How did we ever lose communication?

How did we ever lose each other’s sound?

Baby, if you wanna, we can fix the situation

Maybe we can stop the rain from coming down[1]

It’s rare that song lyrics effectively summarize the basic problem with a copyright lawsuit currently before the United States Supreme Court, but in the case of Prince rare is pretty normal, so there we are. 

This is a longish post, by the way, but it’s an interesting story so sit back and enjoy.

Here’s the deal: Way back in 1981, professional photographer Lynn Goldsmith took a series of photos of the then-newish performer Prince.[2] As Prince’s star rose, Vanity Fair magazine decided to do a profile piece on the singer, and commissioned artist Andy Warhol to produce an iconic image of the musician in his own style—similar to his lavishly colored portraits of Marilyn Monroe. Being well aware of copyright law, Vanity Fair licensed one of Goldsmith’s photos to “inspire” Warhol, and to illustrate for him the type of portrait the magazine had in mind. The license was with an agency Goldsmith had founded, that represented numerous photographers and negotiated licenses on their behalf. Goldsmith herself was unaware of the license.Under the terms of the license, Goldsmith’s photo would be used as an “artist reference”, meaning that Warhol “would create a work of art based on [the] image reference.” The license allowed Vanity Fair to publish the resulting Warhol image twice in one publication: once as a full-page image, and once as a quarter-page image. Goldsmith was to be credited as the photographer on both versions, and in a separate attribution.

The Warhol images appeared in the November 1984 issue of Vanity Fair, and were in all ways compliant with the license. Goldsmith remained unaware of the license, Warhol’s involvement, or even the publication of the articles, but that doesn’t really matter. So far so good.

Trouble was, no one bothered to tell Andy Warhol about the license terms. Unbeknownst to Vanity Fair, Warhol had created sixteen distinct portrait pieces based on Goldsmith’s photo, collectively called “The Prince Series,” made up of fourteen silkscreen prints (twelve on canvas, two on paper) and two pencil sketches.

Sadly, in 1987 Andy Warhol passed away, and the Andy Warhol Foundation (AWF) took over copyright of his works, including the Prince Series. AWF sold a dozen of the images to private buyers (retaining copyright), and transferred ownership of the remaining four to the Andy Warhol Museum in Pittsburgh. In 2016, Prince also passed away, and Vanity Fair’s publisher reached out to AWF seeking to re-license the original Warhol work to use in a commemorative edition dedicated to the singer. When they learned that there were other Warhol-created choices available, Vanity Fair selected a different image from the Prince Series, obtained a limited commercial-use license, and plopped the image on the cover of their May 2016 issue.

It’s at this point that Goldsmith became aware of the whole saga, and promptly registered her original photograph with the US Copyright Office as an unpublished work. As readers of Copyright for Creatives already know, the law requires registration for a copyrighted work to be eligible for statutory damages, but also allows the work to be registered any time before the lawsuit, including after the infringement—that’s based on the principle that a work is “copyrighted” by its creator at the moment it’s put into fixed form.)[3]

AWF promptly sued both Goldsmith and LGL. Now, that may seem like an odd thing for them to do, but what they were doing is called “seeking a declaratory judgment.” Basically, AWF was asking a court to simply declare that their possession of and licensing of the photos was either not infringement, or that the production of more than one version by Warhol was a case of fair use. AWF’s strategy was that if the court agreed with their arguments, Goldsmith would be barred from suing for copyright infringement—which (in my view at least) Warhol’s creation of multiple works, and AWF’s sale of those works, clearly was.

(Below, you can compare Goldsmith’s original photograph on the left, and Warhol’s Prince Collection on the right.)

It’s here that I’ll plug Copyright for Creatives again, though, because the factors that determine whether or not something is a fair use are fairly complicated, and I don’t really want to go into all that here. For now, all you need to know is that something like what Warhol did could be considered fair use only if it transformed the original work in a unique and distinct way, and also satisfied the four statutory fair use factors:

1. the purpose and character of the use, including whether the use is commercial or for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used compared to the copyrighted work as a whole; and
4. the effect of the use on the potential market for or value of the copyrighted work.[4]

In something of a baffling, bizarre decision, the District Court found in favor of AWF’s argument, stating that the Prince Series was “transformative” (and therefor a fair use) because “while the Goldsmith Photograph portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays Prince as an “iconic, larger-than-life figure;” that the photos and the artworks are different media; that Warhol’s artistic approach “removed” the photo’s distinctiveness; and that there was no measureable financial loss to Goldsmith.[5] Goldsmith, not surprisingly, appealed.

The Second Circuit Court of Appeals reversed the lower court, finding that “the Prince Series retains the essential elements of its source material, and Warhol’s modifications serve chiefly to magnify some elements of that material and minimize others. While the cumulative effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizablefoundation upon which the Prince Series is built.”[6] Further, “Warhol did not create the Prince Series by taking his own photograph of Prince in a similar pose as in the Goldsmith Photograph. Nor did he attempt to copy merely the “idea” conveyed in the Goldsmith Photograph. Rather, he produced the Prince Series works by copying the Goldsmith Photograph itself – i.e., Goldsmith’s particular expression of that idea.”[7]

In other words, Warhol violated the Copyright Prime Directive as stated in Copyright for Creatives:

Don’t Take Other People’s Stuff.

Anyway, now we find ourselves at the US Supreme Court, which will ultimately decide whether or not taking someone’s photograph, manipulating its contrast, overlaying duplicate layers, and airbrushing some color blocking on it is transformative enough to not be copyright infringement.

To vastly (and probably unfairly) oversimplify AWF’s argument, anything that modifies the original work in a style that’s recognizeably someone else’s is totally fair use. Goldsmith, on the other hand, argues that as long as the purpose and character of the original work (her photo) was to represent an image of Prince, and the purpose and charater of the infringing work (the Prince Series) was also to represent an image of Prince, there’s no transformation going on, just copying and a little diddling around the edges. That got the Court delving into the question of whether or not Warhol portraits are actually representative of their subjects, and it’s always fun to see Supreme Court Justices pretending to be art critics.[8]

We won’t know where the Court lands on that question until sometime next summer, but the debate in the Court may have hinted that the Justices are more likely to take Goldsmith’s side, and may attempt to provide greater clarity into what, exactly, “transformative” means. But predicting what a Supreme Court decision will be based on the Justices’ questions and comments during oral argument is a risky business.

One exchange is particularly interesting, though. Justice Elena Kagan summarized AWF’s argument by analogy to filmmaking. Generally, when a book is adapted into a movie version, the original book and a film adaptation are very different, and the film is a transformative use of the book–the director doesn’t include every scene and every line of dialogue from the text, and may add new scenes, new dialog, and even new characters in order to transfer ideas from a 300-page book to a two-hour movie. Kagan pointed out, though, that filmmakers still need to pay the copyright holder of the original work for the right to make their adaptation. Justice Amy Coney Barrett focused on a specific movie: Peter Jackson’s version of The Lord of the Rings, and suggested that AWF’s position meant that because Jackson had added scenes and dialogue not found in the books, that he shouldn’t have had to pay a license fee or royalty to the Tolkien estate.[9]

One possible outcome—particularly given the conservative, business-oriented majority viewpoint of this Court—might be hinted at by the dissent in the appeas court decision. There, while the dissenting Judge Sullivan agreed with the majority’s overall decision in favor of Goldsmith, he felt that too little emphasis was put on the financial impact factor, and too much on trying to define what is and is not “transformative.” In his dissent, Sullivan bemoaned what he saw as “an overreliance on “transformative use” in our fair use jurisprudence, generally, and [I] suggest that a renewed focus on the fourth fair use factor, “the effect of the use upon the potential market for or value of the copyrighted work,” 17 U.S.C. § 107(4), would bring greater coherence and predictability to this area of the law.”[10]

Will the Supreme Court nudge the fair use analysis away from creative substance and more in the direction of how much money the copyright holder lost? We’ll find out next year. But the bottom line, as the Prince lyrics at the beginning of this post suggest, is that had all the parties managed to communicate with each other more clearly, more directly, and in a more timely manner, we could all just put on our raspberry berets and not be bothered worrying about this case at all.

[1] Prince, “In This Bed I Scream,” from the album Emancipation (1996)

[2] Facts are from Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 19-2420 (2d Cir. 2021)

[3] Under 17 U.S.C. § 411, “no civil action for infringement of a copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made.”

[4] 17 USC §107, Limitations on exclusive rights: Fair use

[5] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382F. Supp. 3d 312, 316 (S.D.N.Y. 2019)

[6] Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 19-2420 (2d Cir. 2021)

[7] Id.

[8] Mann, Ronald, “Justices debate whether Warhol image is “fair use” of photograph of Prince,” ScotusBlog (Oct. 14, 2022) https://www.scotusblog.com/2022/10/justices-debate-whether-warhol-image-is-fair-use-of-photograph-of-prince/

[9] The full transcript of this Supreme Court hearing is at https://www.supremecourt.gov/oral_arguments/argument_transcripts/2022/21-869_c0nd.pdf. The Kagan and Barrett questioning is at pages 14 and 52.

[10] Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 19-2420 (2d Cir. 2021; dissent)