based on photographs. They might even be forced to destroy works of cultural importance that were unknowingly infringing.

Goldsmith contends that such extreme measures won't be necessary under the Second Circuit test. She doesn't want to make it harder for artists to create and distribute works, but she does want protection from copying for her own works in this case. On her side are photographers and recording artists who want to protect their right to license derivative works. It is up to SCOTUS to provide additional clarity for creators about what counts as transformative fair use for works that derive recognizably from the same source.

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