In a recent decision, Andy Warhol found. for Visual Arts, Inc. v. Goldsmith,1 the second circuit upset conventional thinking about the concept of “fair dealing” with widely varying implications for artists and copyright owners. The Court ruled that Andy Warhol’s famous “Prince Series” (fifteen screen-printed and pencil works) does not constitute “fair use” of the photograph that Warhol used as the source material for the series.
The controversy in Goldsmith focuses on a 1981 photograph of Prince taken by photographer Lynn Goldsmith. In 1984, the Goldsmith agency licensed the photograph to Vanity Fair magazine for use as an artist’s reference.2 Vanity Fair commissioned Andy Warhol to create an illustration of Prince for the magazine based on Goldsmith’s photograph. Unbeknownst to Goldsmith, however, Warhol also created a series of fifteen additional prints based on his photograph.
After Prince’s death in 2016, Goldsmith took notice of the Prince series. Shortly thereafter, the Andy Warhol Foundation for the Visual Arts (“AWF”) sought a declaratory judgment of non-infringement or, in the alternative, fair use, and Goldsmith filed a counterclaim for infringement of copyright. ‘author.
Under the Copyright Act, judges generally consider four factors in deciding whether the use of a copyrighted work is “fair.”4 The assessment of the first factor focuses primarily on the degree to which the use is’ transformative ‘, that is,’ whether the new work simply replaces the objects of the original creation, or rather adds something new, with an additional purpose or a different character. . ” Cariou vs. Prince, 714 F.3d 694, 706 (2d Cir. 2013). In 2019, the district court applied this reasoning in issuing summary judgment for AWF on its fair use claim. The district court found the Prince series to be ‘transformative’ because, “while the silversmith’s photograph depicts Prince as ‘an uncomfortable person’ and a ‘vulnerable human being’, the Prince series of Warhol portrayed Prince as an “iconic, larger than life figure.” ” See Andy Warhol found. for the visual arts, Inc. c. Goldsmith, 382 F. Supp. 3d 312, 316, 326 (SDNY 2019).
On appeal, Circuit 2 disagreed. The Second Circuit held that whether a work is transformative “cannot be limited to the artist’s stated or perceived intention or to the meaning or impression that a critic – or for that matter, a judge – draws from the work. ” Goldsmith, 992 F.3d 113-14. On the contrary, the transformative purpose and character of a secondary work must, at the bare minimum, “include something more than the imposition of another artist’s style on the primary work so that the secondary work remains. both source material. ” Identifier. to 114.
Applying this reasoning, the Second Circuit concluded that the Prince series “retained the essential elements of the goldsmith’s photograph” without “adding or significantly modifying” these elements. In other words, Goldsmith photography has remained the recognizable foundation upon which the Prince series was built. Identifier. to 115. Thus, the Prince series was not legally “transformative”.
The opinion of the Second Circuit severely limits the ability of an accused offender to claim that a secondary work is transformative in law simply because a secondary work has a different character or new expression. This significant narrowing of the “fair use” doctrine will translate into a greater need for express license rights to create derivative works.
 992 F.3d 99 (2d Cir. 2021).
 The license allowed Vanity Fair to publish an illustration based on Goldsmith’s photograph in its November 1984 issue. Username at 106. Warhol’s later “Prince Series” was not licensed.
 Identifier. to 107.
 Under the Copyright Act 1976, courts must consider a non-exclusive list of four when assessing whether the use of a copyrighted work is “fair.” . These factors are: (1) the purpose and nature of the use, including whether such use is commercial in nature or is for non-profit educational purposes; (2) the nature of the copyrighted work; (3) the quantity and importance of the part used in relation to the protected work as a whole; and (4) the effect of the use on the potential market or the value of the copyrighted work. 17 USC § 107.