Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith

• Decision Date: 26 March 2021
• Docket Number: Docket No. 19-2420-cv,August Term, 2020
• Citation: 11 F.4th 26
• Parties: The ANDY WARHOL FOUNDATION FOR the VISUAL ARTS, INC., Plaintiff-Counter-Defendant-Appellee, v. Lynn GOLDSMITH, Lynn Goldsmith, Ltd., Defendants-Counter-Plaintiffs-Appellants.
• Court: U.S. Court of Appeals — Second Circuit

11 F.4th 26

The ANDY WARHOL FOUNDATION FOR the VISUAL ARTS, INC., Plaintiff-Counter-Defendant-Appellee,

v.Lynn GOLDSMITH, Lynn Goldsmith, Ltd., Defendants-Counter-Plaintiffs-Appellants.

Docket No. 19-2420-cv

August Term, 2020

United States Court of Appeals, Second Circuit.

Argued: September 15, 2020

Decided: March 26, 2021

Amended: August 24, 2021

Thomas G. Hentoff (Lisa S. Blatt, Katherine Moran Meeks, on the brief), Williams & Connolly LLP, Washington, D.C., for Defendants-Appellants.

Luke Nikas (Maaren A. Shah, Kathryn Bonacorsi, on the brief), Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, for Plaintiff-Appellee.

Roman Martinez, Sarang Vijay Damle, Elana Nightingale Dawson, Latham & Watkins LLP, Washington, D.C.; Andrew Gass, Nicholas Rosellini, Latham & Watkins LLP, San Francisco, CA, additional counsel for Plaintiff-Appellee on Petition for Rehearing.

Christopher T. Bavitz, Harvard Law School Cyberlaw Clinic, Cambridge, MA, for Amici Curiae Law Professors.

Jason Schultz, Christopher Morten, New York University Technology Law and Policy Clinic, New York, NY, for Amici Curiae Latipa (née Michelle Dizon) and Viêt Lê.

Ira J. Levy, Goodwin Procter LLP, New York, NY; Jaime A. Santos, Goodwin Procter LLP, Washington, D.C., for Amicus Curiae The Robert Rauschenberg Foundation.

Gregory J. Dubinsky, Evan H. Stein, Holwell Shuster & Goldberg LLP, New York, NY, for Amicus Curiae Professor Terry S. Kogan.

Thomas B. Maddrey, Maddrey PLLC, Dallas, TX; Russell J. Frackman, UCLA School of Law Copyright Amicus Brief Clinic, Los Angeles, CA, for Amici Curiae The American Society of Media Photographers, Inc., National Press Photographers Association, Professional Photographers of America, Graphic Artists Guild, and North American Nature Photography Association.

Benjamin S. Akley, Donald S. Zakarin, Pryor Cashman LLP, New York, NY, for Amicus Curiae Recording Industry Association of America.

Additional Amici Curiae in Support of Petition for Rehearing:

Jaime A. Santos, Andrew Kim, Goodwin Proctor LLP, Washington D.C., for Amici Curiae The Robert Rauschenberg Foundation, Roy Lichtenstein Foundation, Whitney Museum of American Art, The Museum of Modern Art, and The Solomon R. Guggenheim Foundation.

Allyson R. Bennett, Moon Hee Lee, Durie Tangri LLP, Los Angeles, CA; Mark A. Lemley, Joseph C. Gratz, Durie Tangri LLP, San Francisco, CA, for Amicus Curiae Professor Amy Adler.

Rebecca Tushnet, Harvard Law School, Cambridge, MA, for Amici Curiae 60 Intellectual Property Scholars.

Before: Jacobs, Lynch, and Sullivan, Circuit Judges.

Judge Jacobs concurs in the Court's opinion, and files a concurring opinion.

Gerard E. Lynch, Circuit Judge:

This case concerns a series of silkscreen prints and pencil illustrations created by the visual artist Andy Warhol based on a 1981 photograph of the musical artist Prince that was taken by Defendant-Appellant Lynn Goldsmith in her studio, and in which she holds copyright. In 1984, Goldsmith's agency, Defendant-Appellant Lynn Goldsmith, Ltd. ("LGL"), then known as Lynn Goldsmith, Inc., licensed the photograph to Vanity Fair magazine for use as an artist reference. Unbeknownst to Goldsmith, that artist was Warhol. Also unbeknownst to Goldsmith (and remaining unknown to her until 2016), Warhol did not stop with the image that Vanity Fair had commissioned him to create, but created an additional fifteen works, which together became known as the Prince Series.

Goldsmith first became aware of the Prince Series after Prince's death in 2016. Soon thereafter, she notified Plaintiff-Appellee The Andy Warhol Foundation for the Visual Arts, Inc. ("AWF"), successor to Warhol's copyright in the Prince Series, of the perceived violation of her copyright in the photo. In 2017, AWF sued Goldsmith and LGL for a declaratory judgment that the Prince Series works were non-infringing or, in the alternative, that they made fair use of Goldsmith's photograph. Goldsmith and LGL countersued for infringement. The United States District Court for the Southern District of New York (John G. Koeltl, J. ) granted summary judgment to AWF on its assertion of fair use and dismissed Goldsmith and LGL's counterclaim with prejudice.

Goldsmith and LGL contend that the district court erred in its assessment and application of the four fair-use factors. In particular, they argue that the district court's conclusion that the Prince Series works are transformative was grounded in a subjective evaluation of the underlying artistic message of the works rather than an objective assessment of their purpose and character. We agree. We further agree that the district court's error in analyzing the first factor was compounded in its analysis of the remaining three factors. We conclude upon our own assessment of the record that all four factors favor Goldsmith and that the Prince Series works are not fair use as a matter of law. We further conclude that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law.¹

BACKGROUND

The relevant facts, which we draw primarily from the parties’ submissions below in support of their respective cross-motions for summary judgment, are undisputed.

Goldsmith is a professional photographer primarily focusing on celebrity photography, including portrait and concert photography of rock-and-roll musicians. Goldsmith has been active since the 1960s, and her work has been featured widely, including on over 100 record album covers. Goldsmith also founded LGL, the first photo agency focused on celebrity portraiture. LGL represents the work of over two hundred photographers worldwide, including Goldsmith herself.

Andy Warhol, né Andrew Warhola, was an artist recognized for his significant contributions to contemporary art in a variety of media. Warhol is particularly known for his silkscreen portraits of contemporary celebrities. Much of his work is broadly understood as "comment[ing] on consumer culture and explor[ing] the relationship between celebrity culture and advertising." Cariou v. Prince , 714 F.3d 694, 706 (2d Cir. 2013). AWF is a New York not-for-profit corporation established in 1987 after Warhol's death. AWF holds title to and copyright in much of Warhol's work, which it licenses to generate revenue to further its mission of advancing the visual arts, "particularly work that is experimental, under-recognized, or challenging in nature." J. App'x at 305.

On December 3, 1981, while on assignment from Newsweek magazine, Goldsmith took a series of portrait photographs of (then) up-and-coming musician Prince Rogers Nelson (known through most of his career simply as "Prince") in her studio. Goldsmith testified that, prior to Prince's arrival at her studio, she arranged the lighting in a way to showcase his "chiseled bone structure." Id. at 706. Goldsmith also applied additional makeup to Prince, including eyeshadow and lip gloss, which she testified was intended both to build a rapport with Prince and to accentuate his sensuality. Goldsmith further testified that she was trying to capture Prince's "willing[ness] to bust through what must be [his] immense fears to make the work that [he] wanted to [make]." Id. at 1557. Goldsmith took black-and-white and color photographs using a Nikon 35-mm camera and a mixture of 85- and 105-mm lenses, which she chose to best capture the shape of Prince's face.

Prince, who according to Goldsmith appeared nervous and uncomfortable, retired to the green room shortly after the session began and ultimately left without allowing Goldsmith to take any additional photographs. During the truncated session, Goldsmith took 23 photographs, 12 in black and white and 11 in color. Goldsmith retained copyright in each of the photographs that she took. Most relevant to this litigation is the following photograph, hereinafter referred to as the "Goldsmith Photograph":

In 1984, Goldsmith, through LGL, licensed the Goldsmith Photograph to Vanity Fair magazine for use as an artist reference. Esin Goknar, who was photo editor at Vanity Fair in 1984, testified that the term "artist reference" meant that an artist "would create a work of art based on [the] image reference." Id. at 783. The license permitted Vanity Fair to publish an illustration based on the Goldsmith Photograph in its November 1984 issue, once as a full page and once as a quarter page. The license further required that the illustration be accompanied by an attribution to Goldsmith. Goldsmith was unaware of the license at the time and played no role in selecting the Goldsmith Photograph for submission to Vanity Fair.

Vanity Fair, in turn, commissioned Warhol to create an image of Prince for its November 1984 issue. Warhol's illustration, together with an attribution to Goldsmith, was published accompanying an article about Prince by Tristan Vox and appeared as follows:

In addition to the credit that ran alongside the image, a separate attribution to Goldsmith was included elsewhere in the issue, crediting her with the "source photograph" for the Warhol illustration. Vanity Fair did not advise Goldsmith that Warhol was the artist for whom her work would serve as a reference, and she did not see the article when it was initially published.

Unbeknownst to Goldsmith and LGL, Warhol created 15 additional works based on the Goldsmith Photograph, known collectively, and together with the Vanity Fair image, as the "Prince Series."² The Prince Series comprises fourteen silkscreen prints (twelve on canvas, two on paper) and two pencil illustrations, and includes the following images:

Although the specific means that Warhol used to create the images is unknown (and, perhaps, at this point, unknowable), Neil Printz, the editor of the Andy Warhol Catalogue Raisonné , testified that it was Warhol's usual practice to reproduce a photograph as a high-contrast two-tone image on acetate that, after any alterations Warhol chose to make, would be used to create a silkscreen. For the canvas prints, Warhol's general practice was to paint the...