SUPREME COURT FINDS IN FAVOR OF PHOTOGRAPHER GOLDSMITH IN WARHOL FAIR USE CASE

June 1, 2023 - From the DMLA Legal Committee

On May 18, 2023 the Supreme Court published its long awaited decision in the Andy Warhol Foundation v Lynn Goldsmith case finding that the commercial licensing of Warhol’s Orange Prince was not a fair use of Lynn Goldsmith’s photograph of the musician Prince that served as the artist reference to the Warhol’s silk screen series. The court’s decision was limited to the sole question before it, specifically whether the first fair use factor — the “purpose and character of the use,  including whether such use is of a commercial nature or is for nonprofit educational purposes” (in this instance the commercial licensing of the Warhol work to a publication)— favored the Andy Warhol Foundation (AWF) or not. AWF argued that the Prince Series works are “transformative,” and that the first fair use factor weighs in AWF’s favor, because the series convey a different meaning or message than the Goldsmith photograph.  However, the court did not look at the meaning of the artwork itself but at AWF’s use in licensing the reproduction of the artwork as a cover image for a Prince tribute publication at the time of Prince’s death in 2016.

DMLA filed an amicus brief, written by copyright attorney Naomi Jane Gray, in support of Goldsmith, reminding the court that whether a work was transformative or not was not black and white issue, but existed on a spectrum, with some transformation falling under the creator’s exclusive right to authorize derivative works, and that a too-broad interpretation of what it meant for a work to be transformative would eviscerate the licensing market for art reference and other derivative works. As licensing representatives for many visual artists, DMLA as an organization has a unique perspective on the value of the licensing market for derivative works, such as artist reference uses.

As a  refresher, the background facts are summarized by the court as follows:

Orange Prince is one of 16 works now known as the Prince Series that Warhol derived from a copyrighted photograph taken in 1981 by respondent Lynn Goldsmith, a professional photographer. Goldsmith had been commissioned by Newsweek in 1981 to photograph a then “up and coming” musician named Prince Rogers Nelson, after which Newsweek published one of Goldsmith’s photos along with an article about Prince. Years later, Goldsmith granted a limited license to Vanity Fair for use of one of her Prince photos as an “artist reference for an illustration.” The terms of the license included that the use would be for “one time” only. Vanity Fair hired Warhol to create the illustration, and Warhol used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue. The magazine credited Goldsmith for the “source photograph” and paid her $400. After Prince died in 2016, Vanity Fair’s parent company (Condé Nast) asked AWF about reusing the 1984 Vanity Fair image for a special edition magazine that would commemorate Prince. When Condé Nast learned about the other Prince Series images, it opted instead to purchase a license from AWF to publish Orange Prince. 

When Lynn Goldsmith demanded a fee from the AFW, it sued Goldsmith seeking a declaratory judgment of non-infringement based on the fair use exception. The district court found in favor of AWF, but on appeal the Second Circuit found that all factors favored Goldsmith. The Supreme court granted certiorari on the first fair use factor. As the case pitted two artists against each other, it drew much attention with many organizations and scholars filing amicus briefs for both parties.  

The majority decision, written by Justice Sotomayor, focused on two issues. One issue was the commercial nature of the licensing of the artwork for the cover of the commemorative publication, which was viewed as a substitute or replacement for the original Goldsmith photograph. 

The second was the recognition that whether a work is transformative and non-infringing, was a matter of degree and merely adding new expression or altering the meaning and message alone is insufficient to be determinative of fair use and non-infringing. The court noted that the definition of a “derivative” work under the Copyright Act, includes the word to transform. Consequently, an overbroad interpretation of what is transformative would swallow up the derivative work right. Instead, the new meaning or expression was to be weighed against other considerations, like commercialism. Here, as both the photograph and Warhol work were used to illustrate magazine stories about Prince, the original photograph and Orange Prince shared substantially the same purpose — while the court acknowledged that the Orange Prince added new expression to Goldsmith’s photograph, in the context of the challenged use, the first fair use factor still favors Goldsmith. 

In whole, the court has reined in the reliance of “transformativeness“ as the most determinative factor in fair use and has now considered the justification for the use as well as the commercialization, essentially placing more weight on the commercial nature. While commercialization also was noted not to be sufficient alone, the court was looking at the justification for using the underlying work, and not the message the artist was making about the work in general. 

 The court did note that its decision was limited to licensing of the Orange Prince work and not the creation, ownership or display of the Prince Series by the owners of the artwork and suggested that some publication would be appropriate. 

A dissent, written by Justice Kagan and joined by Justice Roberts, pointedly argued that the artwork itself was transformative and that the majority had not acknowledged the significant artistic expression added by Warhol and would have found in favor of AWH.

The Supreme Court’s new reliance on justification for the use may encourage artists who use images going forward to license an image if the second work is not commenting on the original or serving as a parody. The reining in of transformativeness as the thumb on the scale of fair use may encourage licensing of digital content used for creating AI models, instead of scraping.

The DMLA Legal Committee members include: Chair - Paul Reinitz, Getty Images, DMLA Legal Advisor - Nancy Wolff, CDAS, Amanda Perrot, Adobe, Andrew Raff, Shutterstock, Sejal Richbourg, Adobe, and Margaret Vincent, Stocksy.