How Artistic Prints of a Legendary Artist May Impact the Scope of Copyright’s Fair Use Doctrine

On October 12th, 2022, the Supreme Court heard arguments for Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (“Warhol”). [1] This highly-anticipated case regarding copyright law involves two great artists of the last century, visual artist Andy Warhol and award-winning photographer Lynn Goldsmith. At issue is a dispute over Warhol’s “Prince Series” collection, based on a photograph of the musician Prince Rogers Nelson taken by Goldsmith. [2] Centered on the subject of visual arts and the underlying issue of whether Warhol fairly used Goldsmith’s photograph, this case reflects a crucial opportunity for the Court to clarify copyright protections. 

Issues surrounding fair use of copyrighted property, however, are not new to the Court. Cases regarding copyright rights limitations have come before the Supreme Court on various occasions, most recently in the 2021 case Google v. Oracle (“Google”) in which the Court affirmed the right to more freely use copyrighted material in software and technology, opening the door for cases such as Warhol to be heard. [4] The Supreme Court’s consideration of Warhol is the latest opportunity to question limitations of copyrighted property to be resolved and offers a chance for the Court to clarify fair use requirements, which are currently clouded by subjective legal measurements. In a case that could redefine the scope of fair use and the future of copyright protections, a ruling against Warhol threatens to limit the range of creative expression, posing major implications not only for the visual art world but all industries that seek to innovate through the re-expression of existing ideas and works.

In 1981, award-winning photographer Lynn Goldsmith took several photographs of the up-and-coming musician Prince in her studio. [5] Goldsmith was the copyright owner of these photographs, and, in 1984, her agency licensed them to Vanity Fair magazine for $400 to be commissioned as an artistic reference. [6] Unbeknownst to Goldsmith, Vanity Fair commissioned Andy Warhol to create a silkscreen piece based on Goldsmith’s image. He also produced fifteen additional pieces that became known as the “Prince Series.” [7] Goldsmith learned about the series after Prince’s death in 2016, subsequently notifying The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) of the perceived copyright violation. [8] 

In 2017, the AWF sued Goldsmith and her agency to resolve the copyright issue, arguing that the Prince Series was fair use of Goldsmith’s copyrighted photograph as the pieces were an aesthetic “transformation” of the original image. [9] Goldsmith ultimately countersued for copyright infringement, which the United States District Court for the Southern District of New York dismissed, finding that the pieces constituted fair use. [10] Goldsmith appealed to the Second Circuit Court of Appeals, which reversed the decision, holding that the District Court erred in its assessment and application of fair use protection and that the Prince Series did not qualify as fair use. [11] In 2021, the Supreme Court’s decision in Google—in which the Court sided in favor of Google and their argument of transformative use—gave new life to AWF’s defense, which petitioned for reconsideration of the Second Circuit’s decision. Having granted the petition and heard the case in October of this year, the Supreme Court must now determine an appropriate test of fair use. [12] 

The dispute between Goldsmith and the AWF involves a foundational principle of copyright law:  the doctrine of fair use, which has historically limited copyright rights and the scope of infringement. To determine whether the use of copyrighted material is fair, the law calls for a balanced application of four factors outlined in the amended U.S. Copyright Act of 1976: the purpose and character of the use, the nature of the work at issue, the amount or substantiality of the copyrighted work used in relation to the work at issue as a whole, and the potential market effect of the use. [13] The first factor is particularly relevant to this case, as the purpose and character of the use is closely tied to its transformativeness. [14] When considering fair use, courts have historically favored uses that are “transformative” rather than mere reproductions of the copyrighted material. [15] The concept of transformative use as a means of testing copyright infringement originated from the Supreme Court’s 1994 decision in Campbell v. Acuff-Rose, a case involving a musical parody of “Pretty Woman” developed by Roy Orbison. [16] In its decision assessing the musical parody as fair use, the Court held that a new artistic expression can be “transformative” and satisfy fair use as long as the expression “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.” [17] In their consideration of this legal standard in the Warhol case, the District Court and Second Circuit fundamentally disagreed on the “transformativity” of Warhol’s Prince Series, revealing subjectivity issues in the transformative use test that, rather than offering clarity, ultimately produced inconsistent rulings that call into question its applicability.  

The AWF’s fair use defense stems from the supportive legal standard that the Prince Series is a “transformation” of the original Goldsmith photo, which remains uncontestedly copyrighted. [18] The judge for the Southern District of New York agreed with this argument of transformative use, reasoning that Warhol’s Prince Series portrays Prince differently than Goldsmith’s original photo. [19] The District Court judge concluded that a reasonable observer would perceive that Warhol’s pieces, in comparison, have a “different character, a new expression, and [employ] new aesthetics with creative and communicative results.” [20] The Second Circuit ultimately rejected this position, taking a narrower approach to the transformative use test with greater focus on the nature of the copyrighted work and the purpose and character of the secondary work. In assessing the Prince Series, the Second Circuit applied more objective scrutiny to its purpose and character, critiquing the District Court for relying on a subjective evaluation of the underlying artistic message. [21] 

Thus, the Second Circuit offered a different interpretation of the transformative use test, one in which the purpose and character of the secondary work must at least comprise something more than the use of a different artistic style imposed over an original copyrighted piece. [22] This test, according to the Second Circuit, “must examine whether the secondary work’s use of its source material is in service of a fundamentally different and new artistic purpose and character, such that the secondary work stands apart from the raw material used to create it.” [23] Following this logic, the Prince Series is not transformative based on the purpose and character component of the fair use doctrine. However, imposing such a test virtually forces artists engaging in secondary work that sources a copyrighted original to achieve an objectively distinct artistic purpose, narrowing the scope and protections of the fair use doctrine. 

While the opinion issued by the Second Circuit diminishes the scope of fair use, the Supreme Court’s decision in Google revisited the topic. Issued nearly two weeks after the appellate decision on the Warhol prints, Google gave the Court an opportunity to broach the issue of transformativeness in a unique context. In this case, the Supreme Court examined whether Google fairly copied Oracle’s Java software interface. [24] The Supreme Court ultimately sided with Google, finding that the replicated code did in fact constitute transformative and thus fair use, leading to speculation that such a case addressing fair use could alter the interpretation of copyright legal standards applied to the art industry. [25] Even though Google concerns software code, the resulting decision may shape subsequent applications of the fair use doctrine and the test of transformativeness, which arise through cases such as Warhol. Considering Warhol in the wake of Google, the Court will be faced with expanding the fair use limitations on copyright protections by reversing the Second Circuit opinion or recognizing a narrower view of transformative uses of copyrighted work.

Before considering the implications of the Court’s decision in Warhol, it is important to recognize the supportive arguments behind the Google decision, which concern the purpose of copyright protections and limitations. The objective of copyright is present in the earliest drafts of the U.S. Constitution, as its framers recognized the importance of not only protecting authorship, but of encouraging creativity and innovation. [26] Thus, copyright was intended not only to reward creative authors, but also to enrich the public through promoting “the progress of science and useful arts.” [27] Google’s successful arguments before the Court alluded to this goal, citing its intent to improve technological innovation as justification for copying Oracle’s code. [28] In the cases of Google and Warhol, both uses of copyrighted work produced recognizable, derivative works, begging the question of whether creative expression is allowed, even in the case where there may not be a difference between artistic purposes. In Google, the Court found that reusing Oracle’s copyrighted work had the same intended purposes of technological innovation, raising doubts about the viability of the Second Circuit’s proposed limitations that require a distinctly new artistic purpose in Warhol. [29] 

If the Court sides with Warhol, the transformative use test would extend to the visual arts to protect the right to derivative pieces that may share the artistic purpose of the copyrighted original. This outcome would support the central objective of copyright law: to promote creative expression and innovation. Although such a ruling might indicate the Court has decided to prioritize the rights of derivative work over copyrighted materials, which could produce adverse consequences for the overall value of originals, a ruling for Goldsmith  will strike a larger blow to creative expression. By failing to grant a wider scope of fair use to derivative works, the Court will ultimately deter innovation, inadvertently enlarging the copyright owner’s protection over their expressions. Google has offered a path towards a successful challenge to a narrower definition of fair use in Warhol that would protect transformative works of appropriated art and offer clarity on transformative use that is so greatly needed. 

Edited by Emma Barbarette

Sources:

[1] "Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith," Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2022/21-869.

[2] "Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith," Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2022/21-869.

[4] "Google LLC v. Oracle America Inc." Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2020/18-956.

[5] “Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith | Case Brief for Law School | LexisNexis,” n.d. Community, Accessed December 8th, 2022, https://www.lexisnexis.com/community/casebrief/p/casebrief-andy-warhol-found-for-the-visual-arts-inc-v-goldsmith-1828633843.

[6] “Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith | Case Brief for Law School | LexisNexis,” n.d. Community, Accessed December 8, 2022, https://www.lexisnexis.com/community/casebrief/p/casebrief-andy-warhol-found-for-the-visual-arts-inc-v-goldsmith-1828633843.

[7] “Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith | Case Brief for Law School | LexisNexis,” n.d. Community, Accessed December 8, 2022, https://www.lexisnexis.com/community/casebrief/p/casebrief-andy-warhol-found-for-the-visual-arts-inc-v-goldsmith-1828633843.

[8]“Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith | Case Brief for Law School | LexisNexis,” n.d. Community, Accessed December 8, 2022, https://www.lexisnexis.com/community/casebrief/p/casebrief-andy-warhol-found-for-the-visual-arts-inc-v-goldsmith-1828633843.

[9] "Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith," Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2022/21-869.

[10] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith | Case Brief for Law School | LexisNexis,” n.d. Community, Accessed December 8, 2022, https://www.lexisnexis.com/community/casebrief/p/casebrief-andy-warhol-found-for-the-visual-arts-inc-v-goldsmith-1828633843.

[11] Erin Connors, n.d, “Warhol, Prince, and a Continued Narrowing of Copyright’s Fair Use Doctrine,” JD Supra, Accessed December 8, 2022, https://www.jdsupra.com/legalnews/warhol-prince-and-a-continued-narrowing-3840432/.

[12] "Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith," Oyez, Accessed December 8, 2022, https://www.oyez.org/cases/2022/21-869.

[13] “Fair Use | Columbia University Libraries,” n.d, Accessed December 8, 2022, https://copyright.columbia.edu/basics/fair-use.html.

[14] Copyright Act of 1976, 17 U.S.C. § 107 (2020), https://www.copyright.gov/title17/.

[15] “Transformative Use and Copyright Infringement.” 2019, Justia. June 5, 2019, https://www.justia.com/intellectual-property/copyright/fair-use/transformative-use/.

[16] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). 

[17] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). 

[18] Andy Warhol Foundation v. Goldsmith, 2019, 382 F. Supp. 3d 312. Dist. Court.

[19] Andy Warhol Foundation v. Goldsmith, 2019, 382 F. Supp. 3d 312. Dist. Court.

[20] Andy Warhol Foundation v. Goldsmith, 2019, 382 F. Supp. 3d 312. Dist. Court.

[21] Andy Warhol Foundation v. Goldsmith, 2020, 11 F. 4th 26. Court of Appeals, 2nd Circuit.

[22] Andy Warhol Foundation v. Goldsmith, 2020, 11 F. 4th 26. Court of Appeals, 2nd Circuit.

[23] Andy Warhol Foundation v. Goldsmith, 2020, 11 F. 4th 26. Court of Appeals, 2nd Circuit.

[24] "Google LLC v. Oracle America Inc.," Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2020/18-956.

[25 "Google LLC v. Oracle America Inc," Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2020/18-956.

[26] “What Is Copyright?” 2016, Copyright Alliance (blog), September 7, 2016, https://copyrightalliance.org/faqs/what-is-copyright/.

[27] “Article 1 Section 8 Clause 8 | Constitution Annotated | Congress.Gov | Library of Congress.” n.d, Accessed December 13, 2022, https://constitution.congress.gov/browse/article-1/section-8/clause-8/.

[28] "Google LLC v. Oracle America Inc." Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2020/18-956.

[29] "Google LLC v. Oracle America Inc." Oyez, Accessed December 8th, 2022, https://www.oyez.org/cases/2020/18-956.