Earlier this month, a federal judge in New York dismissed a photographer’s copyright infringement claims against the Andy Warhol Foundation, after determining that a series of Warhol artworks based on an image taken by the photographer are protected as fair use.  The ruling represents another entry in the ever-growing log of court decisions grappling with the sometimes-slippery concept of transformativeness in copyright law. 
 
Background
 
The case began in 2017 (see our initial post here), when the Andy Warhol Foundation filed a preemptive lawsuit seeking a declaration that it had not infringed the copyright of Lynn Goldsmith; Goldsmith, for her part, countered with an affirmative infringement claim.  The allegedly infringed work is a photograph that Goldsmith took during a 1981 photo shoot with musical icon Prince.  It was never published, but in 1984, Goldsmith’s photo agency licensed the photo “for use as an artist’s reference” in connection with an article to be published in Vanity Fair.  The magazine then commissioned Warhol to use the photo to create an illustration of Prince to accompany an article featuring him.  In addition to the Warhol artwork that was eventually published in the 1984 issue of Vanity Fair, Warhol also used Goldsmith’s photo as the basis for other works, ultimately creating a total of 16 Warhol works depicting Prince.  The Foundation has owned the rights to the 16 works since Warhol’s death in 1987, and they have been displayed in museums and published in books.
 
After Prince died in 2016, Vanity Fair republished online its 1984 article about the artist, including the illustration, which it licensed from the Foundation.  It also published a commemorative magazine focused on Prince’s life and work, which likewise licensed from the Foundation the right to use one of the Warhol Prince works on its cover.  Shortly thereafter, Goldsmith learned for the first time of the Warhol Prince series.  (For her part, she has apparently never editioned or sold a print of the photograph at issue, although she claims she intends to.  She also has apparently never licensed any of the other works from the studio shoot at which she too that photo, although she has licensed other photos she took of Prince in other settings.)
 
Note that the Foundation had initially advanced a statute of limitations defense, arguing that the infringement at issue had occurred many years before Goldsmith sued.  But the Foundation apparently later abandoned that defense; as the court explained, Goldsmith’s claim was based on the Foundation’s acts in licensing one of the Warhol Prince works in 2016, so Goldsmith’s copyright claim was within the three-year statute of limitations.  Moreover, the court noted, under Goldsmith’s theory, any future licensing by the Foundation of one of those Warhol Prince images would also be actionable.  Thus, there was no timeliness problem.
 
The Court’s Ruling
 
Following discovery, the parties each sought summary judgment, with the Foundation arguing that the Warhol works were not substantially similar to Goldsmith’s photo and in any case are protected by fair use, while Goldsmith argued the Warhol works constitute infringement.  U.S. District Judge John G. Koeltl has now sided with the Foundation.
 
The Court’s analysis begins with the premise that, although photographs are certainly copyrightable, a photographer does not own the copyright in the subject of the photograph itself, or that subject’s features.  To prove infringement, a plaintiff has to show that she owns a valid copyright and that the defendant copied original elements of the copyrighted work.  Here, there was no dispute that Goldsmith’s copyright was valid and that Warhol had at the least had access to Goldsmith’s photo and copied some elements of it.  But the Foundation argued that it did not infringe Goldsmith's copyright because none of Warhol’s works based on her photo were “substantially similar” to Goldsmith’s Prince photograph under the “ordinary observer test” for substantial similarity.  That test asks “whether the ordinary observer, unless he set out to detect the disparities [between two works], would be disposed to overlook them, and regard their aesthetic appeal as the same… When the protected work contains both protectible and unprotectible elements, such as a photograph, courts must take on a more discerning comparison by extracting the unprotectible elements from consideration and then considering whether the remaining protectible elements of the works are substantially similar,” without ignoring the works’ “total concept and feel.” 
 
Interestingly, the Court opted not to rule on the substantial similarity question at all, holding instead that, assuming there was substantial similarity, Warhol’s works nevertheless constitute fair use so as to defeat Goldsmith’s claim.  The Court examined the four statutory fair use factors (see here), and acknowledged the commercial purpose of Warhol’s work (although it also noted the counterbalancing facts that some of the Warhol Prince series has been donated to a museum, the Foundation is a non-profit supporting the arts, and that generally the display of art has public value even though the artist also derives commercial value).  But the Court placed special emphasis on the concept of “transformativity,” which asks “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.”  And here, the Court held that the facts weighed heavily in favor of the Foundation, because Warhol’s works “may reasonably be perceived to be transformative of the Goldsmith Prince Photograph.”  The Court observed that Goldsmith sought to capture and reveal Prince’s true identity, reflecting his vulnerability and discomfort, while the Warhol works “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.”  Aesthetically, too, the black and white photograph captures details of his face and sought to emphasize his bone structure, while Warhol’s works altered the shading of his face and renders him a flat, two-dimensional, mask-like figure whose expressions are almost entirely lost, subsumed in loud, unnatural colors or rough lines.  “Moreover, each Prince Series work is immediately recognizable as a ‘Warhol’ rather than as a photograph of Prince – in the same way that Warhol's famous representations of Marilyn Monroe and Mao are recognizable as ‘Warhols,’ not as realistic photographs of those persons.”
 
Having determined that Warhol works “have a different character,” give Goldsmith’s photograph “a new expression, and employ new aesthetics with creative and communicative results distinct from” the original photo, the Court quickly analyzed the remaining fair use factors.  The second factor was held to be neutral; although Goldsmith’s work was creative and unpublished, those facts were counterbalanced by the fact that she had licensed the work to be used as an artist’s reference.  As to the third factor, the Court noted that the more creative elements of Goldsmith’s photo (such as her choices of lighting) were largely absent from Warhol’s works, while the copied elements were less creative (Prince’s facial features are not copyrightable and his pose was “not particularly original”).  And as to the fourth factor, the Court held that Goldsmith could not show that the Warhol works have harmed or might harm her market for her own works: “… the markets for a Warhol and for a Goldsmith fine-art or other type of print are different,” and while she did urge that Warhol’s works have harmed her licensing market for uses such as magazines and album covers, the Court saw “no reason to conclude” that potential licensees would see Warhol’s stylized works (“manifesting a uniquely Warhol aesthetic”), as a substitute for Goldsmith’s “intimate and realistic” portrait.  
 
Fair Use and Transformativity
 
This decision is clearly an important victory for appropriation art; indeed, a ruling in favor of Goldsmith could have had wide-reaching implications for other works by Warhol and other artists whose works incorporate or build on the works of others.  And it recognizes that the issues posed have been the subject of several important decisions in recent years; for example, the Court cited to the Seventh Circuit’s Keinitz decision (see here for our post on that case) and of course, the Second Circuit’s opinion in Cariou (see here for our post on that case).  But it also illustrates the ongoing challenges facing courts applying the fair use defense, an area where case-by-case analyses often do not lend themselves to generalized rules or clear guidance for future litigants.  
 
In particular, in the Second Circuit, courts continue to place heavy emphasis on the concept of transformativity—notwithstanding that that concept is itself a slippery one.  (The Second Circuit’s Judge Leval, who authored an influential early exploration of the concept in a 1990 article, recently warned against “oversimplified reliance” on the term.)  How should a court evaluate transformativity without making overly subjective assessments of a work’s expressive and aesthetic impact?  (At least one critic of the decision has expressed concern that the opinion veers into art criticism, a role for which judges are often ill-suited.)  Here, the Court was careful to explain that it was holding that the Warhol works “may reasonably be perceived to be transformative”—but, as some scholars have pointed out, that formulation might itself be interpreted a variety of ways; does it mean that a work is transformative as long as there is any plausible way of viewing it as transformative?  As long as a reasonable person would view it was transformative?  And what of the Court’s language about the unique stature of Warhol — should fair use be differently applied when the copying is being done by an art world icon such as Warhol or Richard Prince or Jeff Koons, simply by virtue of their status in the canon?  And at least one scholar has wondered whether the Court here should have considered dismissing the case on the basis of a lack of substantial similarity, instead of on fair use. 
 
We’ll continue to follow this case, especially as Goldsmith has indicated she intends to appeal the ruling.