On March 29, the U.S. Supreme Court made the huge announcement that it will take on Andy Warhol Foundation v. Goldsmith, a case that may result in one of the more impactful decisions in recent memory for not only photographers but also for the entire creative community. The dispute in the case centers around Andy Warhol’s unauthorized use of photographer Lynn Goldsmith’s photograph of the musical artist Prince to create several silkscreen prints. The Warhol Foundation claims that the use of Goldsmith’s photograph was highly “transformative” under the first factor of the fair use test. The Justices are expected to weigh in on the transformative use subtest under the first factor of the fair use test: a question that has long frustrated and confused lower courts.
Given the potential impact of the Warhol case for photographers, it is helpful to re-examine the development of copyright law in regard to photographs. This blog reviews influential photography copyright cases leading up to and including the Second Circuit court’s decision in the Warhol caseso photographers and users of copyright protected photos can understand the current scope and limits of protection for this highly creative artform.
Of course, it’s important to remember that all copyright cases have unique facts that influence a court’s decision. Thus, photographers should not assume that a result in any given case guarantees a similar result in another case. However, past cases are helpful guidance for photographers (and creators who incorporate existing photographs into their works) who want to know how copyright law applies in the photography context.
Establishing That Photographs Can Be Originally Authored: Burrow-Giles Lithographic Co. v. Sarony
Congress extended copyright protection to photographs by amending the Copyright Act in 1865. Though that extension was challenged by The Burrow-Giles Lithographic Company, the U.S. Supreme Court upheld the Copyright Act’s recognition of photographs as protectable works in Burrow-Giles v. Sarony. There, the Court held that photographs are eligible for copyright protection when they are the “original intellectual conception of the author”—in other words, photographs are protected by copyright law because they are originally authored works.
The dispute arose when The Burrow-Giles Lithographic Company reproduced photographer Napoleon Sarony’s photograph of Oscar Wilde for celebrity photograph collectors without Sarony’s permission. Sarony sued, claiming that the unauthorized reproduction infringed his copyright in the photograph. Burrow-Giles argued that Congress could not constitutionally extend copyright protection to photographs, alleging that photographs only mechanically captured scenes that actually existed and did not amount to the level of original authorship needed for copyright protection.
The Court rejected Burrow-Giles’ argument, stating that the features of Sarony’s photograph indicated that the photograph is a creative work, rather than a mere mechanical reproduction. The Court reasoned that the photograph atissue represented Sarony’s original authorship (or “intellectual conception”) because Sarony posed Oscar Wilde in front of the camera to present “graceful outlines,” arranged the light and shade of the photograph, and suggested Wilde’s desired expression based on Sarony’s own, creative idea on how the photograph should look. By expressing his conscious choices resulting in the specific tangible photograph that portrays Wilde in a “harmonious, characteristic, and graceful picture,” Sarony made an original work of art that goes beyond a mechanical reproduction. Thus, the Court held that Sarony authored an original work, and the Oscar Wilde photograph accordingly qualified for copyright protection.
Examining the Protectable Elements in a Photograph: Mannion v. Coors
A defendant is liable for copyright infringement when the new, allegedly infringing work is substantially similar to the protectable elements of the underlying work. That is why in a photography copyright infringement case, courts usually first examine the copyrightable elements of a photograph when determining whether infringement took place.
Although many courts over the years have discussed what elements in a photograph are creative and original enough to be protected under copyright law, tailored guidance comes from Mannion v. Coors Brewing Co. There, the court in the Southern District of New York held that the copyrightability of a photograph stems from the non-mutually exclusive categories of “the photograph’s rendition, the photograph’s timing, or the author’s creation of the subject,” viewed within the context of the entire image.
The case centered around a photograph of NBA player Kevin Garnett, taken by Jonathan Mannion. Mannion’s photograph featured a bottom-up portrait of Garnett, placed against a blue sky backdrop. The photograph focused on Garnett’s hands, and the jewelry on Garnett’s hands and neck that Mannion told Garnett to wear. Two years after the photograph was published, an advertising agency used the photograph for a “comp board”—an image created to demonstrate a proposed ad design—with Mannion’s permission. The comp board featured the Mannion photograph in black and white, with Garnett’s head cropped out, and the words “Iced Out” superimposed on top of the photograph. The agency ultimately used a photograph that resembled the comp board on an advertisement without Mannion’s permission. The advertisement also centered around a portrait photograph of an African-American man in a baggy white T-shirt, jewelry and chains, photographed bottom-up, with a focus on the subject’s hands.
The question in the case was whether there was substantial similarity between the protected elements of the Mannion photograph and the Coors advertisement to constitute copyright infringement. Thus, the court first had to determine the protectable elementsof the Mannion photograph, i.e., the elements that make the Mannion photograph an original, creative expression under copyright law.
After analyzing the photograph the court held that the Mannion photograph had several protectable elements. Here’s how the court examined the Mannion photograph:
- The court noted that a photographer’s choice and artistic ability to capture a photograph at the right time and place is a protectable element. Though the court mostly focused on the other protectable elements of the Mannion photograph, it did recognize that for unplanned compositions or details in the photograph, Mannion made the creative decision at the time of the shoot to capture those exact moments and details of Kevin Garnett’s pose.
- The court noted Mannion’s relatively unusual angle—looking up at Garnett so that he appeared to be “towering up above earth”—and distinctive lighting coming from the left side showed originality in the photograph’s rendition.
Creation of the Subject:
- The court stated that a photograph is original to the extent that the photographer created the scene or subject to be photographed: labeled as originality in the “creation of the subject.” The composition (posing Garnett against the sky), Mannion’s instructions for Garnett to wear simple clothing with as much jewelry as possible, and Mannion’s instructions for Garnett to look relaxed counted towards originality in the creation of the subject.
- The court did recognize that some elements in isolation were arguably not protectable under copyright law—namely the cloudy sky, Garnett’s hands, face, and torso, his white T-shirt, and his specific jewelry. Nonetheless, their existence in the arrangement in the photograph as a whole contributed to Mannion’s originality.
Given the originality in the Mannion photograph’s rendition, timing and creation of the subject, the court held that the image was protectable under copyright law. When evaluating the protectable elements of a photograph in a photography copyright infringement case, photographers should keep in mind that the creative, original elements in a photograph can be found in the photographer’s rendition, timing, and creation of the subject and/or in a combination of such elements.
Determining Whether a Photograph Implicates the Public Display Right When Made Available on the Internet: Perfect 10 and the Server Test
Apart from protecting against unauthorized reproductions of a photograph, the Copyright Act protects against unauthorized public display of the work. But courts have struggled to answer whether a third-party website violates the public display right when it embeds images from another website. Embedding refers to the process of using HTML instructions to render an image from another website (where the content is actually stored on the source website).
In one well-known photography copyright case—Perfect 10 v. Amazon—the Ninth Circuit considered whether the embedding of certain “thumbnail” images used in Google’s Images Search violated a publisher’s display right. In rejecting the copyright owner’s challenge, the court explained that Google was not publicly displaying Perfect 10’s images because Google’s computers do not store the photographs. Rather, the court held that Google simply provide HTML instructions that “direct a user’s browser to a website publisher’s computer that stores the full size photograph.” The court reasoned that providing instructions was not the equivalent of displaying a copy of the image, and rejected Perfect 10’s claim of public display right infringement. The test, whether Google stored the images on its servers, became known as the “server test.” Since the image was not stored on Google’s server, the court found that Google did not violate Perfect 10’s public display right.
Although the server test remains Ninth Circuit law, district courts in the Second Circuit have rejected the rule, claiming it goes against the text and legislative history of the Copyright Act, as stated in Goldman v. Breitbart News and McGucken v. Newsweek. Thus, the practice of embedding images is somewhat of a legal gray zone. A court could very well find that embedding constitutes unauthorized display under the Copyright Act. After all, if a full-size image is displayed without authorization, why does it matter—for purposes of analyzing the display right—whether a copy resides on a server?
In response to the uncertainty, Instagram developed a limited feature that allows photographers to select whether they give permission for others to embed their photographs. Other companies may also follow suit. Even with these new, limited features, since embedding potentially implicates the copyright owner’s display right, a user wishing to embed an image on their website should simply ask for permission as a cautionary measure and photographers now may have some options to restrict embedding of their images on third-party websites.
Illustrating Transformative Use (Or Lack Thereof) in Fair Use Photography Cases
Copyright law permits certain types of uses of copyrighted works to take place without the copyright owner’s consent and without compensating the copyright owner for the use. A photograph may be used without the copyright owner’s permission if the use qualifies as fair use. In deciding whether a use constitutes fair use, courts will consider four statutory factors:
- the purpose and character of the use;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used; and
- the effect of the use on the potential market for the copyrighted work.
Courts consider each individual factor case-by-case, and then determine whether a use constitutes fair use through a holistic balancing of all four factors. Accordingly, fair use is a highly fact-specific test, so once again, a result in one case does not necessarily mean a similar case will come out the same way. The following photography copyright cases illustrate how fair use has been applied to photography in some instances.
When courts examine photograph-based fair use cases, they tend to spend a lot of time focusing on the first factor, where courts often ask whether the new use constitutes a transformative use. The transformative use inquiry focuses on whether the photograph was used in a way that alters the original work with a “new expression, meaning, or message…such that the plaintiff’s work is transformed into a new creation.” Perfect 10, Inc. v. Amazon.com, Inc. Courts have interpreted (correctly or not) a wide range of uses as “transformative,” from social commentary to providing access to information. For instance:
- In Blanch v. Koons, the Second Circuit found that artist Jeff Koons’ unauthorized use of Andrea Blanch’s fashion magazine photograph in a painting was transformative due to its use as “fodder for [Koons’] commentary on the social and aesthetic consequences of mass media.” By changing the photograph’s colors, background, medium, size, details, and the purpose and meaning of the photograph, as part of a painting for a German art gallery, the court found that Koons gave the Blanch photograph a new meaning and message. After finding that the Koons photograph was transformative, the court went on to find for Koons on the other fair use factors.
- In Perfect 10 v. Amazon, the Ninth Circuit found that Google’s use of entire images for Google Image Search was transformative, as the search engine “transform[ed] the image into a pointer directing a user to a source of information.” The court held that the new use of the image as a vehicle for access to information, combined with the social benefit of Google Images Search, outweighed the fact that both images were used for commercial purposes.
- In Cariou v. Prince, the Second Circuit held that appropriation artist Richard Prince’s use of Patrick Cariou’s photographs was transformative under the first fair use factor. In the case, Prince used Cariou’s portrait photographs of Jamaican Rastafarians to create a multi-work collage called Canal Zone. Using the original photographs to various degrees, Prince “altered the photographs . . . by among other things painting ‘lozenges’ over the subjects facial features and using only portions of some of the image.” The court determined that most of the Canal Zone series (all but five pieces) were transformative and constituted fair use. They reasoned that the images “have a different character, give Cariou’s photographs a new expression, and employ new aesthetics with creative and communicative results distinctive from Cariou’s.” Although Cariou remains law in the Second Circuit, the decision was criticized by commentators and other courts, and the Second Circuit later qualified the case by stating that it was a “high-water mark of our court’s recognition of transformative work” in Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith.
On the other end of the spectrum, the following cases illustrate times where a court rejected an unauthorized user’s transformative use arguments and found against fair use:
- In Monge v. Maya Magazines, the Ninth Circuit ruled that a magazine’s use of secret, unpublished celebrity wedding photographs was not a transformative use. In the case, a Spanish-language celebrity gossip magazine published photographs of a secret wedding without the copyright owner’s permission. The court noted that the magazine fully reproduced the photographs as the focal point of their story, and merely added some written commentary alongside the photographs. The court held that the photograph was “minimally transformative” at best. The court reasoned that Maya did not incorporate the photos as part of a broader news report and left the “inherent character of the images unchanged” despite sprinkling in commentary. The fact that the photos were newsworthy did not in of itself lead to a transformation under the first factor of the fair use test. Though the court found that the magazine’s use might have been newsworthy, given the minimal transformation and commercial unauthorized use of the photographs, the court found that “the first factor is at best neutral,” went on to find for Monge on the other three factors, and ultimately rejected Maya’s fair use defense.
- In Brammer v. Violent Hues Prods., LLC, the Fourth Circuit held that Violent Hues’ unauthorized use of a stock image of D.C.’s Adams Morgan neighborhood for their film festival website was not a transformative use. Violent Hues used Brammer’s image as part of a “Plan Your Visit” page for the Northern Virginia Film and Music Festival website. The court rejected defendant’s argument that the use of the photograph was transformative because it provided festival attendees with “information” regarding Adams Morgan. The court found that the use on the website does not create a new function or meaning that expands human thought and emphasized that a ruling to the contrary would mean that “virtually all illustrative uses of photography would qualify as transformative.” The lack of a new purpose, plus the commercial use of both photographs, led the court to reject a transformative use argument, and ultimately in weighing the first factor against a fair use finding.
- In VHT v. Zillow, the Ninth Circuit found that the unauthorized use of home interior photographs found on Zillow was not a transformative use. The case concerned Zillow’s use of VHT’s photographs for Zillow’s “Digs” feature, which allows users to search home interiors based on user-inputted criteria for home improvement inspiration. Zillow argued that their use of the photographs was transformative as a search engine under Perfect 10 v. Amazon. The court rejected Zillow’s argument, stating that Google Images search “crawls” the web and directs users to the original source of the photograph via a thumbnail, whereas Zillow Digs is a “closed-universe” search engine that displays the entire image without attribution to its source. Furthermore, the court stated that “any transformation by Zillow pales in comparison to the uses upheld in prior search engine cases,” and Zillow’s use does not further the Copyright Act’s goal of promoting socially valuable new uses such as criticism, comment, news reporting, scholarship or research. Thus, Zillow’s use of VHT’s photographs was not transformative.
Overall, the fair use test is a continuum that photographers can better understand by looking at past photography copyright cases. Although there are some uses that tend to lean toward a finding of fair use (e.g. parody), fair use issues are often decided on case-specific facts. The cases mentioned above can be used an overarching reference, to illustrate how the fair use factors might apply in a particular context.
Clarifying Transformative Use in the Fair Use Exception? Warhol v. Goldsmith
The Andy Warhol Foundation (AWF) v. Goldsmith will undoubtedly be the next key photography copyright case as the U.S. Supreme Court looks at possibly clarifying the muddy “transformative use” doctrine.
AWF challenged the Second Circuit Court of Appeals ruling in the case, which held that Andy Warhol’s use of a Prince photograph to create sixteen silkscreen prints (“The Prince Series”) was not fair use as a matter of law. In doing so, the court offered its view on transformative use.
The background is as follows: In 1981, photographer Lynn Goldsmith licensed her portrait of the musician Prince to Vanity Fair as an artist reference. Vanity Fair then commissioned Andy Warhol to create a piece based on the photograph. However, without Goldsmith’s knowledge, Warhol also created the “Prince Series,” a series of silkscreen prints, using Goldsmith’s photograph. Goldsmith learned about the series in 2016, shortly after Prince’s death. Goldsmith then alerted AWF—the Prince Series’ copyright owner—alleging copyright infringement, and AWF sued Goldsmith in response, asking the court for a declaration of non-infringement based on fair use.
The district court ruled in favor of AWF on the fair use issue, relying largely on their conclusion that Warhol’s use of Goldsmith’s photograph was transformative because The Prince Series displays the musician as an “iconic, larger-than-life figure,” the court explained, whereas Goldsmith’s photograph portrays Prince as a “vulnerable human being.” Goldsmith appealed.
On appeal, the Second Circuit stated that the trial court misapplied the “transformative use” test. The court stressed that aesthetic changes to a protected work cannot by themselves constitute a transformative purpose weighing in favor of fair use. Rather, the secondary work must “reasonably be perceived as embodying an entirely distinct artistic purpose.” According to the court, the secondary work must also be more than an imposition of a new artist’s style on the original work, where the secondary work remains retaining the essential elements of, its source material.
AWF challenged the Second Circuit’s application of the transformative test in its petition for Supreme Court review. The question presented by AWF is: “Whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the Second Circuit has held)?”
The case will likely be impactful for both photographers and appropriation artists such as Warhol. The high court will finally be weighing in on the transformative use test under the first factor, which has not been fully discussed at such length (beyond the context of software in Google v. Oracle) since Campbell v. Acuff Rose was decided over 25 years ago.
Through the lenses of various courts in some major copyright cases, photographers can learn a lot about the scope of copyright protections for the images they work hard to create. From the Supreme Court’s firm acceptance that photographers are the creative directors and authors of creating images, it is clear that copyright law is meant to protect the creative expression that photographers display in the stories and moments that they artfully capture. However, as seen in Warhol, the scope of those protections will continue to develop and evolve. We hope this blog on photography copyright cases was useful for photographers in seeing how various courts deal photographs under copyright law.
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