The US Supreme Court has released a highly-anticipated decision in ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC. v. LYNN GOLDSMITH. This case is based in copyright, and the main issue arises out of an arguably unauthorized licensing of a photographer’s copyright in one of her photos, a photo of the musician Prince.
My latest video podcast discusses the case and its implications for business owners and creators.
If you would rather read that watch, here are my notes and thoughts below. To read the opinion, you can access that here: https://www.supremecourt.gov/opinions/22pdf/21-869_87ad.pdf
By way of quick back story, this case is really at its core a licensing issue. The photographer was Lynn Goldsmith, who took photos of Prince early in his career. In 1984, the photographer agreed to a limited license with Vanity Fair (no one else) for a one-time use in one issue of the VF magazine, with credit given to her as the photographer and $400. As it turned out, Vanity Fair hired the artist, Andy Warhol, to "illustrate a story about Prince." Warhol made a silkscreen using Goldsmith’s photo, and Vanity Fair published Warhol's image in an article about Prince. The magazine credited Goldsmith for the “source photograph,” and it paid her $400.
Warhol did not have a license from Goldsmith, but used the image anyway to not only create the image for Vanity Fair, but to go on and create 15 additional pieces based on Goldsmith's photograph. Goldsmith did not know about the additional pieces until 1996, as described below. When Warhol died, the Prince pieces went to Andy Warhol Foundation (AWF), which claim it owns the copyright in all of those pieces, although they no longer have possession of the pieces.
When Prince died in 2016, Condé Nast contacted AWF and licensed the Orange Prince image for $10k for use in an article commemorating Prince's life and career. No credit was given to Goldsmith for the source photograph underlying Warhol's piece. It was at that time that Goldsmith saw the publication and realized the Warhol had made additional pieces from her photograph of Prince.
When Goldsmith learned of the publication of the image, she notified AWF and told them that she believed it was copyright infringement. In response, AWF sued Goldsmith for a declaratory judgement for non-infringement or, in the alternative, the affirmative defense of “Fair Use.”
A lot has been said about this case, but it is not really a case about Goldsmith versus Warhol. At no time did the Supreme Court take up the inquiry about whether Warhol had the right to make his additional 15 pieces based on Goldsmith's original photo. According to the majority and concurring opinions of the Court, the only issue here is whether the first factor of the Fair Use Doctrine weighs in favor of Goldsmith. AWF claims the work is "transformative" (a new work from the original) and therefore that factor weighs in favor of AWF/Warhol, in which case, they would not be liable for infringement.
The first factor of the Fair Use Test examines "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." This means that the use of the original creation as intended by the original creator is relevant to whether the secondary use of the copied creation is justified under Fair Use principles.
The Court explained that the focus of this analysis is on whether an allegedly infringing use has a further purpose or different character than the original use of the original work, which is a matter of degree (in other words, on a spectrum), and the degree of difference must be weighted against other considerations, like whether the secondary use is commercial in nature. For those wanting more details on this issue, you can read Campbell v Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). In that case, the Court stated that, “[a]lthough new expression ["a transformative work"] may be relevant to whether a copying use has a sufficiently distinct purpose of character, it is not, without more, dispositive of the first factor.” That means that even if the copied creation is distinct from the original due to the transformation made by the second creator, the issue turns not on that but on the use of that copied piece.
Here, the use at issue is AWF’s licensing of the Orange Prince to Condé Nast. The issue in this case was NOT Warhol's actions in creating his Prince portraits from Goldsmith's original photo.
The Court concluded that because both the original portrait and Warhol’s Orange Prince were used in stories about Price, they share substantially the same purpose. Moreover, the copying use is of a commercial nature. Both of these facts favor Goldsmith, the original artist/photographer. The new expression provided by Warhol does not change the fact that this first factor still favors Goldsmith.
First factor considers the reasons for, and nature of, the copier’s use of an original work.
Central Q: “whether the new work merely ‘supersede[s] the objects’ of the original creation … (‘supplanting’ the original), or instead adds something new, with a further purpose or different character.” Campbell at 579.
Thus, the first factor relates to the problem of “substitution” “copyright’s bête noir.” “The use of an original work to achieve a purpose that is the same as, or highly similar to, that of the original work is more likely to substitute for, or “supplan[t]’,” the work. The examples of fair use reflect uses of the original work to serve a “manifestly different purpose from the [original] work itself.” 11 F.4th at 37.
“The larger the difference [in use], the more likely the first factor weighs in favor of fair use. The smaller the difference, the less likely.”
“[A]n overly broad concept of transformative use….would narrow the copyright owner’s exclusive right to create derivative works. To preserve that right, the degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as “derivative.” For you with some knowledge of trademark law, this analysis and policy discussion reminds me of "related" or "coordinated" classes of goods or services in trademarks. I think the concepts are policies behind them are parallel and that is a big part of the reason I think this decision is the right one.
E.g. parody might be fair use because parody could transform a work through social benefit by shedding light on an earlier work, and in the process, creating a new one.
Distinguishing between parody and satire: Parody needs to mimic the original work to make its point (so has some claim to use the creation of its victim’s imagination). Satire can stand on its own and so need justification for the very act of borrowing. Campbell at 580-81
“When commentary has no crucial bearing on the substance or style of the original…the claim to fairness in borrowing the work diminishes, and other factors, like the extent of its commerciality, loom larger.” Id.
1. Commercial use v nonprofit use is an additional element to consider in the first factor. Commercial use is not dispositive, but it is relevant.
2. The first factor relates to the justification of the use. A use that has a distinct purpose is justified because it furthers the goal of copyright - to promote the progress of science and the arts, without diminishing the incentive to create. If the use serves as a substitute for the original or its plausible/anticipated derivative (the right to which are owned exclusively by the original owner), it will potentially be shrinking the protected market opportunities of the copyrighted work. If the use shares the purpose of the original work, it is more likely to provide a substitute for the original work and its potential derivatives, and that undermines the goal of copyright.
A court must weigh the strength of the secondary user’s justification of the use against factors favoring the copyright owner.
Where the two works share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.
The Majority was correct in clarifying that the only issue is AWF’s commercial licensing of the secondary work to Condé Nast. Goldsmith actually abandoned all other claims. This is an appeal and only issues ripe for appeal can be considered by the court.
In the context of celebrity photographs/images and the specific context of commemorating Prince’s life and death, the purpose of the Warhol image is substantially the same as that of Goldsmith’s photograph. Both are portraits of Prince used in magazines to illustrate stories about Prince.
“AWF’s licensing of the Orange Prince image thus ‘superseded the objects,” i.e. shared the objectives of Goldsmith’s photograph, even if the two were not perfect substitututes.”
“The use also “is of a commercial nature.” Both artists licensed their image to a magazine for money. “The undisputed commercial character of AWF’s use, though not dispositive, ‘tends to weigh against a finding of fair use.” AWF v Goldsmith (citing Harper & Rose, 471 U.S. at 562).
Whether the purpose and character of a use weighs in favor of fair use is instead an objective inquiry into what use was made, i.e. what the user does with the original work.
Here, the use is AWF’s commercial licensing of the Orange Prince to Condé Nast.
“To hold otherwise would potentially authorize a range of commercial copying photographs, to be used for purposes that are substantially the same as those of the original. As long as the user somehow portrays the subject of the photograph differently, he could make modest alterations to the original, sell it to an outlet to accompany a story about the subject, and claim transformative use. Many photographs will be open to various interpretations. A subject as open to interpretation as the human face, for example, reasonably can be perceived as conveying several possibly meanings. The application of an artitist’s characteristic style to bring out a particular meaning that was available in the photograph is less likely to constitute a “further purpose” as Campbell used the term.”
Fair Use “strikes a balance between original works and secondary uses based in part on objective indicia of the use’s purpose and character, including whether the use is commercial and, importantly, the reasons for copying.
The Court held that Goldsmith’s original works are entitled to copyright protection, even against famous artists like Warhol, and that protection includes the right to create her own derivative works that transform the original.
The Court also held that use might be fair IF, among other things, that use has a “purpose and character that is sufficiently distinct from the original.”
In this case, the original photo and the copying use of it share substantially the same purpose, and the use if of a commercial nature. AWF has offered no other persuasive justification for its unauthorized use of the photograph. And because Fair Use is an affirmative defense, AWF has the sole burden of proving that their use falls under Fair Use. The Court held they did not. Therefore, the first factor of the Fair Use analysis weighs in favor of Goldsmith.
As the concurring opinion so succinctly summarized, “our only job today is to interpret and apply faithfully one statutory factor among many Congress has deemed relevant to the affirmative defense of fair use.”