Friday, 28 April 2017

Andy Warhol Foundation Asks SDNY to Declare Prince Series Not Infringing

The Andy Warhol Foundation for the Visual Arts filed this month a suit against photographer Lynn Goldsmith asking the Southern District of New York Court (SDNY) to declare that the Andy Warhol Prince Series did not infringe on Defendant’s copyright, that the portraits in the series are transformative works protected by fair use, and that Defendant’s claim is barred by the equitable doctrine of laches. The case is The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith and Lynn Goldsmith, Ltd., 1:17-cv-2532.

Andy Warhol died in 1987, and his will directed that almost all of his estate should be used to create a foundation dedicated to the “advancement of visual arts.” Andy Warhol Foundation for the Visual Arts was created in 1987, and, around 1994, took ownership of all copyrights and trademarks owned by Andy Warhol at the time of his death.

Defendant photographed in 1981 musical artist Prince, aka the Artist Formerly Known as Prince, or the Artist. The photograph shows Prince facing the viewer, wearing a white shirt and suspenders. Only the top part of his pants are shown.

Andy Warhol created a whole series of portraits of Prince (the Prince Series), using his famous silkscreen printing technique, which he also used for his Marilyn Monroe portraits. The Prince Series “were inspired by [Defendant’s] photograph” (Complaint p. 13). The different portraits which are part of the Prince Series are variations of the same image, the face of Prince, detached and seemingly floating over a single color background, looking toward the viewer.
Andy Warhol, Prince (1984) Copyright AWF

Defendant licensed the photograph in 1984 to monthly magazine Vanity Fair, to be published in the November 1984 issue. One of the portraits of the Prince Series by Warhol was also published in Vanity Fair in its November 1984 issue.

Defendant contacted the Foundation for the first time in July 2016. Prince had died on April 21, 2016, and one of the portraits of the Prince Series was used for the cover of The Genius of Prince, published by Condé Nast in May 2016 to commemorate the musician’s life and works. Defendant “demanded that the Foundation pay a substantial sum of money and threatened to sue if the Foundation refused” (Complaint p.24).

Plaintiff filed suit, asking the SDNY to declare that the Prince Series does not infringes Defendant’s copyright, and that the portraits are a fair use of Plaintiff’s photograph.

Is the Prince Series Transformative? (First Fair Use Factor)

The Complaint concentrates on two of the fair use factors, the first factor, the purpose and character of the use and the fourth factor, the effect of the use on the potential market.

In 2013, the Second Circuit Court of appeals held in Cariou v. Prince that twenty-five of Prince's artworks were fair use because of their “entirely different aesthetic from Cariou's photographs.” In this case, Richard Prince, the appropriation artist, not the Artist formerly known as Prince, had used several photographs created by Patrick Cariou to create his Canal Zone series.

 Indeed, the more transformative is a use of a work, the more likely will it be protected by fair use. In our case, the Andy Warhol Foundation is claiming that the Prince Series “transforms the aesthetic and meaning of the Prince Publicity Photograph” and lists a series of examples showing how the Prince Series visually differs from the photograph (Complaint p. 14 to 17).

The Complaint notes, for example, that the portraits in the Prince Series focuses on the face of the subject, whereas the photograph shows Prince below the waist. The photograph shows Prince’s natural colors, whereas the portraits of the Prince Series use “unnatural neon colors.” Prince’s eyes are more heavily made-up in the Prince Series, the angle of the face differs from the angle of Prince’s face in the photograph, and the light reflected on Prince’s face in the photograph does not appear in the portraits made by Warhol.

Plaintiff argues that Warhol’s works are even more fundamentally different from the photograph, beyond mere visual differences, because the painting in the Prince Series “may reasonably be perceived as simultaneously honoring the celebrity of Prince while also conveying that Prince (like Marilyn Monroe and many other subjects of Warhol’s works) is a manufactured star with a stage name, whom society has reduced to a commodity” (Complaint p. 18). The essence of the Prince Series, a comment, is different than the original photograph, which was a publicity photograph.

Does the Prince Series Usurp the Market of the Photograph? (Fourth Fair Use Factor)

Plaintiff also argue that Warhol’s works and Defendant’s work do not target the same audiences, nor do they target the same art collectors or the same commercial markets. Andy Warhol’s works are “primarily sold to collectors of high-end Pop Art” (see here), which is not the case for the photograph (p.19).

Is the Copyright Claim Against the Foundation Barred by Laches?

Laches is an equitable defense where the defendant (or, in our case, the plaintiff seeking declaratory judgment) claims that the other party commenced suit with an unreasonable and prejudicial delay. The Warhol Foundation claims that Defendant should have known about the Prince Series after Vanity Fair published one of the Prince portraits in November 1984, because “[a]ny reasonable person in Defendant’s position would have reviewed the November 1984 issue of Vanity Fair, if only to confirm that Vanity Fair had complied with the license terms described above” (Complaint p. 20).

Since Defendant failed to timely file a copyright infringement suit, she prevented the Foundation to be able to defend itself, as Andy Warhol had died in 1987, three years after Defendant should have known about the Prince Series. Documents pertaining to the dispute may have been lost ordestroyed, and thus, as claimed by Plaintiff, the evidentiary record “has become prejudicially stale” (Complaint p.28).

The case is interesting, but likely to settle or be dismissed, and thus may not become a famous copyright case, even for 15 minutes.

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