19-2420-cv
The Andy Warhol Foundation for The Visual Arts, Inc. v. Lynn Goldsmith, et al.

UNITED STATES COURT OF APPEALSFOR THE SECOND CIRCUIT

August Term, 2020
Argued: September 15, 2020

Decided: March 26, 2021

Docket No. 19-2420-cv

THE ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC.,
Plaintiff-CounterDefendant-Appellee,— v. —LYNN GOLDSMITH, LYNN GOLDSMITH, LTD.,
Defendants-CounterPlaintiffs-Appellants.

B e f o r e:
JACOBS, LYNCH, and SULLIVAN, Circuit Judges.

Defendants-Appellants Lynn Goldsmith and Lynn Goldsmith, Ltd., appeal
from a judgment of the United States District Court for Southern District of New
York (Koeltl, J.) granting summary judgment to Plaintiff-Appellee The Andy
Warhol Foundation for the Visual Arts, Inc. on its complaint for a declaratoryjudgment of fair use and dismissing Defendants-Appellants’ counterclaim for
copyright infringement. We conclude that the district court erred in its
assessment and application of the fair-use factors and that the works in question
do not qualify as fair use as a matter of law. We likewise conclude that the Prince
Series works are substantially similar to the Goldsmith Photograph as a matter oflaw. We therefore REVERSE the judgment of the district court and REMAND
the case for further proceedings consistent with this opinion.
JUDGE SULLIVAN concurs in the Court’s opinion, and files a concurring
opinion in which JUDGE JACOBS joins.
JUDGE JACOBS concurs in the Court’s opinion, and files a concurring
opinion.

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.
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.

2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 Photographersof America, Graphics Artist Guild, and North American
Nature Photography Association.
Benjamin S. Akley, Pryor Cashman LLP, New York, NY, for
Amicus Curiae Recording Industry Association of America.

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 themusical artist Prince that was taken by Defendant-Appellant Lynn Goldsmith inher 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.
3

Goldsmith first became aware of the Prince Series after Prince’s death in2016. 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 ofGoldsmith’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 anddismissed 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 theworks 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 and4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.
BACKGROUND
The relevant facts, which we draw primarily from the parties’ submissions
below in support of their respective cross-motions for summary judgment, areundisputed.
Goldsmith is a professional photographer primarily focusing on celebrity
photography, including portrait and concert photography of rock-and-rollmusicians. Goldsmith has been active since the 1960s, and her work has beenfeatured 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, includingGoldsmith herself.
Andy Warhol, né Andrew Warhola, was an artist recognized for his
significant contributions to contemporary art in a variety of media. Warhol isparticularly known for his silkscreen portraits of contemporary celebrities. Muchof his work is broadly understood as “comment[ing] on consumer culture and5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 andcopyright in much of Warhol’s work, which it licenses to generate revenue tofurther 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 tobuild a rapport with Prince and to accentuate his sensuality. Goldsmith further
testified that she was trying to capture Prince’s “willing[ness] to bust throughwhat 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 a6Nikon 35-mm camera and a mixture of 85- and 105-mm lenses, which she choseto 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 thetruncated 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
7

editor at Vanity Fair in 1984, testified that the term “artist reference” meant thatan 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 theGoldsmith Photograph in its November 1984 issue, once as a full page and once
as a quarter page. The license further required that the illustration beaccompanied by an attribution to Goldsmith. Goldsmith was unaware of thelicense at the time and played no role in selecting the Goldsmith Photograph forsubmission 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 toGoldsmith, 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 toGoldsmith was included elsewhere in the issue, crediting her with the “source8photograph” for the Warhol illustration. Vanity Fair did not advise Goldsmiththat Warhol was the artist for whom her work would serve as a reference, andshe 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.”1 The Prince Series comprises fourteensilkscreen prints (twelve on canvas, two on paper) and two pencil illustrations,and includes the following images:

1

Though it acknowledged that the depiction of Prince in the Prince Series issimilar to that in the Goldsmith Photograph, AWF did not concede below that theGoldsmith Photograph was the source image for the Prince Series, arguing
instead that “somehow, Warhol created” it. Dist. Ct. Dkt. 55 at 18. In its brief
before this Court, however, AWF describes the Goldsmith Photograph as the“source image” for the Prince Series. Appellee’s Br. at 6-7.
9

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 toreproduce 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 background andlocal colors prior to the silkscreen transfer of the image. Paper prints, meanwhile,
were generally created entirely by the silkscreen process without any painted
embellishments. Finally, Warhol’s typical practice for pencil sketches was toproject an image onto paper and create a contoured pencil drawing around the
projected image.
At some point after Warhol’s death, AWF acquired title to and copyright in
the Prince Series. Between 1993 and 2004, AWF sold or otherwise transferredcustody of 12 of the original Prince Series works to third parties, and, in 1998,
transferred custody of the other four works to The Andy Warhol Museum. AWF
retains copyright in the Prince Series images and, through The Artist Rights
Society (a third-party organization that serves as AWF’s agent), continues tolicense the images for editorial, commercial, and museum usage.
10

On April 22, 2016, the day after Prince died, Condé Nast, Vanity Fair’s
parent company, contacted AWF. Its initial intent in doing so was to determine
whether AWF still had the 1984 image, which Condé Nast hoped to use inconnection with a planned magazine commemorating Prince’s life. After learningthat AWF had additional images from the Prince Series, Condé Nast ultimately
obtained a commercial license, to be exclusive for three months, for a different
Prince Series image for the cover of the planned tribute magazine. Condé Nast
published the tribute magazine in May 2016 with a Prince Series image on the
cover. Goldsmith was not given any credit or attribution for the image, which
was instead attributed solely to AWF.
It was at this point that Goldsmith first became aware of the Prince Series.
In late July 2016, Goldsmith contacted AWF to advise it of the perceived
infringement of her copyright. That November, Goldsmith registered theGoldsmith Photograph with the U.S. Copyright Office as an unpublished work.
On April 7, 2017, AWF sued Goldsmith and LGL for a declaratory judgment of
non-infringement or, in the alternative, fair use. Goldsmith countersued for
copyright infringement under 17 U.S.C. §§ 106, 501.

11

On July 1, 2019, the district court granted summary judgment for AWF on
its fair-use claim. See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382
F. Supp. 3d 312, 316 (S.D.N.Y. 2019). Upon evaluating the four statutory fair-use
factors set forth in 17 U.S.C. § 107, the court concluded that: (1) the Prince Series
was “transformative” because, while the Goldsmith Photograph portrays Prince
as “not a comfortable person” and a “vulnerable human being,” the Prince Series
portrays Prince as an “iconic, larger-than-life figure,” id. at 326; (2) although theGoldsmith Photograph is both creative and unpublished, which would
traditionally weigh in Goldsmith’s favor, this was “of limited importance because
the Prince Series works are transformative works,” id. at 327; (3) in creating thePrince Series, Warhol “removed nearly all [of] the [Goldsmith] [P]hotograph’s
protectible elements,” id. at 330; and (4) the Prince Series works “are not market
substitutes that have harmed – or have the potential to harm – Goldsmith,” id. at
331. This appeal followed.

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DISCUSSION
I.

Standard of Review“We review a grant of summary judgment de novo,” applying thestandards set forth in Federal Rule of Civil Procedure 56(c). Cariou, 714 F.3d at
704. While fair use presents a mixed question of law and fact, it may be resolved
on summary judgment where, as here, the material facts are not in dispute. See,e.g., Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985).
II.

Copyright, Derivative Works, and Fair Use
The Constitution empowers Congress to enact copyright laws “[t]opromote the Progress of Science and useful Arts.” U.S. Const. art. I, § 8, cl. 8.
Congress has exercised this delegated authority continuously since the earliest
days of the nation, beginning with the Copyright Act of 1790 and, more recently,
through the Copyright Act of 1976. Under the 1976 Act, copyright protection
extends both to the original creative work itself and to derivative works, which it
defines as, in relevant part, “a work based upon one or more preexisting works,
such as a[n] . . . art reproduction, abridgement, condensation, or any other form
in which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101.

13

The doctrine of fair use has developed along with the law of copyright.
“[A]s Justice Story explained, ‘in truth, in literature, in science and in art, there
are, and can be, few, if any, things, which in an abstract sense, are strictly new
and original throughout. Every book in literature, science and art, borrows, andmust necessarily borrow, and use much which was well known and used
before.’” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994), quoting
Emerson v. Davies, 8 F. Cas. 615, 619 (No. 4,436) (C.C.D. Mass. 1845) (alterations
adopted). The fair use doctrine seeks to strike a balance between an artist’s
intellectual property rights to the fruits of her own creative labor, including theright to license and develop (or refrain from licensing or developing) derivative
works based on that fruit, and “the ability of [other] authors, artists, and the restof us to express them- or ourselves by reference to the works of others.” Blanch v.
Koons, 467 F.3d 244, 250 (2d Cir. 2006).
Though it developed as a creature of common law, the fair-use defense wasformally codified with the passage of the 1976 Act. The statute provides a nonexclusive list of four factors that courts are to consider when evaluating whether
the use of a copyrighted work is “fair.” These factors are:14

(1) the purpose and character of the use, including
whether such use is of a commercial nature or is fornonprofit educational purposes;(2) the nature of the copyrighted work;(3) the amount and substantiality of the portion used inrelation to the copyrighted work as a whole; and(4) the effect of the use upon the potential market for orvalue of the copyrighted work.
17 U.S.C. § 107.
As the Supreme Court has held, fair use presents a holistic contextsensitive inquiry “not to be simplified with bright-line rules[.] . . . All [fourstatutory factors] are to be explored, and the results weighed together, in light ofthe purposes of copyright.” Campbell, 510 U.S. at 577-78; see also, e.g., Cariou, 714
F.3d at 705 (“[T]he fair use determination is an open-ended and context-sensitiveinquiry.”). We consider each factor in turn.
A. The Purpose and Character of The UseThis factor requires courts to consider the extent to which the secondary
work is “transformative,” as well as whether it is commercial. We address these
considerations separately below.

15

1. Transformative Works and Derivative Works
Following the Supreme Court’s decision in Campbell, our assessment of thisfirst factor has focused chiefly on the degree to which the use is “transformative,”i.e., “whether the new work merely supersedes the objects of the original creation,or instead adds something new, with a further purpose or different character,
altering the first with new expression, meaning, or message.” 510 U.S. at 579(internal quotations marks and citations omitted) (alterations adopted). We
evaluate whether a work is transformative by examining how it may “reasonably
be perceived.” Cariou, 714 F.3d at 707, quoting Campbell, 510 U.S. at 582; see also,e.g., Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 113-15 (2d Cir. 1998).
Paradigmatic examples of transformative uses are those Congress itself
enumerated in the preamble to § 107: “criticism, comment, news reporting,teaching . . . , scholarship, or research.” And, as the Supreme Court recognized inCampbell, parody, which “needs to mimic an original to make its point,” 510 U.S.
at 580-81, is routinely held transformative. See, e.g., Brownmark Films, LLC v.
Comedy Partners, 682 F.3d 687, 693 (7th Cir. 2012). These examples are easily
understood: the book review excerpting a passage of a novel in order to comment
upon it serves a manifestly different purpose from the novel itself. See Authors
16

Guild v. Google, Inc., 804 F.3d 202, 215-16 (2d Cir. 2015) (“[C]opying from an
original for the purpose of criticism or commentary on the original . . . tends mostclearly to satisfy Campbell’s notion of the ‘transformative’ purpose involved in theanalysis of Factor One.”).
Although the most straightforward cases of fair use thus involve asecondary work that comments on the original in some fashion, in Cariou v.
Prince, we rejected the proposition that a secondary work must comment on theoriginal in order to qualify as fair use. See 714 F.3d at 706. In that case, we
considered works of appropriation artist Richard Prince that incorporated,among other materials, various black-and-white photographs of Rastafarians
taken by Patrick Cariou. See id. at 699. After concluding that the district court had
imposed a requirement unsupported by the Copyright Act, we conducted ourown examination of Prince’s works and concluded that twenty-five of the thirty
at issue were transformative of Cariou’s photographs as a matter of law. See id. at706. In reaching this conclusion, we observed that Prince had incorporated
Cariou’s “serene and deliberately composed portraits and landscapephotographs” into his own “crude and jarring works . . . [that] incorporate[d]color, feature[d] distorted human and other forms and settings, and measure[d]17between ten and nearly a hundred times the size of the photographs.” Id. Thus,
we concluded that these works “used [Cariou’s photographs] as raw material,
transformed in the creation of new information, new aesthetics, new insights andunderstanding,” and were transformative within the meaning of this first factor.
Id., quoting Castle Rock Ent. v. Carol Publ’g Grp., 150 F.2d 132, 142 (2d Cir. 1998).
In adjudging the Prince Series transformative, the district court reliedchiefly on our decision in Cariou, which we have previously described as the“high-water mark of our court’s recognition of transformative works.” TCA
Television Corp. v. McCollum, 839 F.3d 168, 181 (2d Cir. 2016). And, as we havepreviously observed, that decision has not been immune from criticism. See id.
(collecting critical authorities). While we remain bound by Cariou, and have nooccasion or desire to question its correctness on its own facts, our review of thedecision below persuades us that some clarification is in order.
As discussed supra, both this Court and the Supreme Court haveemphasized that fair use is a context-sensitive inquiry that does not lend itself tosimple bright-line rules. E.g., Campbell, 510 U.S. at 577-78; Cariou, 714 F.3d at 705.
Notwithstanding, the district court appears to have read Cariou as having
announced such a rule, to wit, that any secondary work is necessarily
18

transformative as a matter of law “[i]f looking at the works side-by-side, thesecondary work has a different character, a new expression, and employs new
aesthetics with [distinct] creative and communicative results.” Warhol, 382 F.
Supp. 3d at 325-26 (internal quotation marks omitted) (alterations adopted).
Although a literal construction of certain passages of Cariou may support that
proposition, such a reading stretches the decision too far.
Of course, the alteration of an original work “with ‘new expression,
meaning, or message,’” Cariou, 714 F.3d at 706, quoting Campbell, 510 U.S. at 579,
whether by the use of “new aesthetics,” id., quoting Blanch, 467 F.3d at 253, byplacing the work “in a different context,” Perfect 10, Inc. v. Amazon.com, Inc., 508
F.3d 1146, 1165 (9th Cir. 2007), or by any other means is the sine qua non oftransformativeness. It does not follow, however, that any secondary work that
adds a new aesthetic or new expression to its source material is necessarilytransformative.
Consider the five works at issue in Cariou that we did not conclude weretransformative as a matter of law. Though varying in degree both amongst
themselves and as compared to the works that we did adjudge transformative,
each undoubtedly imbued Cariou’s work with a “new aesthetic” as that phrase19might be colloquially understood. Prince’s Canal Zone (2007) is a collage of thirtysix of Cariou’s photographs, most of which Prince altered by, for example,
painting over the faces and bodies of Cariou’s subjects, in some instances altering
them significantly. See Cariou, 714 F.3d at 711. In Graduation, Prince added blue
“lozenges” over the eyes and mouth of Cariou’s subject and pasted an image ofhands playing a blue guitar over his hands. Id. Both of these works certainly
imbued the originals from which they derive with a “new aesthetic;”
notwithstanding, we could not “confidently . . . make a determination about
their transformative nature as a matter of law.” Id.
Moreover, as we have repeatedly observed, there exists an entire class of
secondary works that add “new expression, meaning, or message” to their source
material but are nonetheless specifically excluded from the scope of fair use:
derivative works. As one of our sister circuits has observed, an overly liberalstandard of transformativeness, such as that embraced by the district court in thiscase, risks crowding out statutory protections for derivative works. See Kienitz v.
Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir. 2014) (“To say that a new use
transforms the work is precisely to say that it is derivative and thus, one might
suppose, protected under [17 U.S.C.] § 106(2).”).
20

We addressed derivative works in Cariou, characterizing them as
secondary works that merely present “the same material but in a new form”
without “add[ing] something new.” 714 F.3d at 708 (citation omitted); see also
Google, 804 F.3d at 215-16 (“[D]erivative works generally involve transformationsin the nature of changes of form.”) (emphasis in original). While that description
may be a useful shorthand, it is likewise susceptible to misapplication if
interpreted too broadly. Indeed, many derivative works “add something new” totheir source material.
Consider, for example, a film adaptation of a novel. Such adaptations
frequently add quite a bit to their source material: characters are combined,
eliminated, or created out of thin air; plot elements are simplified or eliminated;
new scenes are added; the moral or political implications of the original work
may be eliminated or even reversed, or plot and character elements altered tocreate such implications where the original text eschewed such matters. And allof these editorial modifications are filtered through the creative contributions of
the screenwriter, director, cast, camera crew, set designers, cinematographers,
editors, sound engineers, and myriad other individuals integral to the creation ofa film. It is for this reason that we have recognized that “[w]hen a novel is21

converted to a film . . . [t]he invention of the original author combines with thecinematographic interpretive skills of the filmmaker to produce something thatneither could have produced independently.” Google, 804 F.3d at 216 n.18.
Despite the extent to which the resulting movie may transform the aesthetic andmessage of the underlying literary work, film adaptations are identified as aparadigmatic example of derivative works. See, e.g., Authors Guild, Inc. v.
HathiTrust, 755 F.3d 87, 95 (2d Cir. 2014) (“Paradigmatic examples of derivative
works include . . . the adaptation of a novel into a movie or a play.”).
In evaluating the extent to which a work is transformative or derivative (orneither), we typically consider the purpose of the primary and secondary works.
In Bill Graham Archives v. Dorling Kindersley Ltd., for example, we held that the
reproduction in a book about the Grateful Dead of images of posters originallycreated to advertise Grateful Dead concerts was transformative because that use
was “plainly different from the original purpose for which they were created.”
448 F.3d 605, 609-10 (2d Cir. 2006). Likewise, in HathiTrust we held that thedefendants’ creation of a searchable “digital corpus” comprising scanned copies
of tens of millions of books that enabled researchers, scholars, and others to
pinpoint the exact page of any book in the catalogue on which the searched term22was used was a “quintessentially transformative use.” 755 F.3d at 97. In Google,
we reached the same conclusion when faced with a larger digital corpus
complete with tools that enabled researchers to track how a specific word orphrase has been used throughout the development of the English language,
despite the fact that, unlike the database in Hathitrust, Google’s database also
permitted the searcher to view a “snippet” from the original text showing thecontext in which the word or phrase had appeared. 804 F.3d at 216-17.
But purpose is perhaps a less useful metric where, as here, our task is toassess the transformative nature of works of visual art that, at least at a high levelof generality, share the same overarching purpose (i.e., to serve as works of visualart). While this is not the first time we have had to conduct this inquiry, our caseson such works are considerably fewer in number, and a brief review of themyields conflicting guidance. In Blanch v. Koons, for example, we adjudged
transformative a Jeff Koons painting that incorporated a copyrighted photographdrawn from a fashion magazine where Koons had testified that he intended to“us[e] Blanch’s image as fodder for his commentary on the social and aesthetic
consequences of mass media.” 467 F.3d at 253. Some time earlier, however, inRogers v. Koons, we denied Koons’s fair-use defense as applied to a three23

dimensional sculpture recreating a photograph, notwithstanding his claim that
he intended his sculpture to serve as a commentary on modern society. 960 F.2d
301, 309-11 (2d Cir. 1992).2 And, in Cariou, we held twenty-five of Richard
Prince’s works transformative as a matter of law even though Prince had testified
that he “was not ‘trying to create anything with a new meaning or a newmessage.’” 714 F.3d at 707.
Matters become simpler, however, when we compare the works at issue ineach case against their respective source materials. The sculpture at issue inRogers was a three-dimensional colorized version of the photograph on which it
was based. See 960 F.2d at 305. In Blanch, however, Koons used Blanch’s
photograph, depicting a woman’s legs in high-heeled shoes, as part of a larger
work in which he set it alongside several other similar photographs with“changes of its colors, the background against which it is portrayed, the medium,the size of the objects pictured, [and] the objects’ details.” 467 F.3d at 253. In sodoing, Koons used Blanch’s photograph “as raw material for an entirely different2

We note that Rogers predates the Supreme Court’s formal adoption of the“transformative use” test and thus does not phrase its inquiry in precisely thesame manner as the cases that have followed. However, it remains a precedential
decision of this Court, and we believe it particularly relevant in this case.
24

type of art . . . that comment[ed] on existing images by juxtaposing them against
others.” Id. at 262 (Katzmann, J., concurring). And in Cariou, the copyrighted
works found to have been fairly used were, in most cases, juxtaposed with otherphotographs and “obscured and altered to the point that Cariou’s original [was]barely recognizable.” 714 F.3d at 710. The works that were found potentiallyinfringing in Cariou, however, were ones in which the original was altered inways that did not incorporate other images and that superimposed otherelements that did not obscure the original image and in which the original image
remained, as in the Koons sculpture at issue in Rogers, a major if not dominantcomponent of the impression created by the allegedly infringing work. See id. at
710-11.
A common thread running through these cases is that, where a secondary
work does not obviously comment on or relate back to the original or use theoriginal for a purpose other than that for which it was created, the bare assertionof a “higher or different artistic use,” Rogers, 960 F.2d at 310, is insufficient torender a work transformative. Rather, the secondary work itself must reasonably
be perceived as embodying an entirely distinct artistic purpose, one that conveys
a “new meaning or message” entirely separate from its source material. While we25cannot, nor do we attempt to, catalog all of the ways in which an artist may
achieve that end, we note that the works that have done so thus far havethemselves been distinct works of art that draw from numerous sources, rather
than works that simply alter or recast a single work with a new aesthetic.
Which brings us back to the Prince Series. The district court held that the
Prince Series works are transformative because they “can reasonably beperceived to have transformed Prince from a vulnerable, uncomfortable person toan iconic, larger-than-life figure.” Warhol, 382 F. Supp. 3d at 326. That was error.
Though it may well have been Goldsmith’s subjective intent to portray
Prince as a “vulnerable human being” and Warhol’s to strip Prince of thathumanity and instead display him as a popular icon, whether a work istransformative cannot turn merely on the stated or perceived intent of the artist
or the meaning or impression that a critic – or for that matter, a judge – draws
from the work. Were it otherwise, the law may well “recogniz[e] any alteration astransformative.” 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright§ 13.05(B)(6); see also Google, 804 F.3d at 216 n.18 (“[T]he word ‘transformative,’ ifinterpreted too broadly, can also seem to authorize copying that should fall26

within the scope of an author’s derivative rights.”). Rather, as we have discussed,
the court must examine how the works may reasonably be perceived.
In conducting this inquiry, however, the district judge should not assume
the role of art critic and seek to ascertain the intent behind or meaning of theworks at issue. That is so both because judges are typically unsuited to makeaesthetic judgments and because such perceptions are inherently subjective.3 As
Goldsmith argues, her own stated intent notwithstanding, “an audience viewing
the [Goldsmith] [P]hotograph today, across the vista of the singer’s long career,might well see him in a different light than Goldsmith saw him that day in 1981.”
Appellants’ Br. at 40. We agree; it is easy to imagine that a whole generation of
Prince’s fans might have trouble seeing the Goldsmith Photograph as depicting
anything other than the iconic songwriter and performer whose musical works
they enjoy and admire.
Instead, the judge must examine whether the secondary work’s use of its
source material is in service of a “fundamentally different and new” artistic

3

As the Supreme Court observed over a century ago, “[i]t would be a dangerous
undertaking for persons trained only in the law to constitute themselves final
judges of the worth of pictorial illustrations, outside of the narrowest and mostobvious limits.” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).
27

purpose and character, such that the secondary work stands apart from the “rawmaterial” used to create it. Although we do not hold that the primary work mustbe “barely recognizable” within the secondary work, as was the case with theworks held transformative in Cariou, the secondary work’s transformative
purpose and character must, at a bare minimum, comprise something more than
the imposition of another artist’s style on the primary work such that thesecondary work remains both recognizably deriving from, and retaining theessential elements of, its source material.
With this clarification, viewing the works side-by-side, we conclude that
the Prince Series is not “transformative” within the meaning of the first factor.
That is not to deny that the Warhol works display the distinct aesthetic sensibility
that many would immediately associate with Warhol’s signature style – theelements of which are absent from the Goldsmith photo. But the same can besaid, for example, of the Ken Russell film, from a screenplay by Larry Kramer,
derived from D.H. Lawrence’s novel, Women in Love: the film is as recognizable a“Ken Russell” as the Prince Series are recognizably “Warhols.” But the film, forall the ways in which it transforms (that is, in the ordinary meaning of the word,28

which indeed is used in the very definition of derivative works, see 17 U.S.C.
§ 101) its source material, is also plainly an adaptation of the Lawrence novel.
As in the case of such paradigmatically derivative works, there can be no
meaningful dispute that the overarching purpose and function of the two works
at issue here is identical, not merely in the broad sense that they are created asworks of visual art, but also in the narrow but essential sense that they are
portraits of the same person.4 See Gaylord v. United States, 595 F.3d 1364, 1372-73(Fed. Cir. 2010) (photograph of Korean War Memorial used on stamp nottransformative despite “different expressive character” brought about by
subdued lighting and snow since sculpture and stamp shared purpose of“honor[ing] veterans of the Korean War”). Although this observation does not per
se preclude a conclusion that the Prince Series makes fair use of the Goldsmith
Photograph, the district court’s conclusion rests significantly on the4

As much as art critics might distinguish Warhol’s aesthetic intentions fromthose of portrait photographers, Warhol’s celebrity prints are invariably
identifiable likenesses of their subjects. The district court’s description of the
Prince Series works as transformative because they “can reasonably be perceived
to have transformed Prince from a vulnerable, uncomfortable person to an iconic,
larger-than-life figure,” 382 F. Supp. 3d at 326, rests implicitly on the Warhol
depiction being perceived as a recognizable depiction of Prince.
29

transformative character of Warhol’s work. But the Prince Series works can’t bearthat weight.
Warhol created the series chiefly by removing certain elements from theGoldsmith Photograph, such as depth and contrast, and embellishing theflattened images with “loud, unnatural colors.” Warhol, 382 F. Supp. 3d at 326.
Nonetheless, although we do not conclude that the Prince Series works arenecessarily derivative works as a matter of law, they are much closer to presenting
the same work in a different form, that form being a high-contrast screenprint,
than they are to being works that make a transformative use of the original.
Crucially, the Prince Series retains the essential elements of the Goldsmith
Photograph without significantly adding to or altering those elements.
Indeed, the differences between the Goldsmith Photograph and the Prince
Series here are in many respects less substantial than those made to the five
works that we could not find transformative as a matter of law in Cariou. Unlike
the Prince Series, those works unmistakably deviated from Cariou’s original
portraiture in a manner that suggested an entirely distinct artistic end; rather
than recasting those photographs in a new medium, Richard Prince added
material that pulled them in new directions. See, e.g., Cariou, 714 F.3d at 711
30

(“Where [Cariou’s] photograph presents someone comfortably at home in nature,[Prince’s] Graduation combines divergent elements to present a sense of
discomfort.”). Nevertheless, we could not confidently determine whether thosemodest alterations “amount[ed] to a substantial transformation of the original
work[s] of art such that the new work[s] were transformative,” and remanded thecase to the district court to make that determination in the first instance. Id.
In contrast, the Prince Series retains the essential elements of its source
material, and Warhol’s modifications serve chiefly to magnify some elements ofthat material and minimize others. While the cumulative effect of thosealterations may change the Goldsmith Photograph in ways that give a different
impression of its subject, the Goldsmith Photograph remains the recognizablefoundation upon which the Prince Series is built.
Finally, we feel compelled to clarify that it is entirely irrelevant to thisanalysis that “each Prince Series work is immediately recognizable as a
‘Warhol.’” Warhol, 382 F. Supp. 3d at 326. Entertaining that logic would
inevitably create a celebrity-plagiarist privilege; the more established the artist
and the more distinct that artist’s style, the greater leeway that artist would haveto pilfer the creative labors of others. But the law draws no such distinctions;31

whether the Prince Series images exhibit the style and characteristics typical of
Warhol’s work (which they do) does not bear on whether they qualify as fair use
under the Copyright Act. As Goldsmith notes, the fact that Martin Scorsese’s
recent film The Irishman is recognizably “a Scorsese” “do[es] not absolve [him] of
the obligation to license the original book” on which it is based. Appellants’ Br. at
37.
In reaching this conclusion, we do not mean to discount the artistic valueof the Prince Series itself. As used in copyright law, the words “transformative”
and “derivative” are legal terms of art that do not express the simple ideas thatthey carry in ordinary usage. We do not disagree with AWF’s contention that the
cumulative effect of Warhol’s changes to the Goldsmith Photograph is to produce
a number of striking and memorable images. And our conclusion that thoseimages are closer to what the law deems “derivative” than “transformative” does
not imply that the Prince Series (or Warhol’s art more broadly) is “derivative,” inthe pejorative artistic sense, of Goldsmith’s work or of anyone else’s. As
Goldsmith succinctly puts it, “[t]here is little doubt . . . that the Prince Seriesreflects Andy Warhol’s talent, creativity, and distinctive aesthetic.” Appellants’
Br. at 36. But the task before us is not to assess the artistic worth of the Prince
32Series nor its place within Warhol’s oeuvre; that is the domain of art historians,
critics, collectors, and the museum-going public. Rather, the question we must
answer is simply whether the law permits Warhol to claim it as his own, andAWF to exploit it, without Goldsmith’s permission. And, at least as far as this
aspect of the first factor is concerned, we conclude that the answer to thatquestion is “no.”2. Commercial Use
The statutory language of the first factor also specifically directs courts toconsider “whether [the] use is of a commercial nature or is for nonprofit
educational purposes.” 17 U.S.C. § 107(1). Although finding that a secondary use
is commercial “tends to weigh against” finding that it is fair, we apply the testwith caution since “nearly all of the illustrative uses listed in the preamble
paragraph of § 107 . . . are generally conducted for profit in this country.”
Campbell, 510 U.S. at 584-85 (citation and internal quotation marks omitted).55

To recognize this is not to read the commercial/non-profit factor out of thestatute. There are other situations in which the absence or presence of acommercial motive may be highly significant. Producing a small number ofcopies of a short story to be distributed for free to a high school English class may
be quite different from producing a similar number of copies for a lavishly boundand illustrated “limited edition” of the work to be sold in the marketplace at ahigh price.
33

And, since “[t]he crux of the profit/nonprofit distinction is . . . whether the user
stands to profit from exploitation of the copyrighted material without paying thecustomary price,” Harper & Row, 471 U.S. at 562, the commercial nature of asecondary use is of decreased importance when the use is sufficiently
transformative such that the primary author should not reasonably expect to becompensated. See, e.g., Blanch, 467 F.3d at 254.
We agree with the district court that the Prince Series works arecommercial in nature, but that they produce an artistic value that serves thegreater public interest. See Warhol, 382 F. Supp. 3d at 325. We also agree that,
although more relevant to the character of the user than of the use, the fact that
AWF’s mission is to advance the visual arts, a mission that is doubtless in the
public interest, may militate against the simplistic assertion that AWF’s sale andlicensing of the Prince Series works necessarily derogates from a finding of fairuse. Nevertheless, just as we cannot hold that the Prince Series is transformative
as a matter of law, neither can we conclude that Warhol and AWF are entitled tomonetize it without paying Goldsmith the “customary price” for the rights to her
work, even if that monetization is used for the benefit of the public.

34

Of course, even where the secondary use is not transformative, the extent
to which it serves the public interest, either in and of itself or by generating funds
that enable the secondary user to further a public-facing mission, may be highly
relevant when assessing equitable remedies, including whether to enjoin the
distribution or order the destruction of infringing works.6 But just as thecommercial nature of a transformative secondary use does not itself preclude afinding that the use is fair, the fact that a commercial non-transformative work
may also serve the public interest or that the profits from its commercial use areturned to the promotion of non-commercial ends does not factor significantly infavor of finding fair use under the circumstances present here.
B. The Nature of the Copyrighted Work
The second factor directs courts to consider the nature of the copyrighted
work, including (1) whether it is “expressive or creative . . . or more factual, witha greater leeway being allowed to a claim of fair use where the work is factual orinformational, and (2) whether the work is published or unpublished, with the
6Goldsmith does not seek such remedies, and it is highly unlikely that any court
would deem them appropriate in this case. See Campbell, 510 U.S. at 578 n.10(“[T]he goals of the copyright law . . . are not always best served by automaticallygranting injunctive relief when parodists are found to have gone beyond thebounds of fair use.”).
35

scope of fair use involving unpublished works being considerably narrower.”
Blanch, 467 F.3d at 256 (citation omitted). Although courts are required toconsider and weigh this factor, it “has rarely played a significant role in thedetermination of a fair use dispute.” Google, 804 F.3d at 220.
The district court correctly held that the Goldsmith Photograph is both
unpublished and creative but nonetheless concluded that the second factor
should favor neither party because LGL had licensed the Goldsmith Photographto Vanity Fair and because the Prince Series was highly transformative. See
Warhol, 382 F. Supp. 3d at 327. That was error. That Goldsmith, through LGL,
made the Goldsmith Photograph available for a single use on limited terms does
not change its status as an unpublished work nor diminish the law’s protection ofher choice of “when to make a work public and whether to withhold a work to
shore up demand.” Id., citing 4 Nimmer on Copyright § 13.05(A)(2)(b). Further,though we have previously held that this factor “may be of limited usefulness
where the creative work is being used for a transformative purpose,” Bill Graham
Archives, 448 F.3d at 612, this relates only to the weight assigned to it, not whom
it favors. See also Blanch, 467 F.3d at 257 (“[T]he second fair-use factor has limited

36

weight in our analysis because Koons used Blanch’s work in a transformative
manner.”).
Having recognized the Goldsmith Photograph as both creative andunpublished, the district court should have found this factor to favor Goldsmithirrespective of whether it adjudged the Prince Series works transformative within
the meaning of the first factor. And, because we disagree that the Prince Series
works are transformative, we would accord this factor correspondingly greater
weight.
C. The Amount and Substantiality of the Use
The third factor considers “the amount and substantiality of the portion
used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). “Inassessing this factor, we consider not only ‘the quantity of the materials used’ but
also ‘their quality and importance’” in relation to the original work. TCA
Television, 839 F.3d at 185, quoting Campbell, 510 U.S. at 587. The ultimate
question under this factor is whether “the quantity and value of the materials
used are reasonable in relation to the purpose of the copying.” Campbell, 510 U.S.
at 586 (citation and internal quotation marks omitted). To that end, there is nobright line separating a permissible amount of borrowing from an impermissible
37one; indeed, we have rejected the proposition that this factor necessarily favors
the copyright holder even where the secondary user has copied the primary workin toto in service of a legitimate secondary purpose. See Swatch Grp. Mgmt. Servs.
Ltd. v. Bloomberg L.P., 756 F.3d 73, 89-90 (2d Cir. 2014); see also Rogers, 960 F.2d at
310-11 (“Sometimes wholesale copying may be permitted, while in other cases
taking even a small percentage of the original work has been held unfair use.”).
In this case, AWF argues, and the district court concluded, that this factor
weighs in its favor because, by cropping and flattening the Goldsmith
Photograph, thereby removing or minimizing its use of light, contrast, shading,and other expressive qualities, Warhol removed nearly all of its copyrightableelements. We do not agree.
We begin with the uncontroversial proposition that copyright does notprotect ideas, but only “the original or unique way that an author expresses thoseideas, concepts, principles, or processes.” Rogers, 960 F.2d at 308. As applied tophotographs, this protection encompasses the photographer’s “posing the
subjects, lighting, angle, selection of film and camera, evoking the desired
expression, and almost any other variant involved.” Id. at 307. The cumulative
manifestation of these artistic choices – and what the law ultimately protects – is38the image produced in the interval between the shutter opening and closing, i.e.,
the photograph itself. This is, as we have previously observed, thephotographer’s “particular expression” of the idea underlying her photograph.
Leibovitz, 137 F.3d at 115-16.
It is thus easy to understand why AWF’s contention misses the mark. The
premise of its argument is that Goldsmith cannot copyright Prince’s face. Trueenough. Were it otherwise, nobody else could have taken the man’s picture
without either seeking Goldsmith’s permission or risking a suit for infringement.
But while Goldsmith has no monopoly on Prince’s face, the law grants her abroad monopoly on its image as it appears in her photographs of him, including
the Goldsmith Photograph.7 Cf. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d
133, 136-37 (2d Cir. 2004) (vacating summary judgment where district court had
7

It is for this reason that the cases that AWF cites in support of its position (andon which the district court relied) are not particularly instructive; each involves aclaim in which a second, distinct work was alleged to infringe the protected
expression of the original work, and each such claim was rejected on the basisthat the second work copied only the unprotected idea of the original. See, e.g.,Bill Diodato Photography, LLC v. Kate Spade, LLC, 388 F. Supp. 2d 382, 393 (S.D.N.Y.
2005) (involving separate photographs of women in bathroom stalls with jauntily
placed handbags); see also infra Section III. Had Warhol used a different
photograph that Goldsmith alleged was similar enough to her own to render the
Prince Series an infringement of her work, these cases might be more instructive.
But he did not, so they are not.
39

concluded that “defendant could freely copy the central facial features of the
Barbie dolls” and holding that Mattel could not monopolize the idea of a dollwith “upturned nose, bow lips, and wide eyes,” but the law protected its specificrendition thereof). And where, as here, the secondary user has used thephotograph itself, rather than, for example, a similar photograph, thephotograph’s specific depiction of its subject cannot be neatly reduced to discrete
qualities such as contrast, shading, and depth of field that can be stripped away,
taking the image’s entitlement to copyright protection along with it.
With that in mind, we readily conclude that the Prince Series borrows
significantly from the Goldsmith Photograph, both quantitatively andqualitatively. While Warhol did indeed crop and flatten the Goldsmith
Photograph, the end product is not merely a screenprint identifiably based on a
photograph of Prince. Rather it is a screenprint readily identifiable as derivingfrom a specific photograph of Prince, the Goldsmith Photograph. A comparison of
the images in the Prince Series makes plain that Warhol did not use theGoldsmith Photograph simply as a reference or aide-mémoire in order toaccurately document the physical features of its subject. Instead, the Warhol

40

images are instantly recognizable as depictions or images of the Goldsmith
Photograph itself.
To confirm this, one need look no further than the other photographs ofPrince that AWF submitted in support of its motion below to evidence its
contention that Prince’s pose was not unique to the Goldsmith Photograph. [JA1707-09] Though any of them may have been suitable as a base photograph for
Warhol’s process, we have little doubt that the Prince Series would be quite
different had Warhol used one of them instead of the Goldsmith Photograph tocreate it. But the resemblance between the Prince Series works and the Goldsmith
Photograph goes even further; for example, many of the aspects of Prince’s
appearance in the Prince Series works, such as the way in which his hair appears
shorter on the left side of his face, are present in the Goldsmith Photograph yetabsent even from some other photographs that Goldsmith took of Prince during
the same photo session. In other words, whatever the effect of Warhol’salterations, the “essence of [Goldsmith’s] photograph was copied” and persists in
the Prince Series. Rogers, 960 F.2d at 311. Indeed, Warhol’s process had the effect41

of amplifying, rather than minimizing, certain aspects of the Goldsmith
Photograph.8
Nor can Warhol’s appropriation of the Goldsmith Photograph be deemed
reasonable in relation to his purpose. While Warhol presumably required aphotograph of Prince to create the Prince Series, AWF proffers no reason why herequired Goldsmith’s photograph. See TCA Television, 839 F.3d at 181-82, 185(wholesale borrowing of copyrighted comedy routine not reasonable where“defendants offer[ed] no persuasive justification” for its use). To the contrary, theevidence in the record suggests that Warhol had no particular interest in theGoldsmith Photograph or Goldsmith herself; Vanity Fair licensed a photographof Prince, and there is no evidence that Warhol (or, for that matter, Vanity Fair)
was involved in identifying or selecting the particular photograph that LGL
provided.

8

For example, the fact that Prince’s mustache appears to be lighter on the rightside of his face than the left is barely noticeable in the grayscale Goldsmith
Photograph but is quite pronounced in the black-and-white Prince Series
screenprints. Moreover, this feature of the Goldsmith Photograph is, again, notcommon to all other photographs of Prince even from that brief session. The
similarity is not simply an artefact of what Prince’s facial hair was like on thatdate, but of the particular effects of light and angle at which Goldsmith captured
that aspect of his appearance.
42

To be clear, we do not hold that this factor will always favor the copyrightholder where the work at issue is a photograph and the photograph remains
identifiable in the secondary work. But this case is not Kienitz v. Sconnie Nation
LLC, in which a panel of the Seventh Circuit held that a t-shirt design thatincorporated a photograph in a manner that stripped away nearly every
expressive element such that, “as with the Cheshire Cat, only the [subject’s] smile
remain[ed]” was fair use. 766 F.3d at 759. As discussed, Warhol’s rendition of theGoldsmith Photograph leaves quite a bit more detail, down to the glint in
Prince’s eyes where the umbrellas in Goldsmith’s studio reflected off his pupils.
Thus, though AWF urges this court to follow the Seventh Circuit’s lead, its
decision in Kienitz would not compel a different result here, even if it werebinding on us – which, of course, it is not.
The district court, reasoning that Warhol had taken only the unprotected
elements of the Goldsmith Photograph in service of a transformative purpose,
held that this factor strongly favored AWF. Because we disagree on both counts,
we conclude that this factor strongly favors Goldsmith.

43

D. The Effect of the Use on the Market for the Original
The fourth factor asks “whether, if the challenged use becomeswidespread, it will adversely affect the potential market for the copyrighted
work.” Bill Graham Archives, 448 F.3d at 613. “Analysis of this factor requires us tobalance the benefit the public will derive if the use is permitted and the personal
gain the copyright owner will receive if the use is denied.” Wright v. Warner
Books, Inc., 953 F.2d 731, 739 (2d Cir. 1991) (internal quotation marks omitted). In
assessing market harm, we ask not whether the second work would damage themarket for the first (by, for example, devaluing it through parody or criticism),
but whether it usurps the market for the first by offering a competing substitute.
See, e.g., Bill Graham Archives, 448 F.3d at 614. This analysis embraces both theprimary market for the work and any derivative markets that exist or that its
author might reasonably license others to develop, regardless of whether theparticular author claiming infringement has elected to develop such markets. See
Salinger v. Colting, 607 F.3d 68, 74, 83 (2d Cir. 2010) (affirming that fourth factor
favored J.D. Salinger in suit over unauthorized sequel to Catcher in the Rye despite
the fact that Salinger had publicly disclaimed any intent to author or authorize asequel, but vacating preliminary injunction on other grounds). As we have44

previously observed, the first and fourth factors are closely linked, as “the more
the copying is done to achieve a purpose that differs from the purpose of theoriginal, the less likely it is that the copy will serve as a satisfactory substitute forthe original.” Google, 804 F.3d at 223, citing Campbell, 510 U.S. at 591.
We agree with the district court that the primary market for the Warhol
Prince Series (that is, the market for the original works) and the Goldsmith
Photograph do not meaningfully overlap, and Goldsmith does not seriously
challenge that determination on appeal. We cannot, however, endorse the district
court’s implicit rationale that the market for Warhol’s works is the market for“Warhols,” as doing so would permit this aspect of the fourth factor always toweigh in favor of the alleged infringer so long as he is sufficiently successful tohave generated an active market for his own work. Notwithstanding, we see noreason to disturb the district court’s overall conclusion that the two works occupy
distinct markets, at least as far as direct sales are concerned.
We are unpersuaded, however, by the district court’s conclusion that the
Prince Series poses no threat to Goldsmith’s licensing markets. While Goldsmith
does not contend that she has sought to license the Goldsmith Photograph itself,
the question under this factor is not solely whether the secondary work harms an
45existing market for the specific work alleged to have been infringed. Cf. Castle
Rock, 150 F.3d at 145-46 (“Although Castle Rock has evidenced little if any
interest in exploiting this market for derivative works . . . the copyright law must
respect that creative and economic choice.”). Rather, we must also consider
whether “unrestricted and widespread conduct of the sort engaged in by [AWF]
would result in a substantially adverse impact on the potential market” for theGoldsmith Photograph. Campbell, 510 U.S. at 590 (internal quotation marks
omitted) (alterations adopted)); see also Fox News Network, LLC v. TVEyes, Inc., 883
F.3d 169, 179 (2d Cir. 2018).
As an initial matter, we note that the district court erred in apparently
placing the burden of proof as to this factor on Goldsmith. See, e.g., Warhol, 382 F.
Supp. 3d at 330. While our prior cases have suggested that the rightsholder bears
some initial burden of identifying relevant markets,9 we have never held that therightsholder bears the burden of showing actual market harm. Nor would we so

9

See HathiTrust, 755 F.3d at 96 (“To defeat a claim of fair use, the copyright holder
must point to the market harm that results because the secondary use serves as a
substitute for the original work.”); Leibovitz, 137 F.3d at 116 n.6 (“Leibovitz has
not identified any market for a derivative work that might be harmed by theParamount ad. In these circumstances, the defendant had no obligation to present
evidence showing lack of harm in a market for derivative works.”).
46

hold. Fair use is an affirmative defense; as such, the ultimate burden of provingthat the secondary use does not compete in the relevant market is appropriately
borne by the party asserting the defense: the secondary user. See Campbell, 510
U.S. at 590 (“Since fair use is an affirmative defense, its proponent would havedifficulty carrying the burden of demonstrating fair use without favorable
evidence about relevant markets.”); Infinity Broadcast Corp. v. Kirkwood, 150 F.3d
104, 110 (2d Cir. 1998) (“As always, [the secondary user] bears the burden of
showing that his use does not” usurp the market for the primary work); Dr. Seuss
Enters., L.P. v. ComicMix LLC, 983 F.3d 443, 459 (9th Cir. 2020) (“Not much about
the fair use doctrine lends itself to absolute statements, but the Supreme Court
and our circuit have unequivocally placed the burden of proof on the proponentof the affirmative defense of fair use.”).
In any case, whatever the scope of Goldsmith’s initial burden, she satisfied
it here. Setting aside AWF’s licensing of Prince Series works for use in museum
exhibits and publications about Warhol, which is not particularly relevant for thereasons set out in our discussion of the primary market for the works, there is nomaterial dispute that both Goldsmith and AWF have sought to license (and47

indeed have successfully licensed) their respective depictions of Prince10 topopular print magazines to accompany articles about him. As Goldsmith
succinctly states: “both [works] are illustrations of the same famous musician
with the same overlapping customer base.” Appellants’ Br. at 50. Contrary to
AWF’s assertions, that is more than enough. See Cariou, 714 F.3d at 709 (“[A]naccused infringer has usurped the market for copyrighted works . . . where theinfringer’s target audience and the nature of the infringing content is the same as
the original.”). And, since Goldsmith has identified a relevant market, AWF’s
failure to put forth any evidence that the availability of the Prince Series works
poses no threat to Goldsmith’s actual or potential revenue in that market tilts thescales toward Goldsmith.
Finally, the district court entirely overlooked the potential harm toGoldsmith’s derivative market, which is likewise substantial. Most directly,
AWF’s licensing of the Prince Series works to Condé Nast without crediting or
paying Goldsmith deprived her of royalty payments to which she would haveotherwise been entitled. Although we do not always consider lost royalties from

10

In Goldsmith’s case, photographs other than the Goldsmith Photograph, which
she has withheld from the market.
48

the challenged use itself under the fourth factor (as any fair use necessarily
involves the secondary user using the primary work without paying for the rightto do so), we do consider them where the secondary use occurs within a
traditional or reasonable market for the primary work. See Fox News, 883 F.3d at
180; On Davis v. Gap, Inc., 246 F.3d 152, 176 (2d Cir. 2001). And here, that market
is established both by Goldsmith’s uncontroverted expert testimony thatphotographers generally license others to create stylized derivatives of their workin the vein of the Prince Series, see J. App’x 584-99, and by the genesis of the
Prince Series: a licensing agreement between LGL and Vanity Fair to use theGoldsmith Photograph as an artist reference.11
Further, we also must consider the impact on this market if the sort ofcopying in which Warhol engaged were to become a widespread practice. That
harm is also self-evident. There currently exists a market to license photographsof musicians, such as the Goldsmith Photograph, to serve as the basis of astylized derivative image; permitting this use would effectively destroy thatbroader market, as, if artists “could use such images for free, there would be little
11

Of course, if a secondary work is sufficiently transformative, the fact that its“raw material” was acquired by means of a limited license will not necessarily
defeat a defense of fair use. As discussed supra, however, that is not the case here.
49

or no reason to pay for [them].” Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F.
Supp. 3d 339, 355 (S.D.N.Y. 2017); see also Seuss, 983 F.3d at 461 (“[T]heunrestricted and widespread conduct of the sort ComicMix is engaged in could
result in anyone being able to produce” their own similar derivative works basedon Oh, the Places You’ll Go!). This, in turn, risks disincentivizing artists fromproducing new work by decreasing its value – the precise evil against which
copyright law is designed to guard.
Thus, although the primary market for the Goldsmith Photograph and thePrince Series may differ, the Prince Series works pose cognizable harm toGoldsmith’s market to license the Goldsmith Photograph to publications foreditorial purposes and to other artists to create derivative works based on theGoldsmith Photograph and similar works. Accordingly, the fourth factor favors
Goldsmith.
E. Weighing the Factors“[T]his court has on numerous occasions resolved fair use determinations
at the summary judgment stage where there are no genuine issues of material
fact.” Cariou, 714 F.3d at 704 (internal quotation marks omitted) (alteration50

adopted) (collecting cases). As no party contends that there exist any issues ofmaterial fact in this case, we believe it appropriate to exercise that discretion here.
Having considered each of the four factors, we find that each favors
Goldsmith. Further, although the factors are not exclusive, AWF has not
identified any additional relevant considerations unique to this case that weshould take into account. Accordingly, we hold that AWF’s defense of fair use
fails as a matter of law.
III. Substantial Similarity
AWF asks this Court to affirm the district court’s decision on the alternate
grounds that the Prince Series works are not substantially similar to theGoldsmith Photograph. We decline that invitation, because we conclude that theworks are substantially similar as a matter of law.
The district court did not analyze the issue of substantial similarity
because, in its view, “it [was] plain that the Prince Series works are protected byfair use.” Warhol, 382 F. Supp. 3d at 324. While “it is our distinctly preferredpractice to remand such issues for consideration by the district court in the first
instance,” Schonfeld v. Hilliard, 218 F.3d 164, 184 (2d Cir. 2000), we are notrequired to do so. In this case, because the question of substantial similarity is51

logically antecedent to that of fair use – since there would be no need to invoke
the fair use defense in the absence of actionable infringement – and because thefactors we have already discussed with respect to fair use go a considerable way
toward resolving the substantial similarity issue, we do not believe a remand toaddress that issue is necessary in this case.12
In general, and as applicable here, two works are substantially similar
when “an average lay observer would recognize the alleged copy as having been
appropriated from the copyrighted work.” Knitwaves, Inc. v. Lollytogs, Ltd., 71
F.3d 996, 1003 (2d Cir. 1995), quoting Malden Mills, Inc. v. Regency Mills, Inc., 626
F.2d 1112, 1113 (2d Cir. 1980). “On occasion, . . . we have noted that when facedwith works that have both protectable and unprotectable elements, our analysis
must be more discerning and that we instead must attempt to extract the
unprotectable elements from our consideration and ask whether the protectableelements, standing alone, are substantially similar.” Peter F. Gaito Architecture,
LLC v. Simone Dev. Corp., 602 F.3d 57, 66 (2d Cir. 2010) (internal citations andquotation marks omitted). AWF and its amici contend that this “more discerning

12

We express no view on the viability of AWF’s remaining defenses, which areappropriately considered by the district court in the first instance.
52

observer” test should apply here because photographs contain both protectableand unprotectable elements. See Appellee’s Br. at 65; Law Professors’ Br. at 8. The
same could be said, however, of any copyrighted work: even the mostquintessentially “expressive” works, such as books or paintings, contain noncopyrightable ideas or concepts. See 4 Nimmer on Copyright § 13.03(B)(2).
Moreover, the cases in which we have applied the “more discerningobserver” test involved types of works with much “thinner” copyright protection– i.e., works that are more likely to contain a larger share of non-copyrightableelements. See, e.g., Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 102 (2d Cir.
2014) (architectural designs); Tufenkian Import/Export Ventures, Inc. v. Einstein
Moomjy, Inc., 338 F.3d 127, 136 n.13 (2d Cir. 2003) (Tibetan-style carpets); Boisson
v. Banian, Ltd., 273 F.3d 262, 272 (2d Cir. 2001) (quilts). By contrast, “photographs
are ‘generally viewed as creative aesthetic expressions of a scene or image’ andhave long received thick copyright protection[,] . . . even though photographs
capture images of reality.” Brammer v. Violent Hues Prods., LLC, 922 F.3d 255, 267(4th Cir. 2019), quoting Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1177 (9thCir. 2012). We therefore reject AWF’s contention that we should be “morediscerning” in considering whether the Prince Series is substantially similar to53

the Goldsmith Photograph and apply the standard “ordinary observer” test. See
Knitwaves, 71 F.3d at 1002-03.
Though substantial similarity often presents a jury question, it may beresolved as a matter of law where “access to the copyrighted work is conceded,
and the accused work is so substantially similar to the copyrighted work thatreasonable jurors could not differ on this issue.” Rogers, 960 F.2d at 307 (citation
omitted); see also Gaito, 602 F.3d at 63 (“The question of substantial similarity is by
no means exclusively reserved for resolution by a jury.”).
Here, AWF has conceded that the Goldsmith Photograph served as the“raw material” for the Prince Series works. See Appellee’s Br. at 6-7. AWF
nevertheless attempts to compare this case to several decisions from our sistercircuits concluding that the secondary works in question were not substantiallysimilar to the original photographs on which they were based. See, e.g.,
Rentmeester v. Nike, Inc., 883 F.3d 1111, 1121-23 (9th Cir. 2018) (Nike’s iconic“Jumpman” logo and the photograph used to create it were not substantiallysimilar to a photograph of Michael Jordan dunking a basketball); Harney v. Sony
Pictures Television, Inc., 704 F.3d 173, 188 (1st Cir. 2013) (recreated image in madefor-TV movie was not substantially similar to the photograph that inspired it).
54But the secondary users in those cases did not merely copy the original
photographs at issue; they instead replicated those photographs using their own
subjects in similar poses. By contrast, Warhol did not create the Prince Series bytaking his own photograph of Prince in a similar pose as in the Goldsmith
Photograph. Nor did he attempt to copy merely the “idea” conveyed in theGoldsmith Photograph. Rather, he produced the Prince Series works by copying
the Goldsmith Photograph itself – i.e., Goldsmith’s particular expression of that
idea. This case therefore stands in sharp contrast to the situation presented byRentmeester, for example, in which the court explained that “[w]hat [the original]
photo and the [allegedly infringing] photo share are similarities in general ideas
or concepts: Michael Jordan attempting to dunk in a pose inspired by ballet’s
grand jeté; an outdoor setting stripped of most of the traditional trappings ofbasketball; a camera angle that captures the subject silhouetted against the sky.”
883 F.3d at 1122-23.
This is not to say that every use of an exact reproduction constitutes a workthat is substantially similar to the original. But here, given the degree to which
Goldsmith’s work remains recognizable within Warhol’s, there can be noreasonable debate that the works are substantially similar. See Rogers, 960 F.3d
55

307-08. As we have noted above, Prince, like other celebrity performing andcreative artists, was much photographed. But any reasonable viewer with accessto a range of such photographs including the Goldsmith Photograph would haveno difficulty identifying the latter as the source material for Warhol’s Prince
Series.
CONCLUSION
For the foregoing reasons, we REVERSE the grant of AWF’s motion forsummary judgment, VACATE the judgment entered below dismissing Lynn
Goldsmith and LGL’s amended counterclaim, and REMAND this case for further
proceedings consistent with this opinion.

56

Richard J. Sullivan, Circuit Judge, joined by Dennis Jacobs, Circuit Judge,
concurring:
I fully join the majority’s thoughtful opinion and its conclusion that the
Prince Series works are substantially similar to the Goldsmith Photograph and are
not protected by fair use. I write separately only to highlight what I see as anoverreliance on “transformative use” in our fair use jurisprudence, generally, andto suggest that a renewed focus on the fourth fair use factor, “the effect of the use
upon the potential market for or value of the copyrighted work,” 17 U.S.C. § 107(4),would bring greater coherence and predictability to this area of the law.
In the wake of the Supreme Court’s decision in Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569 (1994), the “transformative” nature of a secondary work has
become the dominant focus in determining whether that work is protected by fairuse. Courts and commentators have recognized this trend and have observed thatit threatens to collapse the four statutory fair use factors into a single, dispositive
factor. See, e.g., Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir. 2014)(“[A]sking exclusively whether something is ‘transformative’ not only replaces thelist in § 107 but also could override 17 U.S.C. § 106(2), which protects derivative
works.”); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright§ 13.05[A][1][b] (noting that many courts’ applications of the transformative use1test “are conclusory – they appear to label a use ‘not transformative’ as a shorthandfor ‘not fair,’ and correlatively ‘transformative’ for ‘fair’”). Indeed, one recent
empirical study found that, among a sample of 238 district and circuit court
decisions, whether a secondary work was transformative correlated with theultimate fair use outcome 94% of the time. See Jiarui Liu, An Empirical Study ofTransformative Use in Copyright Law, 22 Stan. Tech. L. Rev. 163, 180 (2019).
This pattern is perhaps best illustrated in the district court’s opinion below.
Having concluded that the Prince Series works were transformative, the district
court found that the second fair use factor was neutral (despite noting that theGoldsmith Photograph was creative and unpublished, which “would ordinarily
weigh in Goldsmith’s favor”) and found that the third factor weighed heavily in
AWF’s favor because “Warhol transformed Goldsmith’s work into something new
and different.” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp.
3d 312, 327, 330 (S.D.N.Y. 2019) (internal quotation marks omitted). But perhaps
most notably, as the majority’s opinion recognizes, the district court completely
dismissed evidence of harm to Goldsmith’s potential licensing and derivative
markets after concluding that the Prince Series was transformative. See Majority
Op. at 45–50.

2

Placing dispositive weight on transformative use while reducing evidenceof market harm to an afterthought is difficult to square with the Supreme Court’s
guidance that the fourth factor “is undoubtedly the single most important elementof fair use.” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566 (1985).
Indeed, we have previously explained that focusing on the importance of the
fourth factor “is consistent with the fact that the copyright is a commercial right,
intended to protect the ability of authors to profit from the exclusive right tomerchandise their own work.” Authors Guild v. Google, Inc., 804 F.3d 202, 214 (2dCir. 2015) (“Google Books”).
To be sure, some of this Court’s earlier decisions suggest that the Supreme
Court “retreated” from its emphasis on the fourth factor when it explained inCampbell that “[a]ll [four fair use factors] are to be explored, and the results
weighed together, in light of the purposes of copyright,” 510 U.S. at 578. See, e.g.,
Blanch v. Koons, 467 F.3d 244, 258 n.8 (2d Cir. 2006); Castle Rock Ent., Inc. v. Carol
Publ’g Grp., Inc., 150 F.3d 132, 145 (2d Cir. 1998). But the statements in Campbell
and Harper & Row are not necessarily at odds with one another: courts canconsider all four factors while still recognizing that evidence of harm to the3potential market for the original work (or derivative works based on the original,
see Campbell, 510 U.S. at 593) should be given substantial weight.
The Supreme Court’s decision in Campbell does not suggest otherwise. To
the contrary, even though Campbell is recognized for crystallizing the concept oftransformative use, the opinion “characterizes the first factor inquiry as
subservient to the fourth.” Pierre N. Leval, Campbell as Fair Use Blueprint?, 90
Wash. L. Rev. 597, 605 (2015). Campbell explained that transformative works are
more likely to be fair uses because they are less likely to “act[] as a substitute” foror “‘supersede[] the objects’” of the original work, and are therefore less likely to“affect the market for the original in a way cognizable under [the fourth] factor.”
510 U.S. at 591 (quoting Folsom v. Marsh, 9 F. Cas. 342, 348 (No. 4,901) (C.C.D. Mass.
1841)); see also Leval, supra at 605 n.38.

Moreover, Campbell explicitly

acknowledged that the defendants in that case “left themselves at . . . a
disadvantage when they failed to address the effect [of their work] on the market
for rap derivatives” and remanded for further fact-finding on the fourth factor
despite concluding that the defendants’ secondary work was transformative. 510
U.S. at 590, 594.

Campbell therefore does not stand for the proposition thattransformative use should be the dispositive factor in the fair use inquiry; rather,4evidence of harm to the potential market for the original work (and its derivatives)is still integral to the analysis.
By returning focus to the fourth fair use factor and being particularly
attentive to “whether unrestricted and widespread conduct of the sort engagedin” by an alleged infringer would adversely affect the potential market for theoriginal work, id. at 590 (internal quotation marks omitted), courts can escape thepost-Campbell overreliance on transformative use. Fortunately, several of ourmore recent fair use decisions have placed greater emphasis on the fourth factor.
See, e.g., Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649, 662 (2d Cir. 2018)(describing the fourth factor as “undoubtedly the single most important elementof fair use” (quoting Harper & Row, 471 U.S. at 566)); Fox News Network, LLC v.
TVEyes, Inc., 883 F.3d 169, 174, 180 (2d Cir. 2018) (finding no fair use despite
concluding that the defendants’ technology “serve[d] a transformative purpose,”in part because the technology “usurped a function for which [the plaintiff was]entitled to demand compensation under a licensing agreement”); TCA TelevisionCorp. v. McCollum, 839 F.3d 168, 186 (2d Cir. 2016) (recognizing that the district
court improperly “disregarded the possibility of defendants’ use adversely
affecting the licensing market for the [original work]”). And our sister circuits

5

have followed suit. See, e.g., Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443,
459–61 (9th Cir. 2020) (emphasizing that the defendant did not “address a crucial
right for a copyright holder – the derivative works market”); Kienitz, 766 F.3d at
758 (“We think it best to stick with the statutory list, of which the most important
usually is the fourth (market effect).”).
This is not to suggest that the majority’s opinion runs counter to this trend.
To the contrary, it properly recognizes the harm to the potential licensing markets
for the Goldsmith Photograph and its derivatives, and reaffirms that the burdenof proving a lack of market harm rests with the alleged infringer. See Majority Op.
at 45–50. I write simply to stress that this renewed attention to the fourth fair use
factor will ultimately better serve the purposes of copyright, which remains at its
core “a commercial doctrine whose objective is to stimulate creativity among
potential authors by enabling them to earn money from their creations.” Google
Books, 804 F.3d at 223.

6

DENNIS JACOBS, Circuit Judge, concurring:
I concur in the opinion of the Court as well as Judge Sullivan’s
concurrence. I write briefly to make a single point: the holding does notconsider, let alone decide, whether the infringement encumbers the originalPrince Series works that are in the hands of collectors or museums.
It is very easy for opinions in this area (however expertly crafted) to haveundirected ramifications. A sound holding may suggest an unsound result in
related contexts.
The sixteen original works have been acquired by various galleries, art
dealers, and the Andy Warhol Museum. This case does not decide their rights to
use and dispose of those works because Goldsmith does not seek relief as tothem. She seeks only damages and royalties for licensed reproductions of the
Prince Series.
Although the Andy Warhol Foundation initiated this suit with a request
for broader declaratory relief that would cover the original works, Goldsmith did
not expressly join issue. The Declaratory Judgment Act is reserved for disputesthat are percolating over parties’ rights and obligations while harm threatens to
accrue. See United States v. Doherty, 786 F.2d 491, 498–99 (2d Cir. 1986)

(Friendly, J.); see also Broadview Chem. Corp. v. Loctite Corp., 417 F.2d 998, 1001
(2d Cir. 1969) (articulating the criteria for deciding whether to entertain adeclaratory judgment action). But Goldsmith does not claim that the original
works infringe and expresses no intention to encumber them; the opinion of the
Court does not necessarily decide that issue.
The issue, however, still looms, and our holding may alarm or alert
possessors of other artistic works. Warhol’s works are among many pieces thatincorporate, appropriate, or borrow from protected material. Risk of a copyrightsuit or uncertainty about an artwork’s status can inhibit the creativity that is agoal of copyright.
A key consideration in this case is the effect of the Prince Series on themarket for Goldsmith’s photograph. Our decision depends heavily on thecommercial competition between the photograph and the reproduced versions of
the Prince Series.
As the opinion observes, the market for the photograph and the market forthe original Prince Series works are distinct. See Majority Op. at 45. An original
work of art is marked by the hand or signature of the artist, which is a
preponderating factor in its value. When the work is reproduced, it loses that2

mystique, as anyone who has browsed a gift shop can appreciate. In a word, theoriginal works and Goldsmith’s photograph are not “substitutes.” Castle Rock
Ent., Inc. v. Carol Publ’g Grp., 150 F.3d 132, 145 (2d Cir. 1998).
But when represented on a magazine cover, the Prince Series functions as aportrait of the musician Prince--as does Goldsmith’s photograph. The Prince
Series retains the photograph’s expressive capacity for Prince portraiture and issought for that purpose. It may well compete for magazine covers, posters,
coffee mugs, and other media featuring the late musician. If the Foundation had
refuted the evidence of such market displacement, the weight of the analyticalconsiderations would have changed.

3