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20 October 2022FeaturesCopyrightBill Frankel

The Warhol 'Prince series' conundrum

Artist Andy Warhol created a licensed artistic rendering of a copyrighted photograph of the musician Prince taken by Lynn Goldsmith for use in a 1984 Vanity Fair article. Subsequently, Warhol created 16 silkscreen prints ('Prince series') based on the same original Goldsmith photograph.

Goldsmith sued the Andy Warhol Foundation for copyright infringement. The district court found fair use on summary judgment, concluding that Warhol had “transformed” the Goldsmith photograph of Prince by giving it new “meaning and message.”

The Second Circuit Court of Appeals reversed, holding that the Prince series was “recognisably derived” from the Goldsmith photograph and therefore did not “transform” and was not a fair use.

The Andy Warhol Foundation appealed to the US Supreme Court, which took up the case and heard oral argument on October 12, 2022.

As was the case in the 1994 decision of Campbell v Acuff-Rose Music, the US Supreme Court in The Andy Warhol Foundation v Goldsmith is struggling with the tension between protecting copyright on the one hand, and allowing others to build on pre-existing works in creative pursuits consistent with the goal of copyright to promote science and the arts.

In 1994, the court looked at the first of the four § 107 factors, “the purpose and character of the use, including whether such use is of a commercial nature ... ”, and considered whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is “transformative”, altering the original with new expression, meaning, or message. The more transformative the new work, the less will be the significance of the other three fair use factors.

The Supreme Court zeroed in this time around on what, exactly, constitutes transformative use and how that relates to statutory language directed to the purpose and character of the use.

More specifically, did Warhol’s creation of 16 images of Prince in 1984 using a copyrighted Goldsmith photograph imbue the photograph with new expression, meaning, or message as argued by the Andy Warhol Foundation and, if so, is that the end of the analysis?

Must the court then consider whether the difference matters? Or, must a court consider the reason and necessity of the taking, the justification for doing so, as argued by attorneys for Goldsmith and the government?

Concept of transformation

From the outset, the justices seemed to be struggling with where to draw the line between fair uses and derivative uses, the latter being controllable by the original copyright holder.

Justice Clarence Thomas first asked for an example of a follow-on work that would not meet the Foundation’s transformation test, and Roman Martinez, partner at Latham & Watkins, representing the Andy Warhol Foundation, responded with the “classic example” of a book-to-movie adaptation.

Justice Sonia Sotomayor, Chief Justice John Roberts, and Justice Elena Kagan all questioned why such derivative works couldn’t be argued to present new expression and meaning. Martinez tried to distinguish such uses by turning to fair use factor 4—effect of the use upon the potential market for or value of the copyrighted work. Justice Amy Coney Barrett zeroed in on this issue as well, saying that the meaning or message test risks stretching the concept of transformation so broadly that it eviscerates factor 1 and puts all of the emphasis on factor 4.

In one exchange with Martinez, Justice Sotomayor seemed to agree that the Second Circuit was wrong to conclude that there was nothing fundamentally different and new in the 'Prince series' images, but she rejected the notion that “transformation standing alone gives you factor 1”. She and Justice Brett Kavanaugh questioned what should be done with the rest of factor 1—what is the use that the court must evaluate for purpose and character? Is it Warhol creating a work of art, or is it Warhol making prints to sell, or is it Warhol using his images in a story about Prince—like the 1984 Vanity Fair article?

Justice Sotomayor asked whether factor 1 is looking to a higher level of generality of purpose. And Justice Ketanji Brown Jackson noted that any visual artist can argue after the fact that their use involved communicating a new message through their work.

Focus on purpose

Justice Samuel Alito asked how a court is to determine the purpose, or the message and meaning, of works of art such as photographs and paintings. Is it necessary to have asked Andy Warhol the purpose of his 'Prince series'?

Martinez argued that courts consider this kind of evidence, sometimes with experts, all the time in these cases. Justice Kagan asked whether Martinez might be applying hindsight reasoning—attributing greater transformation because we’re talking about Warhol and not some unknown artist. And Chief Justice Roberts noted that there likely would be art critics who would find a great difference between blue and yellow applied to otherwise identical works.

Justice Thomas got some laughs when he acknowledged being a Prince fan in the 1980s, and went on to ask whether adding the words ‘Go Orange’ to a sports banner featuring the copyrighted Warhol 'Orange Prince' would result in Martinez suing him for copyright infringement.

Arguing for Goldsmith, Lisa Blatt, partner at  Williams & Connolly, emphasised that factor 1’s focus on purpose requires the copier to provide an explanation and justification for using another’s expression. The Foundation’s colloquial definition of transformative, she argued, is too easy to manipulate, placing copyrights at the mercy of copycats.

Blatt challenged the suggestion that the Second Circuit had not considered meaning and message, arguing that they were simply saying that you can’t add new meaning to someone else’s art for profit without a clear artistic purpose. Justice Kagan, Chief Justice Roberts, and Justice Jackson questioned Blatt’s position and her reading of Campbell as requiring that the second work comment on the original.

The government did not go as far as Goldsmith, and conceded that fair use might be found in cases where there was no absolute justification. Instead, the government argued for a test requiring that the factor 1 use be necessary or essential. The argument by the government afforded a number of the justices to revisit the issues with which they were grappling.

On balance, the justices seemed to recognise Warhol’s creative artistic enhancements to the Goldsmith photo as being more than a bare appropriation. They also seemed less inclined to adopt the rigid justification requirement advocated by Goldsmith, albeit disinclined to adopt an untethered transformation test.

The court may attempt to reign in the transformation test by incorporating an objectively reasonable assessment of artistic or new expression rather than reliance on the subjective views of the creator or other individuals. At the end of the day, however, the justices are unlikely to constrain creators’ opportunities to promote science and the arts.

Bill Frankel is a partner at Crowell & Moring. He can be contacted at  wfrankel@crowell.com

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