by Vivek Jayaram 

In the October 2022-2023 term, the Supreme Court of the United States will hear what will likely be a landmark case on the fair use doctrine involving Andy Warhol, Prince, and a famous rock photographer named Lynn Goldsmith. The case will be heard at a time where the fuzzy parameters of the Copyright Act are challenged frequently by digital apes, virtual handbags, and clever artists (looking at you, MSCHF). In a thriving creator economy, where derivatives often take center stage, receiving clarity from the country’s highest court will hopefully provide artists, brands, and creatives with some guidance on the state of the fair use doctrine in the United States. 

The facts of the Warhol case are oddly straightforward (maybe one reason it’s a good case for the Court to take): Lynn Goldsmith–a prolific photographer who has worked on over 100 album covers in the last 50 years and has work hanging in places like the Museum of Modern Art (MoMA) and The Smithsonian–was one of the first artists to shoot the late and great Prince, as his career was just beginning to take off. In 1981, Newsweek hired Goldsmith to take photographs of Prince for an article dedicated to the pop star (image A).

A

A few summers later, in July of 1984, Prince released Purple Rain, a psychedelic, synth-heavy pop masterpiece that quickly became a #1 album in many countries around the world, including the United States. Vanity Fair dug the record too, and dedicated valuable real estate in its November 1984 issue to the artist. The feature included Goldsmith’s photograph, which she licensed to Vanity Fair. In connection with this article, Andy Warhol was asked to create a more colorful version of Goldsmith’s photograph to be featured on a full page across from the article. Warhol did Warhol: he made a screenprint that featured a purple Prince on a dark orange background (image B). 

B

Prince died some 25 years later, in April of 2016. After his death, Condé Nast published an issue honoring Prince, which contained the Warhol work on its cover (image C).

Goldsmith, who claims she did not know about the Warhol work until after Prince’s death when she saw the tribute issue, began sending cease and desist letters to the Warhol Foundation, arguing that the artwork infringed on her photograph. The Foundation eventually filed suit first, seeking a declaration that the Warhol work did not infringe on the photograph pursuant to the fair use doctrine because, they argued, the work was “transformative” and thus became a new work entirely. Goldsmith, naturally, counterclaimed for infringement. 

“The idea is not to live forever; it is

to create something that will.”

ANDY WARHOL

 

In advancing its position, the Warhol Foundation relied heavily on a 2013 2d Circuit decision in Cariou v Prince (this is where things get a little weird – that case involved the artist Richard Prince, not the musician Prince). In Cariou, the Second Circuit held that the vast majority of pieces used in Richard Prince’s “Canal Zone” series constituted fair use as a matter of law (images D, and E below).

D

 

E

 

The Cariou case has not been without critics, but its decision helped many artists sleep soundly at night, given it’s generally art-forward view of the fair use doctrine.

The Warhol-Goldsmith case forged ahead for years, and, in 2019, Southern District of New York Judge John G. Koeltl granted summary judgment for the Warhol Foundation on its fair use defense. The Court said that the Warhol work was “transformative” because, while Goldsmith’s photo portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Warhol work showed the musician as an “iconic, larger-than-life figure.” Two years later, the 2d Cir. reversed the trial court’s decision, and found that the Warhol work was not transformative.

The Warhol Foundation appealed, and that is the case now before the United States Supreme Court.

Fair use is not a new concept. Folsom v. Marsh, a 19th-century US copyright case from 1841, is widely regarded as the first fair use case in the United States. The opinion was written by Judge Joseph Story, who set forth four factors that the Courts still use today to figure out whether something is fair use (factors that were ultimately codified in the Copyright Act of 1976 as 17 U.S.C. § 107). In Folsom, the Reverend Charles Wentworth Upham, a writer and anthologist, had copied 353 pages from the plaintiff’s 12-volume biography of George Washington in order to produce a separate two-volume work of his own.

The publisher of the Washington book sued for “piracy of the copyright”. The defendant argued that use of this material was fair because it was the creation of an essentially new work. The funny thing about this case is that Judge Story rejected the fair use argument. In doing so, however, he noted that such a fair use could exist, under the proper circumstances. He then articulated the four factors that are used today to determine whether something is fair use:

1   The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.

2  The nature of the copyrighted work.

3  The amount and substantiality of the portion used in relation to the copyrighted work as a whole.

4  The effect of the use upon the potential market for or value of the copyrighted work.

 

We are all familiar with fair use, even if we don’t know it. Remember the 1994 2 Live Crew song “Pretty Woman”? The United States Supreme Court ruled that the rap group’s use of the Roy Orbison tune “Oh, Pretty Woman” was fair use because it was a parody of the original. Under the four factors, 2 Live Crew was not liable for infringement. How could Orbison’s market for the original be harmed by a wildly popular song reviving interest in the original? And how can an artist satirically comment on an existing work without using or referencing it? These questions were tackled by Justice Souter in the 2 Live Crew case.

On the other hand, consider the famous photograph by Jeff Koons (image G).

G

 

Art Rogers, a photographer who took the original

photograph (image F) and licensed it for use

F

in greeting cards, sued Koons for infringement. Koons lost the fair use battle here, with the Court concluding that Koons’ alleged parody did not specifically comment on the original, and thus a defense of fair use was not available.

Fair use cases are hard. But the Warhol case shouldn’t be. Among the most revered contemporary artists in history, Warhol’s work is—almost by definition—transformative. Courts have cautioned us not to consider an artist’s stature while determining fair use, but that guidance seems impractical and unwise. Knowing it’s a Warhol probably enhances the market for Goldsmith’s original photograph. And the work is plainly transformative under the 9th Circuit’s test, which says that fair use is available even where the artist “makes few physical changes to the original.” Those other courts say that a work like Warhol’s can be transformative if “new expressive content or [a new message] is apparent.” Warhol’s Prince Series– like his long standing body of work–expresses a new message and (as mentioned) paints Prince in a new light. Warhol’s career-long study of fame, culture, and the society that surrounds these celebrities is again front and center in the Prince Series. These undeniable features of the work should persuade the Supreme Court to find for Warhol on the issue of fair use.

We are in the middle of a major creative renaissance. With Web3 upon us, creators from varied disciplines are creating non-fungible tokens, generative art, and new forms of digital art that are often times highly derivative of existing works. Judicial guidance on fair use has been scattered in recent years, and the 2nd Circuit’s decision in Warhol leaves a lot of artists wondering whether fair use exists at all anymore. With some clarity from the Supreme Court, today’s Warhols (ahem, Daniel Arsham) can continue making transformative, groundbreaking work that talks about the things contemporary artists have always talked about: modern life and culture.

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