Second Circuit: Addressing Fair use Defense

In the present case, the dispute was with regards to contemporary artist Andy Warhol’s 1984 images of musical artist Prince and Photographer Lynn Goldsmith’s 1981 photograph of the music legend. The United States Court of Appeal for the Second Circuit ruled that the use of Lynn Goldsmith’s 1981 photograph was not fair use by Andy Warhol’s image of a musical artist. This overturns a 2019 decision of the United States District Court for the Southern District of New York. The present case deals in the creation of the work which has a prior material, whereby the dispute is between a creator’s creativity and creator’s control.

[Image Source: gettyimages]

Facts

Andy Warhol created a series that was based on Lynn Goldsmith’s 1981 photograph of late musical artist Prince, where Andy created silkscreen prints and pencil illustrations. The copyright was owned by Goldsmith. Goldsmith is a professional photographer who specialized in making celebrity picture portraits and was also a creator of Lynn Goldsmith Ltd. Andy is known for his contribution to media art in the modern era which was mostly through his silkscreen portraits of the modern icon where people recognize it as Warhol. AWF owns much of the work of Andy’s.

After the death of Warhol, the copyright over Warhol’s work of Prince series was copyrighted by AWF having gained rights over it. After Prince’s death, Goldsmith got aware of the Prince Series after his death in 2016 and after getting aware, she notified AWF of the same breach stating that she has her copyright over the photo. Citing fair use doctrine, AWF sued Goldsmith stating that there was no such alleged breach claiming non-infringing and fair use of Goldsmith photo and file for a declaratory judgment. With this, Goldsmith and LGL countersued for infringement.

District Court judgment

Favoring the AWF, the district court granted summary judgment to AWF for its claim of fair use, and the counterclaim of Goldsmith and LDL was dismissed. Fair use as an effective defense to copyright infringement, the district court listed four considerations for the use being fair. These were-

• The nature of the copyrighted work;
• The substantiality of the portion used in respect to the copyrighted work as a whole; and
• The purpose and character of the use;
• The impact on the copyrighted work’s potential market or value.

With this defense, the use of Prince Series was fair, stating that the work contributes fresh to the realm of art, and if this fair use was not available then the audience would be deprived of using the same.

Overturning the decision, the Court of Appeal agreed with Goldsmith’s decision. The second circuit only agrees with one point of the District Court and that was with the usage being commercial, and disagreeing with other observations. Goldsmith contended that the district court erred in observing that “based on a subjective underlying artistic message of the works, rather than an objective assessment of their purpose and character.”

The Court observed that “There is an entire class of secondary works that add ‘additional expression, meaning, or message’ to their source material but are nonetheless specifically barred from the purview of fair use: derivative works. Where a secondary work does not comment on or relate to the original or uses the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’… is insufficient to render a work transformative, and it is instead derivative and infringing. The secondary work must fairly be viewed as reflecting an altogether independent artistic aim, one that transmits a ‘new meaning or message’ entirely separate from its parent material to be found transformative.”

With this, the court of appeal overturned the decision. Therefore, it is to be noted that the work must stand apart from the source and must have fundamental differences providing the new artistic feature.

Author: Saransh Chaturvedi an associate at IP And Legal Filings,  in case of any queries please contact/write back us at support@ipandlegalfilings.com.