Minnesota Lawyer
For months, a diverse group of interested parties has awaited the U.S. Supreme Court’s decision regarding the case Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith.
While the case has garnered national attention due to the names involved, it is the application of a copyright concept that has the parties — as well as a bunch of others in the arts — waiting with bated breath.
In 1981, Lynn Goldsmith photographed Prince for Newsweek. Three years later, Vanity Fair commissioned Andy Warhol to create an illustration of Prince. Goldsmith was paid $400 in licensing fees and was informed in writing that the image would only be used in the one issue of Vanity Fair. However, Warhol created 16 Prince silkscreens and copyrighted them. The originals have been sold, and they have been reproduced, generating hundreds of millions of dollars.
The dispute arose in 2016, when Conde Nast, Vanity Fair’s parent company, ran “The Genius of Prince” following Prince’s death. On the cover was Warhol’s “Orange Prince,” which Conde Nast paid the Warhol foundation $10,250 to use. Before running the cover, Goldsmith was unaware of Warhol’s Prince series. Goldsmith was not paid or given any credit for “Orange Prince,” or any of the other silkscreens, at which point she sued the Warhol Foundation.
Goldsmith claimed that the Warhol Foundation infringed her copyright and that she was owed millions of dollars in unpaid royalties and licensing fees. Conversely, the Warhol Foundation argued that Warhol copyrighted his series of Prince silkscreens. Importantly — and at the center of the case before the U.S. Supreme Court — the foundation asserted that Warhol’s treatment of Goldsmith’s photograph was “transformative.” By “transformative,” the foundation is referring to the alterations Warhol made to Goldsmith’s original photo.
The original black and white photograph of Prince taken by Goldsmith portrays a very vulnerable Prince. He is wearing eyeshadow and lip gloss, and his eyes have pinpricks of light. It is not quite a full-body photo, but shows from his head to his upper thighs. Prince is wearing a white button down shirt, black slacks, and suspenders.
Silkscreens of Prince created by Warhol do differ. Warhol cropped the image to focus solely on Prince’s face. The original photograph was also resized and Prince’s face angle altered. Additionally, Warhol added bright colors and added shading to amplify Prince’s facial features.
Looking at the images side by side, it seems evident that the Warhol at least echoed what Goldsmith captured. The question — which could have effects not just for the parties but for others in the art world — is whether what Warhol did actually transform Goldsmith’s image enough to not constitute a copyright infringement.
Tom Cotter, Taft Stettinius & Hollister Professor of Law at University of Minnesota Law School, says that the issue before the court is how the concept of “transformative use” ought to be applied in determining whether an instance of unauthorized use of copyrighted work could be considered lawful fair use.
“In deciding fair use questions, courts consider four factors set forth in section 107 of the Copyright Act,” Cotter explains. “Each factor has its own subfactors, as a matter of judicial interpretation. And one of the relevant subfactors, according to the Supreme Court’s 1994 decision in Campbell v. Acuff-Rose, is whether the use is ‘transformative.’”
What “transformative” exactly means, however, is imprecise.
“The meaning of ‘transformative use’ is not always so clear,” Cotter explains. He notes that “one difficulty is that copyright owners have the right to prevent the preparation of ‘derivative works,’ and a derivative work is defined in section 101 as ‘a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted’ (emphasis added). So, some transformations infringe, whereas others are lawful fair uses.”
The U.S. District Court for the Southern District of New York granted summary judgment to the foundation, finding that there was fair use. On appeal, the 2nd Circuit found that “Warhol’s modifications serve chiefly to magnify some elements of that material and minimize others … the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.” It reversed the district court’s granting of the foundation’s motion for summary judgment, writing “[A]ny reasonable viewer with access to a range of such photographs including the Goldsmith Photograph would have no difficult identifying the latter as the source material for Warhol’s Prince Series.”
There is a lot on the line, not just for the parties but also for others in the art world, including unions, museums and other artists. Three dozen amicus briefs have been filed for this case from organizations such as the Motion Picture Association of America to the Record Industry Association of America.
Of the court’s decision, Cotter says, “It will either make it marginally easier for adapters (like Warhol, here) to proceed without having to obtain a license, or marginally tougher.” He explains, “The law is already somewhat uncertain, so at least (I hope) we’ll have a little more clarity about what is permitted and what isn’t.”
“The concern is that, on the one hand, every new work (in some sense) builds on other works that preceded it. Sometimes art consists of referring to or quoting earlier works, and we don’t want to chill that,” Cotter affirms. “On the other hand, if an artist can always almost always adapt someone else’s work without authorization and claim the adaptation as a fair use, that potentially reduces the revenue the author of the original work can expect to derive from licensing her work for adaptation—which may reduce the original author’s incentive to create, or seem unfair.
“Achieving the right balance between preserving incentives and enabling access for future creators is tough.”
The court’s decision is due any day. For now, all anyone can do is speculate.
“The fact that it is taking the court so long to decide this case (it was argued in October) suggests to me that the justices are having a hard time figuring it out, and that it may be a split (5-4 or 6-3) decision,” Cotter muses. “I sort of expect the court to trim back the transformative use doctrine a bit (which would mean affirming the 2nd Circuit), but it’s hard to predict.”
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