By Gwyneth K. Shaw
Long-simmering litigation about copyright infringement reached the U.S. Supreme Court earlier this month, with possibly profound consequences for creators across the spectrum of the art world. At issue: a years-long dispute between a foundation representing famed visual artist Andy Warhol’s estate and photographer Lynn Goldsmith.
In 1984, Vanity Fair magazine ran a profile of Prince, and asked Goldsmith’s agency for help finding a photograph of the musician. That agency granted Vanity Fair a one-time license for its use of the image as an “artist reference.” The magazine then commissioned Warhol to create a print based on the photo, similar to his iconic images of actress Marilyn Monroe, to accompany a story about the Purple One’s rise to fame.
When Prince died in 2016, Condé Nast, which owns Vanity Fair, contacted the Warhol Foundation about using the print again in coverage of the musician’s legacy. Once it realized that Warhol had made additional images based on the photo, the magazine decided to use a different print for that issue’s cover.
After seeing Warhol’s print on the magazine cover, Goldsmith contacted the Warhol Foundation, claiming this use infringed her copyright. She then registered the photograph with the U.S. Copyright Office as an unpublished work. With Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, the foundation sought a declaratory judgment that because Warhol’s print was a “transformative” fair use of Goldsmith’s image, it did not violate her copyright. She then countersued for copyright infringement.
The trial court sided with Warhol, but a panel of judges on the U.S. Court of Appeals for the Second Circuit ruled in Goldsmith’s favor. When the Supreme Court took the case, it set up a final showdown. This will be the high court’s fifth foray into fair use issues.
Berkeley Law Professor and renowned copyright law expert Pamela Samuelson co-authored an amicus curiae brief on this case when it was before the Second Circuit panel as well as the Supreme Court. Below, she answers some key questions about the case and the recent arguments.
A faculty co-director of the Berkeley Center for Law & Technology, Samuelson is a pioneer in digital copyright law, intellectual property, cyberlaw, and information policy. A faculty member at the law school since 1996, she chairs the board of directors for the Electronic Frontier Foundation and the advisory boards for the Electronic Privacy Information Center, the Center for Democracy & Technology, Public Knowledge, and the Berkeley Center for New Media.
Q: What are the major legal issues at stake here? What’s new from previous “fair use” cases?
Samuelson: There is a longstanding question about how to distinguish transformative fair uses from transformative but infringing derivative works. To Goldsmith, the photographer who took some shots of the singer back in 1981, the Warhol series of prints of Prince are infringing derivative works. Yet, Goldsmith’s lawyer has sometimes acknowledged that maybe the creation of Warhol’s Prince series was lawful because of the artist reference license that Vanity Fair got from Goldsmith’s agent. But she believes also that the Warhol Foundation’s commercial license of one of the prints was unlawful, even if the works’ creation wasn’t.
The Foundation’s full fair use argument is not before the Court, only whether the Warhol prints were “transformative” because of the new meaning or message they convey. Two Supreme Court decisions have said that new meaning or message makes a work transformative. But the Second Circuit said judges are not well suited to deciding what the meaning or message of works of art are, so courts should look only to whether a second work is recognizably similar to the first work.
Unless the Court chooses to renounce the new meaning or message standard, it will probably reverse the Second Circuit and remand for more analysis of the fair use factors.
Q: Why is this significant outside the art world? What are some examples of how this could apply in other “fair use” applications?
Samuelson: If the Court adopts the standard for which Goldsmith is arguing, it could put in jeopardy the rights of museums to publicly display many works of art of the 20th century which incorporate expression from preexisting images. The Rauschenberg Foundation, for instance, raises questions about the lawfulness of many of that late artists’ works under Goldsmith’s reading of the fair use standard. Appropriation art has been an important development in the past several decades, and many artists may fear they can’t comment on popular culture if they must prove that it was necessary to use a particular image to create their works.
Q: “Transformative” is the operative term in this case, and many others. How did this come to be a legal standard, and how easy or difficult is it to determine?
Samuelson: Second Circuit Judge Pierre Leval wrote a law review article many years ago saying that when a second work has a new meaning or message or a different purpose from the original work, the second use should be considered transformative — a factor that tips toward fair use. Transformative works, he argued, are less likely to harm the market for the underlying work and because they contribute new expression for the public good, fair use can be a safety valve for follow-on creations.
The Supreme Court in 1994 agreed with Judge Leval’s argument in the Campbell v. Acuff-Rose Music case, which reversed a Sixth Circuit decision that 2LiveCrew’s rap parody of Roy Orbison’s popular song “Pretty Woman” was not fair use. Since Campbell, courts have given considerable attention to the transformativeness (or not) of second comers’ uses of protected works. Judges seem to have been able to do this well until the Second Circuit’s Goldsmith decision. Just last year the Court in Google v. Oracle reaffirmed the Campbell transformativeness standard.
Q: Based on the oral argument, do you have any predictions about what the court will do? What’s the trickiest part to decide?
Samuelson: The most likely outcome is that the Court will reverse the Second Circuit — saying that it must consider meaning or message and that under this standard, the Warhol works are transformative — but remand for reconsideration of the fair use factors in light of this holding. Although Goldsmith and the Solicitor General’s representative urged the Court to affirm, neither party had briefed the other factors, so it would be unfair for the Court to opine on the ultimate question posed in the case.
Q: What do you think the optimal policy would be here?
Samuelson: Reaffirming transformativeness as a significant consideration in fair use case law would be very welcome. Sometimes a second comer’s use will be transformative, but nonetheless be unfair if, for instance, the second comer took too much and undermined the first creator’s derivative work market. Just saying those two sentences would put fair use back on a good track. The Second Circuit’s decision articulates several different standards and will produce more confusion and uncertainty than has existed since Campbell.